Floor Panel Patents Don’t “Play” at ITC
September 10, 2003
Last Month at the Federal Circuit - October 2003
Judges: Rader (author), Michel, and Schall (dissenting)
In Alloc, Inc. v. International Trade Commission, No. 02-1222 (Fed. Cir. Sept. 10, 2003), the Federal Circuit affirmed the ITC’s Final Determination, finding no domestic injury by certain flooring products for lack of infringement.
Alloc, Inc. (“Alloc”) filed a complaint with the ITC alleging that the importation and sale by several Respondents of certain flooring materials violated 19 U.S.C. § 1337 because it infringed U.S. Patent Nos. 5,860,267; 6,023,907; and 6,182,410, which claim systems and methods of joining floor panels. The ITC had construed the claims of the asserted patents to require “play” or a space between a locking groove on a first panel and the locking element of an adjacent panel. Because this “play” was missing in the accused products, the ITC found no infringement.
The Federal Circuit affirmed the ITC’s construction, agreeing that the specification, which was common to all three of the asserted patents, taught that the invention as a whole provided for play in the positioning of the floor panels. The specification criticized prior art floor systems without play and even characterized disassembly of the floor panels as unfeasible with the prior art systems. All of the figures and embodiments described in the common specification either implied play or expressly disclosed play.
In balancing the task of interpreting the claims in light of the specification without impermissibly inserting limitations into the claims, the Federal Circuit determined that “where the specification makes clear at various points that the claimed invention is narrower than the claim language might imply, it is entirely permissible and proper to limit the claims.” Alloc, slip op. at 11. The Federal Circuit also agreed that the prosecution history confirmed that play was a key feature of the claimed invention. In the prosecution history, the patentee invoked play to distinguish over the prior art and, thus, could not now contend that the claims covered a flooring system and method for installing that system without play.
For claims requiring “play” as an element, the Federal Circuit found substantial evidence to support the administrative judge’s determination that none of the accused products infringed the claims because the accused products did not have play.
The Court also upheld the ITC’s determination that there was no domestic industry for articles covered by the asserted claims. Alloc failed to establish that there existed a domestic industry for flooring systems with play. Because all of the accused products did not have play and because even the products manufactured by Alloc in the United States did not have play, Alloc could not establish a domestic industry based on the claim construction of the patents at issue.
Accordingly, the Federal Circuit affirmed the ruling that Alloc had failed to establish a violation of section 1337.