Product Claim Limited by Process Steps Because Process Steps Are Essential for Practicing Invention
January 26, 2007
Last Month at the Federal Circuit - February 2007
Judges: Bryson (author), Prost, Saris (sitting by designation)
[Appealed from: D. Minn., Judge Ericksen]
In Andersen Corp. v. Fiber Composites, LLC, Nos. 05-1434, 06-1009 (Fed. Cir. Jan. 26, 2007), the Federal Circuit affirmed the judgment of the district court in all respects except with regard to the district court’s grant of SJ that Fiber Composites, LLC (“Fiber”) infringed U.S. Patent Nos. 5,486,533 and 5,539,027 to Andersen Corporation (“Andersen”). On that issue, the Federal Circuit reversed and remanded for any necessary proceedings.
Andersen owns various patents relating to composite materials made from a mixture of polymer and wood fiber, including structural parts made from those composite materials. Fiber manufactures and sells deck railing and spindle products made from polymer/wood fiber composites. Andersen sued Fiber for infringement of six of its patents, which were grouped as follows for purposes of the litigation: U.S. Patent Nos. 5,827,607; 5,932,334; 6,015,611; and 6,015,612 (collectively “the Group I patents”), directed to a patented “composite composition,” and U.S. Patent Nos. 5,486,533 and 5,539,027 (collectively “the Group II patents”), directed to a patented “composite structural member.” The parties agreed that the terms “composite composition” and “composite structural member” have the same meaning throughout the patents in each respective group.
The district court granted SJ that Fiber’s “repro” did not infringe the Group I patents, but held that a subset of Fiber’s products infringed the Group II patents. Following a trial, a jury found that the Group II patents were not invalid and awarded Andersen $46,020 in damages. In post-trial motions, the district court denied Andersen’s request for a permanent injunction and denied Fiber’s request for JMOL regarding the validity of the Group II patents.
On appeal, both Andersen and Fiber challenged the district court’s construction of the claim terms “composite composition” and “composite structural member.” In particular, both parties disputed whether the claim terms “composite composition” and “composite structural member” should be limited to pellet and linear extrudate forms. Andersen further appealed the district court’s SJ grant of noninfringement of the Group I patents; Fiber appealed the district court’s denial of its JMOL motion.
First, the Federal Circuit addressed the term “composite composition” as claimed in the Group I patents. After analyzing the specifications and prosecution histories of the Group I patents, the Court determined that the steps of linear extrusion or pelletization were not merely embodiments disclosed in the Group I patents, but instead were essential features of the claimed composite composition. Specifically, the Court noted that the Group I patents share a common specification, which makes clear that the formation of pellets or linear extrudates is required for realizing the claimed physical properties of the “composite composition.” The Court further noted that the patentee repeatedly distinguished the invention over the prior art by referring to the pellet form or the pelletization process as an essential part of the invention. Having determined that the formation of pellets or linear extrudates was essential, the Federal Circuit concluded that the district court properly limited its construction of the term “composite composition.”
The Federal Circuit was not persuaded by Andersen’s argument that the specification occasionally refers to a “composite material” without reference to linear extrudates or pellets. The Court reasoned that the disclosed “composite material” is synonymous with the claimed “composite composition” and, thus, similarly restricted in its meaning. Andersen also argued that the doctrine of claim differentiation supports a broader construction of “composite composition.” The Court dismissed this argument on the basis that “the written description and prosecution history overcome any presumption arising from the doctrine of claim differentiation.” Slip op. at 12. Finally, Andersen argued that a restriction requirement during prosecution of one of the Group I patents identified certain “pellet and composite” claims to be patentably distinct from the “composition” claims. However, the Federal Circuit disagreed with the restriction, finding that Andersen did not adequately support this argument.
Next, the Federal Circuit addressed the term “composite structural member” as claimed in the Group II patents. Andersen urged that the claimed structural member should not be limited by any particular process of manufacture, such as forming the member from pellets or linear extrudates. In response, the Court reasoned that “[t]he specification [of the Group II patents], however, uses language of requirement, not preference, when it states that the manufacture of the composition and pellet of the invention ‘requires two important steps,’ one of which is the pelletizing step.” Id. at 17. Moreover, the Court held that “[non-recited] process steps can be treated as part of a product claim if the patentee has made clear that the process steps are an essential part of the claimed invention.” Id. at 23.
The Federal Circuit pointed to several portions of the Group II patents as evidence that formation of pellets or linear extrudates was required for forming the claimed structural member and, thus, a necessary limitation of the asserted claims. In addition, the Court pointed out that the patentees clearly disavowed broader claim coverage during prosecution of the Group II patents by arguing that the claimed “composite structural member” distinguishes the prior art by “forming pelletized material.” Id. at 19. The Court explained that “[b]y distinguishing [the prior art] in that manner, the applicants clearly disclaimed structural members made through a direct extrusion process.” Id. The Court also observed that the Group I and II patents trace their origins to closely related applications filed the same day and share common descriptions for manufacturing composite structural members, further supporting the Court’s conclusion that the pelletization process was an essential process in the Group II patents. The Court further held that while it is generally true that product claims are not limited to the methods of manufacture disclosed in the specification, “process steps can be treated as part of a product claim if the patentee has made clear that the process steps are an essential part of the claimed invention.” Id. at 23.
Turning to the issue of the district court’s SJ grant of noninfringement of the Group I patents, the Federal Circuit affirmed the lower court’s holding. Specifically, the Court determined that Fiber’s repro is neither a pellet nor a linear extrudate. Indeed, Andersen conceded that repro does not consist of pellets. However, Andersen suggested that repro is a linear extrudate because it “has a length to it.” Id. at 24. The Court dismissed this argument as overbroad, since every object has a length.
Finally, the Court addressed the issue of whether Fiber’s JMOL was properly denied regarding the validity of the Group II patents. Fiber argued that although the asserted claims recite a lower limit for a claimed Young’s modulus value, they do not comply with the written description or enablement requirements because they fail to recite a corresponding upper limit value. Fiber asserted a similar argument concerning a claimed coefficient of thermal expansion. The Court dismissed Fiber’s arguments since an unbounded claim value is proper, as in the instant case, where the specification enables one skilled in the art to approach the useful limits of the claimed value.