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Claimed Decking Board Need Not Be Made of Wood

June 28, 2004

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Last Month at the Federal Circuit - June/July 2004

Judges: Linn (author), Mayer, and Gajarsa (dissenting-in-part)

In Nystrom v. Trex Co., No. 03-1092 (Fed. Cir. June 28, 2004), the Federal Circuit reversed the district court’s grant of SJ of noninfringement and invalidity, and remanded for further proceedings, but affirmed the district court’s denial of Nystrom’s motion for sanctions under 28 U.S.C. § 1927.

The patent-in-suit, U.S. Patent No. 5,474,831 (“the ‘831 patent”), discloses and claims boards for use in constructing an exterior floor, such as a deck. Nystrom, the owner of the ‘831 patent, sued Trex Company (“Trex”) for infringement of the ‘831 patent. Trex is a manufacturer of exterior decking planks made from composites of wood fibers and recycled plastic. In response to the suit, Trex counterclaimed, seeking a DJ of noninfringement, invalidity, and unenforceability, and filed antitrust counterclaims. Trex voluntarily dismissed the antitrust counterclaims, then filed another antitrust counterclaim, which it eventually dismissed. After construing the claims as being limited to wood boards cut from a log, the district court entered SJ of noninfringement in favor of Trex on all claims. The district court also granted Trex’s motion for SJ of invalidity of claims 18-20. The district court entered a final judgment, staying the invalidity and unenforceability counterclaims regarding the remaining claims, claims 1-17.

The Federal Circuit initially dismissed Nystrom’s appeal for lack of finality, but the appeal was reinstated after the district court dismissed the stayed counterclaims without prejudice.

The Federal Circuit first reviewed the district court’s construction of three claim limitations: “board,” “manufactured to have,” and “convex top surface.” As to the “board” limitation, the district court had construed the term to mean a “piece of elongated construction material made from wood cut from a log.” The Federal Circuit noted that, although some dictionary definitions define “board” solely in reference to its material composition, not all dictionary definitions do so. Based on the broadest possible dictionary definition, the Federal Circuit found that the ordinary meaning of the word “board” encompasses both a piece of cut wood or sawn lumber and a similarly shaped item made of any rigid material. The Federal Circuit then looked to the written description and found that Nystrom did not expressly disclaim boards made from materials other than logs. With respect to the prosecution history, the Federal Circuit held that Nystrom’s statements that a prior art reference was not pertinent because it was “not made from wood” was not a disavowal or disclaimer of claim scope. The Federal Circuit, therefore, construed “board” to mean an elongated, flat piece of wood or other rigid material.

The district court had construed the “manufactured to have” limitation as requiring woodworking techniques, based on the board being wood cut from a log. In light of its construction that “board” includes materials other than wood, the Federal Circuit held that the “manufactured to have” limitation is not limited to woodworking techniques.

With respect to the “convex top surface” term, the district court had construed it to mean “an upper surface with an outward curve that has a ratio of curvature to width of the board between 4:1 to 6:1,” based on statements made in the prosecution history to distinguish a prior art reference. The Federal Circuit looked first to the dictionary definition of “convex” as “having a surface or boundary that curves or bulges outward, as the exterior of a sphere.” The Court ruled that the statements about the convex top surface that were made with respect to issued claim 16 did not apply to the other claims and concluded that the prosecution history did not limit the “convex top surface” to a particular radius of curvature. The Federal Circuit, therefore, held that the correct construction is an upper surface that curves or bulges outward, as the exterior of a sphere.

Based on the revised claim construction, the Federal Circuit reversed the district court’s grant of SJ of noninfringement.

The Federal Circuit next considered the district court’s grant of SJ of invalidity of claims 18-20 as anticipated by the Zagelmeyer patent. The district court held that certain boards depicted in a figure in the Zagelmeyer patent anticipate the limitation of a “difference in thickness to the width of the board being about 1:40.” The Federal Circuit held that the district court had erred in not following prior precedent, holding that arguments made on patent drawings that are not explicitly to scale are unavailing, and reversed the district court’s grant of SJ of invalidity of claims 18-20.

With respect to sanctions, the Federal Circuit held that the district court did not abuse its discretion in declining to award § 1927 sanctions for Trex’s filing of antitrust counterclaims.

Judge Gajarsa dissented with respect to the claim construction of “board” and “manufactured to have,” arguing that dictionaries offered competing definitions and that the written description and prosecution history both narrow the meaning of “board” to “wood cut from a log.”