Nystrom v. Trex Company, Inc.

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United States Court of Appeals for the Federal Circuit

03-1092

RON NYSTROM,

Plaintiff-Appellant,

v.

TREX COMPANY, INC. and TREX COMPANY, LLC,

Defendants-Appellees.

Joseph S. Presta, Nixon & Vanderhye, P.C., of Arlington, Virginia, argued for
plaintiff-appellant.

Patrick J. Coyne, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P, of
Washington, DC, argued for defendants-appellees. With him on the brief was Troy E.
Grabow.

Appealed from: United States District Court for the Eastern District of Virginia

Judge Jerome B. Friedman
 United States Court of Appeals for the Federal Circuit

03-1092

RON NYSTROM,

Plaintiff-Appellant,

v.

TREX COMPANY, INC. and TREX COMPANY, LLC,

Defendants-Appellees.

__________________________

DECIDED: September 14, 2005
__________________________

Before MAYER,1 GAJARSA, and LINN, Circuit Judges.2

LINN, Circuit Judge.

Ron Nystrom (“Nystrom”) appeals from the grant of summary judgment of non-

infringement of claims 1-15 and 18-203 and of invalidity of claims 18-20 of the ’831

1
Haldane Robert Mayer vacated the position of Chief Judge on December
24, 2004.
2
The earlier opinion in this case, reported at 374 F.3d 1105 (Fed. Cir.
2004), is withdrawn, and this opinion is substituted therefor. See Order in this case
issued this date.
3
The district court granted TREX’s motion for summary judgment of non-
infringement. Although it is not entirely clear from the record, that motion was
apparently for all claims of U.S. Patent No. 5,474,831 (“the ’831 patent”). The district
court also granted TREX’s separate motion for partial summary judgment of non-
infringement of claims 16 and 17. Nystrom has raised no argument on appeal that
would affect the district court’s grant of summary judgment of non-infringement of claims
16 and 17. Thus, on the issue of infringement, only the district court’s grant of summary
judgment of non-infringement of claims 1-15 and 18-20 is before us.
patent and from an order denying sanctions under 28 U.S.C. § 1927, entered by the

United States District Court for the Eastern District of Virginia in favor of defendants

TREX Company, Inc. and TREX Company, LLC (collectively “TREX”). Nystrom v.

TREX Co., Inc., No. 2:01cv905 (E.D. Va. Oct. 25, 2002) (original final judgment);

Nystrom v. TREX Co., Inc., No. 2:01cv905 (E.D. Va. Oct. 21, 2003) (amended final

judgment). Because the district court correctly construed “board” and “manufactured to

have,” we affirm the district court’s grant of summary judgment of non-infringement of

claims 1-15 and 18-20. However, we reverse the district court’s construction of “convex

top surface” and the district court’s grant of summary judgment of invalidity of claims 18-

20 and remand the case to the district court for further proceedings. Further, because

the district court did not abuse its discretion in denying Nystrom’s motion for sanctions

under 28 U.S.C. § 1927, we affirm the district court’s disposition of that motion.

I. BACKGROUND

A. The ’831 Patent

The ’831 patent is directed to construction material for use in flooring surfaces:

specifically, boards for use in constructing an exterior floor, such as a deck. ’831

patent, col. 1, ll. 6-8. The invention described and claimed in the patent is an exterior

wood flooring board shaped to shed water from its upper surface while at the same time

providing a surface on which it is comfortable to walk and stand. Id. at col. 2, ll. 8-11. In

the Summary of Invention, the patent describes the invention as “a decking board which

is shaped to shed water from its upper surface, and which also yields a superior product

when cut from a log, reducing the amount of scrap in the outermost boards cut from a

03-1092 2
log.” Id. at col. 2, ll. 20-24. Figure 2, reproduced below, provides a transverse sectional

view of the preferred embodiment of the invention:

Id. at col. 2, ll. 49-50. The embodiment depicted in Figure 2 is described in the ’831

patent specification as follows:

The board specifically shown and described herein has generally the size
and shape of a so-called 5/4 decking board, with rounded top side edges
11 and 12 each having a radius of curvature r of about one-quarter of an
inch. The board 10 differs slightly in width w and thickness t from a
standard decking board, however, in that it has a width of only about 5
inches and a thickness of about 1-3/8 inches.

More importantly, the board of the invention has a slightly rounded
upper surface 13 that slopes gradually off to either side of the center of the
board, defining a convex surface that promotes the running off of water.
This surface may have a radius of curvature R1, for example, of about 24
inches.

Further, in a preferred construction the board also has a
complementally shaped concave bottom surface 14 with a radius of
curvature R2 of about 24 inches, placed to leave two relatively flat side
panels c and d along opposite edges of the board.

The curved top surface has a total fall or drop a from the center to
each side edge of about 1/8 of an inch, and the curved bottom surface
similarly has a total recess b from the plane of the two side panels to the
deepest part at the center of the board of about 1/8 of an inch.

03-1092 3
Id. at col. 3, ll. 1-24.

Independent claim 1 contains all of the disputed claim terms, and provides (with

the disputed terms highlighted):

1. A board for use in constructing a flooring surface for exterior use, said
board having a top surface, a bottom surface and opposite side edges,
said top surface being manufactured to have a slightly rounded or curved
configuration from a longitudinal center line thereof downwardly toward
each side edge, thereby defining a convex top surface which sheds water
and at the same time is comfortable to walk on, and said bottom surface
having a concave configuration for nesting engagement with the top
surface of another board so that a plurality of the boards may be stacked
one on top of the other with the stability of conventional boards having flat
top and bottom surfaces.

Id. at col. 4, ll. 19-30.

Independent claim 18 is representative of the claims for which invalidity is

disputed, and provides (with the disputed limitation highlighted):

18. A decking board for use in constructing a flooring surface for exterior
use, said board having a convex top surface, a bottom surface and
opposite side edges; said convex top surface being manufactured to have
a radius of curvature with a slightly rounded or curved configuration
extending across the top surface from one side edge to the other, defining
a difference in thickness between the longitudinal centerline and the
opposite side edges, with the ratio of said difference in thickness to the
width of the board being about 1:40; and said convex top surface serving
to shed water from said board when exposed to weather, and at the same
time, when a plurality of said boards are laid in side-by-side relationship,
presenting a surface that is comfortable to stand and walk on.

Id. at col. 6, ll. 16-29.

B. Proceedings Below

Nystrom is the inventor and sole owner of the ’831 patent. He is a working

carpenter and the owner of a two-truck, two-employee lumberyard. He has been in the

business of building exterior decks for twenty-five years. TREX is a manufacturer of

exterior decking planks made from composites of wood fibers and recycled plastic. On

03-1092 4
December 5, 2001, Nystrom filed suit in the Eastern District of Virginia, alleging TREX

infringed the ’831 patent. TREX counterclaimed, seeking a declaratory judgment of

non-infringement, invalidity, and unenforceability, and alleging antitrust violations on the

part of Nystrom, his company, and his attorneys. Nystrom then filed a motion to dismiss

the antitrust counterclaims. In response, TREX voluntarily dismissed the antitrust

counterclaims, but then filed an amended antitrust counterclaim alleging many of the

same antitrust violations against Nystrom alone. Soon after the amended counterclaim

was filed, TREX dismissed its amended antitrust counterclaim, prompting Nystrom to

move for sanctions on the ground that TREX’s attorneys “multiplie[d] the

proceedings . . . unreasonably and vexatiously.” 28 U.S.C. § 1927 (2000). The district

court denied the motion for sanctions under § 1927. Nystrom v. TREX Co., Inc., No.

2:01cv905 (E.D. Va. July 2, 2002) (“Sanctions Order”).

In due course, the district court held a Markman hearing and issued a claim

construction ruling concerning three disputed claim terms of the ’831 patent. Nystrom v.

TREX Co., Inc., No. 2:01cv905 (E.D. Va. Aug. 19, 2002) (“Claim Construction Order”).

Based on the district court’s claim construction ruling, Nystrom conceded that he could

not prove his infringement case against TREX. Therefore, Nystrom asked the district

court to enter judgment of non-infringement in favor of TREX and to dismiss TREX’s

invalidity and unenforceability counterclaims without prejudice. TREX then moved for

summary judgment of non-infringement and for summary judgment of invalidity of

claims 18-20. The district court entered judgment of non-infringement of all claims and

deferred ruling on the outstanding motion regarding claims 18-20. Nystrom v. TREX

Co., Inc., No. 2:01cv905 (E.D. Va. Sept. 11, 2002). Subsequently, the district court

03-1092 5
granted TREX’s motion for summary judgment of invalidity of claims 18-20. Nystrom v.

TREX Co., Inc., No. 2:01cv905 (E.D. Va. Oct. 17, 2002) (“Invalidity Order”). On October

25, 2002, the district court entered its initial final judgment. In that judgment, the

invalidity and unenforceability counterclaims regarding claims 1-17 were stayed pending

appeal.

Nystrom appealed the claim construction rulings, the grant of summary judgment

of non-infringement based thereon, the grant of summary judgment of invalidity of

claims 18-20, and the district court’s denial of sanctions to this court. On August 8,

2003, we dismissed Nystrom’s appeal for lack of finality in light of the stayed invalidity

and unenforceability counterclaims regarding claims 1-17. Nystrom v. TREX Co., Inc.,

339 F.3d 1347 (Fed. Cir. 2003). Following the entry by the district court on October 21,

2003 of an Amended Final Judgment nunc pro tunc October 25, 2002, that repeated the

previously entered judgments of non-infringement and of invalidity of claims 18-20 and

dismissed without prejudice the remainder of TREX’s declaratory judgment

counterclaims regarding claims 1-17, we reinstated the appeal. Nystrom v. TREX Co.,

Inc., 83 Fed. Appx. 321, 322 (Fed. Cir. 2003).

We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) and address the merits

of Nystrom’s appeal in this opinion.

II. DISCUSSION

A. Standard of Review

“We review the grant of summary judgment de novo, drawing all reasonable

inferences in favor of the non-moving party.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299

F.3d 1313, 1323 (Fed. Cir. 2002) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242,

03-1092 6
255 (1986)). Summary judgment is only appropriate if there are no genuine issues of

material fact and the movant is entitled to judgment as a matter of law. SRI Int’l v.

Matsushita Elec. Corp., 775 F.2d 1107, 1116 (Fed. Cir. 1985) (en banc).

Claim construction is a question of law reviewed de novo. Ferguson Beauregard

v. Mega Sys., Inc., 350 F.3d 1327, 1338 (Fed. Cir. 2003). Infringement, whether literal

or under the doctrine of equivalents, is a question of fact. Id.

This court reviews a district court’s denial of a motion for sanctions under 28

U.S.C. § 1927 pursuant to the law of the regional circuit. See Phonometrics, Inc. v.

Westin Hotel Co., 350 F.3d 1242, 1246 (Fed. Cir. 2003). The Fourth Circuit reviews the

denial of sanctions pursuant to § 1927 for an abuse of discretion. Chaudhry v.

Gallerizzo, 174 F.3d 394, 410 (4th Cir. 1999).

B. Claim Construction

Nystrom argues that the district court misconstrued three patent claim limitations:

“board,” “manufactured to have,” and “convex top surface.” TREX responds that the

district court’s claim constructions were correct.

1. “Board”

The district court construed the word “board” in independent claim 1 to mean a

“piece of elongated construction material made from wood cut from a log.” Claim

Construction Order, slip op. at 9. The district court held that Nystrom had limited the

scope of the claim term “board” by statements in the written description that a board is

cut or obtained from a log, id. at 7 (citing ’831 patent, col. 2, ll. 22-23; id. at col. 2, l. 34),

and statements made by Nystrom during prosecution in arguing against an obviousness

rejection, id. at 8.

03-1092 7
 Nystrom argues that “board” in claim 1 is not limited to conventional wood boards

that are cut from a log. He argues that the claim language “board” does not contain a

description of the material from which the board is composed and that the claim should

not be so limited. He contends it was error for the district court to rely on statements in

the specification to limit the claim because those statements do not represent a clear

disavowal of claim scope. Moreover, Nystrom asserts that there was no disavowal in

the prosecution history, because his comment in response to an obviousness rejection

was not intended to limit but to establish that the resin tiles disclosed in the Yoshida

reference were not properly combined with the wood planks of the Zagelmeyer

reference in the examiner’s § 103 obviousness rejection. Thus, Nystrom argues, the

comment was not such a clear and unambiguous disclaimer as to justify limiting the

claim term.

TREX responds that the ordinary meaning of “board” is a piece of sawn lumber.

Because the specification only disclosed a board as made of wood and cut from a log,

TREX contends that the claim term “board” must be limited to wood boards cut from a

log. TREX further argues that Nystrom disclaimed non-wood boards by the statements

he made during prosecution in overcoming an obviousness rejection based on Yoshida

and Zagelmeyer.

As this court recently articulated in our en banc decision in Phillips v. AWH Corp.,

“[i]t is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention

to which the patentee is entitled the right to exclude.’” 415 F.3d 1303, 1312 (Fed. Cir.

2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d

1111, 1115 (Fed. Cir. 2004)). Therefore, we begin our claim construction analysis with

03-1092 8
the words of the claim. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.

Cir. 1996). The words of the claim are generally given their ordinary and customary

meaning. Id. at 1582. The ordinary and customary meaning of a claim term “is the

meaning that the term would have to a person of ordinary skill in the art in question at

the time of the invention.” Phillips, 415 F.3d at 1313. The person of ordinary skill in the

art views the claim term in the light of the entire intrinsic record. See id. Thus, the

claims “must be read in view of the specification, of which they are a part.” Markman v.

Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc). “‘The

construction that stays true to the claim language and most naturally aligns with the

patent’s description of the invention will be, in the end, the correct construction.’”

Phillips, 415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158

F.3d 1243, 1250 (Fed. Cir. 1998)). In addition to the written description, “the

prosecution history can often inform the meaning of the claim language by

demonstrating how the inventor understood the invention and whether the inventor

limited the invention in the course of prosecution, making the claim scope narrower than

it would otherwise be.” Id. at 1317. In discerning the meaning of claim terms, resort to

dictionaries and treatises also may be helpful. Id. at 1318. However, “undue reliance

on extrinsic evidence poses the risk that it will be used to change the meaning of claims

in derogation of the ‘indisputable public records consisting of the claims, the

specification and the prosecution history,’ thereby undermining the public notice function

of patents.” Id. at 1319 (quoting Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d

1570, 1578 (Fed. Cir. 1995)).

03-1092 9
 The claims at issue do not include any language describing the “board” as cut

from a log or necessarily being made of wood. In fact, claim 16, which is similar to

claim 1, covers “[a] wood decking board for use in constructing a flooring surface for

exterior use, said decking board having a convex top surface, a bottom surface,

opposite side edges, and curved growth rings . . . .” ’831 patent, col. 5, ll. 32-35

(emphases added). By contrast, claim 1 simply claims a “board,” without restricting the

term to a particular material or describing characteristics of wooden boards cut from

logs. See id. at col. 4, ll. 19-21 (“A board for use in constructing a flooring surface for

exterior use, said board having a top surface, a bottom surface and opposite side

edges . . . .” (emphases added)). When different words or phrases are used in separate

claims, a difference in meaning is presumed. Tandon Corp. v. United States Int’l Trade

Comm’n, 831 F.2d 1017, 1023 (Fed. Cir. 1987). This principle of claim construction

would suggest that the difference in the use of terms has significance and that “board”

should not be limited to wood that is cut from a log. However, simply noting the

difference in the use of claim language does not end the matter. Different terms or

phrases in separate claims may be construed to cover the same subject matter where

the written description and prosecution history indicate that such a reading of the terms

or phrases is proper. Id. at 1023-24 (affirming the International Trade Commission’s

holding that “the inclusion of the term ‘non-gimballed’ in claim 5 did not require that

claims 1 and 12 be read to encompass a gimballed first transducer”).

An examination of the term “board” in the context of the written description and

prosecution history of the ’831 patent leads to the conclusion that the term “board” must

be limited to wood cut from a log. The written description begins by noting that “[a]

03-1092 10
variety of specialized flooring materials have been developed for interior and exterior

use.” ’831 patent, col. 1, ll.13-14. The discussion then proceeds to the specific context

of wood flooring materials for exterior use. In the context of the discussion of wood

flooring materials for exterior use, the patent states, “In all conventional flooring

materials known to applicant, the top and bottom horizontal surfaces of these flooring

materials are flat and planar. As a result, water tends to stand on the surface of the

decking material, causing it to deteriorate more quickly than it otherwise would.” Id. at ll.

57-61. The discussion continues, “Further, the process used to cut such lumber from

logs can produce inferior product on the outermost boards, often leading to scrap.” Id.

at ll. 65-67. The Background of the Invention, thus, frames the invention in the context

of wood decking materials cut from logs, even though it acknowledges that other

materials exist.

This context is maintained throughout the written description. For example, the

written description states, “With particular reference to FIGS. 1-5, it can be seen that the

convex top surface 13 is curved in the same general direction as the curvature of the

growth rings GR.” Id. at col. 3, ll. 25-27. The written description goes on to note that

the manner of installation of conventional decking boards “leads to accelerated

deterioration of the boards when exposed to weather.” Id. at ll. 34-35. Similarly, the

written description states, “FIG. 4 shows the relationship of the outermost boards B cut

from a log L.” Id. at ll. 65-66. Throughout the written description, Nystrom consistently

used the term “board” to describe wood decking material cut from a log. See AquaTex

Indus., Inc. v. Techniche Solutions, No. 05-1088, slip op. at 9 (Fed. Cir. Aug. 19, 2005)

03-1092 11
(“Here, the context of the specification ‘makes clear that the patentee did not intend the

term [fiberfill] to encompass’ natural materials.” (citation omitted)).

The prosecution history provides additional context that is consistent with the

written description. In a preliminary amendment, Nystrom stated that “the particular

configuration and dimensions of the board result in a uniformly superior product and

reduction in waste or rejects due to bark or other flaws along the edges of the board

when it is cut from near the outer circumference of a log.” Prelim. Amendment at 2. In

responding to a rejection, Nystrom stated,

The present invention represents a unique and significant advance
in the art of exterior wood flooring. Wood floors have been in use for
hundreds of years, and except for the development of different installation
techniques, i.e., the use of nails, screws, various fastening clips, and/or
adhesives, very little has been done to the basic shape of the board itself.

Amendment rec’d Sept. 30, 1993, at 2. Similarly, when arguing against an obviousness

rejection, Nystrom stated, “YOSIDA [sic] is clearly not concerned with materials made

from wood, and especially an elongate board for exterior use and having a convex top

surface when installed that will shed water and at the same time provide a surface that

is suitable for supporting furniture and comfortable to walk on.” Id. at 4. Although

Nystrom argues that the latter statement was limited to explaining why Yoshida could

not be combined with the Zagelmeyer reference, which was directed to wood, we are

not convinced that the statement is so limited. Nystrom explained in the same response

that “the extent of curvature used by ZAGELMEYER in his boards was such that a

distinctly uneven surface resulted, giving any surface constructed from them a corduroy-

like texture which would have been unsuitable for supporting furniture, and which would

have produced a distinct tactile sensation of roughness or uneven surface.” Id. at 3.

Thus, it is clear that when Nystrom was distinguishing Yoshida from an elongate board
03-1092 12
that is suitable for supporting furniture and comfortable to walk on, he was referring to

the invention and not Zagelmeyer. We need not decide, however, whether this

statement represents a clear disavowal of claim scope because the context reflects

Nystrom’s consistent use of the term board to refer to wood decking materials cut from

a log.

Nystrom contends that although some dictionaries define “board” solely in

reference to its material composition, see Webster’s Third International Dictionary 243

(2002) (defining “board” as “a piece of sawed lumber of little thickness but considerable

surface area usu. being rectangular and of a length generally exceeding its width”), not

all dictionaries are so constrained. For example, the American Heritage Dictionary of

the English Language 203 (4th ed. 2000) defines “board” as “1. A long flat slab of

sawed lumber; a plank. 2. A flat piece of wood or similarly rigid material adapted for a

special use.” Nystrom argues that the ordinary meaning of the word “board”

encompasses both a piece of cut wood or sawn timber and a similarly-shaped item

made of a rigid material.

However, as explained in Phillips, Nystrom is not entitled to a claim construction

divorced from the context of the written description and prosecution history. The written

description and prosecution history consistently use the term “board” to refer to wood

decking materials cut from a log. Nystrom argues repeatedly that there is no disavowal

of scope in the written description or prosecution history. Nystrom’s argument is

misplaced. Phillips, 415 F.3d at 1321 (“The problem is that if the district court starts

with the broad dictionary definition in every case and fails to fully appreciate how the

specification implicitly limits that definition, the error will systematically cause the

03-1092 13
construction of the claim to be unduly expansive.”). What Phillips now counsels is that

in the absence of something in the written description and/or prosecution history to

provide explicit or implicit notice to the public—i.e., those of ordinary skill in the art—that

the inventor intended a disputed term to cover more than the ordinary and customary

meaning revealed by the context of the intrinsic record, it is improper to read the term to

encompass a broader definition simply because it may be found in a dictionary, treatise,

or other extrinsic source. Id.; see also Snow v. Lake Shore & Mich. S. Ry. Co., 121

U.S. 617, 629-30 (1887) (“It is not admissible to adopt the argument made on behalf of

the appellants, that this language is to be taken as a mere recommendation by the

patentee of the manner in which he prefers to arrange these parts of his machine. There

is nothing in the context to indicate that the patentee contemplated any alternative for

the arrangement of the piston and piston-rod.”).

Our recent decision in AquaTex Industries illustrates this principle. In that case,

the patentee consistently used the term “fiberfill” throughout the written description to

refer to synthetic materials. Although the written description indicated that the

composition of the fiberfill was not known to be critical, we held that “the context of the

specification ‘makes clear that the patentee did not intend the term [fiberfill] to

encompass’ natural materials.” Id., slip op. at 9 (citation omitted). In particular, we

noted that “[n]one of the patents [incorporated by reference] discusses the possibility of

using natural fibers as commercial fiberfill batting.” Id., slip op. at 10. Although there

was no disavowal of natural materials, we held that the consistent use of the term

“fiberfill” to refer to synthetic materials and the extrinsic definitions supporting that

interpretation led to the conclusion that a person of ordinary skill in the art would have

03-1092 14
understood the term to be limited to synthetic materials. The present case is

analogous. Nystrom consistently used the term “board” to refer to wood cut from a log.

Although there was no clear disavowal of claim scope, there was nothing in the intrinsic

record to support the conclusion that a skilled artisan would have construed the term

“board” more broadly than a piece of construction material made from wood cut from a

log.

In Phillips, we held that the term “baffle” did not require any specific angle—even

in view of the written description’s limited disclosure of baffles oriented at right angles to

the walls—because the ordinary meaning of the term “baffle,” as reflected in a dictionary

definition to which the parties stipulated and as supported by the overall context of the

written description, was simply “objects that check, impede, or obstruct the flow of

something.” 415 F.3d at 1324. In this case, both parties acknowledge the ordinary

meaning of “board” as “a piece of sawed lumber.” Nystrom, however, seeks to broaden

the term “board” to encompass relatively obscure definitions that are not supported by

the written description or prosecution history. Broadening of the ordinary meaning of a

term in the absence of support in the intrinsic record indicating that such a broad

meaning was intended violates the principles articulated in Phillips. Therefore, we affirm

the district court’s construction of the term “board.”

2. “Manufactured To Have”

The district court construed the expression “manufactured to have” as used in

claim 1 of the ’831 patent to be “a manufacturing process utilizing woodworking

techniques.” Claim Construction Order, slip op. at 11. The district court relied on

statements in the ’831 patent written description that “the advantages of the invention”

03-1092 15
were achieved through “cutting or milling and the like.” Id. at 10. The district court

found this statement in the written description, combined with its prior construction of

the claim term “board” to be “construction material made from wood cut from a log,” to

be tantamount to a redefinition of the scope of the claimed manufacturing process. Id.

at 11.

Nystrom argues that for many of the same reasons the district court erred in

construing the word “board,” the district court’s construction of the phrase

“manufactured to have” is also in error. Further, he argues the district court’s reliance

on language in the written description mentioning “cutting or milling or the like”

impermissibly reads a limitation from a preferred embodiment into the claim. TREX

responds that the district court properly relied on the reference to “cutting or milling and

the like” in restricting “manufactured to have” in all of the claims to solely woodworking

techniques. TREX argues that the district court’s construction makes sense because

the ’831 patent covers only wood materials.

In light of our construction of “board” as encompassing only materials made from

wood cut from a log, we see no error in the district court’s limitation of the phrase

“manufactured to have” in claim 1 to woodworking techniques. The use of the phrase

“manufactured to have” in reference to the top surface of the board is necessarily limited

to manufacturing techniques related to wood. Thus, we affirm the district court’s

construction of “manufactured to have.”

3. “Convex Top Surface”

The district court construed “convex top surface” to mean “an upper surface with

an outward curve that has a ratio of its radius of curvature to width of the board between

03-1092 16
4:1 to 6:1.” Claim Construction Order, slip op. at 13. It noted that “the specification

does not contain any indication that the term convex top surface is to be assigned a

specific range of curvature.” Id. at 12. The district court relied on statements the

applicant made in the prosecution history that “the preferred [radius of curvature] ration

[sic, ratio] is about 5:1.” Id. at 13.

Nystrom argues that the district court erred by ignoring the ordinary and

customary meaning of this claim term, which is “an upper surface with an outward

curve,” and by importing additional limitations into this claim term from the written

description. He observes that claim 1 does not provide an explicit radius of curvature

ratio, and that such radii measurements are recited only in dependent claims 3, 7, and

13. Nystrom also argues that the district court erred in finding that he restricted the term

to a specific radius of curvature to overcome a rejection based on the Zagelmeyer

reference. He thus contends it was error for the court to construe “convex top surface”

to include a specific radius of curvature ratio. TREX responds that the district court

properly held that Nystrom limited his claim to a particular radius of curvature in the

range of 4:1 to 6:1 to distinguish the invention over the prior art Zagelmeyer reference.

The dictionary definition of the claim term “convex” is “having a surface or

boundary that curves or bulges outward, as the exterior of a sphere.” American

Heritage Dictionary of the English Language 402 (4th ed. 2000). This is consistent with

the specification of the ’831 patent. See, e.g., ’831 patent, col. 3, ll. 10-14 (“More

importantly, the board of the invention has a slightly rounded upper surface 13 that

slopes gradually off to either side of the center of the board, defining a convex surface

that promotes the running off of water. This surface may have a radius of curvature R1,

03-1092 17
for example, of about 24 inches.”). The district court relied on statements Nystrom

made during prosecution to distinguish the Zagelmeyer reference as limiting the

expression “convex top surface” to a surface with a radius of curvature in the range of

4:1 to 6:1. Claim Construction Order, slip op. at 12-13. Nystrom stated in a

supplemental amendment amending claim 16 of the issued patent (referred to as claim

19 during prosecution):

Applicant then began trying different radiuses of curvature, but some were
too shallow and when the board tried it tended not to shed water. Others
had too short a radius of curvature and a distinct sensation of an uneven
surface. Eventually, by trying a variety of curvatures, applicant discovered
that a ratio of radius of curvature to width of the board of about 5:1
produced the desired result, i.e., it shed water and did not produce and
uneven sensation to someone standing on it.

***

Claim 19 [claim 16 in the issued patent] and the claims dependent
therefrom (the remaining claims have been previously allowed), are
directed to a decking board that has a particular configuration which
produces specific results not achieved with any of the prior art. . . . It
should be noted, however, that the ratio of the radius of curvature of a
board to its width can vary within certain relatively narrow limits, e.g. from
about 4:1 to about 6:1, and still meet the basic objectives of the invention,
although the preferred ratio is about 5:1. Anything much outside this
range does not provide satisfactory performance and/or is not acceptable
to the consumer.

Supplemental Amendment, Sept. 7, 1994, at 2-3 (emphasis added). The district court

noted that Nystrom’s statement that “[a]nything much outside this range . . . is not

acceptable” implied that his statements regarding the radius of curvature ratio applied to

the entire patent, and was not intended to apply solely to issued claim 16.

The district court erred in its analysis of the prosecution history. Nystrom’s

statements were expressly directed to issued claim 16. There is no indication that

Nystrom intended the term “convex top surface” in all of the pending patent claims to be

03-1092 18
limited to a specific radius of curvature ratio. The district court ignored the fact that the

language of claim 16 at the time Nystrom made the disputed statements included the

following claim language expressly providing for a radius of curvature ratio of

approximately 5:1: “said top surface having a radius of curvature that is approximately

five times as great as the width of the board, thereby defining a smoothly shaped and

shallow convex top surface that sheds water . . . .” Supplemental Amendment, Sept. 7,

1994, at 1 (emphasis added).

Other statements in the prosecution history support this view. Nystrom points to

the examiner’s prior rejection of claims 1, 2, 5, 6, 11 and 12 under 35 U.S.C. § 102(b):

“This rejection is being made over the broad claims since they fail to specify any

particular degree for the curve of the board.” Examiner’s Action, Mar. 24, 1994, at 2.

The examiner eventually allowed claims 1-14 and 18 because the “prior art fail[ed] to

teach both sides of the board with a curved configuration,” not because the invented

board specified a particular radius of curvature ratio. Examiner’s Action, Dec. 8, 1994,

at 4. The prosecution history did not redefine or disclaim “convex top surface” in claim 1

to be limited to a particular radius of curvature ratio. Accordingly, we hold that the

correct construction of the expression “convex top surface” as used in claim 1 is the

ordinary and customary meaning of an upper surface that curves or bulges outward, as

the exterior of a sphere.

C. Invalidity

The district court granted summary judgment in favor of TREX, holding claims

18-20 of the ’831 patent invalid as anticipated in light of the Zagelmeyer reference. The

03-1092 19
parties principally dispute whether Figure 3 of the Zagelmeyer patent anticipates the

following limitation of independent claim 18:

said convex top surface being manufactured to have a radius of curvature
with a slightly rounded or curved configuration extending across the top
surface from one side edge to the other, defining a difference in thickness
between the longitudinal centerline and the opposite side edges, with the
ratio of said difference in thickness to the width of the board being about
1:40 . . . .

’831 patent, col. 6, ll. 18-25 (emphasis added). The district court held that boards 2, 3,

and 5 depicted in Figure 3 of the Zagelmeyer patent anticipate this limitation by

illustrating a board with a convex top having a relevant thickness ratio to the width of the

board of 1:39, 1:39, and 1:37, respectively. Invalidity Order, slip op. at 6. The district

court found that our precedents in Hockerson-Halberstadt, Inc. v. Avia Group

International, Inc., 222 F.3d 951 (Fed. Cir. 2000), and In re Wright, 569 F.2d 1124

(CCPA 1977), were not applicable, because it considered the correct inquiry to be

whether a person of ordinary skill in the art would use measurements from the

Zagelmeyer reference to ascertain the degree of curvature. Invalidity Order, slip op. at

6-7. Finding that a person of skill in the art would take such measurements from the

boards depicted in Figure 3 of the Zagelmeyer patent, the district court found claim 18

and the associated dependent claims anticipated. Id. at 7.

Nystrom argues that the district court erred by basing its invalidity determination

not on the disclosure of the Zagelmeyer patent itself, but instead from renderings made

by a TREX employee of hypothetical boards based on the perspective drawings in the

Zagelmeyer patent. He argues this violates our precedent in Hockerson-Halberstadt

that “patent drawings do not define the precise proportions of the elements and may not

be relied on to show particular sizes if the specification is completely silent on the

03-1092 20
issue.” Hockerson-Halberstadt, 222 F.3d at 956 (citing In re Wright, 569 F.2d at 1127).

Nystrom contends that the district court erred in relying on extrinsic evidence in

invalidating the ’831 patent. The invalidity data relied on by the district court was

generated by a TREX employee who made a software model of the boards depicted in

the perspective drawings of Figure 3 of Zagelmeyer patent, then performed

computations on the modeled boards to come up with the allegedly invalidating

curvature to width ratio.

TREX responds that the district court correctly found that it had presented

evidence that persons of ordinary skill in the art would understand Zagelmeyer to

disclose the same dimensions as claims 18-20. TREX submitted declarations that it

contended detailed the process by which the boards depicted in the Zagelmeyer

reference were modeled and from which the invalidating measurements were taken.

“A party seeking to establish that particular claims are invalid must overcome the

presumption of validity in 35 U.S.C. § 282 by clear and convincing evidence.” State

Contracting & Eng’g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1067 (Fed. Cir. 2003).

A patent is invalid as anticipated if every limitation in a claim is found in a single prior art

reference. Teleflex, 299 F.3d at 1335.

The district court erred in not properly applying the principles set forth in our prior

precedents that arguments based on drawings not explicitly made to scale in issued

patents are unavailing. Hockerson-Halberstadt indicated our disfavor in reading precise

proportions into patent drawings which do not expressly provide such proportions:

The ’792 patent is devoid of any indication that the proportions of the
groove and fins are drawn to scale. [The patent owner’s] argument thus
hinges on an inference drawn from certain figures about the quantitative
relationship between the respective widths of the groove and fins. Under

03-1092 21
 our precedent, however, it is well established that patent drawings do not
define the precise proportions of the elements and may not be relied on to
show particular sizes if the specification is completely silent on the issue.

Hockerson-Halberstadt, 222 F.3d at 956 (citing In re Wright, 569 F.2d at 1127). In re

Wright similarly noted:

We disagree with the [PTO]’s conclusion, reached by a comparison of the
relative dimensions of appellant’s and [the] Bauer [references]’s drawing
figures, that Bauer “clearly points to the use of a chime length of roughly
1/2 to 1 inch for a whiskey barrel.” This ignores the fact that Bauer does
not disclose that his drawings are to scale. Absent any written description
in the specification of quantitative values, arguments based on
measurement of a drawing are of little value.

569 F.2d at 1127.

The district court’s acceptance of TREX’s invalidity arguments based on models

made from drawings contained in the Zagelmeyer patent was incorrect. The basis of

the district court’s summary judgment of invalidity was a model that TREX developed

based on that reference, and not on drawing dimensions or a written disclosure of

dimensions contained directly in the patent itself. Under the principles set forth in our

prior cases, the speculative modeling premised on unstated assumptions in prior art

patent drawings cannot be the basis for challenging the validity of claims reciting

specific dimensions not disclosed directly in such prior art. Thus, we conclude that the

district court erred in granting summary judgment of invalidity based on TREX’s models.

Because the district court erred in determining invalidity based on evidence

improperly derived from a patent drawing, we need not address Nystrom’s argument

based on the district court’s rejection of Nystrom’s declaration. For the reasons stated,

we reverse the district court’s summary judgment of invalidity of claims 18-20 of the ’831

patent as anticipated by Zagelmeyer.

03-1092 22
 D. Sanctions

Section 1927, in Title 28 of the United States Code, imposes liability on counsel

for excessive costs, and provides:

Any attorney or other person admitted to conduct cases in any court of the
United States or any Territory thereof who so multiplies the proceedings in
any case unreasonably and vexatiously may be required by the court to
satisfy personally the excess costs, expenses, and attorneys’ fees
reasonably incurred because of such conduct.

28 U.S.C. § 1927 (2000). The Supreme Court has explained that § 1927 “is indifferent

to the equities of a dispute and to the values advanced by the substantive law. It is

concerned only with limiting the abuse of court processes.” Roadway Express, Inc. v.

Piper, 447 U.S. 752, 762 (1980).

Under the law of the Fourth Circuit, the district court’s decision denying sanctions

pursuant to 28 U.S.C. § 1927 is reviewed for an abuse of discretion. Chaudhry, 174

F.3d at 410. “A district court abuses its discretion if its conclusion is guided by

erroneous legal principles, or rests upon a clearly erroneous factual finding.” Westberry

v. Gislaved Gummi AB, 178 F.3d 257, 261 (4th Cir. 1999) (internal citation omitted). An

appellate court “is obligated to review the record and reasons offered by the district

court and to reverse if the court has a definite and firm conviction that the court below

committed a clear error of judgment in the conclusion it reached upon a weighing of the

relevant factors.” Id. (internal quotation marks omitted). “[S]ection 1927 also requires a

finding of counsel’s bad faith as a precondition to the imposition of fees.” Chaudhry,

174 F.3d at 411 n.14 (internal quotation marks omitted). The Fourth Circuit has further

held “as a matter of law that the filing of a single complaint cannot be held to have

multiplied the proceedings unreasonably and vexatiously and therefore that § 1927

03-1092 23
cannot be employed to impose sanctions.” DeBauche v. Trani, 191 F.3d 499, 511-12

(4th Cir. 1999).

TREX’s counsel originally filed four antitrust counterclaims and a supporting brief

in response to Nystrom’s infringement complaint (“the original counterclaims”). TREX

voluntarily dismissed these original counterclaims and then filed a second, amended

antitrust counterclaim (“amended counterclaim”). TREX’s counsel eventually dropped

its original and amended counterclaims. Nystrom sought § 1927 sanctions against

TREX. In light of DeBauche v. Trani, 191 F.3d at 511-12, which held as a matter of law

that the filing of a single complaint cannot multiply the proceedings unreasonably under

§ 1927, the district court limited its inquiry to whether TREX’s filing of the amended

counterclaim was a basis for sanctions in this case.

Nystrom argues that the district court erred in finding that TREX had pled all of

the essential elements of an antitrust counterclaim in its amended counterclaim,

because TREX failed to establish that Nystrom posed a dangerous probability of

success in monopolizing the relevant market for composite decking. Nystrom argues

that when TREX’s counsel filed the amended counterclaim, it “knew as a matter of law”

that Nystrom lacked market power in the composite decking market because TREX’s

counsel knew both that Nystrom was not a participant in that market and that the ’831

patent itself did not create the required market power in that market. Appellant’s Br. at

61-63.

TREX responds that it had ample evidentiary basis for its amended

counterclaims, even though it admits its original counterclaims were flawed. TREX

asserts that when the flaws in its original counterclaims were pointed out, its counsel

03-1092 24
immediately admitted the mistake and amended them. TREX argues that its counsel

did not act in bad faith and that the district court did not abuse its discretion in denying

§ 1927 sanctions.

The district court declined to find that TREX acted in bad faith in alleging that

Nystrom posed a dangerous probability of success in monopolizing the relevant market.

Sanctions Order, slip op. at 7. Although Nystrom asserted to the district court that he

operated solely in the market for milled decking material, TREX asserted that it relied on

several statements by Nystrom during the prosecution of the ’831 patent that he

intended to monopolize both the milled and composite decking material markets. Id. at

6-7. Stating that it lacked sufficient evidence to limit TREX’s supporting evidence to

products only in the milled decking material market, the district court declined to find

bad faith on the part of TREX and award § 1927 sanctions. Id. at 7.

Nystrom fails to establish how the district court’s conclusion that it lacked

sufficient evidence to find TREX acted in bad faith in filing its amended counterclaim

constituted an abuse of discretion. From our review of the statements that TREX relied

upon in its amended counterclaim, it is not clear which market Nystrom was referencing

when he stated in the prosecution history that “licensing negotiations are presently

underway with most major manufacturers and distributors of decking boards,” Prelim.

Amendment at 3, and the “product . . . has the potential of capturing a significant market

share,” Amendment rec’d Sept. 30, 1993, at 5. The district court’s finding that these

statements were not limited just to the milled decking material market was not clearly

erroneous. The district court did not err in declining to find TREX acted in bad faith.

Because there was no legal error or clearly erroneous factual finding underlying the

03-1092 25
district court’s conclusion that Nystrom had failed to present sufficient evidence to justify

the imposition of sanctions, see Westberry, 178 F.3d at 261, the court did not abuse its

discretion in declining to award § 1927 sanctions.

CONCLUSION

Because we affirm the district court’s constructions of “board” and “manufactured

to have,” we affirm the district court’s grant of summary judgment of non-infringement of

claims 1-15 and 18-20. We reverse the district court’s construction of “convex top

surface.” The district court’s summary judgment of invalidity of claims 18-20 of the ’831

patent as anticipated by the Zagelmeyer reference is also reversed. Because the

district court did not abuse its discretion, we affirm the district court’s refusal to award

sanctions under 28 U.S.C. § 1927 in favor of Nystrom. The case is remanded for

further proceedings consistent with this opinion.

AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED

COSTS

No costs.

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