United States Court of Appeals for the Federal Circuit
05-1434, 06-1009
ANDERSEN CORPORATION,
Plaintiff-Appellant,
v.
FIBER COMPOSITES, LLC,
Defendant-Cross Appellant.
Ronald J. Schutz, Robins, Kaplan, Miller & Ciresi L.L.P., of Minneapolis,
Minnesota, argued for plaintiff-appellant. With him on the brief were Becky R. Thorson,
Misti Nelc, and Busola A. Akinwale.
John M. Skenyon, Fish & Richardson P.C., of Boston, Massachusetts, argued for
defendant-cross appellant. With him on the brief was Katherine A. Moerke, of
Minneapolis, Minnesota.
Appealed from: United States District Court for the District of Minnesota
Judge Joan N. Ericksen
United States Court of Appeals for the Federal Circuit
05-1434, 06-1009
ANDERSEN CORPORATION,
Plaintiff-Appellant,
v.
FIBER COMPOSITES, LLC,
Defendant-Cross Appellant.
___________________________
DECIDED: January 26, 2007
___________________________
Before BRYSON and PROST, Circuit Judges, and SARIS, District Judge.∗
BRYSON, Circuit Judge.
Andersen Corporation owns a number of patents relating to composite materials
made from a mixture of polymer and wood fiber, and to structural parts made from those
composite materials. Fiber Composites, LLC, manufactures and sells deck railing and
spindle products (the “Fiberon products”), which are made from a polymer and wood
fiber mixture. Andersen brought this action in the United States District Court for the
District of Minnesota, alleging that the Fiberon products infringe six of its patents.
* Honorable Patti B. Saris, District Judge, United States District Court for the
District of Massachusetts, sitting by designation.
The parties have classified the six asserted patents into two groups. The four
Group I patents cover compositions capable of being extruded into structural members.
The two Group II patents cover the extruded structural members themselves. The
parties agree that the disputed claim terms—“composite composition” for the Group I
patents and “composite structural member” for the Group II patents—have the same
meaning throughout each respective group.
The Fiberon products are made by direct extrusion, a process in which polymer
and wood fibers are mixed and melted in an extruder and then forced through a die to
form a finished structural part. Fiber contends that its products do not infringe any of
the asserted patents because the “composite compositions” of the Group I patents are
limited to compositions in either pellet or linear extrudate form, and because the
“composite structural members” of the Group II patents are limited to members that are
extruded from composites that have previously been extruded into either pellet or linear
extrudate form.
After a hearing, the district court agreed with Fiber that the “composite
compositions” claimed in the Group I patents are limited to materials that have been
extruded to make pellets or the linear extrudate from which pellets can be cut. The
court agreed with Andersen, however, that the “composite structural members” claimed
in the Group II patents constitute any articles that are made from a composite polymer
and wood fiber mixture and have load-bearing capabilities. The court rejected Fiber’s
contention that “composite structural members” are limited to items made from a
composite mixture that has previously been extruded into pellet or linear extrudate form.
05-1434, 06-1009 2
Based on the district court’s construction of the term “composite composition,”
Andersen modified its theory of infringement to allege that its Group I patents are
infringed by Fiber’s “repro,” a substance made from reground rejected railing parts and
used as an ingredient in the manufacturing process. Following discovery, both parties
moved for summary judgment. The district court held that Fiber’s “repro” did not infringe
the Group I patents, but that a subset of the Fiberon products (those with more than
30% wood content) infringed the Group II patents.
At trial, the jury found that (1) the Group II patents are not invalid due to
obviousness, inadequate written description, or lack of enablement, (2) the Group II
patents are not invalid due to anticipation, and (3) Fiber’s infringement of the Group II
patents was not willful. The jury awarded Andersen $46,020 in damages. The district
court denied Andersen’s request for a permanent injunction with regard to the Group II
patents.
I
Andersen challenges the district court’s construction of the term “composite
composition” as used in the Group I patents. In its cross-appeal, Fiber challenges the
court’s construction of the term “composite structural member” as used in the Group II
patents. We agree with the court’s construction of the Group I claims but disagree with
its construction of the Group II claims.
A
Group I comprises four patents, each of which includes claims to a polymer and
wood fiber composition. The patents are: U.S. Patent Nos. 5,827,607 (“the ’607
patent”); 5,932,334 (“the ’334 patent”); 6,015,611 (“the ’611 patent”); and 6,015,612
05-1434, 06-1009 3
(“the ’612 patent”). The four patents each contain claims to compositions in the form of
a pellet, claims to compositions in the form of a linear extrudate, and claims to a
“composite composition” without an explicit form limitation. Andersen concedes that the
Fiberon products do not infringe any of the claims containing explicit pellet or linear
extrudate limitations; thus, only the composite composition claims are at issue in this
case.
A representative example of the asserted claims is claim 19 of the ’334 patent,
which provides as follows:
19. A thermoplastic composite composition, capable of extrusion into a
dimensionally stable structural member, which consists essentially of a
thermoplastic composition which comprises:
(a) a continuous phase comprising a polyvinyl chloride homopolymer;
(b) an effective amount of wood fiber having a minimum width of 0.1 mm
and an aspect ratio of greater than about 1.8 to provide structural
properties to the composite;
(c) about 0.01 to 25 wt % of an intentionally recycled impurity comprising
thermoplastic polymer, an adhesive, a paint, a thermoplastic resin or
mixtures thereof; and
(d) less than about 10 wt % water;
wherein the polyvinyl chloride homopolymer and wood fiber are mixed at
elevated temperature and pressure such that an intimate admixture is
formed and the wood fiber is dispersed throughout the continuous
thermoplastic polyvinyl chloride homopolymer phase and the composite
has a Young's modulus of at least about 600,000 psi.
The relevant claims of the ’607 and ’611 patents similarly claim a “composite
composition, capable of extrusion into a dimensionally stable structural member,” while
the ’612 patent claims a “thermoplastic polymer composite composition capable of
formation into a structural profile or member.” The parties agree that the term
“composite composition” has the same meaning in all four patents.
After considering the claim language, the specification, and the prosecution history,
the district court determined that “composite composition” means “a solid pellet or a
05-1434, 06-1009 4
solid linear extrudate, which may subsequently be remelted and extruded to make a
structural member.” We agree with that construction. While nothing on the face of the
asserted claims states that the term “composite composition” is limited to a mixture that
is in pellet or linear extrudate form, the specifications make clear that the term, as used
in the Group I patents, must be construed to be limited in that manner.
1
The asserted claims all recite that the “composite” or “composite composition”
must have certain properties and be capable of extrusion into a structural profile or
member. The common specification of the four Group I patents, which differs only
slightly from patent to patent, describes how those properties are achieved. The
specification explains that the claimed properties are attributable to the reduction of
water content in the polyvinyl chloride and wood fiber composition and the “intimate
mixing” of the components. The required “intimate mixture” is achieved, according to
the specification, “by extrusion of the polyvinyl chloride and wood fiber composite
through an extrusion die resulting in a linear extrudate that can be cut into a pellet
shape.” ’607 patent, col. 4, ll. 45-47; ’334 patent, col. 5, ll. 6-8; ’611 patent, col. 4, ll. 38-
40; ’612 patent, col. 4, ll. 39-41. As the specification explains:
During the pelletizing process for the composite pellet, the polyvinyl
chloride and wood fiber are intimately contacted at high temperatures and
pressures to insure that the wood fiber and polymeric material are wetted,
mixed, and extruded in a form such that the polymer material, on a
microscopic basis, coats and flows into the pores, cavity, etc., of the
fibers. The fibers are preferably substantially oriented by the extrusion
process in the extrusion direction.
’607 patent, col. 3, ll. 54-61; ’334 patent, col. 4, ll. 15-22; ’611 patent, col. 3, ll. 47-54;
’612 patent, col. 3, ll. 49-56. The composition, which is in pellet or linear extrudate form,
05-1434, 06-1009 5
is then remelted and re-extruded to produce the desired structural members. The
specification explains that in the manufacturing process,
[T]he successful manufacture of structural members for windows and
doors requires the preliminary manufacture of the polyvinyl chloride wood
fiber composite in the form of a pellet wherein the materials are intimately
mixed and contacted in forming the pellet prior to the extrusion of the
members from the pellet material. We have found that the intimate mixing
of the polyvinyl chloride, wood fiber, and waste in the manufacture of the
pellet process with associated control of moisture content produces a
pelletized product that is uniquely adapted to the extrusion manufacture of
PVC/wood fiber components and achieves the manufacture of a useful
wood replacement product.
’607 patent, col. 3, ll. 1-13; ’334 patent, col. 3, ll. 30-42; ’611 patent, col. 2, line 62,
through col. 3, line 7; ’612 patent, col. 2, line 65, through col. 3, line 10. Although the
specification generally refers to the process of pelletization and the use of pellets in the
later extrusion step, it makes clear that the formation of pellets is convenient but not
necessary, and that the linear extrudate from which the pellets are normally cut can be
used without pelletization in the later extrusion step. See ’334 patent, col. 1, ll. 40-43
(“Alternatively, the extruded thermoplastic mass, in the form of a [sic] elongated linear
extrudate without a pelletizing step, can be immediately directed after formation into an
extruder or injection molding apparatus.”); ’612 patent, abstract (same).1
1
Andersen argues that the statement that a pelletizing step is not required
proves that the patent is directed to a composite composition unlimited to any particular
form. A fair reading of that passage, however, indicates that it merely refers to the
possibility of re-extruding the linear extrudate without first cutting it into pellets.
Moreover, the quoted material supports the district court’s claim construction by
emphasizing that the thermoplastic mass must be extruded in pellet or linear extrudate
form, thus implicitly excluding all other forms. The same answer applies to Andersen’s
argument based on the reference in the specification to “the composition material or
pellet,” ’607 patent, col. 6, line 27; ’612 patent, col. 6, line 33, and to the pellet form as
“preferred,” ’607 patent, col. 2, line 55. In context, it is clear those statements simply
05-1434, 06-1009 6
Contrary to Andersen’s contention, the district court’s construction of the Group I
claims as limited to compositions in pellet or linear extrudate form does not
impermissibly limit the invention to particular embodiments. The district court did not
construe the Group I claims to be limited to “composite compositions” in the pellet and
linear extrudate forms on the ground that those are the only disclosed embodiments.
Rather, the court construed the claims in that way because the patents use the term
“composite composition” restrictively and state that the step of extruding the composite
in pellet or linear extrudate form is “require[d]” in order for the composite composition to
be capable of extrusion into a structural member having the claimed physical properties.
The Group I common specification repeatedly states that the steps of linear
extrusion or pelletization are not merely embodiments, but are essential features of the
claimed composite composition. For example, the specification of the ’334 patent states
that “[t]he invention relates to a composition comprising a polymer and wood fiber
composite that can be used in the form of a linear extrudate or thermoplastic pellet to
manufacture structural members.” ’334 patent, col. 1, ll. 10-13; see also ’607 patent,
abstract (“The composite can be used in the form of a linear extrudate or a
thermoplastic pellet to manufacture structural members.”); ’612 patent, abstract (same);
’611 patent, abstract (“A composition in the form of pellets comprising a thermoplastic
and wood fiber composite material suitable for forming structural members as a
replacement for wood in the manufacture of doors and windows.”). The invention,
according to the specifications, “relates to the use of polyvinyl chloride and wood fiber
reflect that the extruded composite composition may be in either pellet or linear
extrudate form.
05-1434, 06-1009 7
composite materials with a controlled water content in the form of a pelletized material
wherein the wood fiber is intimately contacted and wetted by the organic materials.”
’607 patent, col. 3, ll. 18-23; ’611 patent, col. 3, ll. 11-15; ’612 patent, col. 3, ll. 14-18.
The portions of the specification that describe how the physical properties of the
claimed composite composition are obtained make clear that the formation of linear
extrudates or pellets is not merely a preferred embodiment, but is a critical element in
the process that produces those properties. See ’607 patent, col. 3, ll. 1-7 (“[T]he
successful manufacture of structural members for windows and doors requires the
preliminary manufacture of the polyvinyl chloride wood fiber composite in the form of a
pellet wherein the materials are intimately mixed and contacted in forming the pellet
prior to the extrusion of the members from the pellet material.”) (emphasis added); ’334
patent, col. 3, ll. 30-36 (same); ’611 patent, col. 2, line 62, through col. 3, line 1 (same);
’612 patent, col. 2, line 65, through col. 3, line 4 (same). Those statements are not
descriptions of particular embodiments, but are characterizations directed to the
invention as a whole. As such, they make clear that the term “composite composition,”
as used in the Group I patents, does not encompass broader subject matter. See
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (“[T]he
specification may reveal a special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess.”); Microsoft Corp. v. Multi-Tech.
Sys., Inc., 357 F.3d 1340, 1348 (Fed. Cir. 2004) (statements in common specification
serve to limit claim language because they “are not limited to describing a preferred
embodiment, but more broadly describe the overall inventions of all three patents”);
Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1370 (Fed. Cir. 2003) (“[T]his court
05-1434, 06-1009 8
looks to whether the specification refers to a limitation only as a part of less than all
possible embodiments or whether the specification read as a whole suggests that the
very character of the invention requires the limitation be a part of every embodiment.”).
Andersen argues that the Group I specification cannot be read to require that the
composite composition be extruded in linear extrudate or pellet form, because on
several occasions the specification refers to the invention as a “composite material,”
without adding any reference to the linear extrudate or pellet form. See, e.g., ’612
patent, col. 1, ll. 14-29. That argument is unpersuasive, however, as the term
“composite material” is just a synonym for “composite composition,” and the use of that
alternative term in the “Field of the Invention” portion of the specification is not
inconsistent with the restrictive definition provided in the body of the specification where
the invention is described in more detail.
2
The district court’s claim construction finds additional support in the prosecution
history. The Group I patents all stem from continuations based on U.S. Patent
Application Serial No. 07/938,364 (“the ’364 application”). The prosecution history of
that parent application is highly instructive in light of the similarity between the claims of
the application and those of the patents in suit. See Masco Corp. v. United States, 303
F.3d 1316, 1324 (Fed. Cir. 2004) (prosecution history of a parent application “may be
considered in construing claim terms”); Biovail Corp. v. Andrx Pharms., Inc., 239 F.3d
1297, 1301 (Fed. Cir. 2001) (claim language “must be read consistently with the totality
of the patent’s applicable prosecution history,” including parent applications); see also
Microsoft Corp., 357 F.3d at 1349; Elkay Mfg. Co. v. EDCO Mfg. Co., 192 F.3d 973, 980
05-1434, 06-1009 9
(Fed. Cir. 1999) (“When multiple patents derive from the same initial application, the
prosecution history regarding a claim limitation in any patent that has issued applies
with equal force to subsequently issued patents that contain the same limitation.”).
The ’364 application contained all three types of claims (pellet form, linear
extrudate form, and “composite composition” form), and the language of the application
claims is nearly identical to the language of the claims that eventually issued in the
Group I patents. Responding to the examiner’s rejection of all three types of claims, the
applicants repeatedly distinguished the invention from the prior art by referring to the
pellet form or the pelletization process as an essential part of the invention. For
example, the applicants distinguished two prior art references by relying heavily on the
role of pelletization in the claimed invention:
The invention resides in part in a thermoplastic composite pellet.
The invention also resides in a vinyl chloride polymer and wood fiber
composite material, with a controlled water content, in the form of a
thermoplastic pellet, wherein the wood fiber is intimately contacted and
wetted by the thermoplastic polymer. The moisture control combined with
the intimate contact and wetting between the components in the pelletizing
process and other pellet characteristics ensures high quality physical
properties in the extruded composite material after manufacture. . . .
Applicant’s invention comprises a pellet . . . . [N]either reference teaches
a pellet material.
The applicants further distinguished one of the two cited references by noting that it
“does not teach the pelletizing of the composite material,” while the claimed invention
“first pelletizes the thermoplastic composite material, and then, manufacturers [sic] a
structural member from the pelleted materials by melting and extruding the composite.
Thus, [the reference] does not teach or suggest the manufacture or composition of the
thermoplastic pellet materials of the Applicant’s invention.”
05-1434, 06-1009 10
The applicants subsequently filed a continuation application, U.S. Patent
Application Serial No. 08/224,396 (“the ’396 application”), which is also common to all
four Group I patents. Again, responding to a rejection of all three types of claims, the
applicants distinguished their invention by stating (emphasis added):
[N]one of [the cited] prior art teaches the manufacture of a pellet
intermediate between mixing the polyvinyl chloride and wood fiber and the
final manufacture of a finished composite member. The manufacture of
the pellet intermediate in this process, provides the opportunity to obtain
an intimate mixing of a thermoplastic and fiber. The manufacture of the
pellet is important in obtaining the final structural properties of the
composite member. . . . Applicants assert that the combination of the
selection of polyvinyl chloride, the critical selection of particle size and
aspect ratio, the water content and preparation of the pellet by ensuring
that the polymer wets and penetrates the fiber and the fiber pores, results
in a structural material with mechanical properties significantly superior to
the prior art materials.
Throughout the prosecution of the Group I patents, the applicants continued to
distinguish the claimed inventions from prior art references in the same manner. Thus,
in the prosecutions leading to the patents at issue in this case, the applicants variously
characterized their invention (including claims that referred only to the composition), by
stating that the invention consists of “a resin and fiber composite thermoplastic pellet,”
that the invention “resides in a material that is a thermoplastic pellet,” that the “recited
invention is a composite thermoplastic pellet,” and that the “manufacture of the pellet is
important in obtaining the final structural properties of the composite member.”
Those statements serve to limit the scope of the applicants’ claimed subject
matter. The statements about pelletizing were global—they applied to all the claims of
the patent—and thus they served to limit all the claims.
05-1434, 06-1009 11
3
Andersen challenges the district court’s form-limited claim construction of the
Group I claims on several additional grounds. First, Andersen argues that the court’s
construction violates the doctrine of claim differentiation. That doctrine is based on “the
common sense notion that different words or phrases used in separate claims are
presumed to indicate that the claims have different meanings and scope.” Karlin Tech.
Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed. Cir. 1999). “To the extent
that the absence of such difference in meaning and scope would make a claim
superfluous, the doctrine of claim differentiation states the presumption that the
difference between claims is significant.” Tandon Corp. v. U.S. Int’l Trade Comm’n, 831
F.2d 1017, 1023 (Fed. Cir. 1987).
Andersen argues that because the Group I patents claim pellets, linear
extrudates, and composites (or composite compositions), the third category must be
assumed to be different from the first two, and thus the composite composition claims
must not be limited to pellets and linear extrudates. That inference would be a plausible
one in the absence of evidence to the contrary, but here there is powerful evidence to
the contrary, as we have discussed. In such cases, we have held that “the written
description and prosecution history overcome any presumption arising from the doctrine
of claim differentiation.” Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d 1362, 1368
(Fed. Cir. 2000); see also Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1480 (Fed. Cir. 1998) (“[T]he doctrine of claim differentiation can not broaden claims
beyond their correct scope, determined in light of the specification and the prosecution
05-1434, 06-1009 12
history and any relevant extrinsic evidence. . . . [C]laims that are written in different
words may ultimately cover substantially the same subject matter.”).
A further reason for not applying the doctrine of claim differentiation in this case
is that the Group I claims are not otherwise identical but for the references to pellets,
linear extrudates, and composite compositions, and thus the district court’s construction
does not make the composite composition claims redundant. Instead, there are
numerous other differences varying the scope of the claimed subject matter. For
example, in the ’611, ’607, and ’334 patents, the pellet and linear extrudate claims all
require that the composition consist of “less than about 8 wt % water,” while the
composite composition claims require “less than about 10 wt % water.” The
composition claims also include an additional limitation with regard to the amount of the
impurities in the mixture, a limitation that is not found in the pellet and linear extrudate
claims. Moreover, although Andersen argues that the district court’s claim construction
would render the ’612 patent superfluous, that is not so, as the composite composition
claims of each of the other Group I patents contain limitations not found in the ’612
patent claims.
Even though the “composite composition” claims, as construed by the district
court, cover substantially the same subject matter that is covered by the “pellet” and
“linear extrudate” claims, overlapping patent claims are not unusual, and the overlap
does not require us to construe the “composite composition” claims to cover subject
matter that differs from the subject matter covered by the other two sets of claims.
Under these circumstances, the doctrine of claim differentiation does not require
rejection of the district court’s construction of the claims.
05-1434, 06-1009 13
Andersen also argues that the district court’s claim construction is contrary to a
1996 restriction requirement issued with respect to the application that led to the ’607
patent, in which the patent examiner found the “pellet and composite” claims to be
patentably distinct from the “composition” claims. That distinction, which was based on
the examiner’s perception that the two groups of claims “are related as mutually
exclusive species in intermediate-final product relationship,” is not one that is pressed
by Andersen, and it is unclear how the difference between “composite” and
“composition,” even if one could be discerned, furthers Andersen’s argument. The
argument based on the restriction requirement therefore does not support Andersen’s
position.
In sum, a review of the text and the prosecution history of the Group I patents
leads us to agree with the district court that the “composite compositions” of those
patents must be in the form of either pellets or the linear extrudate from which pellets
may be cut.
B
The two Group II patents are U.S. Patent Nos. 5,486,533 (“the ’553 patent”) and
5,539,027 (“the ’027 patent”). While the Group I patents claim intermediate composites
capable of being extruded into structural members, the Group II patents claim the
extruded structural members themselves. As with the Group I patents, the parties
agree that the disputed term (in this case, “composite structural member”) has the same
meaning in both Group II patents. A representative claim is claim 1 from the ’027
patent:
1. A wood-thermoplastic polymer composite structural member,
suitable for use as a replacement for a wood structural member, which
05-1434, 06-1009 14
thermoplastic composite structural member comprises an extrudate
having a Youngs modulus of greater than 500,000, and a coefficient of
thermal expansion less than 3x10-5 in/in-° F. and which composite
member comprises a continuous organic phase comprising polyvinyl
chloride and, dispersed in the continuous phase, 30-50 wt-% of a wood
fiber having an aspect ratio of at least about 2 to provide structural
properties to the composite.
Fiber urged the district court to construe the term “composite structural member”
consistently with the term “composite composition” in the Group I patent claims, to
mean an extrudate made from a composite composition that is first formed into a solid
pellet or a linear extrudate from which the pellet can be made, and is then re-extruded
to form the member. The district court disagreed. The court concluded that the Group
II patents are limited to a product, not a product made by a particular process, and that
the specification and prosecution history of the Group II patents do not limit the claims in
the manner urged by Fiber. Accordingly, the court construed the term “composite
structural member” as “a polymer and wood article having load bearing capacity, which
can be obtained through a direct extrusion process or made from a composite material
without a particular form.”
As the district court correctly noted, the Group II claims do not contain an explicit
process-based limitation. We therefore look to the specification and the prosecution
history of the Group II patents to determine whether the claim language should be
construed as containing any such limitation, as Fiber contends.
1
The common specification of the two Group II patents incorporates much of the
same material that is found in the common specification of the Group I patents. Like the
Group I specification, the Group II specification refers to pelletization as part of the
05-1434, 06-1009 15
process of making the composite composition from which the claimed composite
structural members are constructed. Andersen asserts that nothing in the specification
indicates that the structural members are defined by reference to the process by which
they are made, but a close reading of the specification suggests otherwise.2
According to Andersen, the novelty of the inventions of the Group II patents lies
in the physical properties of those inventions. The specification, however, indicates that
the claimed physical properties of the composite structural members are attributable to
the process that is used to make them, a process that includes pelletization.
As an initial matter, the specification states that
the successful manufacture and physical properties of the polyvinyl
chloride/wood fiber composite requires intimate mixing and intimate
contact between the polymeric material and the fiber. During the mixing of
the polymer with wood fiber, the product attains control over moisture
content, fiber alignment and materials proportions that achieves the
manufacture of the superior wood replacement composite.
’553 patent, col. 2, ll. 59-67; ’027 patent, col. 3, ll. 3-11. The specification then states
that the “primary requirement” for the thermoplastic composite material is that it “retain
sufficient thermoplastic properties to permit melt blending with wood fiber, permit
2
Andersen’s first argument with respect to the Group II claims is that Fiber
waived its right to challenge the construction of those claims because it did not object to
the trial court’s jury instructions on that ground. There is no merit to that contention.
The district court had previously granted summary judgment of infringement as to the
Group II claims based on a claim construction that Fiber vigorously contested.
Accordingly, the trial proceedings as to the Group II claims were limited to the issues of
willful infringement and validity. The district court’s claim construction was therefore law
of the case for purposes of the trial. Because Fiber’s position at trial was that the Group
II claims were invalid if construed according to the district court’s construction, it would
have been pointless (and futile) for Fiber’s counsel to remind the district court at trial
that Fiber adhered to its position that the court’s construction of the Group II claims was
incorrect and that summary judgment should not have been granted to Andersen on
those claims.
05-1434, 06-1009 16
formation of pellets, and to permit the composition material or pellet to be extruded or
injection molded in a thermoplastic process forming the rigid structural member.” ’027
patent, col. 4, ll. 1-7; ’553 patent, col. 4, ll. 1-7.
Referring to the process of “composition and pellet manufacture,” the
specification states that “[i]n the manufacture of the composition and pellet of the
invention, the manufacture and procedure requires two important steps. A first blending
step and a second pelletizing step.” ’553 patent, col. 5, ll. 63-67; ’027 patent, col. 5, ll.
64-67. Those steps, according to the specification, are necessary to obtain the
“intimate mixing” that the specification identifies as critical to the strength of the
composite and, ultimately, the claimed structural members. See ’553 patent, col. 6, ll.
1-22; ’027 patent, col. 6, ll. 1-22. In the pelletizing step, the specification explains, the
blended materials are introduced into an extruder that has orifices and a cross-sectional
shape “leading to the production of a regular pellet,” and a rotational knife that results
“in the desired pellet length.” ’553 patent, col. 7, ll. 7-13; ’027 patent, col. 7, ll. 7-13.
The “pellet materials of the invention” are then “introduced into an extruder and
extruded into the structural members of the invention.” ’553 patent, col. 7, ll. 14-16; ’027
patent, col. 7, ll. 14-16.
Andersen contends, and the district court ruled, that the specification describes a
preferred embodiment of the materials used to make the structural members, not an
essential step in the manufacture of the structural members claimed in the Group II
inventions. The specification, 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. And the
05-1434, 06-1009 17
specification attributes the “superior properties of the structural members” largely to “the
nature of the pellet set forth [in a table listing ‘pelletizer results’].” ’553 patent, col. 10, ll.
31-34; ’027 patent, col. 10, ll. 26-29. The specification continues:
We believe the Table clearly shows that the polyvinyl chloride and wood
fiber can be combined at various proportions under a variety of
temperature conditions to produce a regular pellet. The pellet then can be
used in further extrusion processes to form a useful extruded structural
member useful in the manufacture of environmentally sensitive windows
and doors.
’553 patent, col. 10, ll. 35-42; ’027 patent, col. 10, ll. 30-37. Although the specification
refers to the properties of the “preferred pellet of the invention” described in the table of
pelletizer results, ’553 patent, col. 9, ll. 44-45; ’027 patent, col. 9, ll. 39-40, the same
language is used in the Group I specification to describe the same results. We interpret
the language the same way in both specifications—as a reference to the types of pellets
having the most advantageous properties, not as a statement that the pelletizing step is
merely a preferred method of producing the composite composition. Like the Group I
specification, the Group II specification thus supports Fiber’s contention that the
pelletizing step is not just one possible method of manufacturing the products claimed in
the Group II patents, but is an essential step in the process and thus a necessary
limitation of the claims.
It is true that we have warned against importing limitations from the specification
into the claims absent a clear disclaimer of claim scope. See Gillette Co. v. Energizer
Holdings, Inc., 405 F.3d 1367, 1375 (Fed. Cir. 2005). We have also recognized the
difficulty faced by district courts in trying to walk that tightrope. See Phillips, 415 F.3d at
1323 (“the distinction between using the specification to interpret the meaning of a claim
and importing limitations from the specification into the claim can be a difficult one to
05-1434, 06-1009 18
apply in practice”). Here, if the only intrinsic evidence of restriction were derived from
the specification, the issue of claim construction would be a close one because the
common specification of the Group II patents does not define and limit the invention as
explicitly as does the specification of the Group I patents. However, we conclude that
the prosecution history of the Group II patents definitively resolves the question with a
clear disavowal and confirms the role of pelletization in the production of the claimed
structural members.
2
During the prosecution of the application that ultimately led to the issuance of the
two Group II patents, the examiner rejected claims akin to the Group II claims based on
several prior art references. In response to the examiner’s citation of a method patent
to Miani, the applicants agued that the composite of Miani is “directly extruded and kept
hot during the entire operation. Post extrusion milling is also required to obtain a final
useful shape. This type of composite is not the composite taught in the present
invention.” In contrast, the applicants stated, “the presently claimed composite is
prepared by mixing the melted polymer and wood pulp, forming pelletized material,
cooled, then extruded. This affords a smooth structural member without any evidence
of polyvinyl chloride degradation.”
That statement clearly identifies “the presently claimed composite,” i.e., the
composite that is used to make the claimed structural members, as being prepared
through a process that includes “forming pelletized material.” By distinguishing Miani in
that manner, the applicants clearly disclaimed structural members made through a
direct extrusion process. See N. Am. Container v. Plastipak Packaging, Inc., 415 F.3d
05-1434, 06-1009 19
1335, 1345 (Fed. Cir. 2005) (to overcome an obviousness rejection, applicant
distinguished his invention based on prior art disclosing “slightly concave” inner walls;
the “inescapable consequence of such an argument is that the scope of applicant’s
claims cannot cover inner walls that are ‘slightly concave’”); Seachange Int’l, Inc. v. C-
Cor Inc., 413 F.3d 1361, 1373 (Fed. Cir. 2005) (“Where an applicant argues that a claim
possesses a feature that the prior art does not possess in order to overcome a prior art
rejection, the argument may serve to narrow the scope of otherwise broad claim
language.”); Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1325 (Fed. Cir. 2002) (“Explicit
arguments made during prosecution to overcome prior art can lead to narrow claim
interpretations . . . .”). The prosecution history thus provides strong support for Fiber’s
argument that the Group II patent claims should be narrowly construed as limited to
products made by the process described in the specification, rather than covering all
composite structural members, regardless of the process by which they were produced.
Andersen has not offered a plausible explanation for the applicants’ statement
consistent with a claim construction that does not require pelletization. In its brief,
Andersen argues that the quoted portion of the prosecution history does not constitute a
disclaimer of claim scope because the applicants distinguished the Miani reference on
other grounds as well. While it is true that the applicants invoked several grounds for
distinguishing Miani, that does not undercut the force of the applicants’ statement that,
unlike the composite of Miani, the composite used to make the applicants’ claimed
structural members is made from a process that includes a pelletization step.
An applicant’s invocation of multiple grounds for distinguishing a prior art
reference does not immunize each of them from being used to construe the claim
05-1434, 06-1009 20
language. Rather, as we have made clear, an applicant’s argument that a prior art
reference is distinguishable on a particular ground can serve as a disclaimer of claim
scope even if the applicant distinguishes the reference on other grounds as well. See
Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998) (“While it is
true that the applicants went on to specifically distinguish each claim, or group of claims
. . . from [the prior art reference] on more narrow grounds, that does not eliminate global
comments made to distinguish the applicants’ ‘claimed invention’ from the prior art.”);
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1477 n.* (Fed. Cir. 1998) (when
applicant distinguishes a reference on multiple grounds, “any of those grounds may
indicate the proper construction of particular claim terms”).
At oral argument, Andersen responded to questions about that portion of the
prosecution history by focusing on an amendment made to the claims after the
examiner cited Miani. In that amendment, the applicants added the words “having an
aspect ratio of at least about 2” to the pertinent claims. Andersen’s argument based on
the amendment, however, is unpersuasive. The applicants invoked the new language
to distinguish two other prior art references cited by the examiner, patents to Fujita and
Hopperdietzel (“Fujita teaches a mixture of a polyvinyl chloride and wood flour not a
fiber with an aspect ratio as claimed”; the wood fibers of the invention “commonly have
an aspect ratio of at least about 2, much larger than the Hopperdietzel fibers”). The
applicants never invoked the “aspect ratio” amendment to distinguish Miani, but relied
on the process distinction, including the pelletization step, to distinguish that reference.
05-1434, 06-1009 21
3
A further reason for construing the Group II patents narrowly is that the two
groups of patents trace their origins to closely parallel applications filed on the same day
in 1992. One of the applications was to an “Advanced Polymer Wood Composite,”
while the other was to “Advanced Polymer/Wood Composite Structural Members.” A
comparison of the two applications makes clear that the composite referenced in each
application was the same. While it is, of course, possible for applications that begin life
as siblings to follow different courses as a result of later events such as amendments
and disclaimers, there is no evidence of any such events in this instance that would
suggest giving the two sets of claims a strikingly different scope. To the contrary, the
Group I specification makes it clear that the claimed composite composition would be
“used in the form of a linear extrudate or thermoplastic pellet to manufacture structural
members,” ’607 patent, abstract, i.e., the structural members claimed in the Group II
patents. As noted above, the Group I specification states that the “successful
manufacture” of those structural members “requires the preliminary manufacture of the
polyvinyl chloride wood fiber composite in the form of a pellet.” Id., col. 3, ll. 1-4.
Moreover, the portions of the two specifications that deal with the manufacture of the
pelletized composite that is used to make the structural members are identical. Read
together, the specifications thus make clear that the inventors regarded the pelletization
process as an essential step in producing the ultimate products—the structural
members that were claimed in the Group II patents.
It is generally true, as Andersen argues, that product claims are not limited to the
methods of manufacture disclosed in the specification and that “[t]he method of
05-1434, 06-1009 22
manufacture, even when cited as advantageous, does not of itself convert product
claims into claims limited to a particular process. . . . A novel product that meets the
criteria of patentability is not limited to the process by which it was made.” Vanguard
Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372-73 (Fed. Cir. 2000).
However, 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. For
example, in Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir.
1995), this court held that a claim to a sputter-deposited dielectric layer had to be read
as limited to a dielectric prepared by a particular process. Because the prosecution
history demonstrated that the applicant had defined its invention restrictively, as limited
to a dielectric layer prepared by a one-step process, the court held that the claim
language, even though reciting a product, had to be interpreted as excluding a sputter-
deposited dielectric layer formed by a two-step process. Id. at 1576. In like manner, we
construe the asserted claims of the Group II patents to be limited to a composite
structural member in which the preparation of the composite composition includes an
intermediate step of pelletization or linear extrusion. We therefore reverse the summary
judgment of infringement of the Group II patents. Because we reverse as to
infringement of the Group II patents, we do not address Andersen’s arguments that the
infringement of those patents should have been held to be willful, and that the district
court should have issued an injunction against further infringement of the Group II
claims.
05-1434, 06-1009 23
II
After the district court issued its construction of “composite composition” as
excluding structural members, Andersen modified its theory of infringement to allege
that Fiber’s “repro”—rejected railing parts that are used as an ingredient in the
manufacture of new parts—infringed the Group I patents. There was some confusion
as to whether repro referred to the rejected railing parts themselves or to the substance
made by regrinding those rejected parts. Ultimately, however, the district court
concluded that it did not matter, as neither satisfied the definition of “composite
composition” as limited to pellets or linear extrudates.
Andersen now argues that, even under the district court’s claim construction, the
repro infringes the Group I patents. We disagree. Based on the evidence before it at
the summary judgment proceedings, the district court properly ruled as a matter of law
that repro is neither a pellet nor a linear extrudate.
Fiber’s expert asserted that repro was either “small chunks” or “granular
material,” while Andersen’s expert stated that it was “chip-like” or “pellet-like.” The
district court concluded that no rational trier of fact could find that repro is linear, a term
that the court defined as “following a straight course,” or “being or going in a straight
direction.” The court therefore granted summary judgment of noninfringement.
Andersen concedes that repro does not consist of pellets. Instead, it contends
that repro is in the form of a linear extrudate. It bases that argument principally on the
statement of its expert that repro is “linear.” The expert’s opinion on that issue,
however, was based on his conclusion that repro could be regarded as “linear” because
it “has a length to it.” Yet that definition is plainly overbroad, as every physical object
05-1434, 06-1009 24
has some “length.” Andersen’s reliance on a single statement by Fiber’s expert that
repro is “linear” is similarly flawed. From the context of that statement, it is clear that
Fiber’s expert was referring to Andersen’s idiosyncratic definition of “linear,” which bears
no relation to the meaning of “linear extrudate” as used in the claims. Using Andersen’s
definition, the expert acknowledged that repro could be regarded as linear because it
“has some length.” Under the narrower definition of “linear” that the trial court adopted,
and with which we agree, the court properly concluded that a jury could not find that
repro is a linear extrudate. We therefore uphold the court’s entry of summary judgment
of noninfringement on the Group I patent claims.
III
At trial, the jury found by special verdict that the Group II patents are not invalid
for failure to comply with the written description and enablement requirements. On
cross-appeal, Fiber argues that the district court improperly denied its motions for JMOL
on those issues. Fiber’s arguments fall short of satisfying the heavy burden required to
overturn the jury’s verdicts. See, e.g., Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d
1352, 1364 (Fed. Cir. 2003).
The Group II patents claim structural members with a particular level of tensile
strength—a Young’s modulus rating of greater than 500,000 (in the case of claim 22 of
the ’553 patent, greater than 750,000). Michael Deaner, one of the inventors, testified
at trial that in the experiments leading up to the invention, the inventors did not obtain
results with a modulus value of greater than 1.2 million. Fiber thus argues that, without
that upper limit, the patents necessarily cover more than they enable and more than the
inventors actually invented. Fiber makes essentially the same argument with regard to
05-1434, 06-1009 25
the coefficient of thermal expansion, although with respect to that limitation, the patents
recite an upper limit but not a lower limit.
That assertion is contrary to our case law. As we have said,
[o]pen-ended claims are not inherently improper; as for all claims their
appropriateness depends on the particular facts of the invention, the
disclosure, and the prior art. They may be supported if there is an
inherent, albeit not precisely known, upper limit and the specification
enables one of skill in the art to approach that limit.
Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1572 (Fed. Cir.
1991). Mr. Deaner testified that a person of skill in the art would recognize that the
upper limit of the Young’s modulus of the structural member would lie somewhere
between the Young’s modulus of the wood fiber and that of the polymer used in the
composition, and that a person of skill in the art would be fully enabled to practice the
invention based on the specification’s disclosure. The jury was free to credit that
testimony in reaching its conclusion that the invention was adequately described and
enabled. We therefore uphold the jury’s verdicts on the issues of enablement and
written description.3
In summary, we affirm the judgment of the district court in all respects except
with regard to the infringement of the Group II patents. As to that issue, we reverse the
grant of summary judgment of infringement and remand to the district court for any
further proceedings that may be necessary.
Each party shall bear its own costs for this appeal and cross-appeal.
3
As part of its cross-appeal, Fiber argues that if the district court’s construction
of the Group II patent claims is correct, those claims are anticipated. Because we have
reversed the district court’s construction of those claims, we do not address that aspect
of Fiber’s cross-appeal, which Fiber characterizes as conditional.
05-1434, 06-1009 26
AFFIRMED IN PART, REVERSED IN PART, and REMANDED.
05-1434, 06-1009 27
Andersen Corp. v. Fiber Composites, LLC
Court: Court of Appeals for the Federal Circuit
Date filed: 2007-01-26
Citations: 474 F.3d 1361
Copy CitationsCombined Opinion