CPLRG™ 0049 - Suitco Surface, Inc., In re - Apr. 14, 2010

Suitco Surface, Inc., In re, 603 F.3d 1255 (Fed. Cir. 2010) (RADER, Prost & Moore)SuitcoSurface04142010

MAJOR ISSUES: PTO reexamination; broadest reasonable construction of claims; construction not reasonable; PTO findings on reference disclosure

COMMENT.  In a PTO reexamination of a patent’s claims, the PTO, with the blessing of the Federal Circuit, applies the same “broadest reasonable construction” rule that applies during an original examination.  This could be questioned.  The rationale for the BRC rule is that an applicant can, in response to a PTO rejection based on a broad construction, amend a claim to clarify and narrow its scope.  That is in the public interest.  In a reexamination of a patent, unlike in an original examination of an application, amending a claim can have harsh consequences for the patent owner.  Specifically, the patent owner can collect no damages for infringement predating a reexamination confirmation of an amended claim, even though, but for the amendment of the claim, and applying the usual claim construction rules, the unamended claim in the original claim would have been held by a court to be valid and infringed.

1. SUMMARY.  In reexamination, the PTO rejected a patent’s claims as anticipated by prior art references.  Substantial evidence supported the PTO’s determination that the reference met one claim limitation.  However, the PTO’s construction of another limitation was unreasonable, necessitating a remand “with instructions to conduct a new invalidity analysis using the appropriate construction.”

2. FLOOR FINISHING MATERIAL FOR ATHLETIC SURFACES.   A patent concerned a floor finishing material for athletic surfaces and the like.  U.S. Pat. 4,944,514. USPatNo4944514  The material comprised a thin plastic sheet placed over a floor surface with an adhesive layer.  The patent taught that markings could be applied to the undersurface before applying the finishing sheet.  The patent’s claims recited, inter alia, “an improved material for finishing the top surface of the floor” and “a uniform flexible film.”

3. PATENT TWICE BEFORE FEDERAL CIRCUIT.  The patent had been twice previously before the Federal Circuit in a district court infringement suit by the patent owner’s exclusive licensee, Middleton, against an accused infringer 3M
     a. First, the district court granted summary judgment of no infringement based on its construction of “material for finishing” as requiring a material that makes the underlying floor surface more durable.  The Federal Circuit reversed, giving “material for finishing” its ordinary broad meaning, which included no special properties such as durability.  Middleton, Inc. v. Minn. Mining & Mfg. Co., 217 F.3d 860 (Fed. Cir. 1999).
     b. Second, on remand, the district court again granted summary judgment of no infringement, this time based on its construction of the “uniform flexible film” limitation as requiring uniform thickness.  The accused film was made intentionally with an uneven thickness.  Again, the Federal Circuit reversed, construing “uniform flexible film” as including the same textured surface as well as a uniform thickness.  Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1389 (Fed. Cir. 2002).

4. REEXAMINATION.  In 2004, the accused infringer, 3M, requested reexamination, which the PTO granted.
     a.  The infringement suit was transferred from Illinois to the Southern Iowa district court, which stayed the case pending the reexamination.
     b. PRIOR ART. The reexamination request cited references not previously reviewed.
          i. The Amos reference disclosed a “clean room” floor for hospitals.  It comprised multiple layers of plastic sheets connected by adhesive layers.  Upon installation, a top plastic layer was removed, exposing an adhesive layer that removes dirt from incoming shoes or wheels. When the exposed adhesive became too dirty, the next plastic sheet was peeled off, exposing a new adhesive layer.  The reference indicated that the plastic sheets should be very thin.
          ii. The Barrett reference disclosed a cover sheet to protect a floor during construction.  It compared “a clear plastic film connected to a floor with an adhesive layer.”
          iii. A PTO examiner and the PTO Board rejected the patent’s claims based on the references.
          iv. The patent owner appealed, arguing that PTO erred by (1) misconstruing “material for finishing the top surface of the floor,” and (2) finding that the references taught the “uniform” limitation.

5.  The PTO construed the phrase “material for finishing the top surface of the floor” as meaning “a material that is structurally suitable for placement on the top surface of a floor.”  The Federal disagreed, holding that this construction was not reasonable because it encompassed immediate layers that were not on top.
     a. EXPRESS LANGUAGE.  The claims’ express language required that the material be for “finishing” the “top.”  In “any meaningful sense” of the words “top” and “finishing”, the material must be the final treatment of a surface, not an “intermediate, temporary, or transitional layer.”
     b. WAS PTO BOUND BY FEDERAL CIRCUIT’S PRIOR CONSTRUCTION OF “MATERIAL FOR FINISHING”?  Whether the PTO was bound by the Federal Circuit’s earlier construction of “material for finishing” in the infringement suit need not be addressed.

6.  The PTO finding that the prior art references met the “uniform flexible film” limitation was supported by substantial evidence.
     a. The PTO construed “uniform flexible film” to mean same thickness throughout as well as same textured surface.  The patent owner did not challenge that construction.
     b. The references did not “expressly use the word `uniform’,” but both disclosed the uniform limitation.
          i. Amos taught a thin sheet “being from .002 to .003” inches in thickness. The patent owner’s argument that this taught a thickness variation was “strained.” The more reasonable interpretation was that the thickness was anywhere between the two numbers.
          ii. Barrett disclosed a “four mil” low density polyethylene film.

8. REJECTION OF DEPENDENT CLAIM; NO SEPARATE ARGUMENT; WAIVER.  On appeal, the patent owner argued that dependent claim 6 was not anticipated by the Amos reference.  However, before the Board, the patent owner confined its arguments to independent claim 4 and, therefore, waived any separate anticipation argument as to dependent claim 6.

1. On the broadests reasonable construction rule, Chisum Patent Law Digest 5261.
2. On reexamination, see Chisum Patent Law Digest 3421.

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