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Phil-Insul Corp. v. Airlite Plastics Co.

United States Court of Appeals, Federal Circuit

April 17, 2017

PHIL-INSUL CORP., DBA INTEGRASPEC, Plaintiff-Appellant
v.
AIRLITE PLASTICS CO., FORMTECH, LLC, Defendants-Appellees

         Appeal from the United States District Court for the District of Nebraska in No. 8:12-cv-00151-JFB-TDT, Chief Judge Joseph F. Bataillon.

          Paul Adams, The Adams Law Firm, Albuquerque, NM, argued for plaintiff-appellant.

          Louis DiSanto, Banner & Witcoff, Ltd., Chicago, IL, argued for defendants-appellees. Also represented by Jon O. Nelson.

          Before O'Malley, Bryson, and Wallach, Circuit Judges.

          O'Malley, Circuit Judge.

         Phil-Insul Corp. d/b/a IntegraSpec ("IntegraSpec") filed suit against Airlite Plastics Co. and Formtech, LLC (collectively, "Airlite") alleging infringement of U.S. Patent No. 5, 428, 933 ("the '933 Patent"), which relates to insulating concrete forms ("ICFs") that are used in the construction of buildings. Airlite moved for summary judgment of noninfringement, arguing that IntegraSpec's claims are precluded by our decision in a prior action. In that case, IntegraSpec asserted claims from the same patent against different defendants with similar products. There, after construing the claims, the district court granted summary judgment of noninfringement, and subsequently granted the parties' stipulated request for a Rule 54(b) certification for immediate appeal. Inte-graSpec timely appealed, challenging only the district court's claim construction. We summarily affirmed the district court's final judgment without an opinion. Phil-Insul Corp. v. Reward Wall Sys., Inc., 580 F.App'x 907 (Fed. Cir. 2014).

         In this case, Airlite argued that IntegraSpec's infringement claims are the same as the infringement claims it asserted and lost in Reward Wall and that Airlite's accused products have the same design as the products found noninfringing in that prior litigation. The district court agreed, and granted Airlite's motion for summary judgment of noninfringement. Phil-Insul Corp. v. Airlite Plastics, Co., No. 8:12-cv-151, 2016 WL 5107131 (D. Neb. Mar. 2, 2016) ("Decision on Appeal"). Because we agree that IntegraSpec's claims are barred by collateral estoppel, we affirm.

         I. Background

         A. The '933 Patent

         IntegraSpec is the assignee of record for the '933 Patent, which originally issued on July 4, 1995. The '933 Patent underwent two ex parte reexaminations before the United States Patent & Trademark Office ("PTO"): one that concluded on September 21, 2010, and another that concluded on July 14, 2014.

         The '933 Patent is directed to ICFs, which are expanded polystyrene foam blocks used as molds to cast concrete walls. The ICFs are stacked to form a hollow wall which is then filled with concrete. The ICFs remain in place after the concrete sets to serve as insulation for the building. The ICFs consist of two parallel foam panels that form sidewalls. The top and bottom edges of the sidewalls have interconnecting means used to connect one ICF to another when they are stacked.

         Figure 1, shown below, illustrates a preferred embodiment of an ICF having interconnecting means (16) that include two rows of projections (18) and recesses (20) on the top and the bottom edges of each panel/side wall (10 & 12):

         (IMAGE OMITTED)

         The specification explains that, unlike prior art ICFs, which had to be arranged in a specific way for interconnection, the claimed ICFs are designed to permit interconnection "with like blocks or panels in a bi-directional and/or reversible manner." '933 Patent, col. 1, 11. 8-13. Because the claimed ICFs can be stacked in a number of ways, they are "easier to interconnect" and installation can proceed at a faster pace and with less waste because the bidirectional and reversible design avoids orientation restrictions. Id. at col. 1, ll. 38-48.

         As originally issued, claim 1 was directed to ICFs where the interconnecting means on the top and bottom edges of each panel "comprise[d] at least two rows of alternating projections and recesses . . . wherein said recess of one row is adjacent said projection of the other row." '933 Patent, col. 6, ll. 11-15. Claim 2, as originally issued, claimed "[a]n insulating construction member according to claim 1, wherein said member is an insulating construction block." Id. at col. 6, ll. 23-25.

         After the first reexamination, Claim 1 provided as follows:

In a bi-directional and reversible insulating construction member having substantially planar ends and top and bottom edges and interconnecting means on said top and on said bottom edges, the improvement wherein each said top interconnecting means and each said bottom interconnecting means has a pattern, each pattern comprising at least two longitudinally extending rows of alternating, continuous, immediately adjacent projections and recesses, extending continuously along the entire length of said top and bottom edges, the end projection in one row flush with at least a portion of one of said end planes, within each said pattern each of said projections and recesses in each one of said at least two rows within said pattern being of substantially the same dimension, wherein within each said pattern said recess of one row is adjacent said projection of the other row, and wherein said interconnecting means patterns on said top and bottom edges are the same and are offset arranged such that said recess of one row in said pattern on said top edge is opposed to said projection of an opposite row in said pattern on said bottom edge; whereby said insulating construction member can be interconnected with a like member in a bi-directional and reversible manner.

Ex Parte Reexamination Certificate for U.S. Patent No. 5, 428, 933 issued Sept. 21, 2010 ("First Reexam Cert.") at col. 1, ll. 26-47 (emphases added).

         Claim 2 was amended as follows:

An insulating construction member according to claim 1, wherein said member is an insulating construction block comprising two panels, each of said panels having a pattern on the top and bottom edges, each of said patterns on each of said panels comprising at least one longitudinally extending row of alternating, continuous, immediately adjacent projections and recesses and each of said projections and each of said recesses within each said pattern in said at least one row being of substantially the same dimension.

Id. at col. 1, ll. 49-57 (emphasis added).

         Independent Claim 19 was added in the first ex parte reexamination. Claim 19 contains the same "adjacent" requirement present in Claim 1.

         The PTO issued a second ex parte reexamination certificate in 2014. As a result of that reexamination, claims 1, 3, 6-10, and 24 were cancelled. Ex Parte Reex-amination Certificate for U.S. Patent No. 5, 428, 933 issued Jul. 14, 2014 ("Second Reexam Cert.") at col. 1. The patentability of claims 2, 4, 5, 11, 13-16, 19-23, and 25-27 was confirmed, however. Id.

         B. The Reward Wall Litigation

         In February 2011, IntegraSpec filed suit against multiple defendants-including Reward Wall Systems, Inc. ("Reward Wall") and Nudura Corporation ("Nudura")- alleging infringement of the '933 Patent. The parties filed a joint motion for early claim construction, indicating that two independent claims were at issue-Claim 1 and Claim 19. The parties requested that the district court construe three claim terms found in both claims, two of which are relevant to this appeal: "adjacent" and "substantially the same dimension." Joint Motion for Early Claim Construction at 2, Phil-Insul Corp. v. Reward Wall Sys., Inc., No. 8:12-cv-91 (D. Neb. Nov. 22, 2011), ECF No. 79. The parties agreed that these limitations should be construed the same way in both claims. Id.

         The district court conducted a Markman hearing in June 2012, and issued its claim construction order soon thereafter. In relevant part, the court construed the term "adjacent" to mean "next to . . . on the same panel or sidewall." Phil-Insul Corp. v. Reward Wall Sys., Inc., No. 8:12-cv-91, 2012 WL 2958233, at *7 (D. Neb. July 19, 2012). Looking at the prosecution history, the court found that the patentee added the limitation "at least two rows" in Claim 1 to distinguish it from prior art that disclosed an ICF block with one row of alternating projections and recesses on each sidewall. Id. at *9. The court recognized that, although Claim 2 "discloses a construction block on which each panel may have only one row of projections and recesses, " it would be inconsistent with the specification and the prosecution history to construe "adjacent" in Claim 1 to encompass an ICF block having only one row. Id. at *9, n.13. The district court construed "substantially the same dimension" to mean "the same measurable length, breadth, area and volume, with only minor variations in dimension of up to about 10%." Id. at *11.

         Following the district court's claim construction, the defendants in Reward Wall separately moved for summary judgment of noninfringement. The district court issued two decisions finding that the accused products did not infringe the claims of the '933 Patent, either literally or under the doctrine of equivalents.

         In the first, the district court addressed whether the accused ICFs contained the "adjacent" limitation. Phil-Insul Corp. v. Reward Wall Sys., Inc., No. 8:12-cv-91, 2012 WL 5906546, *4 (D. Neb. Nov. 26, 2012). With respect to the Nudura ICFs, IntegraSpec did not argue that the products literally infringed, but instead asserted infringement under the doctrine of equivalents. Id. at *5 ("IntegraSpec does not contend that the accused Nudura ICFs or the accused Reward Wall ICFs literally infringe the '933 Patent."). Looking to the prosecution history, the court found that there was a narrowing amendment that limited the scope of the patent such that an ICF with less than two rows of alternating projections and recesses on a given panel or sidewall cannot infringe. Id. at *6-7. Given this amendment, the court concluded that "prosecution history precludes an ICF with one row of projections and recesses on a panel or sidewall . . . from infringing the '933 Patent under the doctrine of equivalents." Id. at *8. ...


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