from the United States District Court for the District of
Nebraska in No. 8:12-cv-00151-JFB-TDT, Chief Judge Joseph F.
Adams, The Adams Law Firm, Albuquerque, NM, argued for
DiSanto, Banner & Witcoff, Ltd., Chicago, IL, argued for
defendants-appellees. Also represented by Jon O. Nelson.
O'Malley, Bryson, and Wallach, Circuit Judges.
O'Malley, Circuit Judge.
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.
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.
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.
'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.
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):
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.
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.
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
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).
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
Id. at col. 1, ll. 49-57 (emphasis added).
Claim 19 was added in the first ex parte reexamination. Claim
19 contains the same "adjacent" requirement present
in Claim 1.
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.
Reward Wall Litigation
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.
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.
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.
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. ...