Georgia-Pacific Corp. v. U.S. Gypsum Co.
| Decision Date | 01 November 1999 |
| Docket Number | GEORGIA-PACIFIC |
| Citation | 52 USPQ2d 1590,195 F.3d 1322 |
| Parties | (Fed. Cir. 1999) CORPORATION, Plaintiff-Cross Appellant, v. UNITED STATES GYPSUM COMPANY and L&W SUPPLY CORPORATION, Defendants-Appellants. 97-1238,-1244 DECIDED: |
| Court | U.S. Court of Appeals — Federal Circuit |
Albert E. Fey, Fish & Neave, of New York, New York, argued for plaintiff-cross appellant. With him on the brief were W. Edward Bailey and Steven C. Cherny. Of counsel on the brief was Jack B. Blumenfeld, Morris, Nichols, Arsht & Tunnell, of Wilmington, Delaware.
James M. Amend, Kirkland & Ellis, of Chicago, Illinois, argued for defendants-appellants. With him on the brief were David K. Callahan and Christian C. Taylor. Of counsel on the brief was Jay I. Alexander, Kirkland & Ellis, of Washington, DC.
Before BRYSON, Circuit Judge, ARCHER,* Senior Circuit Judge, and GAJARSA, Circuit Judge.
United States Gypsum Company and L & W Supply Corporation (USG) appeal the judgment of the United States District Court for the District of Delaware holding that USG infringed claims 1, 2, and 5 of U.S. Patent No. 4,647,496 (the '496 patent) and claims 1, 6, 9, 10, 12, 15, and 17 of U.S. Patent No. 5,371,989 (the '989 patent), both patents being owned by Georgia-Pacific Corporation (Georgia-Pacific). In addition, USG appeals the district court's denial of its motion for judgment as a matter of law (JMOL) that all of the asserted claims are invalid due to obviousness in light of the prior art and that the asserted claims of the '989 patent are invalid for obviousness-type double patenting over the '496 patent and U.S. Patent No. 4,810,569 (the '569 patent).1 USG also appeals the order of the district court granting a new trial rather than granting USG's post trial motion for JMOL with respect to infringement of claim 11 of the '496 patent, claim 8 of the '989 patent and claim 1 and 2 of U.S. Patent No. 5,319,900 (the '900 patent), also owned by Georgia-Pacific. Georgia-Pacific cross appeals the district court's failure to find USG's infringement of Georgia-Pacific's patents willful and its order granting a new trial to USG with respect to infringement of claim 11 of the '496 patent, claim 8 of the '989 patent, and claims 1 and 2 of the '900 patent. We affirm-in-part, reverse-in-part, vacate-in-part and remand.
The patents at issue relate to fiberglass2 mat-reinforced gypsum boards and the use of such boards in exterior insulation systems (EISystems).
Gypsum wallboard traditionally consists of a hardened gypsum core sandwiched between paper facing or similar reinforcing sheets. It is typically manufactured on a conveyor system. The gypsum is crushed and ground and mixed with water to form a core slurry. The core slurry is spread onto a first sheet of paper. A second sheet of paper is placed on top of the wet slurry. This combination is passed under a roller to achieve the desired thickness. After the core gypsum sets or hardens, the board is cut and then turned over and dried in a kiln.
Exterior gypsum wallboard, sometimes referred to as sheathing, is a component in an EISystem. The gypsum sheathing is attached to a frame of a house. Despite the use of water-resistant additives as well as water-repellent facings gypsum sheathing continued to be susceptible to degradation by water. If the paper faced gypsum board became wet, the paper facing would often peel away from the gypsum core.
The use of fiberglass mats instead of paper mats was known to solve peeling. The manufacture of a fiberglass gypsum board on the same production line used for the manufacture of traditional paper faced gypsum board remained a problem. Fiberglass matting, being more porous than paper matting, allowed the gypsum slurry to bleed through and foul the production line and, particularly, the rollers. Although the production line could be stopped to clean the gypsum buildup off the manufacturing rollers, some of the rollers, such as those in or near the kiln, were not easily accessible for such clean up.
Georgia-Pacific realized that the problem of the gypsum slurry bleeding through the fiberglass could be solved by controlling the viscosity of the slurry. Georgia-Pacific patented this invention as well as the use of such a fiberglass faced gypsum board in an EISystem in the patents at issue.
The '496 patent contains claims directed to an EISystem installed using glass mat "faced" gypsum boards. The jury found that USG infringed claims 1, 2, 5, and 11 of the '496 patent. The jury's verdict was sustained by the district court, except for claim 11. The court held that Georgia-Pacific had not adduced substantial evidence to support an infringement verdict as to claim 11 and granted USG a new trial.
The jury found that USG infringed asserted claims 1 and 2 of the '900 patent. This patent is directed to a fiberglass mat-reinforced gypsum board which contains fire- and water-resistant additives. The district court held that the evidence did not support infringement of these two claims and granted USG a new trial.
The final patent on appeal, the '989 patent, contains claims directed to both fiberglass mat-reinforced gypsum boards and EISystems using such boards. Each of the asserted claims 1, 6, 8, 9, 10, 12, 15 and 17 was found by the jury to be infringed by USG. In this case the district court sustained the infringement verdict as to all claims except claim 8. This claim required the use of certain fire-resistant additives. Like its holding as to claims 1 and 2 of the '900 patent the court found there was not substantial evidence to support infringement and granted USG a new trial.
The parties have dealt with the claims under five categories; namely, "sandwiched" claims, "faced" claims, "system" claims, "additive" claims and "board" claims. The sandwiched claims, whether describing the board or the use of the board in an EISystem, contain the limitation that the gypsum core is "sandwiched" between two sheets of porous fiberglass mat. The faced claims all have the limitation that the gypsum board be "faced" with a fibrous mat, or that it be glass-mat "faced." The system claims relate to the use of fiberglass mat-reinforced gypsum boards as the substrate for layered systems used to finish the exterior portions of buildings. The additive claims contain the limitation that the claimed fiberglass mat-reinforced gypsum board contain additives which improve the fire- and/or water-resistant properties of the boards. Finally the board claims all claim a fiberglass mat-reinforced gypsum board (which in some cases contains fire- or water-resistant additives).
USG contends that the '989 patent, which issued more that five years after the '569 patent, was invalid for obviousness-type double patenting over the claims of the '496 and '569 patents. Georgia-Pacific, however, asserts that there are patentable distinctions between the claims of these patents, and that USG presented no competent evidence in support of its contention. The district court did not dwell on this issue, and merely dismissed it (along with certain other contentions of USG in its motion for JMOL) by stating that it had "reviewed them and finds them to be without merit."
Double patenting is a question of law, which we review de novo. See General Foods Corp. v. Studiengesellschaft Kohle, 972 F.2d 1272, 1277, 23 USPQ2d 1839, 1843 (Fed. Cir. 1992). De novo review is appropriate because double patenting is a matter of what is claimed, and therefore is treated like claim construction upon appellate review. See id. at 1277, 23 USPQ at 1843. Obviousness-type double patenting is a judicially created doctrine grounded in public policy, which prevents the extension of the term of the original patent via the patenting of an obvious variation. See In re Longi, 759 F.2d 887, 892, 225 USPQ 645, 648 (Fed. Cir. 1985). Under obviousness-type double patenting, a patent is invalid when it is merely an obvious variation of an invention disclosed and claimed in an earlier patent by the same inventor. See General Foods, 972 F.2d at 1278, 23 USPQ2d at 1843; In re Vogel, 422 F.2d 438, 442, 164 USPQ 619, 622 (CCPA 1970). Accordingly, analysis of the claims at issue is the first step in determining if the second invention is merely an obvious variation of the first.
In this case, the jury found that USG did not infringe claim 1 of the '569 patent, but held that claims 1, 6, 8, 9, 10, 12, 15, and 17 of the '989 patent had been infringed. USG contends that the claims of the '989 patent are invalid due to obviousness-type double patenting.
Claim 1 of the '569 patent reads as follows:
Gypsum board comprising a set gypsum core sandwiched between two sheets of porous glass mat, each of which has an inner and outer surface, said mat comprising randomly distributed glass fibers bonded by an adhesive material, the inner surface of each of said mats adhered to said gypsum core by a portion of the set gypsum comprising said core, the outer surface of one of said mats having portions thereof coated with set gypsum comprising portions of the set gypsum of said core, and the outer surface of the other of said mats being substantially free of set gypsum.
Claim 1 of the '989 patent reads as follows:
A gypsum board comprising a set gypsum-containing core sandwiched between two sheets of porous glass mat, each of said mats consisting of randomly distributed glass fibers bonded by an adhesive material, said mat adhered to set gypsum core by a portion of said set gypsum, at least a first of said mats having an outer surface which is substantially free of set gypsum.
These two claims are very similar. Indeed, the basic construction of the boards is identical, which is clear from this comparison of the language of the claims:
Patent '569, claim...To continue reading
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