270 F.3d 1358 (Fed. Cir. 2001), 00-1233, Superior Fireplace Co v. Majestic Products

Docket Nº:00-1233, -1281, -1282
Citation:270 F.3d 1358
Party Name:SUPERIOR FIREPLACE COMPANY, Plaintiff-Appellant, v. THE MAJESTIC PRODUCTS COMPANY and VERMONT CASTINGS, INC., Defendants-Cross Appellants.
Case Date:November 01, 2001
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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270 F.3d 1358 (Fed. Cir. 2001)

SUPERIOR FIREPLACE COMPANY, Plaintiff-Appellant,

v.

THE MAJESTIC PRODUCTS COMPANY and VERMONT CASTINGS, INC., Defendants-Cross Appellants.

00-1233, -1281, -1282

United States Court of Appeals, Federal Circuit

November 1, 2001

Appealed from: United States District Court for the Central District of California, Judge Lourdes G. Baird

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[Copyrighted Material Omitted]

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David A. Dillard, Christie, Parker & Hale, LLP, of Pasadena, California, argued for plaintiff-appellant. With him on the brief was Craig A. Gelfound.

Michael D. Gannon, Baniak Nicholas Pine & Gannon, of Evanston, Illinois, argued for defendants-cross appellants. With him on the brief was Michael H. Baniak.

Before MAYER, Chief Judge, LINN and DYK, Circuit Judges.

Opinion for the court filed by Circuit Judge LINN. Dissenting opinion filed by Circuit Judge DYK.

LINN, Circuit Judge.

Superior Fireplace Co. ("Superior") appeals a final judgment from the United

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States District Court for the Central District of California. Superior Fireplace Co. v. Majestic Prods. Co., No. CV-98-1816 (C.D. Cal. Jan. 10, 2000) (judgment). The district court determined, on summary judgment, that Superior's certificate of correction for United States Patent No. 5,678,534 ("'534 patent") is invalid and that the uncorrected '534 patent is not infringed by Majestic Products Co. and Vermont Castings, Inc. (collectively, "Majestic"). Superior Fireplace Co. v. Majestic Prods. Co., No. CV-98-1816 (C.D. Cal. Jan. 10, 2000) ("Opinion").

Superior seeks review of the invalidity determination. Superior also seeks review of the district court's: (1) exclusion of a declaration by Superior's patent attorney and a facsimile alleged to be part of the prosecution history of the '534 patent; and (2) denial of a motion to amend judgment or for reconsideration based on the allegedly new evidence of an examiner's questionnaire. Majestic cross appeals, seeking review of the district court's finding that this was not an exceptional case and its decision not to award Majestic attorney fees. We affirm the district court's judgment with respect to Superior's challenges and vacate and remand with respect to Majestic's challenges.

BACKGROUND

A. The '534 Patent

The '534 patent relates to gas fireplace technology. Gas fireplaces are generally considered to be attractive and desirable commercial products. However, one disadvantage of fireplaces in general is that they can take up a lot of space. This is particularly disadvantageous for smaller apartments, hotel rooms, etc., in which space is at a premium. Although small gas fireplaces can be made, the smaller models often do not look as good and are, thus, of less commercial value. Additionally, because many gas fireplaces are built into walls or other structures, reducing the size of the fireplace can lead to excessive heating of the structure surrounding the fireplace. Whether the fireplace is small or large, the requirement to have a flue for venting combustion gases is also disadvantageous because of the space required for the flue.

The '534 patent purports to solve at least some of these problems by providing a combination of three features. First, as shown in Figure 2 from the '534 patent, included below, a reflective sheet 11 is provided behind the flame 8 and artificial log F, thus increasing the apparent depth of the fireplace for a better visual appearance. Second, the interior of the fireplace is constructed so as to provide various convection pathways within the fireplace to transfer heat into the room and, thus, reduce heat transfer into the structure surrounding the fireplace. Third, a catalytic converter 9 is provided, thus eliminating the need for a flue and allowing a more visually attractive flame instead of the cleaner burning blue or invisible flames.

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Claim 1 of the '534 patent is the only claim at issue in this appeal and reads as follows:

1.A gas log fireplace comprising in combination:

a housing having a top wall, bottom wall, side walls and a rear wall;

a firebox within the housing comprising a top wall, rear walls and side walls, said firebox forming a primary combustion chamber;

a room air plenum comprising a top room air plenum between the top wall of the firebox and the top wall of the housing, a rear room air plenum between the rear wall of the firebox and the rear wall of the housing in communication with the top room air plenum;

an inlet opening for allowing room air to enter the rear room air plenum;

an outlet opening in communication with the top room air plenum for allowing room air and exhaust products in the top room air plenum to be exhausted into a room in which the fireplace is situated;

an intake opening into the firebox for receiving room air into the primary

combustion chamber;

a burner within the firebox, at least one artificial log within the firebox adjacent to said burner and means for supporting said at least one log within the firebox;

means for delivering a source of combustible gas to the burner;

an exhaust opening in the top wall of the firebox;

a catalytic converter positioned in the exhaust opening of the firebox and forming a secondary combustion chamber; and

whereby exhaust products from the primary combustion chamber are received by the catalytic converter wherein secondary combustion takes place and the exhaust products from the secondary combustion chamber are received by the

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top room air plenum and are mixed with room air received by the rear room air plenum and exhausted into the room in which the fireplace is situated.

'534 patent, col. 5, l. 41 - col. 6, l. 32 (emphasis added). The dispute in this appeal focuses on the emphasized term "rear walls," in the firebox limitation above. This plural term was changed to the singular term "rear wall" in Superior's certificate of correction, as explained below in the section entitled Procedural History of Litigation. Before explaining the litigation, however, we document the events that led to the '534 patent being issued with the term "rear walls."

In the course of prosecuting the patent application, Superior submitted an amendment adding a new claim that eventually issued as claim 1. This claim initially recited "rear wall" in the firebox limitation.

On February 14, 1997, Superior representatives met with the examiner and agreed to certain changes to the claims. The changes agreed to during this meeting are set forth in an "Examiner Interview Summary Record." That summary does not show any change to the "rear wall" limitation.

On March 6, 1997, the examiner and a representative for Superior followed up the earlier meeting with a telephonic interview. During that interview the parties discussed a reference that the examiner had discovered subsequent to the February 14 meeting. This interview was also memorialized with an "Examiner Interview Summary Record," mailed on March 11, 1997, in which the examiner stated that the claim in question would be modified "as set forth in the attached examiner's amendment." That amendment shows, among other changes, that "rear wall" was amended to "rear walls." That is the first point chronologically in the prosecution history that shows such a change. A "Notice of Allowability" was also mailed on March 11, 1997, thus indicating that the amended claim-with the revised expression "rear walls"-was allowable.

The examiner's amendment also reminded Superior that "[s]hould the changes and/or additions be unacceptable to applicant, an amendment may be filed." Superior did submit an amendment under 37 C.F.R. § 1.312 ("section 312 amendment") three months later, on June 11, 1997, making at least forty separate changes to the specification. This amendment, however, did not amend the claim term "rear walls," and Superior submitted no further amendment before issuance. Consequently, the '534 patent issued with the term "rear walls" on October 21, 1997. After the patent issued, Superior identified another nine errors and, on August 28, 1998, submitted a "Make-of-Record Letter" noting these errors. The "Make-of-Record Letter" did not list any amendments to the claim term "rear walls."

Superior alleges that the prosecution history does not contain the whole story. According to Superior, prior to the March 6 interview the examiner edited the claim in question and faxed to Superior the edited claim. This edited claim does not appear in the prosecution history. These edits, according to Superior, were made by the examiner not to effect any substantive change but merely to facilitate consideration of the newly discovered reference by showing reference numerals, corresponding to features of the reference, after each of the limitations of the claim in question. According to Superior, however, the faxed, edited claim also changed "rear wall" to "rear walls." Superior asserts that it marked up the faxed, edited copy of the claim to show the amendments that Superior authorized during the March 6 interview. Superior's mark-ups are silent with regard to the change from "rear wall" to "rear walls." That is, the mark-ups do not

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delete the "s" in "rear walls" nor question the change in any way. Based on this silence, Superior insinuates that the addition of the "s" to "rear wall" was never authorized.

Although not discussed by Superior, it is clear that the examiner's amendment made additional changes to the claim that are not reflected in Superior's mark-up. Thus, Superior's alleged mark-up was not the final version of the claim, as issued.

B. Procedural History of Litigation

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