Aia Eng'g Ltd. v. Magotteaux Int'l S/A

• Decision Date: 31 August 2011
• Docket Number: No. 2011–1058.,2011–1058.
• Citation: 657 F.3d 1264,100 U.S.P.Q.2d 1089
• Parties: AIA ENGINEERING LIMITED, Plaintiff/Counterclaim Defendant–Appellee,andVega Industries, Ltd., Inc., Third Party Defendant–Appellee,v.MAGOTTEAUX INTERNATIONAL S/A and Magotteaux, Inc., Defendants/Counterclaim Plaintiffs–Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

657 F.3d 1264

100 U.S.P.Q.2d 1089

AIA ENGINEERING LIMITED, Plaintiff/Counterclaim Defendant–Appellee,andVega Industries, Ltd., Inc., Third Party Defendant–Appellee,

v.MAGOTTEAUX INTERNATIONAL S/A and Magotteaux, Inc., Defendants/Counterclaim Plaintiffs–Appellants.

No. 2011–1058.

United States Court of Appeals, Federal Circuit.

Aug. 31, 2011.

David Lieberworth, Garvey Schubert Barer, of Seattle, WA, argued for plaintiff/counterclaim defendant-appellee. With him on the brief was Jared Van Kirk.Robert S. Rigg, Vedder Price P.C., of Chicago, IL, argued for defendants/counterclaim plaintiffs-appellants. With him on the brief were John J. Gresens and William J. Voller III.Before RADER, Chief Judge, and LOURIE and BRYSON, Circuit Judges.LOURIE, Circuit Judge.

Magotteaux International S/A and Magotteaux, Inc., (together, “Magotteaux”) appeal from the holding of the United States District Court for the Middle District of Tennessee on summary judgment that the asserted claims of U.S. Patent RE39,998 (the “RE'998 patent”) are invalid under 35 U.S.C. § 251 for impermissibly recapturing subject matter surrendered during reissue examination. AIA Eng'g Ltd. v. Magotteaux Int'l SIA, 745 F.Supp.2d 852 (M.D.Tenn.2010) (“ SJ Op.”). Because the district court erred in construing the claim term “solid solution,” and thus erred in determining that the reissued claims impermissibly recaptured surrendered subject matter, we reverse and remand.

Background

I

The patented technology in this case involves composite wear products used for crushing and grinding abrasive materials in industrial settings. Magotteaux manufactures composite wear products for grinding rock and other abrasive materials and sells those products to power stations and customers in the cement, mining, and recycling industries. SJ Op. at 855. Magotteaux also owns the RE'998 patent, a reissue of Magotteaux's earlier U.S. Patent 6,399,176 (the “'176 patent”). Entitled “Composite Wear Component,” the RE' 998 patent is directed to a wear component that contains ceramic materials with a mixture of aluminum oxide (alumina or Al2O3) and zirconium oxide (zirconia or ZrO2). Id. at 856.

The district court's opinion describes at length the prosecution histories of the RE'998 and '176 patents. See id. at 856–62. We summarize them here only as relevant to the dispute on appeal. The '176 patent issued from an application filed in the United States Patent and Trademark Office (“PTO”) on June 1, 1999, which itself was a national stage of a PCT application, 35 U.S.C. § 371, that claimed priority from two European applications. J.A. 1365. In the original application received in the PTO, independent claim 1 claimed a “[c]omposite wear component” containing “inserts” that consist of a “ceramic pad,” wherein the ceramic pad consists of “a homogeneous solid solution of 20 to 80% of Al2O3 and 80 to 20% of ZrO2.” J.A. 345. ¹ The claim further required that the ceramic pad “be[ ] impregnated with a liquid metal” during the production process. Id. The examiner initially rejected the pending claims as either anticipated under 35 U.S.C. § 102(b) by U.S. Patent 5,551,963 (“Larmie”) or obvious under 35 U.S.C. § 103(a) over Larmie in view of other prior art references. J.A. 323–30. In response, the applicant submitted an amendment with remarks. J.A. 335–65. The applicant amended independent claim 1 to specify, inter alia, that the ceramic pad was “porous,” but the applicant did not alter the portion of the claim requiring a “homogeneous solid solution.” ² In addition, the applicant disputed the examiner's rejection over Larmie, arguing that instead of using “ liquid metal ” during the production process, Larmie merely taught the use of a “ solution of ... salts of a metal.” J.A. 339. With respect to the “solid solution” limitation of the pending claims, the applicant stated that “the invention is based on the observation that the ceramic pad must be a homogenous solid solution of Al2O3/ZrO2.” J.A. 340.

The applicant also submitted a declaration under 37 C.F.R. § 1.132 by the application's sole named inventor, Hubert Jacques Francois. J.A. 358–61. In characterizing his claimed invention, Francois used the term “solid solution” several times, stating, for instance, that a “ homogeneous solid solution of both ceramics meets the advantages of both Al2O3 and ZrO2”; that “[a]n unexpected synergy is the result of this solid solution which exhibits better results than each single component contribution”; and that “[o]nly solid solutions of Al2O3/ZrO2 in proportions of 80/20 to 20/80 presents [sic] no ‘microspalling’ effects.” J.A. 359 (emphases added).

Following the applicant's response to the office action, the examiner issued a notice of allowance for claims 1–11. J.A. 370. The '176 patent issued on June 4, 2002, with issued claim 1 reading as follows:

1. Composite wear component produced by classical or centrifugal casting and consisting of

a metal matrix having a working face or faces including inserts which have wear resistance, the inserts consist of a porous ceramic pad, the porous ceramic pad consisting of a homogeneous solid solution of 20 to 80% of Al2 O3 and 80 to 20% of ZrO2, the percentages being expressed by weights of the constituents, and the porous ceramic pad being integrated into the metal matrix by impregnation of a liquid metal in the porous ceramic pad during the casting.

'176 patent claim 1 (emphases added).

On May 30, 2003, the applicant, with the consent of assignee Magotteaux, applied for reissue of the '176 patent. J.A. 392–415. Through reissue the applicant sought to amend claim 1 and to add new claims 12–21. SJ Op. at 858. Both amended claim 1 and new independent claim 12 were directed to a composite wear component. Id. at 859. Claims 1 and 12 both replaced the term “solid solution” in issued claim 1 with “ceramic composite.” J.A. 520–21. Moreover, new claim 12 used the terms “comprising” and “comprises” instead of “consisting of” in specifying the makeup of the wear component and the ceramic pad. The examiner never objected to these new claim limitations. See J.A. 447–51, 460–62, 470–80, 516, 533–42, 1326–34.

During prosecution of the RE'998 patent, an anonymous party filed a protest under 37 C.F.R. § 291, contending that claims 1 and 12 of the reissue application should be rejected under 35 U.S.C. § 251. SJ Op. at 860; J.A. 1277–89. Specifically, the protestor asserted that the substitutions in the reissue claims of (1) “comprises” for “consisting of” and (2) “ceramic composite” for “solid solution” impermissibly recaptured subject matter that was surrendered during prosecution of the original '176 patent. The examiner disagreed with the protestor and found that the reissue claims did not violate § 251. SJ Op. at 860; J.A. 1330–31. Regarding the first substitution, the examiner concluded that the applicant's submissions during prosecution of the '176 patent did not limit the ceramic pads to only Al2 O3 and ZrO2 and that “the specification clearly teaches that other additives in addition to the claimed compounds may be included in the composite.” J.A. 1331. As for the second substitution, the examiner acknowledged that the applicant referred to the invention as a solid solution during prosecution, but stated that, upon review of the specification and its disclosed method of forming the composite, “it is unclear how Applicant's reference to this composite as a ‘solid solution’ would somehow limit the scope of the claims from any other combination of the claimed materials.” J.A. 1330–31.

The RE'998 patent issued on January 8, 2008, and a certificate of correction issued shortly thereafter to correct certain claim language. ³ J.A. 1365, 1373. Claims 1 and 12 of the RE' 998 patent, as corrected, read as follows:

1. Composite wear component produced by classical or centrifugal casting and consisting of a metal matrix having a working face or faces including inserts which have wear resistance, wherein the inserts consist of a porous ceramic pad, the porous ceramic pad consisting of a homogeneous ceramic composite of 20 to 80% of Al2O3 and 80 to 20% of ZrO2, the percentages being expressed by weights of the constituents, and the porous ceramic pad being integrated into the metal matrix by impregnation of a liquid metal in the porous ceramic pad during the casting.

12. Composite wear component produced by classical or centrifugal casting, said composite wear component comprising a metal matrix having a working face or faces including inserts which have wear resistance, the inserts include a porous ceramic pad, wherein the porous ceramic pad comprises a homogeneous ceramic composite [of] 20 to 80% of Al2O3 and 80 to 20% of ZrO2, the percentages being expressed by weights of the constituents, and the porous ceramic pad being integrated into the metal matrix by impregnation of a liquid metal in the porous ceramic pad during the casting.

RE'998 patent claims 1, 12 (emphases added); SJ Op. at 862.

II

On March 16, 2009, AIA Engineering sued Magotteaux in the United States District Court for the Middle District of Tennessee for a declaratory judgment of noninfringement, invalidity, and unenforceability of the RE'998 patent. As alleged in its complaint, AIA Engineering designs, develops, manufactures, installs, and services wear-, corrosion-, and abrasion-resistant products for the cement, mining, and thermal power generation industries. Compl. at 4; see also SJ Op. at 854–55. Magotteaux then filed a third-party complaint against Vega Industries, a subsidiary of AIA Engineering, alleging infringement of the RE'998 patent. The court held a claim construction hearing on the disputed claim terms in November 2009. AIA Engineering and Vega Industries (together, “AIA”) then moved for summary judgment of invalidity, arguing that the claims of Magotteaux's RE'998 patent improperly recaptured subject matter surrendered during the prosecution of its earlier '176 patent.

In a...