In re Suitco Surface, Inc.

• Decision Date: 14 April 2010
• Docket Number: No. 2009-1418.,2009-1418.
• Citation: 603 F.3d 1255
• Parties: In re SUITCO SURFACE, INC.
• Court: U.S. Court of Appeals — Federal Circuit

603 F.3d 1255

In re SUITCO SURFACE, INC.

No. 2009-1418.

United States Court of Appeals, Federal Circuit.

April 14, 2010.

George C. Summerfield, Stadheim & Grear, Ltd., of Chicago, IL, argued for appellant.

Joseph G. Piccolo, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for the Director of the United States Patent and Trademark Office. With him on the brief were Raymond T. Chen, Solicitor, and Scott C. Weidenfeller, Associate Solicitor.

Kevin H. Rhodes, 3M Innovative Properties Company, of St. Paul, MN, for amicus curiae.

Before RADER, PROST, and MOORE, Circuit Judges.

RADER, Circuit Judge.

The United States Patent and Trademark Office (the "PTO") rejected certain claims of U.S. Patent No. 4,944,514 (the "'514 patent"), owned by Suitco Surface, Inc., as anticipated during a reexamination proceeding. Because the PTO's rejection was based on an unreasonable construction, this court vacates and remands.

I.

The '514 patent claims a "floor finishing material" for use on athletic courts, bowling lanes, and other "floor surfaces made of wood, linoleum, terrazzo, or concrete." '514 patent, abstract. The invention is essentially a thin plastic sheet placed over a floor surface connected by an adhesive layer. Claim 4 is representative:

4. On a floor having a flat top surface and an improved material for finishing the top surface of the floor, the improvement comprising:

at least one elongated sheet including a uniform flexible film of clear plastic material having a thickness between about one mil and about twenty-five mils and

a continuous layer of adhesive material disposed between the top surface of the floor and the flexible film, the adhesive layer releasably adhering the flexible film onto the top surface of the floor.

(emphases added). The specification and later dependant claims teach that appropriate boundary lines, team logos, and other such markings may be applied to the undersurface of the finishing sheet before application on the floor. Id. at col.5 ll.61-68.

A.

This court is no stranger to the '514 patent. Indeed, this court has reviewed this patent twice already. In 1996, Middleton, Inc., the exclusive licensee of the '514 patent, brought suit against 3M Company in the United States District Court for the Northern District of Illinois alleging infringement of claims 1-4 of the '514 patent. After a Markman hearing, the district court construed two terms: "material for finishing" and "uniform flexible film." "Material for finishing" was construed to mean "a material that makes more durable the underlying surface of the floor, and is applied for that purpose." "Uniform flexible film" was construed to mean "the material must be of a uniform thickness, and excludes material in which there are any variations in thickness."

After several months of discovery, 3M moved for summary judgment of noninfringement based on the "material for finishing" and "uniform flexible film" limitations. The district court granted 3M's motion based solely on the "material for finishing" limitation. Middleton, Inc. v. Minn. Mining & Mfg. Co., No. 96 C 6781, 1998 WL 852841 (N.D.Ill. Nov. 30, 1998). On appeal, this court vacated and remanded finding nothing in the specification or prosecution history supporting a "durability" aspect to the asserted claims:

The text of claim 4 leaves little ambiguity as to the meaning of "material"-namely, at least one elongated sheet of a uniform flexible film of clear plastic having a thickness between about one and about twenty-five mils. What remains in dispute is the precise meaning of the phrase "for finishing." In the context of claim 4, "finishing" clearly refers to providing a clear, uniform layer on the top surface of a floor. Significantly, there is no indication in claim 4 as to what level of durability, if any, the "finish" layer must have. Thus, claim 4 implies a broad meaning for the term "finishing," which is consistent with the dictionary definition of "finish." See, e.g., Webster's Ninth New Collegiate Dictionary 464 (1984) (defining "finish" as "the final treatment or coating of a surface," but not identifying any specific properties).

Middleton, Inc. v. Minn. Mining & Mfg. Co., No. 96 C 6781, 1999 WL 1072246 at *4 (Fed.Cir. Nov. 16, 1999).

On remand, the district court granted 3M's motion for summary judgment a second time. This time the trial court based its summary judgment order on the "uniform flexible film" limitation. In particular, the district court found that the accused films did not have the same thickness level throughout but were instead "intentionally manufactured in a manner that results in uneven thickness throughout the film." Middleton, Inc. v. Minn. Mining & Mfg. Co., No. 96 C 6781, 2001 WL 1155151 at *2 (N.D.Ill. Sept. 28, 2001). This court again remanded finding that a "uniform flexible film includes, for example, a flexible film having the same thickness throughout, as well as a flexible film having the same textured surface throughout." Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1389 (Fed.Cir.2002).

On the second remand, the Illinois District Court transferred the case to the Southern District of Iowa. At that point, 3M filed an ex parte reexamination request with the PTO in 2004. The request cited three prior art references not previously reviewed: U.S. Patent No. 3,785,102 to Amos, U.S. Patent No. 4,543,765 to Barrett, and U.S. Patent No. 4,328,274 to Tarbutton. The district court stayed the case after the request for reexamination was granted. The examiner then rejected claims 4-8 as anticipated by Amos, claims 4 and 6-8 as anticipated by Tarbutton, and claims 4 and 5 as anticipated by Barrett. Only Amos and Barrett are at issue in this appeal.

B.

Amos teaches a floor-covering pad comprised of a plurality of plastic sheets connected together by a plurality of adhesive layers. It is designed to be used right before entry into a clean room or a hospital bay to remove any dirt from the shoes or wheels of incoming traffic. U.S. Patent No. 3,785,102 col.1 l.64-col.2 l.4.

As shown in the figures above, pad 15 consists of a plurality of plastic sheets 16 with acrylic latex adhesive layers 17 above and below each of them. The adhesive layer beneath the lowermost plastic sheet releasably attaches the sheet—along with the rest of the pad—to the top surface of the floor. See id. at col.4 ll.49-51 ("The lowermost sheet 16 has on its undersurface 22 a layer 23 of adhesive to removably affix the pad 15 to the floor 14.").

The entire pad is first placed on the floor with the bottom adhesive layer acting as the glue. The top plastic sheet is then peeled to expose an adhesive layer. That top adhesive layer then contacts incoming shoes or wheels and removes any excess dirt that would otherwise be dragged into the room. Over time, once the top layer fills with dirt, the next plastic sheet can be peeled off to expose a new adhesive layer. See id. at col.4 ll.54-63.

The plastic sheets are made of polyethylene or polypropylene, which "may be transparent" and between ".0002 to .0003 inches in thickness." Id. at col.4 ll.12-15. They may also be imprinted with a decorative design. Id. at col.4 ll.33-36. The sheets and adhesive layers are kept very thin to ensure that the pad "does not present an obstacle to foot traffic or cause jarring or shock to a patient on a gurney when wheeled over such a pad 15." Id. at col.4 ll.30-32.

Barrett teaches the use of a clear plastic film connected to a floor with an adhesive layer. Barrett's cover sheet temporarily protects a floor during construction. The sheet is supposed to be removed whenever the building or room opens. U.S. Patent No. 4,543,765 col.9 ll.7-11.

A plastic cover sheet 16 is attached to a set of floor tiles 12 using an adhesive 14. "Plastic cover sheet 16 . . . is formed from a transparent or translucent plastic film . . . e.g., four mil low density polyethylene film." Id. at col.6 ll.2-8.

C.

The Board of Patent Appeals and Interferences (the "Board") affirmed the examiner's rejection of claim 4 in view of either Amos or Barrett and claim 8 in view of Amos. Suitco did not separately address any of the remaining claims. In its rejection, the Board construed the term "material for finishing the top surface of the floor" to mean "requiring a material that is structurally suitable for placement on the top surface of a floor." Under that construction, according to the Board, the "material for finishing the top surface of the floor" could be any layer above the floor regardless of whether it was the top or final layer. The Board also construed the term "uniform flexible film" to mean "including, for example, a flexible film having the same thickness throughout, as well as a flexible film having the same textured surface throughout." Suitco timely appealed to this court challenging the Board's construction for the "material for finishing the top surface of the floor" and contending that no cited prior art reference taught the "uniform" limitation.

II.

"During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.Cir.2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.Cir.2004)). This Court thus reviews the PTO's interpretation of disputed claim language to determine whether it is "reasonable." In re Morris, 127 F.3d 1048, 1055 (Fed.Cir.1997).

Anticipation is a question of fact reviewed for substantial evidence. In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed.Cir.1991). "Substantial evidence is something less than the weight of the evidence but more than a mere scintilla of evidence," In re Kotzab, 217 F.3d 1365, 1369 (Fed.Cir.2000), and "means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion," Consol. Edison Co. v. Nat'l...