Tate Access Floors v. Interface Architectural Res.

• Decision Date: 20 February 2002
• Docket Number: No. Civ. JFM-00-2543.,Civ. JFM-00-2543.
• Citation: 185 F.Supp.2d 588
• Parties: TATE ACCESS FLOORS, INC., and Tate Access Floors Leasing, Inc., Plaintiffs, v. INTERFACE ARCHITECTURAL RESOURCES, INC., Defendant.
• Court: U.S. District Court — District of Maryland

185 F.Supp.2d 588

TATE ACCESS FLOORS, INC., and Tate Access Floors Leasing, Inc., Plaintiffs, v. INTERFACE ARCHITECTURAL RESOURCES, INC., Defendant.

No. Civ. JFM-00-2543.

United States District Court, D. Maryland.

February 20, 2002.

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Darle M. Short, James A. Olif, Oliff and Berridge PLC, Alexandria, VA, Julie E. Zink, Alexandria, VA, for Plaintiffs.

Daniel F. Goldstein, Andrew David Freeman, Brown, Goldstein and Levy LLP, Baltimore, MD, S. Craig Hemenway, Atlanta, GA, Kevin C. Gallagher, Atlata, GA, Mitchell G. Stockwell, Michael J. Turton, John S. Pratt, Kilpatrick Stockton LLP, Atlanta, GA, for Defendant.

OPINION

MOTZ, District Judge.

Tate Access Floors, Inc., and Tate Access Floors Leasing, Inc. [collectively "Tate"], have brought this action against Interface Architectural Resources, Inc. ["Interface"], for infringement of U.S.Patent No. 4,625,491 [the 491 or Gibson patent], a patent for a design of an access floor panel with a specific type of trim around its edges. Previously, Tate successfully asserted rights under the same patent against a different defendant before this Court and the Federal Circuit. Tate Access Floors, Inc. v. Maxcess Techs., 222 F.3d 958 (Fed.Cir.2000) [Maxcess]. On February 23, 2001, I granted Tate's motion for a preliminary injunction against Interface. Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 132 F.Supp.2d 365 (D.Md.2001), aff'd, 279 F.3d 1357 (Fed.Cir. 2002). Tate has now moved for summary judgment on the issues of infringement of claims 1-11 of the 491 patent, willfulness and Interface's defenses of prior invention, anticipation, obviousness, indefiniteness, estoppel and practicing the prior art. Interface has moved for summary judgment on the issues of infringement of the 491 patent, willfulness and three of its defenses: practicing the prior art, anticipation and obviousness. Tate's motion is granted in part and denied in part; Interface's motion is denied.

I.

"Elevated floors, also known as `access floors,' typically include an array of square floor panels that are supported at their corners by pedestals, thus providing a space underneath the floor through which wires and other equipment may be routed." Maxcess, 222 F.3d at 961. Individual panels can be removed for access to equipment between the access floor panels and the sub-flooring. Access to wiring and other skeletal parts of a building tends to be easier and less expensive through access floor panels than through walls or ceilings.

The top parts of access floor panels are mounted on steel frames, the construction and design of which are irrelevant to the patent at issue. In addition to carpeting and vinyl asbestos tile, the upper surface of access floor panels are commonly made of high pressure laminate, or HPL. HPL is made of multiple layers of kraft paper, with a top decorative layer and a transparent layer over that, all forced together under high pressure with resin. See, e.g., 491 Patent, Tate Ex. 1 at col. 3, 11. 18-44. HPL is used in many applications other than access floor panels.

Frank Gibson applied for the patent Tate now holds on January 13, 1986. Well before this date, companies including both Tate and Westinghouse, a predecessor of Interface, sold panels with HPL surfaces. HPL access floor panels were sold almost exclusively, if not exclusively, with an attached trim around their edges. Tate and Interface dispute whether HPL floor panels either with vertical edges or with beveled edges, were sold without edge trim prior to the Gibson patent. HPL panels with attached trim are still manufactured today. The attached trim is a separate piece of material that covers the sharp, brittle edge of the HPL and prevents chipping and unattractive marks at the edges of panels, but it has several drawbacks. First, it raises the cost and time of production and installation. Second, because the trim is a separate piece, there is a limit on how thin it can be, limiting the manufacturer's ability to create a thinner, more aesthetically pleasing border. When such panels are installed, the attached trim tends to collect water and dirt, and the trim may break or come loose, creating maintenance problems. Finally, the dimensions of the panel can be more accurate when a separate trim is omitted. 491 Patent, Tate Ex. 1 at col. 2, 11. 4-21, col. 2, 1.64-col. 3, 1. 17.

Tate's patented panel, sold under the trade name Integral Trim, has recessed edges but no attached trim. The decorative top layer does not extend horizontally to the outer edge of the panel. Instead the decorative layer is cut away from the edge of the panel, making the edges of lower kraft paper layers that partially constitute the HPL and a wider strip of one kraft paper layer visible around the edges of the panel. Figure 4 in Tate's patent shows that at the edge of the top surface of the panel, there is a flat section of one of the lower kraft paper layers. An angled section revealing the edges of each layer slopes upward from the flat edge to the flat top surface of the panel comprised of the decorative layer with a clear layer on top of it. When a set of Tate's panels are laid together, a person standing on them and looking down sees the black edges of each panel forming a grid.

Tate successfully asserted its rights under the patent at issue against Maxcess Technologies in the District of Maryland and Federal Circuit. Maxcess, 222 F.3d 958. Maxcess's infringing panel, sold under the trade name Duratrim, was flat at the extreme border like Tate's Integral Trim panel. The flat outer edge of Maxcess's panel was brown kraft paper, later painted black. Maxcess argued unsuccessfully to the jury that the 491 patent was invalid based on several theories.¹

Interface describes its untrimmed accused panel, sold under the trade name Bevel Edge, as "beveled." The extreme edge of the panel is not a flat portion of the lower layer, but an angled cut-away section revealing the edges of each layer, rising to the top layers of the panel, the transparent and decorative layers. The top part of the panel is widest at the bottom and narrowest at the top, with an angled edge. See Tate Ex. 4. In one brochure, Interface advertises the panel as follows: "the top of the high pressure laminate is beveled to create a grid pattern without the use of separate edge trim pieces." Interface brochure, Tate Ex. 10 at IAR/9.

Interface argues that the term "border" in the claims of the patent should be construed to mean only a recessed horizontal border formed of a single layer. Due to the way HPL is made, a border consisting of a single layer would necessarily be flat. Interface's construction of the patent would essentially limit the patent to the embodiment depicted in figure 4 of the patent or very slight variants. It would also exclude Interface's Bevel Edge product. Tate argues, on the other hand, that Interface's proposed construction is inappropriately narrow and contrary to the plain language of the claims, the specification and the prosecution history.

II.

Tate and Interface have both moved for summary judgment on the issue of infringement.² Determining whether Interface's Bevel Edge panel infringes Tate's patent is a two-step process. Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1455 (Fed.Cir.1988). First, the claims of the patent must be interpreted, which is a question of law. Second, Interface's panel must be compared to the properly interpreted claims in order to determine whether it reads on or literally includes all elements of the patent's claims. The application of the claims to the Bevel Edge panel is a question of fact. Id.

A.

In interpreting the claims of a patent, "the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). In this case, an examination of the intrinsic evidence enables a complete resolution of any ambiguities in the patent's terms. For this reason, "it is improper to rely on extrinsic evidence." Id.

1.

Claim 1 of Tate's patent covers a panel with "a border along the edges of said panel along which said decorative surface layer is removed to expose said inner body portion and thereby provide an integral contrasting border around said decorative surface layer." The other independent claim, claim 8, similarly describes "a border extending along the edges of said panel along which the decorative layer is removed to expose said inner layer." Tate Ex. 1 at col. 5, 11. 8-11, col. 6, II. 9-11. The other claims at issue are dependent to these two independent claims and do not assist in determining whether the patent requires the border to be horizontal.

In Maxcess and in affirming the preliminary injunction in this case, the Federal Circuit already has undertaken two independent³ detailed analyses that construe the terms "integral contrasting border" in claim 1 and "border" in claim 8. In Maxcess, it found that both of these terms mean "an edge or trim formed by removing the edges of the decorative surface layer to uncover or reveal the inner body portion."⁴ 228 F.3d at 967, 968. In this case, it held that "[n]othing in the language of these claims requires the `border' to be horizontal or formed of a single layer."⁵ It is true, as Interface contends, that in contrast to claim 1's use of the term "inner body portion," claim 8 uses the term "inner layer" which is singular and could be read to require a border made of a single layer, and therefore flat. However, in Maxcess, the Federal Circuit construed "inner body portion" and "inner layer" to have the same meaning, "because they are used interchangeably in the specification." 222 F.3d at 968. It explained that the term "inner body portion," and thus the term "inner layer," mean "the layers of laminated...