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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND __________________________________________ ) TATE ACCESS FLOORS, INC., and ) TATE ACCESS FLOORS LEASING, INC. ) ) Plaintiffs, ) ) v. ) ) INTERFACE ARCHITECTURAL ) RESOURCES, INC. ) ) Defendant. ) __________________________________________) OPINION 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, 2002 WL 188389 (Fed. Cir. 2002). Tate has now moved for summary judgement 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, 1

CIVIL NO. JFM-00-2543

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, ll. 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 2

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, ll. 4-21, col. 2, l. 64 - col. 3, l. 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 3

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.

Maxcess currently sells an untrimmed access floor panel under the trade name SpecTrim. Tate acknowledges that SpecTrim does not infringe its patent. Baker Dep., Tate Prelim. Inj. Ex. 57 at 10-11. Tate's patented panel has competed with both the accused panel and Maxcess' SpecTrim panel on at least one job. Id. at 74. 4

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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. 1992). 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.
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Interface also argues that Tate is estopped from asserting a claims construction which covers Interface's Bevel Edge product because the prior art is close and because Tate has never asserted such a claim construction in the past. Interface's "closeness of the prior art" defense is merely its "practicing the prior art" defense and its invalidity defense in another guise. In support of its contention that Tate has never asserted a similar claims construction in the past, Interface offers two pieces of wholly inclusive evidence. First, it points to a sales brochure issued by Donn, a previous holder of the Gibson patent, that seems to distinguish between "Integral Trim," which is said in the brochure to be exclusive to Donn, and a "special chamfered edge" product, about which the brochure is silent as to exclusivity. Second, it relies on one of its answers to interrogatories in which it identifies a witness who allegedly would testify that Hitachi Metals sold beveled edged HPL access floor panels in the mid-1980s and was not sued for infringement. Considered either alone or together, these rather random references are not sufficient to give rise to an estoppel. 5

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, ll. 8-11, col. 6, ll. 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

In affirming the preliminary injunction, the Federal Circuit specifically stated that it reached its claim construction independently and did not need to decide whether Interface was bound by its claim construction in Maxcess. Interface Architectural Res., 2002 WL 188389, at 10 n.3. Prior claim constructions, when on point, are given deference under the doctrine of stare decisis in the interest of uniformity and consistency in claim interpretation. Wang Labs., Inc. v. Oki Electric Industry Co., Ltd., 15 F.Supp.2d 166, 175 (D. Mass. 1998). While the Federal Circuit in Maxcess may have been focused on an infringement analysis of a product that differs from Interface's panel, its claim construction directly addresses the clauses at issue here. There is no indication that a different factual context would have caused it to alter its construction of claims 1 and 8. The Federal Circuit's claim construction is useful to my analysis, but it was done on review of a preliminary injunction, and, therefore, is not dispositive on this motion for summary 6
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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 material that are located "rearward," i.e., below, the decorative surface layer, and that contrast in color with the decorative surface layer." Id. at 966. Furthermore, in this case, the Federal Circuit held that in claim 8, the term "`an inner layer' means one or more layers." Interface Architectural Res., 2002 WL 188389, at 9. The Federal Circuit's constructions of claims 1 and 8 is entirely reasonable and consistent with the basic principles of claim construction. To require that the term "border" mean only a horizontal border would not give "full effect to the ordinary and accustomed meaning" of the word. Johnson Worldwide Assocs., Inc. v. Zebco Corp.,175 F.3d 985, 989 (Fed. Cir. 1999); see also Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) ("[I]f an apparatus claim recites a general structure (e.g., a noun) without limiting that structure to a specific subset of structures (e.g., with an adjective), we will generally construe the claim to cover all known types of that structure that are supported by the patent disclosure."). The language of claims 1 and 8 does not support Interface's proposed construction. 2. The patent's specification also does not further Interface's proposed claim construction.

judgment. See CVI/Beta Ventures, Inc., 112 F.3d at 1160 n.7 (explaining that a preliminary injunction opinion is based on an incomplete record and only reaches tentative conclusions) 7

Although the claims should be read in light of the specification, a court should not read a limitation from the specification into the claim. See, e.g., Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). The patent's summary of the invention says that "the surface layer of protective material and the layer of decorative paper are cut away along the edge of the floor covering to expose the inner layers and provide a contrasting color integral border." Tate. Ex. 1 at col 1, l. 67. The reference to "expos[ing] the inner layers" does not support Interface's reading that one layer must be particularly exposed or that the contrasting border must be flat. Interface's argument that the arrow numbered 14 in figure 4 of the patent, labeled "border or trim," Tate Ex. 1 at col. 2, l. 54, points to the horizontal part of the edge, not the angled part sloping up to the top decorative layer, is inconclusive at best. See 37 CFR 1.84(r)(1) (explaining that "[o]n a lead line, a freestanding arrow indicate[s] the entire section towards which it points."); Cline Dep., Tate Ex. 16 at 53 (stating that 14 points to the horizontal and angular surface). In addition, figure 4 is merely a preferred embodiment of the invention, not the only one. Tate Ex. 1 at col. 3, l. 45 ("As best illustrated in FIG. 4 . . . ."). Interface claims that the patent's specification only disclosed the rabbet shaped edge configuration of the preferred embodiment and did not disclose a beveled edge configuration. For this reason, it asserts that the claim should be limited to the border shape described in the preferred embodiment. See Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1480 (Fed. Cir. 1998) ("An applicant is entitled to claims as broad as the prior art and his disclosure will allow.") (citation and quotation omitted) (emphasis in original); Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993) ("Where there is an equal choice between a broader and a narrower meaning of a claim, and there is an enabling disclosure that indicates that the applicant 8

is at least entitled to a claim having the narrower meaning, we consider the notice function of the claim to be best served by adopting the narrower meaning.") Interface is incorrect; the specification does disclose a beveled edge. In addition to the preferred embodiment likely having a section of its border created by a beveled edge, the specification teaches to scarf or cut away the floor covering, which would be satisfied by beveling. See Gibson Dep., Tate Ex. 78 at 82-85 (stating that scarfed and beveled are both engineering terms that mean to cut away); Spielman Dep., Tate Ex. 70 at 45-47, 49, 54-56 (explaining that scarfing or chamfering produce a beveled edge); Cline I Dep., Tate Ex. 16 at 4951 (explaining that beveling is making an angular cut and that scarfing is a broad term that is any kind of shallow cut not through the entire surface). As Interface's own experts have acknowledged, a worker with ordinary skill in the art would be able to read the patent and understand that its purpose could be accomplished with a variety of cuts and shapes. Wiebe Dep., Tate Ex. 69 at 11-12 (stating that claims 1 and 8 of the patent do not require the border to be a horizontal surface or have a specific shape); Spielman Dep., Tate Ex. 70 at. 63-67 (same). 3. Finally, the prosecution history does not compel Interface's restrictive construction of the patent. The patent examiner who approved Tate's patent considered prior patents involving HPL with angled edges: one granted in 1960, U.S. Patent No. 2,957,737, Interface Ex. 11, and one granted in 1955, U.S. Patent No. 2,717,187, Interface Ex. 57. The 1960 patent involved a way to finish the edges of table or desk tops made of HPL by attaching an additional layer at the edge. The patent explains that the edge layer should be angled to reduce "feathering" of the HPL layers and that the difference in color "lends a decorative effect." The 1955 patent shows a beveled 9

HPL top on a table with a lower edging that sticks out further than the edge of the HPL. In addition, the examiner reviewed a prior British patent, U.K. Patent No. 429,301. This invention involved a way to attach edging to a metal desk or table top, the edging of which "may be suitably rounded off to impart a finish to the desk or table." Interface Ex. 58 at col. 2, ll. 24-25. The examiner also considered several prior patents on other aspects of access floor panels, one of which showed a separate trim edging around the top of the panel. U.S. Patent No. 3,696,578, Interface Ex. 5. The patent examiner approved the application, giving a one-sentence explanation that the "references of record fail to show an integral trim exposing a lower decorative layer." File History for 491 Patent, Interface Ex. 2. Focusing on this single sentence, Interface argues that an angled edge does not create "a . . . layer" at all, since it is composed of the edges of many layers of kraft paper. However, the Federal Circuit's ruling that the terms "inner body portion" and "inner layer" mean one or more layers undercuts this argument. Moreover, the examiner himself used the word "lower," not the more restrictive "horizontal," in describing the exposed "layer." Thus, his language provides scant basis for inferring that he was using the word "layer" in the manner ascribed to him by Interface. B. Having interpreted Tate's patent claims, I must now determine whether Interface's panel literally infringes those claims.6 That determination is easy to make since Interface's witnesses virtually, if not expressly, concede that if Tate's claims construction is correct, Interface's Bevel

Tate has not pursued an infringement theory under the doctrine of equivalents so a literal infringement theory is the only one that need be considered. 10

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Edge panel literally reads on claims 1 and 8.7 Wiebe Dep., Tate Ex. 69 at 5-10, 64-65 (acknowledging that Bevel Edge panels remove the decorative surface layer to expose the inner kraft paper layers and create a contrasting border), Spielman Dep., Tate Ex. 70 at 57, 71-72, 11617 (same); Doris Dep., Tate Ex. 71 at 30-32, 63-64 (same), Sainato Dep., Ex. 13 at 65-74 (same). In addition, Interface has not contested the fact that its product meets the additional requirements of claims 2-7 and 9-11. Based on this evidence, no reasonable jury could find that Interface did not infringe claims 1-11. III. Interface claims that it has an affirmative defense to Tate's claim of infringement because it was merely practicing the prior art. The Federal Circuit has made it "unequivocally clear . . . that there is no `practicing the prior art' defense to literal infringement." Interface Architectural Res., 2002 WL 188389, at 6 (citing Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575, 1583 (Fed. Cir. 1995)). Tate's motion for summary judgment on this issue will be granted. IV. In addition to its affirmative defense of practicing the prior art, Interface has also asserted four theories for invalidating the Gibson patent - prior invention, indefiniteness, anticipation and

Interface argues that summary judgment should be denied because not all of its panels actually were beveled due to quality control problems. See Votolato Dep., Interface Ex. 53 at 3340 (explaining that there were no written standards and grinding depth was controlled by humans rather than machines.) However, Interface's infringement was complete with its offer to sell the infringing panels, 35 U.S.C.

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