3form, Inc. v. Lumicor, Inc. , 678 F. App'x 1002 ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
3FORM, INC.,
Plaintiff-Appellant
v.
LUMICOR, INC.,
Defendant-Appellee
______________________
2016-1535
______________________
Appeal from the United States District Court for the
District of Utah in No. 2:12-cv-00293-CW-BCW, Judge
Clark Waddoups.
______________________
Decided: February 2, 2017
______________________
SAMUEL C. STRAIGHT, Ray Quinney & Nebeker P.C.,
Salt Lake City, UT, argued for plaintiff-appellant. Also
represented by ARTHUR B. BERGER, MICHAEL K. ERICKSON,
S. BRANDON OWEN.
LAWRENCE D. GRAHAM, Lowe Graham Jones PLLC,
Seattle, WA, argued for defendant-appellee.
______________________
Before HUGHES, SCHALL, and STOLL, Circuit Judges.
2 3FORM, INC. v. LUMICOR, INC.
STOLL, Circuit Judge.
3form, Inc. appeals from a summary judgment order
invalidating both a utility patent and a design patent it
had asserted against Lumicor, Inc. While we disagree
with certain claim constructions adopted by the district
court for the utility patent, we nonetheless agree with the
district court’s validity analysis, and we affirm. We also
affirm the court’s invalidation of 3form’s design patent for
obviousness.
BACKGROUND
3form and Lumicor both sell decorative laminate
architectural panels having natural items, such as twigs,
reeds, bamboo, etc., encased within them. One of 3form’s
products is its “Thatch” product, depicted below:
Lumicor sells similar competing products, for example its
“Pampas Reed” panel, depicted below:
3FORM, INC. v. LUMICOR, INC. 3
3form sued Lumicor, alleging infringement of one of
its utility patents, U.S. Patent No. 7,008,700, and one of
its design patents, U.S. Patent No. D621,068. 3form’s
’700 utility patent describes a process for making decora-
tive laminate panels having “compressible objects embed-
ded inside, wherein the compressible objects would be
flattened in unnatural shapes under conventional pro-
cesses.” ’700 patent abstract. “For example, an exempla-
ry decorative laminate product comprises thatch reed,
willow reed, bamboo, weeds, grasses, twigs and branches
of a tree or bush, beans, and so forth.” Id. Claim 1, a
product-by-process claim, is representative:
1. A decorative architectural panel comprising:
one or more compressible objects suspended be-
tween two extruded resin sheets formed together
about the one or more compressible objects using
a plurality of pressures in a thermosetting pro-
cess, at least one of the plurality of pressures be-
ing greater than or equal to a critical pressure
sufficient to otherwise compress the one or more
compressible objects to an unnatural appearing
conformation;
wherein the one or more compressible objects
maintain a substantially natural appearing con-
formation between the two formed resin sheets.
4 3FORM, INC. v. LUMICOR, INC.
Id. at col. 11 ll. 2–13 (emphases added).
3form’s D’068 design patent claims “[t]he ornamental
design for an architectural panel with thatch reed de-
sign,” D’068 abstract, as shown in Figure 3:
The district court entered summary judgment in Lu-
micor’s favor, holding 3form’s asserted patents invalid
over the prior art. The court first construed disputed
claim terms of the ’700 patent. Pertinent to this appeal
are the related terms “unnatural appearing confor-
mation,” construed by the district court as “an object that
has compressed in an amount equal to or greater than
75% of its thickness in one direction,” and “substantially
natural appearing conformation,” construed as “any
conformation where the object has experienced compres-
sion of less than 75% of its thickness in one direction.”
3form, Inc. v. Lumicor, Inc., No. 2:12-CV-00293-CW, 2015
WL 9463092, at *5 (D. Utah Dec. 28, 2015) (Dist. Ct. Op.).
After construing these claim terms, the district court
determined that U.S. Patent No. 6,743,327 (“Schober”), a
3FORM, INC. v. LUMICOR, INC. 5
patent assigned to Lumicor president Dennis Schober,
anticipated the ’700 patent’s two independent claims—
claims 1 and 19—under 35 U.S.C. § 102. The court also
found all dependent claims anticipated by Schober, except
claims 4, 7, and 15. The court found those remaining
claims obvious in view of Schober combined with U.S.
Patent Nos. 5,988,028 and 5,643,666 (collectively, the
“Eckart patents”) under 35 U.S.C. § 103. Finally, the
district court held that one of Lumicor’s products—
“Exhibit 5”—in view of Schober rendered 3form’s D’068
design patent obvious under § 103.
3form appeals, and we have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1).
DISCUSSION
I.
We begin with the district court’s construction of the
related ’700 patent terms “unnatural appearing confor-
mation” and “substantially natural appearing confor-
mation.”
“[W]e review the district court’s ultimate claim con-
struction de novo with any underlying factual determina-
tions involving extrinsic evidence reviewed for clear
error.” Power Integrations, Inc. v. Fairchild Semiconduc-
tor Int’l, Inc., 843 F.3d 1315, 1326 (Fed. Cir. 2016) (citing
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
841–42 (2015)). Claim construction seeks to ascribe the
“ordinary and customary meaning” to claim terms as they
would be understood to a person of ordinary skill in the
art at the time of invention. Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citing
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996)). “[T]he person of ordinary skill in the art
is deemed to read the claim term not only in the context of
the particular claim in which the disputed term appears,
but in the context of the entire patent, including the
6 3FORM, INC. v. LUMICOR, INC.
specification.” Id. at 1313. Indeed, the specification is
“the single best guide to the meaning of a disputed term”
and “[u]sually, it is dispositive.” Id. at 1315 (quoting
Vitronics, 90 F.3d at 1582). Thus, claims “must be read in
view of the specification, of which they are a part.” Id.
(quoting Markman v. Westview Instrs., Inc., 52 F.3d 967,
979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996)).
A.
The district court construed the claim term “unnatu-
ral appearing conformation” as “an object that has com-
pressed in an amount equal to or greater than 75% of its
thickness in one direction.” Dist. Ct. Op., 2015 WL
9463092, at *5. The court based its construction on a
single sentence in the specification:
There are, of course, varying grades of collapse, or
compression, for any given compressible object,
such that an “unnatural conformation” may mean
that an object has compressed to 90% of its thick-
ness in one direction, 75% of its thickness in one
direction, and so on.
’700 patent col. 4 ll. 40–45.
The district court adopted its construction despite the
parties largely agreeing to a different one. Specifically,
3form proposed that “unnatural appearing conformation”
means “the appearance of an object when its structural
integrity collapses, such that the object splits, cracks, or
substantially deforms.” Dist. Ct. Op., 2015 WL 9463092,
at *5. Lumicor only disputed the “substantially deforms”
portion of 3form’s proposed construction, asserting that
instead of “substantially deforms,” the term requires
“significantly deforms.” Id. We agree with the arguments
the parties made before the district court regarding this
term’s construction.
Like the district court, the parties relied on the patent
specification to define the disputed claim term. But,
3FORM, INC. v. LUMICOR, INC. 7
unlike the district court, the parties cited the sentence
preceding the one cited by the district court, which states:
For the purposes of this specification and claims,
“critical pressure” refers to the pressure at which
the structural integrity of the object collapses,
such that the object splits, cracks, or otherwise
compresses into an unnatural conformation.
’700 patent col. 4 ll. 36–40. The district court read the
comma structure and use of the disjunctive term “or
otherwise” in this sentence to limit the term unnatural
conformation as referring only to the last item in the
series, “compress[ion],” and excluding “split[ting]” and
“crack[ing].” We agree with both parties that this sen-
tence provides the clearest guide to the disputed term’s
meaning. We disagree with the district court’s reading of
the sentence to omit the specification’s reference to split-
ting and cracking as examples of an “unnatural confor-
mation.” Contrary to the district court’s reading, we find
the comma usage actually supports the parties’ interpre-
tation. Because there is no comma separating “otherwise”
and “compresses,” those terms must be taken together.
The most natural reading of this clause is thus that
“otherwise compresses” is a catch-all that sweeps in other
deformative acts, including those specifically introduced
earlier in the series—splitting and cracking.
Further, the stated purpose of the sentence is to de-
fine the term “critical pressure” for the “specification and
claims.” ’700 patent col. 4 ll. 36–37 (emphasis added).
This sentence then defines “critical pressure” in terms of
the effect such pressure would have on a compressible
object, including both “split[ting]” and “crack[ing].” Thus,
when the claims describe a process that applies a “critical
pressure” that would typically result in an “unnatural
appearing conformation,” the construction must recognize
that the specification contemplates not only “com-
8 3FORM, INC. v. LUMICOR, INC.
press[ion],” but also “split[ting]” and “crack[ing]” resulting
from such pressure.
We also disagree with the district court’s decision to
limit the term to a mathematical requirement of 75%
compression based on a sentence in the specification that
merely states that there “are varying degrees of collapse,
or compression” and that an unnatural conformation
“may” mean that an object has compressed to 90% of its
thickness or as little as 75% of its thickness “and so on.”
Id. col. 4 ll. 40–45 (emphasis added). Plucking one of
these percentages out of a range of possibilities was not a
proper approach for claim construction. See Conoco, Inc.
v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1357–58
(Fed. Cir. 2006) (“[W]hen a claim term is expressed in
general descriptive words, we will not ordinarily limit the
term to a numerical range that may appear in the written
description or in other claims.”) (quoting Renishaw PLC v.
Marposs Societa’ per Azioni, 158 F.3d 1243, 1249
(Fed. Cir. 1998)). In addition, because the district court’s
construction relates only to compression, and not splitting
and cracking, it does not give proper meaning to the claim
term as implicitly defined in the patent specification.
For all these reasons, we adopt 3form’s proposed con-
struction and interpret “unnatural appearing confor-
mation” to mean “the appearance of an object when its
structural integrity collapses, such that the object splits,
cracks, or substantially deforms.” 1
1 As explained earlier, Lumicor proposed a slightly
different construction—substituting “substantially de-
forms” with “significantly deforms”—at the district court.
Dist. Ct. Op., 2015 WL 9463092, at *5. On appeal, Lumi-
cor has not argued for this construction and thus we adopt
the construction proposed by 3form.
3FORM, INC. v. LUMICOR, INC. 9
B.
The district court construed “substantially natural
appearing conformation” as the inverse of its “unnatural
appearing conformation” construction—i.e., as “any
conformation where the object has experienced compres-
sion of less than 75% of its thickness in one direction.”
Dist. Ct. Op., 2015 WL 9463092, at *5. For the same
reasons expressed above in connection with “unnatural
appearing conformation,” we disagree with the district
court’s construction of this related term.
As for the parties, 3form urges us to construe the
term as “[t]he appearance of an object in a relatively
uncompressed or natural state, even if not perfectly
natural or uncompressed,” whereas Lumicor argues that
the term is indefinite. Id. Lumicor essentially asserts
that the district court’s construction presents a mathe-
matical test that is difficult, if not impossible, to perform
in practice, and that 3form’s construction is too subjective
to provide boundaries on the claim’s scope. We reject
Lumicor’s indefiniteness argument. “[A] claim must
‘inform those skilled in the art about the scope of the
invention with reasonable certainty’ to meet the definite-
ness requirement of 35 U.S.C. § 112, ¶ 2.” Liberty Am-
munition, Inc. v. United States, 835 F.3d 1388, 1396
(Fed. Cir. 2016) (quoting Nautilus, Inc. v. Biosig Instrs.,
Inc., 134 S. Ct. 2120, 2129 (2014)). Yet, “absolute preci-
sion is unattainable” when drafting patent claims. Nauti-
lus, 134 S. Ct. at 2129. Thus, “a patentee need not define
his invention with mathematical precision in order to
comply with the definiteness requirement.” Sonix Tech.
Co. v. Publ’ns Int’l, Ltd., No. 2016-1449, 2017 WL 56321,
at *5 (Fed. Cir. Jan. 5, 2017) (quoting Invitrogen Corp. v.
Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005)).
Here, 3form’s proposed construction aligns with the
plain meaning of the term and is supported by the patent
specification. While perhaps not mathematically precise,
10 3FORM, INC. v. LUMICOR, INC.
we conclude that this construction would properly inform
one of ordinary skill in the art of the invention’s scope
with reasonable certainty. Indeed, 3form’s expert ex-
plained that 3form’s quality control process involves
visually inspecting panels to identify those suitable for
sale and thus one of ordinary skill would understand the
meaning of “substantially natural appearing confor-
mation” as opposed to an “unnatural appearing confor-
mation.” Lumicor’s Quality Assurance Manager similarly
testified about Lumicor’s quality control process, describ-
ing a visual inspection of “the appearance of the natural
objects” to determine “whether a panel passes the quality
assurance inspection to be sent to a customer.” J.A. 464–
65, 75:16–76:22. This evidence supports the notion that a
person of ordinary skill in the relevant art would under-
stand with reasonable certainty whether objects encased
within a panel appear suspended in their natural state or
instead are damaged to the point of appearing unnatural.
The evidence shows that a person of ordinary skill would
recognize this quality without relying on specific compres-
sion percentages, as the district court’s construction
required.
We therefore reject Lumicor’s indefiniteness argu-
ment and adopt 3form’s proposed construction of “sub-
stantially natural conformation” to mean “[t]he
appearance of an object in a relatively uncompressed or
natural state, even if not perfectly natural or uncom-
pressed.”
II.
We next address the validity of 3form’s ’700 patent.
Although we hold that the district court erred in constru-
ing the terms “unnatural appearing conformation” and
“substantially natural appearing conformation,” we
nonetheless affirm its summary judgment of invalidity.
Because the district court entered its incorrect claim
constructions in its summary judgment order, the parties’
3FORM, INC. v. LUMICOR, INC. 11
summary judgment validity arguments accounted for the
alternative constructions we have now adopted. Under
those constructions, we conclude that the ’700 patent is
nonetheless invalid, and that this determination was ripe
for summary judgment.
Invalidity must be proven by clear and convincing ev-
idence. Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95
(2011). “Anticipation, though a question of fact, may be
resolved on summary judgment if no genuine issue of
material fact exists.” OSRAM Sylvania, Inc. v. Am.
Induction Techs., Inc., 701 F.3d 698, 704 (Fed. Cir. 2012)
(citing Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307,
1319 (Fed. Cir. 2007)). “We review de novo the determi-
nation of whether the evidence in the record raises a
genuine issue of material fact.” Id. (citing Ormco, 498
F.3d at 1319). “Similarly, ‘a district court can properly
grant, as a matter of law, a motion for summary judgment
on patent invalidity when the factual inquiries into obvi-
ousness present no genuine issue of material facts.’” Id.
(quoting Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 716
(Fed. Cir. 1991)). “When the facts underlying an obvious-
ness determination are not in dispute, we review whether
summary judgment of invalidity is correct by applying the
law to the undisputed facts.” Id. (quoting Tokai Corp. v.
Easton Enters., 632 F.3d 1358, 1366 (Fed. Cir. 2011)).
Lumicor argued in its motion for summary judgment
that the prior art Schober patent recited most limitations
of the ’700 patent’s independent claims expressly and
inherently disclosed the others. The Schober patent’s
abstract describes:
(1) a matrix made of polymethylmethacrylate,
polyvinyl chloride, polycarbonate, or combinations
thereof; and (2) one or more visible decorative ob-
jects that are permanently fixated in the matrix,
and methods for manufacturing these prod-
ucts. . . . The solid surface products of the inven-
12 3FORM, INC. v. LUMICOR, INC.
tion provide strikingly beautiful and unusual vis-
ual effects that are difficult to describe in words.
3form first contends that Schober does not disclose
the “compressible objects” limitation. Schober, however,
describes its method as capable for use with objects such
as twigs, including those from reed and bamboo. 2 Alt-
hough Schober also discloses other, non-compressible
objects, its explicit disclosure of twigs is sufficient to
satisfy the “compressible objects” limitation. See Per-
ricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376
(Fed. Cir. 2005) (“This court rejects the notion that one of
these ingredients cannot anticipate because it appears
without special emphasis in a longer list.”).
3form next disputes that the method described in
Schober necessarily produces a panel having compressible
objects maintaining a “substantially natural appearing
conformation.” We disagree. The Schober two-step
method includes a first, low-pressure encasing step.
Testimony from 3form’s own expert explained that the
purpose of this step was to maintain the integrity of the
encased object. Further, as evidence that the Schober
method would necessarily maintain “substantially natural
appearing conformation” of compressible objects, Lumi-
cor’s expert used the method described in Schober to
create test panels. Lumicor’s expert concluded that, to
the extent one of skill in the art would understand the
scope of the “substantially natural appearing confor-
2 3form argues now on appeal that whether the
twigs Schober discloses are “compressible objects” as
described by the ’700 patent is a fact issue not ripe for
summary judgment. But 3form conceded that twigs are
compressible objects before the district court. See J.A.
1017 (stating twigs disclosed in Schober are “indisputably
compressible objects”). Thus, there is no issue of material
fact requiring resolution.
3FORM, INC. v. LUMICOR, INC. 13
mation” limitation, his test panels maintained such a
conformation.
During his deposition, Lumicor presented 3form’s ex-
pert with the test panels that were produced by Lumicor’s
expert using the Schober method, and 3form’s expert
could not testify that any of the panels lacked a “substan-
tially natural appearing conformation.” 3 Indeed, 3form’s
briefing to the district court seemed to acknowledge that
the test panels had a “substantially natural appearing
conformation.” See, e.g., J.A. 1069–70 (“That Lumicor’s
expert Dr. Flinn created panels having objects with a
substantially natural appearing conformation is evidence
only that the ’327 Patent methods ‘could yield’ such
panels, which is insufficient.” (citation omitted)). While
3form’s expert conducted his own tests to counter the
Lumicor expert testing, the district court found the tests
inadmissible after 3form’s expert admitted that he did not
monitor significant control factors, such as time and
temperature, during his testing. 3form did not challenge
the district court’s inadmissibility ruling on appeal.
All of the evidence on record therefore shows that ap-
plying the Schober method results in panels having a
“substantially natural appearing conformation,” and we
thus affirm the district court’s finding of inherent antici-
pation by Schober of the ’700 patent’s independent claims,
claims 1 and 19.
3 3form argues that its expert testified that Lumi-
cor’s Exhibit 421 test panel did not maintain “substantial-
ly natural appearing conformation.” Lumicor’s expert,
however, did not use the method disclosed in Schober to
create that panel. See Oral Arg. at 4:18–5:29; 14:34–
15:40, available at http://oralarguments.cafc.uscourts.
gov/default.aspx?fl=2016-1535.mp3.
14 3FORM, INC. v. LUMICOR, INC.
The district court also held that Schober anticipates
dependent claims 2–3, 5–6, 8–14, and 16–18. On appeal,
3form challenges the district court’s anticipation findings
for dependent claims 5 and 16, which require that at least
one of the two extruded resin sheets “comprise extruded
polycarbonate.” Before the district court, 3form did “not
dispute [whether] the ’327 Patent [Schober] describes the
use of polycarbonate,” J.A. 1022, 1028, and it never specif-
ically argued or articulated why Schober’s use of polycar-
bonate would impact the “substantially natural appearing
conformation” limitation, as it does now for the first time
on appeal. We conclude, therefore, that 3form waived its
separate arguments on these claims. Thus, we affirm the
district court’s summary judgment holding that Schober
anticipates dependent claims 2–3, 5–6, 8–14, and 16–18.
We also conclude that the district court did not err in
finding claims 4, 7, and 15 obvious in view of the prior art.
Claims 4, 7, and 15 require use of a PETG-type resin.
The Eckart patents, which the district court considered in
combination with Schober, disclose using PETG-type
resins in decorative laminate panels. Lumicor’s expert
testified that PETG was one of several widely used resins
for decorative panels at the time of the invention and that
a person of ordinary skill would know that all resins work
equally well in the Schober method. Indeed, Schober
itself discusses how the Eckart patents use PETG in
decorative laminate panels. See Schober col. 2 ll. 1–39.
We conclude that one of skill in the art would have been
motivated to combine the Schober method with the Eckart
patents’ suggestion to use PETG as the resin. Again, we
do not consider 3form’s new argument that using PETG
would have somehow altered the Schober method’s “sub-
stantially natural appearing conformation” of compressi-
ble objects, as 3form did not present this argument to the
district court. Thus, we affirm the district court’s sum-
mary judgment of invalidity of claims 4, 7, and 15 as
3FORM, INC. v. LUMICOR, INC. 15
being obvious in view of Schober in combination with the
Eckart patents.
III.
3form challenges the district court’s summary judg-
ment of invalidity of the D’068 patent as obvious. The
primary reference on which the district court relied in
invalidating the D’068 patent was one of Lumicor’s own
panels, known as “Exhibit 5”:
D’068 patent, Figure 3 Exhibit 5
Exhibit 5 uses beach grass, whereas the D’068 patent
uses reeds. Because Schober describes using reeds in
place of grass in decorative panels, the district court
concluded that a designer of ordinary skill would have
been motivated to substitute Exhibit 5’s beach grass with
Schober’s reeds and that this combination rendered the
D’068 patent obvious.
We agree with the district court. 3form’s expert
testified that a designer would not have been motivated to
combine Exhibit 5 with Schober’s reeds because beach
grass is flat, not cylindrical like a reed. 3form’s expert
admitted, however, that she had not read the Schober
patent’s written description and had instead only consid-
ered the figures. Thus, 3form’s expert’s opinion was
formed without considering the motivation to combine
16 3FORM, INC. v. LUMICOR, INC.
plainly contemplated by Schober’s specification, i.e., that
reeds may be a substitute for grass. The obviousness
inquiry for design patents is not so limited, as it asks
whether a designer “would have combined teachings of the
prior art to create the same overall visual appearance as
the claimed design,” not merely the figures or illustra-
tions. Durling v. Spectrum Furniture Co., 101 F.3d 100,
103 (Fed. Cir. 1996) (emphasis added). Because 3form’s
expert did not consider Schober’s teachings in full, her
testimony regarding motivation to combine does not
preclude summary judgment of obviousness.
In light of the forgoing, we conclude that the district
court did not err in holding that the D’068 patent is
invalid as obvious in light of Exhibit 5 combined with
Schober.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. 4 For the foregoing reasons,
we modify the district court’s construction of the terms
“unnatural appearing conformation” and “substantially
natural appearing conformation,” but conclude nonethe-
less that all claims of the ’700 patent are invalid as either
anticipated or obvious. We also affirm the district court’s
invalidation of the D’068 patent for obviousness.
AFFIRMED
COSTS
No costs.
4 Lumicor moved to strike portions of 3form’s reply
brief for raising new arguments for the first time. We
have considered 3form’s arguments that Lumicor asserts
are untimely and find them unpersuasive. We thus deny
Lumicor’s motion as moot.