Phil-Insul Corp. v. Reward Wall Systems, Inc. et al

Filing 215

MEMORANDUM AND ORDER - The following motions are granted: a. The Motion for Summary Judgment (Filing No. 169 ) filed by Defendants Polyform, A.G.P., Inc. and Nudura Corporation; b. The Motion for Partial Summary Judgment (Filing No. 178 ) filed b y Defendant Reward Wall Systems, Inc.; c. The Motion for Partial Summary Judgment (Filing No. 189 ) filed by Defendant Amvic Corporation, are granted. All claims of infringement asserted against Defendants Polyform, A.G.P., Inc., and Nudura Corp oration, are dismissed. The claims of infringement asserted against Defendant Reward Wall Systems, Inc., with respect to its eForm ICF products are dismissed. The claims of infringement asserted against Defendant Amvic Corporation with respect to its Amvic ICF Block products are dismissed. Ordered by Chief Judge Laurie Smith Camp. (GJG)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
PHIL-INSUL CORP. d/b/a
INTEGRASPEC,

CASE NO. 8:12CV91

Plaintiff,
vs.

MEMORANDUM
AND ORDER

REWARD WALL SYSTEMS, INC.,
BUILDBLOCK BUILDING SYSTEMS,
LLC, NUDURA CORPORATION,
POLYFORM, A.G.P., Inc., and AMVIC
CORPORATION,
Defendants.

This matter is before the Court on the Motion for Summary Judgment (Filing No.
169) filed by Defendants Polyform, A.G.P., Inc. (“Polyform”), and Nudura Corporation
(“Nudura”), the Motion for Partial Summary Judgment (Filing No. 178) filed by
Defendant Reward Wall Systems, Inc. (“Reward Wall”), and the Motion for Partial
Summary Judgment (Filing No. 189) filed by Defendant Amvic Corporation. All three
motions seek summary judgment of non-infringement with respect to claims found in
United States Patent No. 5,428,933 (the “‘933 Patent”). For the reasons discussed
below, the Motions will be granted.
BACKGROUND
The ‘933 Patent relates to bidirectional and reversible insulating concrete forms
(“ICFs”). It was issued on July 4, 1994, and a reexamination certificate was issued on
September 21, 2010. Plaintiff Phil-Insul Corp. d/b/a Integraspec (“Integraspec”) is the
assignee of record for the ‘933 Patent.

ICFs are used to build concrete walls for various types of buildings. They are
composed of two Styrofoam panels, spaced apart and held together by “ties or webs.”
They are stacked to erect a hollow wall into which concrete is poured and allowed to
set.

The bidriectionality and reversibility of the ICFs relates to their ability to

interconnect with each other regardless of how the ICFs are rotated (horizontally or
vertically). The ICFs remain in place after the concrete sets to serve as insulation for
the building. For the ICFs to work, they must be securely interconnected when stacked.
The parties’ dispute concerns the interconnecting means of their respective ICFs.
FACTS
Unless specified otherwise, the following facts are those that are stated in the
parties’ briefs and supported by pinpoint citations to evidence in the record, that the
parties have admitted, or that the parties have not properly resisted as required by
NECivR 56.1 and Federal Rule of Civil Procedure 56.1
I. The Parties and Jurisdiction
Integraspec, Nudura, Polyform, and Amvic are all Canadian corporations.
Integraspec, Nudura, and Amvic have principal places of business in Ontario, Canada.
Polyform has its principal place of business in Quebec, Canada. Reward Wall is a
Kansas corporation with its principal place of business in Omaha, Nebraska.

1

The Defendants’ briefs in support of their Motions each contain a statement of material facts
that comply with NECivR 56.1(a). Integraspec addressed those statements of material fact in its
opposition briefs, but also included its own, separate statement of facts in each of its opposition briefs.
Integraspec’s separate statement of facts relates to the alleged insubstantial difference between the
accused ICF devices and the ICF disclosed in the ‘933 Patent for purposes of Integraspec’s arguments
that the accused ICFs infringe the ‘933 Patent under the doctrine of equivalents. Because the Court finds
that the doctrine of prosecution history estoppel precludes the accused ICFs from infringing the ‘933
Patent under the doctrine of equivalents, the Court does not include Integraspec’s separate statement of
facts in this Memorandum and Order’s “FACTS” section.

2

Integraspec brought this action for patent infringement under the patent laws of the
United States. See 28 U.S.C. §§ 1331, 1338.
II. The ‘933 Patent2
Integraspec, Polyform, Nudura, Reward Wall, and Amvic point to the following
claims of the ‘933 Patent as relevant to the present Motions: Claims 1, 2, 5, and 7
through 10. Claim 1 is an independent claim. The rest of the claims are dependent
claims, dependent on Claim 1.
Claim 13 of the ‘933 Patent states:
In [an] a bi-directional and reversible insulating construction member
having substantially planar ends and top and bottom edges and
interconnecting means on said top and on said bottom edges, the
improvement wherein each said top interconnecting means [comprise]
and each said bottom interconnecting means has a pattern, each pattern
comprising at least two longitudinally extending rows of alternating,
continuous, immediately adjacent projections and recesses, extending
continuously along the entire length of said top and bottom edges, the end
projection in one row flush with at least a portion of one of said end
planes, within each said pattern each of said projections and recesses in
each one of said at least two rows within said pattern being of
substantially the same dimension, wherein within each said pattern said
recess of one row is adjacent said projection of the other row, and wherein
said interconnecting means patterns on said top and bottom edges are the
same and are offset arranged such that said recess of one row in said
pattern on said top edge is opposed to said projection of an opposite row
[of] in said pattern on said bottom edge; whereby said insulating
construction member can be interconnected with a like member in a bidirectional [or] and reversible manner.
Claim 2 of the ‘933 Patent states:
An insulating construction member according to claim 1, wherein said
member is an insulating construction block comprising two panels, each of
said panels having a pattern on the top and bottom edges, each of said
2

Words added during the reexamination are in italics; deleted words are in bold brackets. See
Filing No. 92-2.
3

The “adjacent” limitation, the limitation at issue in the present Motions, is underlined.

3

patterns on each of said panels comprising at least one longitudinally
extending row of alternating, continuous, immediately adjacent projections
and recesses and each of said projections and each of said recesses
within each said pattern in said at least one row being of substantially the
same dimension.
Claim 5 of the ‘933 Patent states: “An insulating construction member according
to claim 1, wherein the interconnecting means includes a raised sealing member
positioned adjacent to said rows of alternating projections and recesses.”
Claim 7 of the ‘933 Patent states: “An insulating construction member according
to claim [1] 8, wherein said interconnecting means extend along the entire length of said
top and bottom edges and each of said projections is connected to the construction
member on only one of the projection’s six sides.”
Claim 8 of the ‘933 Patent states: “An insulating construction member according
to claim 1, wherein said projections and recesses of said interconnecting means are of
a rectangular [configuration] shape, each of said projections having six sides.”
Claim 9 of the ‘933 Patent states: “An insulating construction member according
to claim [1], wherein said member has a configuration selected from the group
consisting of straight, angled, T-shaped or X-shaped.”4
Claim 10 of the ‘933 Patent states: “An insulating construction member according
to claim 1, wherein said member is formed of a [formed] foamed polymeric material.”
A Markman hearing was held on June 29, 2012. On July 19, 2012, the Court
entered a Memorandum and Order construing three claim terms found in both Claim 1
and Claim 19 of the ‘933 Patent: (1) “adjacent”; (2) “substantially the same dimension”;
4

In their statement of undisputed material facts, Polyform, Nudura, and Amvic state, and
Integraspec does not dispute, that Claim 9 is dependent on Claim 2, not Claim 1. (Filing No. 170, at
CM/ECF p. 7 ¶ 19; Filing No. 190, at CM/ECF p. 4 ¶ 16; Filing No. 194, at CM/ECF p. 8; Filing No. 199, at
CM/ECF p. 5.) The ‘933 Patent, however, states that Claim 9 is dependent on Claim 1. (Filing No. 92-1.)

4

and (3) “substantially planar ends.” The Court construed “adjacent” to mean “next to . . .
on the same panel or sidewall”; “substantially the same dimension” to mean “have the
same measurable length, breadth, area and volume, with only minor variations in
dimension of up to about 10%”; and “substantially planar ends” to mean “substantially
flat ends.”
III. Polyform and Nudura
Nudura has sold an ICF called the NUDURA ICF in five different models “during
the period commencing with the date that is six years prior to the date the Complaint in
this action was filed.” (Filing No. 170, at CM/ECF p. 7 ¶ 20.) Those five models are the
standard form, the 90o standard form, the 45o standard form, the short T-form, and the
long T-form (collectively referred to as the “accused Nudura ICFs”). Each of these
models has a panel (or sidewall) with a single row of alternating projections and
recesses on their top and bottom edges.

Integraspec accuses these models of

infringing the ‘933 Patent.
IV. Reward Wall
Reward Wall has sold an ICF called the eForm ICF5 in four different models
“during the period commencing with the date that is six years prior to the date the
Complaint in this action was filed.” (Filing No. 179, at CM/ECF p. 4 ¶ 21.) Those four
models are the straight form, the 90o corner form, the 45o corner form, and the ledge
form. Although Reward Wall does not make or sell a “T-Form” ICF, two straight form
ICFs can be made into a T-form by cutting one at an intermediate location and mating
5

Reward Wall has also sold an iForm ICF, which Integraspec contends infringe the ‘933 Patent.
Reward Wall’s Motion only concerns the eForm ICF.

5

the other with it. Integraspec accuses the straight form, the 90o corner form, and the
45o corner form of infringing the ‘933 Patent. Integraspec also accuses the straight form
of infringing the ‘933 Patent when two of them are used to make a T-form.6
Reward wall contends that each of the accused Reward Wall ICFs have panels
(or sidewalls) with a single row of alternating projections and recesses on their top and
bottom edges. Integraspec asserts that the accused Reward Wall ICFs have panels
that “include an additional support structure that is integral with the row of projections
and recesses and augments the strength of the row of alternating projections and
recesses; therefore, the [accused Reward Wall ICFs] do[ ] not have a ‘single row’ of
alternating projections and recesses.” (Filing No. 198, at CM/ECF p. 7 ¶ 26-R.)
V. Amvic
Amvic has sold an ICF called the Amvic ICF Block in four different configurations
“during the period commencing with the date that is six years prior to the date the
Complaint in this action was filed.” (Filing No. 190, at CM/ECF p. 4, ¶ 18.) Integraspec
has accused those configurations of infringing on the ‘933 Patent. Those configurations
are a Straight Reversible Block, a 90o Corner Reversible Block, a 45o Corner Reversible
Block, and a T-Block (collectively referred to as the “accused Amvic ICFs”).
Amvic contends that each of the accused Amvic ICFs has only a single row of
alternating projections and recesses on their top and bottom edges.

Integraspec

contends that the interconnecting means on the top and bottom edges of Amvic’s ICF
products “can be characterized as: (a) a single row comprising a center section with two
structural support ‘wings;’ and (b) at least two rows, one row comprising the alternating
6

o

o

These eForm ICFS-the straight form, 90 corner form, 45 corner form, and “T-Form”-are
collectively referred to as the “accused Reward Wall ICFs.”

6

projections and recesses ‘wings’ and the second row comprising the center projection
and recess large center sections of the middle row.” (Filing No. 199, at CM/ECF p. 5.)7
STANDARD
“Summary judgment is appropriate when, drawing all justifiable inferences in the
nonmovant's favor, there exists no genuine issue of material fact and the movant is
entitled to judgment as a matter of law.” Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321,
1325 (Fed. Cir. 2010) (citing Fed. R. Civ. P. 56(c); Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 255 (1986)). The court will view the facts in the light most favorable to the
non-moving party. Gabrielidis v. Prince Sports Group, Inc., 243 F.3d 565 (Fed. Cir.
“[W]here the nonmoving party will bear the burden of proof at trial on a

2000).

dispositive issue . . . Rule 56(e) permits a proper summary judgment motion to be
opposed by any of the kinds of evidentiary materials listed in Rule 56(c), except the
mere pleadings themselves.” Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986). The
moving party need not negate the nonmoving party’s claims by showing “the absence of
a genuine issue of material fact.” Id. at 325. Instead, “the burden on the moving party
may be discharged by ‘showing’ . . . that there is an absence of evidence to support the
nonmoving party’s case.” Id.
In response to the movant’s showing, the nonmoving party’s burden is to produce
“‘specific facts showing that there is a genuine issue for trial.’” Matsushita Elec. Indus.
Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (quoting Fed. R. Civ. P.

7

The Court notes Amvic’s argument relating to Integraspec’s failure to comply with the District of
Texas’s Patent Rule 3-6. (See Filing No. 212-2 at CM/ECF p. 10.) The Court need not address this
argument because, as explained below, it finds that the accused Amvic ICFs do not infringe the claims of
the ‘933 Patent relevant to Amvic’s Motion literally or under the doctrine of equivalents.

7

56(e)). It “must do more than simply show that there is some metaphysical doubt as to
the material facts.” Id. at 586. “[T]he mere existence of some alleged factual dispute
between the parties will not defeat an otherwise properly supported motion for summary
judgment[.]” Anderson, 477 U.S. at 247-48.
In other words, in deciding a motion for summary judgment, “facts must be
viewed in the light most favorable to the nonmoving party only if there is a ‘genuine’
dispute as to those facts.” Scott v. Harris, 550 U.S. 372, 380 (2007). Otherwise, where
the Court finds that “the record taken as a whole could not lead a rational trier of fact to
find for the non-moving party”–where there is no “'genuine issue for trial'”–summary
judgment is appropriate. Matsushita, 475 U.S. at 587 (quoting First Nat'l Bank of Ariz. v.
Cities Serv. Co., 391 U.S. 253, 289 (1968)).
DISCUSSION
The Court’s “infringement analysis is a two[-]step inquiry.

‘First, the court

determines the scope and meaning of the patent claims asserted, and [second,] the
properly construed claims are compared to the allegedly infringing device.’” Cordis
Corp. v. Boston Scientific Corp., 658 F.3d 1347, 1354 (Fed. Cir. 2011) (quoting Cybor
Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998)). “With regard to the
second step of the infringement analysis, the patentee must prove that the accused
device embodies every limitation in the claim, either literally or by a substantial
equivalent.” Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1573 (Fed. Cir. 1994) (citing
Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 3 F.3d 404, 407 (Fed. Cir. 1993)). While
the first step of the inquiry is a “question of law,” Energy Transp. Group, Inc. v. William
Demant Holding A/S, Nos. 2011-1487, 2011-1488, 2011-1489, 2012 WL 4840813, at *3
8

(Fed. Cir. Oct. 12, 2012) (citing Cybor Corp., 138 F.3d at 1456), “[i]nfringement, whether
literal or under the doctrine of equivalents, is a question of fact.” Absolute Software, Inc.
v. Stealth Signal, Inc., 659 F.3d 1121, 1129-30 (Fed. Cir. 2011) (citing Bai v. L & L
Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998)).
Polyform, Nudura, Reward Wall, and Amvic contend that the accused ICFs do
not infringe the ‘933 Patent because they do not contain the “adjacent” limitation.8
Claim 1 contains the “adjacent” limitation. As noted previously, Claim 1 is the only
independent claim relevant to the present Motions, and all of the other claims
Integraspec contends have been infringed are dependent claims that are dependent on
Claim 1. “‘One who does not infringe an independent claim cannot infringe a claim
dependent on (and thus containing all the limitations of) that claim.’” Monsanto Co. v.
Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007) (quoting Wahpeton Canvas
Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1552 (Fed. Cir. 1989)). Therefore, the present
Motions turn on whether the accused ICFs contain the “adjacent” limitation.
I. Literal Infringement
“Literal infringement requires that each and every claim limitation be present in
the accused product.” Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc., 467 F.3d
1370, 1378 (Fed. Cir. 2006) (citing Frank's Casing Crew & Rental Tools, Inc. v.
Weatherford Int'l, Inc., 389 F.3d 1370, 1378 (Fed. Cir. 2004)). “If even one limitation is
missing or not met as claimed, there is no literal infringement.” Mas-Hamilton Group v.
LaGard, Inc., 156 F.3d 1206, 1211 (Fed. Cir. 1998).
8

The “adjacent” limitation states: “wherein within each said pattern said recess of one row is
adjacent said projection of the other row.” (Filing No. 92-2, column 1, lines 29-41.) The Court construed
this limitation to mean “wherein within each said pattern said recess of one row is next to said projection
of the other row on the same panel or sidewall.” (Filing No. 168.)

9

The only devices that Integraspec contends literally infringe the ‘933 Patent are
the accused Amvic ICFs. In support of its argument, Integraspec contends that the
accused Amvic ICFs should be characterized in one of two ways, one of those ways
being that the accused Amvic ICFs have three, and therefore “at least two,” rows of
projections and recesses on the same panel or sidewall.
As noted previously, the “adjacent” limitation, as construed by the Court, reads
as follows: “wherein within each said pattern said recess of one row is next to said
projection of the other row on the same panel or sidewall.”

Thus, although the

“adjacent” limitation requires the “at least two” rows of alternating projections and
recesses be on the same panel or sidewall, it requires that, between rows, a recess be
next to a projection, not another recess.
Even if the pattern of projections and recesses found on the accused Amvic ICFs
may be characterized as having “at least two” rows of projections and recesses on the
same panel or sidewall, Integraspec has failed to point to any evidence from which a
reasonable finder of fact could conclude that the recess of one row is “next to” a
projection of the other row “on the same panel or sidewall.” Instead, the evidence the
parties have pointed to indicates that a recess (projection) of one row is “next to” a
recess (projection) of the other row.9 Therefore, Integraspec has failed to meet its

9

Integraspec seems to acknowledge that, on the accused Amvic ICFs, a recess (projection) of
one row is next to a recess (projection) of the row or rows next to it. See Filing No. 199, at CM/ECF p. 14:
As seen in Figure 3, above, there is a center row of large projections and recesses and a
row of small projections and recesses next to, abutting, the center row on the same
panel. Each small projection contacts the side of the large projection but is nevertheless
a separate “row.” . . . Simply because the projections of the three rows in the Amvic
interconnecting means are transversely attached to one another does not make them a
‘single’ row as Amvic argues.

10

burden of pointing to evidence from which a reasonable finder of fact could conclude
that the accused Amvic ICFs literally infringe the ‘933 Patent.10
As previously noted, Integraspec does not contend that the accused Nudura
ICFs or the accused Reward Wall ICFs literally infringe the ‘933 Patent.

Even if

Integraspec did contend that those ICFs literally infringed the ‘933 Patent, Integraspec
has not pointed to any evidence that would support such a contention. Therefore,
Polyform and Nudura’s Motion and Reward Wall’s Motion will be granted to the extent
that they assert their accused ICFs do not literally infringe the ‘933 Patent.
II. Doctrine of Equivalents
“‘Infringement may be found under the doctrine of equivalents if every limitation
of the asserted claim, or its “equivalent,” is found in the accused subject matter, where
an “equivalent” differs from the claimed limitation only insubstantially.’” Abraxis, 467
F.3d at 1379 (quoting Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309,
1315 (Fed. Cir. 1998)). This test is called the “insubstantial differences test.” See Voda
v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008). Alternatively, “[a]n accused
device that ‘performs substantially the same function in substantially the same way to
obtain the same result’ as the patented invention may infringe under this doctrine.”
10

The Court also notes that the words “continuous, immediately adjacent” were added to the ‘933
Patent (see Filing No. 92-2 at column 1, lines 32-33 (“at least two longitudinally extending rows of
alternating, continuous, immediately adjacent projections and recesses[.]”)), Integraspec has
acknowledged that limitation is “definitely a spatial limitation because it was [used] [to] overcom[e] the
Board’s definition of a longitudinal row that could have spaces between the objects comprising the
longitudinal row” (Filing No. 194, at CM/ECF p. 35), and the evidence the parties have pointed to in the
record reflects that the two smaller rows in the accused Amvic ICFs have spaces in between them. Thus,
it appears that the accused Amvic ICFs do not literally contain the “immediately adjacent” limitation, and
amending Claim 1 to include that limitation may have resulted in an estoppel that would preclude
Integraspec from asserting that an ICF that has spaces between projections and recesses within the
same longitudinal row infringes the ‘933 Patent. See generally Trading Techs. Int'l, Inc. v. eSpeed, Inc.,
595 F.3d 1340, 1355 (Fed. Cir. 2010) (citing Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co.,
520 U.S. 17 (1997)); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1013 (Fed. Cir.
2006) (citing Seachange Int'l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1378 (Fed. Cir. 2005)).

11

Abraxis, 467 F.3d at 1379 (quoting Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339
U.S. 605, 608 (1950)). This test is called “the function-way-result test.” Voda, 536 F.3d
at 1326.
“The doctrine of equivalents is not a talisman that entitles a patentee to a jury trial
on the basis of suspicion; it is a limited remedy available in special circumstances, the
evidence for which is the responsibility of the proponent.” Schoell v. Regal Marine
Indus., Inc., 247 F.3d 1202, 1210 (Fed. Cir. 2001) (citing Zelinski v. Brunswick Corp.,
185 F.3d 1311, 1317 (Fed. Cir. 1999)).

Furthermore, “[t]he determination of

infringement under the doctrine of equivalents is limited by two primary legal doctrines,
prosecution history estoppel and the ‘all elements’ rule, the applications of which are
questions of law.” DePuy Spine, 469 F.3d at 1013 (citing Seachange, 413 F.3d at
1378). Because the Court finds the doctrine of prosecution history estoppel precludes
the accused ICFs from infringing the ‘933 Patent under the doctrine of equivalents, the
Court does not address the “all elements rule,”11 or whether Integraspec has satisfied its
burden under the “insubstantial differences test” or “function-way-result test.”
“Under prosecution history estoppel, a patentee may not seek to recapture as an
equivalent subject matter surrendered during prosecution.” Trading Techs., 595 F.3d at
1355 (citing Warner-Jenkinson, 520 U.S. 17 (1997)). “‘[E]stoppel may arise from matter
surrendered as a result of amendments to overcome patentability rejections, or as a

11

“‘[T]he “all elements rule” provides that the doctrine of equivalents does not apply if applying
the doctrine would vitiate an entire claim limitation.’” Seachange, 413 F.3d at 1378 (alteration in original)
(quoting Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d 1188, 1195 (Fed. Cir. 2005)). “[T]his rule empowers
a court to perform again the standard ‘insubstantial variation’ test for equivalency, but this time as a
question of law.” Trading Techs., 595 F.3d at 1355.

12

result of argument to secure allowance of a claim.’”12 Sextant Avionique, S.A. v. Analog
Devices, Inc., 172 F.3d 817, 826 (Fed. Cir. 1999) (quoting Cybor Corp. v. FAS Techs.,
Inc., 138 F.3d 1448, 1459-60 (Fed. Cir. 1998)). Accused devices which “fall within the
scope of the estoppel” are not subject to infringement under the doctrine of equivalents.
See id. at 827.
A “narrowing amendment . . . creates a presumption that the patentee
surrendered the territory between the original claims and the amended claims.” Glaxo,
356 F.3d at 1352 (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535
U.S. 722, 736 (2002) (Festo VIII)). To rebut this presumption, the patentee must “show[
] that the alleged equivalent could not reasonably have been described at the time the
amendment was made, or that the alleged equivalent was tangential to the purpose of
the amendment, or that the equivalent was not foreseeable (and thus not claimable) at
the time of the amendment.” Id.
Polyform, Nudura, Reward Wall, and Amvic argue that a narrowing amendment
occurred during the original prosecution of the ‘933 Patent that limited the scope of the

12

Although the Court finds that there was a narrowing amendment that precludes the accused
ICFs from infringing the ‘933 Patent under the doctrine of equivalents, the Court notes that the
prosecution history seems to reflect an argument based estoppel that precludes an ICF with only one row
of projections and recesses on a panel from infringing the ‘933 Patent. See Filing No. 92-4, at
INT001045; Filing No. 92-5, at INT001405; Glaxo Wellcome, Inc. v. Impax Labs., Inc., 356 F.3d 1348,
1357 (Fed. Cir. 2004) (“This court has noted that subject matter surrendered via claim amendments
during prosecution is also relinquished for other claims containing the same limitation. . . . Prosecution
history estoppel . . . is not limited to the applicant's own words, but may embrace as well the applicant's
responses to the examiner's actions. If the patentee does not rebut an examiner's comment or
acquiesces to an examiner's request, the patentee's unambiguous acts or omissions can create an
estoppel.”); Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1252 (Fed. Cir. 2000) (quoting
Cybor, 138 F.3d 1448, 1457 (Fed. Cir. 1998); Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1208 (Fed.
Cir. 1992)) (“An objective standard is applied when looking at the prosecution history, the proper inquiry
being ‘whether a competitor would reasonably believe that the applicant had surrendered the relevant
subject matter.’ . . . One of the public policy principles underlying the doctrine is that ‘other players in the
marketplace are entitled to rely on the record made in the Patent Office in determining the meaning and
scope of the patent.’”).

13

‘933 Patent such that an ICF with less than two rows of alternating projections and
recesses on a given panel or sidewall cannot infringe the ‘933 Patent. They point to the
prosecution history wherein the patentee amended Claim 1 so that it included the
limitation “at least two rows” to describe the alternating projections and recesses on the
disclosed ICF, and the limitation “adjacent” to describe the relationship between the
recesses of one row of the “at least two rows” to the projections on the other row or
rows. They also assert Integraspec has failed to rebut the presumption of surrender.
Integraspec seems to acknowledge that a narrowing amendment occurred during
the original prosecution of the ‘933 Patent. Integraspec appears to argue, however, that
either no estoppel resulted from the narrowing amendment or that the accused ICFs are
outside of the scope of surrender. Integraspec contends that the prior art the patent
office relied upon when it rejected original Claim 1 disclosed ICFs having “at least two”
rows of projections and recesses on a panel or sidewall and, therefore, the number of
rows disclosed in the ‘933 Patent was not the basis for the rejection. Thus, it argues
that amending Claim 1 to include “at least two rows” cannot constitute a surrender of
claim scope or an estoppel that precludes an ICF with one row of projections and
recesses on a panel or sidewall from infringing under the doctrine of equivalents a claim
limitation reciting at least two rows on a panel or sidewall.
The Court finds that a narrowing amendment occurred with respect to Claim 1.
The prosecution history reflects that when Claim 1 was originally submitted to the patent
office, it did not contain the “adjacent” limitation or indicate the minimum number of rows
of projections and recesses that needed to be on the ICF. The patent office rejected

14

Claim 1, as well as Claim 4 which disclosed an ICF block with “at least one row” of
interconnecting means, under 35 U.S.C. § 102, stating those claims were
clearly anticipated by Horobin ‘969. Horobin shows and discloses an
insulating construction block comprising a pair of parallel insulation side
members (12, 14) having top an[d] bottom edges and both having
interconnecting means, said interconnecting means at the top and bottom
edges comprising a row of alternating projections (38, 45) and recesses
(40, 46) . . . Since the top and bottom edges of the construction member
having substantially same configuration, it is in inherently to be reversibly
interconnected over another like member.
(Filing No. 92-3, at INT000103-04.)13 The patent office also noted another piece of prior
art, “O’Neill ‘261 [which] shows [an] insulating block having one row of alternating
projections and recesses . . .”14 (Filing No. 92-3, at INT000105.) Thus, the patent office
considered the prior art, which depicted construction blocks with two total rows of
projections and recesses (one row per panel), to disclose ICF blocks with only one row
of projections and recesses for purposes of rejecting original Claims 1 and 4.15

13

The Court notes that during the reexamination of the ‘933 Patent, the patentee argued that the
top view of Horobin ‘969, which depicts a construction block with only a single row of projections and
recesses per panel, “does not show ‘at least two’ longitudinally extending rows in the top interconnecting
means pattern[.]” (Filing No. 92-4, at INT001094.)
14

See U.S. Patent No. 5,163,261; see also Filing No. 213 at CM/ECF p. 11.

15

Integraspec now asserts the Horobin ‘969 prior art was erroneously characterized as having
only one row of alternating projections and recesses. The patent office, however, deemed Horobin ‘969
to disclose a one-row configuration and rejected Claim 1 as being anticipated by Horobin ‘969. The
patentee did not appeal the denial, but instead amended Claim 1, as described below. The Court will not
revisit the question of whether the rejection of Claim 1 as being anticipated by Horobin ‘969 was correct.
See Warner-Jenkinson, 520 U.S. at 33 n.7:
We do not suggest that, where a change is made to overcome an objection based on the
prior art, a court is free to review the correctness of that objection when deciding whether
to apply prosecution history estoppel. As petitioner rightly notes, such concerns are
properly addressed on direct appeal from the denial of a patent, and will not be revisited
in an infringement action.

15

The patent office also rejected Claim 1 based on U.S. Patent No. 5,060,446
(“Beliveau ‘446”),16 explaining only that Claim 1 was “clearly anticipated by Beliveau
‘466.” (Filing No. 92-3, at INT000103.) The figures Integraspec points to in Beliveau
‘446 reflect an ICF panel with three rows of alternating projections and recesses, but
wherein, between those rows on the same panel, the projections (recesses) are next to
projections (recesses), not recesses (projections).17

None of the claims the patent

office rejected based on Beliveau ‘446 contained the “adjacent” limitation. (Compare
Filing No. 92-3, at INT000048-50, with id. at INT000103.)
Considering together the rejections based on Horobin ‘969 and Beliveau ‘466, it
seems clear that the patent office would not have allowed a claim that disclosed an ICF
with only one row of projections and recesses on a panel, or a claim, even if it disclosed
a panel with more than one row of projections and recesses on a panel, that disclosed
an ICF where the projection (recess) of one row was “adjacent” to a projection (recess)
on another row on that same panel.18
16

See Filing No. 194-22 at CM/ECF p. 11-12.

17

See Filling No. 92-4, at INT001090 (“Patentee’s representative argued the difference in the
limitation in the claims that at least two rows must have a projection in one row that is adjacent to the
recess in the other row was not shown in Beliveau.”)
18

The Court notes that original Claim 6 disclosed “[a]n insulating construction member according
to claim 1, wherein said interconnecting means include two rows of alternating projections and recesses.”
(Filing No. 92-3 at INT000049). The “adjacent” limitation was not included in Claim 6, either directly or
through Claim 1. The patent office rejected Claim 6 “as being clearly anticipated by Beliveau ‘466,” but
did not reject Claim 6 as being clearly anticipated by Horobin ‘969.” (Id. at INT000103.)
Original Claim 7 disclosed “[a]n insulating construction member according to claim 6, wherein a
recess of one row is adjacent a projection of the other row.” (Id. at INT000049.) Thus, original Claim 7
disclosed an ICF with “two rows” of projections and recesses where the recess of one of the two rows is
“adjacent” to a projection of the other row. The patent office “objected to” original Claim 7 “as being
dependent upon a rejected base claim,” but stated that it
would be allowable if rewritten in independent form including all of the limitations of the
base claim and any intervening claims. The prior art of record does not show[ ] and

16

In response to the rejection, the patentee amended Claim 1 so that the claim
required “at least two rows of alternating projections and recesses, said projections and
recesses being of substantially the same dimension, wherein said recess of one row is
adjacent said projection of the other row . . .” on an ICF.
INT000116.)

(Filing No. 92-3, at

The patent office accepted Claim 1 after the patentee made those

amendments, and nothing indicates Claim 1 would have been deemed patentable over
Horobin ‘969 and Beliveau ‘446 absent those amendments.
It is clear from the record that the patentee attempted to claim and describe, but
the patent office considered the prior art to disclose, (1) an ICF on which there could be
a single row of alternating projections and recesses on a given panel, and (2) an ICF on
which there were at least two rows of alternating projection and recesses but where the
recess of one of the two rows did not need to be next to a projection of another row.
Thus, it is apparent that, at the time of the amendment, such ICFs were foreseeable and
could be described. Finally, as indicated previously, it is clear that the amendment to
Claim 1 was made to avoid Horobin ‘969 and Beliveau ‘446 and maintain Claim 1’s
patentability.

Therefore, Integraspec has failed to show that the above mentioned

equivalents are tangential to the purpose of the amendment.19 As a result, prosecution

disclose[ ] the interconnecting means of an [ICF] including two rows of alternating
projections and recesses, wherein said recess of one row is adjacent to said projection of
the other row.
(Filing No. 92-3 at INT000104.) In other words, the patent office indicated that it would only allow a claim
if it disclosed an ICF with more than one row of projections and recesses on a panel and the projections
(recesses) of one row were not next to projections (recesses) of another row on that same panel.
19

Compare Filing No. 92-3 at INT000103, with In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir.
2007) (quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)) (“‘A rejection for anticipation under
section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior
art reference.’”), and Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1383 (Fed. Cir. 2005) (quoting Insituform

17

history estoppel precludes an ICF with one row of projections and recesses on a panel
or sidewall or an ICF with more than one row of projections and recesses on a panel or
sidewall but where, between rows, a projection (recess) is next to a projection (recess),
from infringing the ‘933 Patent under the doctrine of equivalents.
The alleged equivalents here are: (1) the accused Nudura ICFs; (2) the accused
Reward Wall’s ICFs; and (3) the accused Amvic ICFs. Integraspec does not dispute
that the accused Nudura ICFs have only a single row of alternating projections and
recesses on a given panel. Although Integraspec characterizes the accused Reward
Wall ICFs as having two rows of “interconnecting means,” Integraspec does not dispute
that they have only a single row of alternating projections and recesses on a given
panel. Thus, the accused Nudura ICFs and the accused Reward Wall ICFs are within
the scope of the surrender resulting from the amendment narrowing the scope of Claim
1, and do not infringe the ‘933 Patent under the doctrine of equivalents.
Unlike the accused Nudura ICFs and the accused Reward Wall ICFs,
Integraspec contends that the accused Amvic ICFs have “at least two” rows of
alternating projections and recesses on a given panel.20 It contends that there are three

Tech., Inc. v. Cat Contracting, Inc., 385 F.3d 1360, 1370 (Fed.Cir.2004); Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., Ltd., 344 F.3d 1359, 1369 (Fed. Cir. 2003)):
[T]he primary consideration in determining when an amendment bears only a tangential
relation to the equivalent in question is “whether the reason for the narrowing amendment
was peripheral, or not directly relevant, to the alleged equivalent.”
...
As we have stated, “an amendment made to avoid prior art that contains the equivalent in
question is not tangential[.]”
20

To the extent Integraspec has characterized the accused Amvic ICFs as having a single row of
projections and recesses per panel, they would, like the accused Nudura and Reward Wall ICFs, be
within the scope of the surrender resulting from the amendment narrowing Claim 1’s scope, and would
not infringe the ‘933 Patent under the doctrine of equivalents.

18

rows of alternating projections and recesses on a panel of an accused Amvic ICF.
Assuming it is proper to characterize the accused Amvic ICFs as having three rows of
projections and recesses on a single panel or sidewall, it appears that, between rows,
projections are next to projections and recesses are next to recesses. Therefore, the
accused Amvic ICFs, even as characterized as having “at least two rows” of projections
and recesses, appear to be within the scope of the surrender resulting from the
amendment narrowing the scope of Claim 1, and do not infringe the ‘933 Patent under
the doctrine of equivalents.
CONCLUSION
For the reasons stated above, the Court finds that the accused ICFs do not
infringe the ‘933 Patent, either literally or under the doctrine of equivalents. Accordingly,
IT IS ORDERED:
1.

The following motions are granted:
a.

The Motion for Summary Judgment (Filing No. 169) filed by
Defendants Polyform, A.G.P., Inc. and Nudura Corporation;

b.

The Motion for Partial Summary Judgment (Filing No. 178) filed by
Defendant Reward Wall Systems, Inc.;

c.

The Motion for Partial Summary Judgment (Filing No. 189) filed by
Defendant Amvic Corporation, are granted;

2.

All claims of infringement asserted against Defendants Polyform, A.G.P.,
Inc., and Nudura Corporation, are dismissed;

3.

The claims of infringement asserted against Defendant Reward Wall
Systems, Inc., with respect to its eForm ICF products are dismissed; and
19

4.

The claims of infringement asserted against Defendant Amvic Corporation
with respect to its Amvic ICF Block products are dismissed.

Dated this 26th day of November, 2012.
BY THE COURT:

s/Laurie Smith Camp
Chief United States District Judge

20