AIA Engineering Ltd. v. Magotteaux International S/A

657 F.3d 1250
CourtCourt of Appeals for the Federal Circuit
DecidedAugust 31, 2011
DocketNo. 2011-1058
StatusPublished
Cited by2 cases

This text of 657 F.3d 1250 (AIA Engineering Ltd. v. Magotteaux International S/A) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
AIA Engineering Ltd. v. Magotteaux International S/A, 657 F.3d 1250 (Fed. Cir. 2011).

Opinion

LOURIE, Circuit Judge.

Magotteaux International S/A and Magotteaux, Inc., (together, “Magotteaux”) appeal from the holding of the United States District Court for the Middle District of Tennessee on summary judgment that the asserted claims of U.S. Patent RE39,998 (the “RE'998 patent”) are invalid under 35 U.S.C. § 251 for impermissibly recapturing subject matter surrendered during reissue examination. AIA Eng’g [1254]*1254Ltd. v. Magotteaux Int’l SIA, 745 F.Supp.2d 852 (M.D.Tenn.2010) (“SJ Op.”). Because the district court erred in construing the claim term “solid solution,” and thus erred in determining that the reissued claims impermissibly recaptured surrendered subject matter, we reverse and remand.

Background

I

The patented technology in this case involves composite wear products used for crushing and grinding abrasive materials in industrial settings. Magotteaux manufactures composite wear products for grinding rock and other abrasive materials and sells those products to power stations and customers in the cement, mining, and recycling industries. SJ Op. at 855. Magotteaux also owns the RE'998 patent, a reissue of Magotteaux’s earlier U.S. Patent 6,399,176 (the “'176 patent”). Entitled “Composite Wear Component,” the RE'998 patent is directed to a wear component that contains ceramic materials with a mixture of aluminum oxide (alumina or A1203) and zirconium oxide (zirconia or Zr02). Id. at 856.

The district court’s opinion describes at length the prosecution histories of the RE'998 and '176 patents. See id. at 856-62. We summarize them here only as relevant to the dispute on appeal. The '176 patent issued from an application filed in the United States Patent and Trademark Office (“PTO”) on June 1, 1999, which itself was a national stage of a PCT application, 35 U.S.C. § 371, that claimed priority from two European applications. J.A. 1365. In the original application received in the PTO, independent claim 1 claimed a “[cjomposite wear component” containing “inserts” that consist of a “ceramic pad,” wherein the ceramic pad consists of “a homogeneous solid solution of 20 to 80% of A1203 and 80 to 20% of Zr02.” J.A.- 345.1 The claim further required that the ceramic pad “be[j impregnated with a liquid metal” during the production process. Id. The examiner initially rejected the pending claims as either anticipated under 35 U.S.C. § 102(b) by U.S. Patent 5,551,963 (“Larmie”) or obvious under 35 U.S.C. § 103(a) over Larmie in view of other prior art references. J.A. 323-30. In response, the applicant submitted an amendment with remarks. J.A. 335-65. The applicant amended independent claim 1 to specify, inter alia, that the ceramic pad was “porous,” but the applicant did not alter the portion of the claim requiring a “homogeneous solid solution.”2 In addition, the applicant disputed the examiner’s rejection over Larmie, arguing that instead of using “liquid metal ” during the production pro[1255]*1255cess, Larmie merely taught the use of a “solution of ... salts of a metal.” J.A. 339. With respect to the “solid solution” limitation of the pending claims, the applicant stated that “the invention is based on the observation that the ceramic pad must be a homogenous solid solution of A1203 /Zr02.” J.A.340.

The applicant also submitted a declaration under 37 C.F.R. § 1.132 by the application’s sole named inventor, Hubert Jacques Francois. J.A. 358-61. In characterizing his claimed invention, Francois used the term “solid solution” several times, stating, for instance, that a “homogeneous solid solution of both ceramics meets the advantages of both A1203 and Zr02”; that “[a]n unexpected synergy is the result of this solid solution which exhibits better results than each single component contribution”; and that “[o]nly solid solutions of Al2(VZr02 in proportions of 80/20 to 20/80 presents [sic] no ‘microspalling’ effects.” J.A. 359 (emphases added).

Following the applicant’s response to the office action, the examiner issued a notice of allowance for claims 1-11. J.A. 370. The '176 patent issued on June 4, 2002, with issued claim 1 reading as follows:

1. Composite wear component produced by classical or centrifugal casting and consisting of
a metal matrix having a working face or faces including inserts which have wear resistance, the inserts consist of a porous ceramic pad, the porous ceramic pad consisting of a homogeneous solid solution of 20 to 80% of A1203 and 80 to 20% of Zr02, the percentages being expressed by weights of the constituents, and the porous ceramic pad being integrated into the metal matrix by impregnation of a liquid metal in the porous ceramic pad during the casting.

'176 patent claim 1 (emphases added).

On May 30, 2003, the applicant, with the consent of assignee Magotteaux, applied for reissue of the '176 patent. J.A. 392-415. Through reissue the applicant sought to amend claim 1 and to add new claims 12-21. SJ Op. at 858. Both amended claim 1 and new independent claim 12 were directed to a composite wear component. Id. at 859. Claims 1 and 12 both replaced the term “solid solution” in issued claim 1 with “ceramic composite.” J.A. 520-21. Moreover, new claim 12 used the terms “comprising” and “comprises” instead of “consisting of’ in specifying the makeup of the wear component and the ceramic pad. The examiner never objected to these new claim limitations. See J.A. 447-51, 460-62, 470-80, 516, 533-42, 1326-34.

During prosecution of the RE'998 patent, an anonymous party filed a protest under 37 C.F.R. § 291, contending that claims 1 and 12 of the reissue application should be rejected under 35 U.S.C. § 251. SJ Op. at 860; J.A. 1277-89. Specifically, the protestor asserted that the substitutions in the reissue claims of (1) “comprises” for “consisting of’ and (2) “ceramic composite” for “solid solution” impermissibly recaptured subject matter that was surrendered during prosecution of the original '176 patent. The examiner disagreed with the protestor and found that the reissue claims did not violate § 251. SJ Op. at 860; J.A. 1330-31. Regarding the first substitution, the examiner concluded that the applicant’s submissions during prosecution of the '176 patent did not limit the ceramic pads to only A1203 and Zr02 and that “the specification clearly teaches that other additives in addition to the claimed compounds may be included in the composite.” J.A. 1331. As for the second substitution, the examiner acknowledged that the applicant referred to the invention as a solid solution during prosecution, but stated that, upon review of the specification and its disclosed method of forming the composite, “it is unclear how

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