Ron Nystrom v. Trex Company, Inc. And Trex Company, LLC

374 F.3d 1105, 71 U.S.P.Q. 2d (BNA) 1241, 2004 U.S. App. LEXIS 13407
CourtCourt of Appeals for the Federal Circuit
DecidedJune 28, 2004
Docket03-1092
StatusPublished
Cited by25 cases

This text of 374 F.3d 1105 (Ron Nystrom v. Trex Company, Inc. And Trex Company, LLC) 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
Ron Nystrom v. Trex Company, Inc. And Trex Company, LLC, 374 F.3d 1105, 71 U.S.P.Q. 2d (BNA) 1241, 2004 U.S. App. LEXIS 13407 (Fed. Cir. 2004).

Opinions

LINN, Circuit Judge.

Ron Nystrom (“Nystrom”) appeals from the grant of summary judgment of non-infringement of claims 1-15 and of invalidity of claims 18-20 of his U.S. Patent No. 5,474,831 (“the '831 patent”) and from an order denying sanctions under 28 U.S.C. § 1927, entered by the United States District Court for the Eastern District of Virginia in favor of defendants TREX Company, Inc. and TREX Company, LLC (collectively “TREX”). Nystrom v. TREX Co., Inc., No. 2:01cv905 (E.D.Va. Oct. 25, 2002) (original final judgment); Nystrom v. TREX Co., Inc., No. 2:01cv905 (E.D.Va. Oct. 21, 2003) (amended final judgment). Because the district court erroneously construed certain claim limitations and erred in not properly applying our precedent relating to invalidity, we reverse the district court’s summary judgments of non-infringement and invalidity and remand the case to the district court for further proceedings. Further, because the district court did not abuse its discretion in denying Nystrom’s motion for sanctions under 28 U.S.C. § 1927, we affirm the district court’s disposition of that motion.

I. BACKGROUND

A. The '831 Patent

The '831 patent is directed to construction material for use in flooring surfaces; specifically, boards for use in constructing an exterior floor, such as a deck. '831 patent, col. 1, 11. 6-8. The invention described and claimed in the patent is an exterior wood flooring board shaped to shed water from its upper surface while at the same time providing a surface on which it is comfortable to walk and stand. Id. at col. 2, 11. 8-11. In the Summary of Invention, the patent describes the invention as “a decking board which is shaped to shed water from its upper surface, and which also yields a superior product when cut from a log, reducing the amount of scrap in the outermost boards cut from a log.” Id. at col. 2, 11. 20-24. Figure 2, reproduced below, provides a transverse sectional view of the preferred embodiment of the invention:

[1108]*1108[[Image here]]

Id. at col. 2, 11. 49-50. The embodiment depicted in Figure 2 is described in the '831 patent specification as follows:

The board specifically shown and described herein has generally the size and shape of a so-called 5/4 decking board, with rounded top side edges 11 and 12 each having a radius of curvature r of about one-quarter of an inch. The board 10 differs slightly in width w and thickness t from a standard decking board, however, in that it has a width of only about 5 inches and a thickness of about 1-3/8 inches.
More importantly, the board of the invention has a slightly rounded upper surface 13 that slopes gradually off to either side of the center of the board, defining a convex surface that promotes the running off of water. This surface may have a radius of curvature Rj, for example, of about 24 inches.
Further, in a preferred construction the board also has a complementally shaped concave bottom surface 14 with a radius of curvature R2 of about 24 inches, placed to leave two relatively flat side panels c and d along opposite edges of the board.
The curved top surface has a total fall or drop a from the center to each side edge of about 1/8 of an inch, and the curved bottom surface similarly has a total recess b from the plane of the two side panels to the deepest part at the center of the board of about 1/8 of an inch.

Id. at col. 3, ll. 1-24.

Independent claim 1 contains all of the disputed claim terms, and provides (with the disputed terms highlighted):

1. A board for use in constructing a flooring surface for exterior use, said board having a top surface, a bottom surface and opposite side edges, said top surface being manufactured to have a slightly rounded or curved configuration from a longitudinal center line thereof downwardly toward each side edge, thereby defining a convex top surface which sheds water and at the same time is comfortable to walk on, and said bottom surface having a concave configuration for nesting engagement with the top surface of another board so that a plurality of the boards may be stacked one on top of the other with the stability of [1109]*1109conventional boards having flat top and bottom surfaces.

Id. at col. 4,11.19-30 (emphases added).

Independent claim 18 is representative of the claims for which invalidity is disputed, and provides (with the disputed limitation highlighted):

18. A decking board for use in constructing a flooring surface for exterior use, said board having a convex top surface, a bottom surface and opposite side edges; said convex top surface being manufactured to have a radius of curvature with a slightly rounded or curved configuration extending across the top surface from one side edge to the other, defining a difference in thickness between the longitudinal centerline and the opposite side edges, tvith the ratio of said difference in thickness to the width of the board being about 1:40; and said convex top surface serving to shed water from said board when exposed to weather, and at the same time, when a plurality of said boards are laid in side-by-side relationship, presenting a surface that is comfortable to stand and walk on.

Id. at col. 6, ll. 16-29 (emphasis added).

B. Proceedings Below

Nystrom is the inventor and sole owner of the '831 patent. He is a working carpenter and the owner of a two-truck, two-employee lumberyard. He has been in the business of building exterior decks for twenty-five years. TREX is a manufacturer of exterior decking planks made from composites of wood fibers and recycled plastic. On December 5, 2001, Nystrom filed suit in the Eastern District of Virginia, alleging TREX infringed the '831 patent. TREX counterclaimed, seeking a declaratory judgment of non-infringement, invalidity, and unenforceability, and alleging antitrust violations on the part of Nys-trom, his company, and his attorneys. Nystrom then filed a motion to dismiss the antitrust counterclaims. In response, TREX voluntarily dismissed the antitrust counterclaims, but then filed an amended antitrust counterclaim alleging many of the same antitrust violations against Nystrom alone. Soon after the amended counterclaim was filed, TREX dismissed its amended antitrust counterclaim, prompting Nystrom to move for sanctions on the ground that TREX’s attorneys “multi-plie[d] the proceedings ... unreasonably and vexatiously.” 28 U.S.C. § 1927 (2000). The district court denied the motion for sanctions under § 1927. Nystrom v. TREX Co., Inc., No. 2:01cv905 (E.D.Va. July 2, 2002) (“Sanctions Order ”).

In due course, the district court held a Markman hearing and issued a claim construction ruling concerning three disputed claim terms of the '831 patent. Nystrom v. TREX Co., Inc., No. 2:01cv905 (E.D. Va. Aug 19, 2002) (“Claim Construction Order”).

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Bluebook (online)
374 F.3d 1105, 71 U.S.P.Q. 2d (BNA) 1241, 2004 U.S. App. LEXIS 13407, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ron-nystrom-v-trex-company-inc-and-trex-company-llc-cafc-2004.