Seal-Flex, Inc. v. Athletic Track and Court Construction, and Owen E. Perry, Sanctioned Party-Appellant

172 F.3d 836, 50 U.S.P.Q. 2d (BNA) 1225, 1999 U.S. App. LEXIS 6082
CourtCourt of Appeals for the Federal Circuit
DecidedApril 1, 1999
Docket97-1432, 97-1504 and 98-1045
StatusPublished
Cited by62 cases

This text of 172 F.3d 836 (Seal-Flex, Inc. v. Athletic Track and Court Construction, and Owen E. Perry, Sanctioned Party-Appellant) 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
Seal-Flex, Inc. v. Athletic Track and Court Construction, and Owen E. Perry, Sanctioned Party-Appellant, 172 F.3d 836, 50 U.S.P.Q. 2d (BNA) 1225, 1999 U.S. App. LEXIS 6082 (Fed. Cir. 1999).

Opinions

Opinion for the court filed PER CURIAM. Concurring opinions filed by Circuit Judge RADER, and Circuit Judge BRYSON in which Circuit Judge PAULINE NEWMAN joins.

PER CURIAM.

Seal-Flex, Inc. is the assignee of U.S. Patent Nos. 4,474,833 (the ’833 patent) and 4,529,622 (the ’622 patent). In 1991, Seal-Flex sued Athletic Track and Court Construction (AT & CC) in the United States District Court for the Eastern District of Michigan for infringement of both patents. The district court bifurcated proceedings for trial. At the first trial, the jury determined that AT & CC had literally infringed the ’622 patent.

After the first trial, the district court granted Seal-Flex’s motion for discovery sanctions against AT & CC and struck AT & CC’s affirmative defenses and counterclaims. See Seal-Flex, Inc. v. Athletic Track & Court Constr., No. 91-CV-60494-AA (E.D. Mich. June 12, 1997) (order granting motion for emergency sanctions). After the parties agreed to a stipulated damage award, the district court entered judgment against AT & CC. See Seal-Flex, Inc. v. Athletic Track & Court Constr., No. 91-CV-60494-AA (E.D. Mich. June 12, 1997) (order entering judgment). The district court also ordered AT & CC and Owen E. Perry, its attorney, to pay Seal-Flex attorney fees. See Seal-Flex, Inc. v. Athletic Track & Court Constr., No. 91-CV-60494-AA (E.D.Mich. Sept. 18, 1997) (order granting Seal-Flex’s motion for attorney fees). AT & CC and Perry now appeal. Because substantial evidence supports the jury’s determination that AT [839]*839& CC literally infringed the ’622 patent and the district court did not abuse its discretion by imposing sanctions, this court affirms.

I.

Because Seal-Flex did not appeal the district court’s entry of judgment of non-infringement of the ’833 patent, this appeal involves only the ’622 patent. The ’622 patent discloses a method for constructing an all-weather activity mat on a foundation. The foundation typically consists of asphalt or concrete. The mat consists of layers of particulate rubber bound together with latex. Mats constructed according to the claimed method are often used as running tracks. Claim 1 of the ’622 patent sets forth the claimed construction process at issue in this appeal:

A method for constructing an activity mat over a foundation comprising the steps of:
spreading an adhesive tack coating for adhering the mat to the foundation over the foundation surface;
spreading a first uniform layer of particulate rubber over the tack coating;
then, in sequence, first applying a liquid latex binder to the previously spread rubber layer in sufficient quantity to coat substantially all rubber particles of said layer then air drying said applied mixture until substantially no liquid is visible, then spreading a succeeding uniform layer of particulate rubber over the preceding layers; and
continuing the aforesaid sequential application of latex binder, air drying the binder followed by the spreading of a uniform layer of rubber over the preceding layers until the approximate desired thickness for the mat is achieved,

(emphasis added).

According to this method, the builder first spreads a suitable tack coating uniformly over the foundation surface. Col. 2,11. 16-17. As suitable tack coatings, the specification of the ’622 patent specifically mentions emulsified asphalt diluted 50% by water, such as SS1H, hot applied asphalt, urethanes, and modified epoxies. Col. 2, 11. 18-32. The written description further clarifies that other materials can serve as the tack coating if they perform the function of adhering the mat to the foundation. Col. 2, 11. 25-26. Beyond this general observation, the specification does not expressly mention latex as a tack coating.

The next step in this method involves spreading a layer of particulate rubber over the tack coat. Col. 2,11. 36^10. Then the builder may add a second coating of the adhesive tack coat material followed by a second layer of particulate rubber. Col. 3, 11. 14-38. To add other layers, the builder applies a liquid binder, such as latex, air dries the binder, and then applies a layer of rubber particles. Col. 3, 11. 40-52, col. 4,11. 16-23. This process continues until the mat has reached its prescribed thickness. The builder completes the project by applying a final sealing coat of binder material. Col. 5, 11. 6-10. Although Seal-Flex does not construct any activity mats itself, each of its shareholders is licensed to practice this patented process.

AT & CC builds and repairs all-weather running tracks throughout the United States. After becoming aware of AT & CC’s track construction techniques, Seal-Flex sued AT & CC for patent infringement in 1991. In response, AT & CC raised the affirmative defenses of patent invalidity under 35 U.S.C. §§ 102(b) and 103. AT & CC also counterclaimed. The counterclaim sought a declaratory judgment that the patents were invalid, that Seal-Flex had engaged in unfair competition, and that Seal-Flex had committed antitrust violations.

On September 19, 1994, the district court granted AT & CC’s motion for summary judgment of invalidity based on § 102(b) statutory bars. The district court concluded that the claimed invention had been in public use and that the inventor, [840]*840Marvin Maxfield, had sold the claimed invention — both more than one year before the filing date of both patents. See Seal-Flex, Inc. v. Athletic Track & Court Constr., 870 F.Supp. 753 (E.D.Mich.1994). On an appeal from that decision, however, this court discerned genuine factual disputes and vacated the summary judgment. See Seal-Flex, Inc. v. Athletic Track & Court Constr., 98 F.3d 1318, 1324, 40 USPQ2d 1450, 1455 (Fed. Cir.1996).

On remand, the district court set a trial date of March 13, 1997, to determine AT & CC’s liability for infringement of the ’833 and ’622 patents. A separate trial would follow, if necessary, to address damages and AT & CC’s defenses and counterclaims. In its order scheduling these proceedings, the district court set the closing date for all discovery as January 31, 1997. Seal-Flex, Inc. v. Athletic Track & Court Constr., No. 91-CV-60494-AA (E.D.Mich. Dec. 16, 1997) (order scheduling proceedings).

On March 6, 1997, Seal-Flex filed a motion requesting the district court to compel AT & CC to produce specific documents withheld during discovery. In an accompanying affidavit, Seal-Flex’s attorney stated that she had gone to Perry’s office and reviewed AT & CC documents that had not yet been produced by February 25, 1997. She marked documents which Perry agreed to copy and deliver to Seal-Flex. Two days later, however, Perry called and stated that his client would not allow him to deliver the documents. Based on the affidavit, the district court granted Seal-Flex’s motion to compel and further ordered AT & CC to “produce [within three days] all documents relating to all rubber/latex track construction projects in which it has participated.” Seal-Flex, Inc. v. Athletic Track & Court Constr., No. 91-CV-60494-AA, slip op. at 2 (E.D.Mich. March 10, 1997) (order granting motion to compel).

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Eli Lilly and Company v. Hospira, Inc.
933 F.3d 1320 (Federal Circuit, 2019)
In re Biogen 755 Patent Litig.
335 F. Supp. 3d 688 (D. New Jersey, 2018)
Card-Monroe Corp. v. Tuftco Corp.
270 F. Supp. 3d 967 (E.D. Tennessee, 2017)
SRI International, Inc. v. Cisco Systems, Inc.
254 F. Supp. 3d 680 (D. Delaware, 2017)
In re: Neurografix ('360) Patent Litigation
201 F. Supp. 3d 206 (D. Massachusetts, 2016)
Brocade Communications Systems, Inc. v. A10 Networks, Inc.
843 F. Supp. 2d 1018 (N.D. California, 2012)

Cite This Page — Counsel Stack

Bluebook (online)
172 F.3d 836, 50 U.S.P.Q. 2d (BNA) 1225, 1999 U.S. App. LEXIS 6082, Counsel Stack Legal Research, https://law.counselstack.com/opinion/seal-flex-inc-v-athletic-track-and-court-construction-and-owen-e-cafc-1999.