Federal Circuit Revisits Claim Construction Ruling in the Wake of Phillips to Limit Term to How It Was Used in Context

Case: Nystrom v. Trex Co. , No. 03-1092 (Fed Cir. 9/14/05)

The One Sentence Summary: The Federal Circuit panel issued a new claim construction ruling in this case after the Phillips v. AWH decision, ruling that the term "board" must be interpreted in light of the context in which it was used to be limited to a board made of wood.


Federal Circuit Holdings:

• The district court properly interpreted a claim for a "board" as referring to a board made from wood because the written description and prosecution history always referred to it in that context.
  
• Plaintiff argued for claim differentiation in that claim 16 referred to a "wood decking board", implying that claim 1 must be interpreted more broadly. However, the presumption of different meaning of these claims was overcome by the use of the term "board" in the written description and prosecution history.


• The district court erred in construing the term "convex top surface" as limited to a particular degree of curvature. The statements from the prosecution history that this limitation arose from were limited to a single claim (16) rather than all claims.


• The district court erred in holding that claim 18 was anticipated by a prior art reference. The drawing of the prior art reference should not have been construed as drawn to scale with exact proportions such that measurement of the drawing could invalidate the proportions claimed in claim 18.


• The district court properly refused to award sanctions against defendant under 18 U.S.C. § 1927 for multiplying proceedings unreasonably and vexatiously. The antitrust counterclaims asserted by Trex were in a single action, and Trex did not act in bad faith in asserting its counterclaims.