## United States Court of Appeals for the Federal Circuit

03-1092

RON NYSTROM, Plaintiff-Appellant,

v. TREX COMPANY, INC. and TREX COMPANY, LLC, Defendants-Appellees.

Joseph S. Presta , Nixon & Vanderhye, P.C., of Ar lington, Virginia, argued for plaintiff-appellant. Patrick J. Coyne , Finnegan, Henderson, Farabow, Ga rrett & Dunner, L.L.P, of Washington, DC, argued for defendants-appe llees. With him on the brief was Troy E. Grabow

. Appealed from: United States District Court for the Eastern District of Virginia Judge Jerome B. Friedman

## United States Court of Appeals for the Federal Circuit

03-1092

RON NYSTROM, Plaintiff-Appellant,

v.

TREX COMPANY, INC. and TREX COMPANY, LLC, Defendants-Appellees.

__________________________ DECIDED: September 14, 2005

__________________________ Before MAYER, 1 GAJARSA, and LINN, Circuit Judges

. 2 LINN, Circuit Judge

. Ron Nystrom (“Nystrom”) appeals from the grant of summary judgment of noninfringement of cl aims 1-15 and 18-20 3 and of invalidity of claims 18-20 of the ’831

1 Haldane Robert Mayer vacated the pos ition of Chief Judge on December 24, 2004. 2 The earlier opinion in this case , reported at 374 F. 3d 1105 (Fed. Cir. 2004), is withdrawn, and this opini on is substituted therefor. See Order in this case issued this date. 3 The district court granted TREX’s motion for summary judgment of noninfringement. Although it is not entirely clear from the record, that motion was apparently for all claims of U.S. Patent No. 5,474,831 (“the ’831 patent ”). The district court also granted TREX’s separate motion for partial summary judgment of noninfringement of claims 16 and 17. Nyst rom has raised no argument on appeal that would affect the district cour t’s grant of summary judgment of non-infringement of claims 16 and 17. Thus, on the issue of infringement, only the district court’s grant of summary judgment of non-infringement of cl aims 1-15 and 18-20 is before us.patent and from an order deny ing 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 dist rict court correctly construed “board” and “manufactured to have,” we affirm the district court’s grant of summary j udgment of non-infringement of claims 1-15 and 18-20. However, we reverse t he district court’s construction of “convex top surface” and the district c ourt’s grant of summary judgment of invalidity of claims 18- 20 and remand the case to the di strict court for further proceedings. Further, because the district court did not abus e its discretion in denying N ystrom’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 constructi on material for use in flooring surfaces: specifically, boards for use in constructing an exterior floor, such as a deck. ’831 patent, col. 1, ll. 6-8. T he invention described and claimed in the patent is an exterior wood flooring board shaped to shed water from it s upper surface while at the same time providing a surface on which it is comfortable to walk and stand. Id. at col. 2, ll. 8-11. In the Summary of Invention, t he patent describes the invention as “a decking board which is shaped to shed water from its upper surfac e, and which also yields a superior product when cut from a log, reduci ng the amount of scrap in the outermost boards cut from a

03-1092 2log.” Id. at col. 2, ll. 20-24. Figure 2, reproduced below, prov ides a transverse sectional view of the preferred embodi ment of the invention:

Id. at col. 2, ll. 49-50. T he embodiment depicted in Figure 2 is described in the ’831 patent specification as follows: The board specifically shown and descr ibed herein has generally the size and shape of a so-called 5/4 decki ng board, with rounded top side edges 11 and 12 each having a radius of curv ature 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 boar d of the invention has a slightly rounded upper surface 13 that slopes gradually off to eit her 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 R 1 , for example, of about 24 inches. Further, in a preferred cons truction the board also has a complementally shaped concave bottom surface 14 with a radius of curvature R 2 of about 24 inches, placed to l eave two relatively flat side panels c and d along opposite edges of the board. The curved top surface has a total fa ll 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 t he plane of the two side panels to the deepest part at the center of t he board of about 1/8 of an inch.

03-1092 3Id. at col. 3, ll. 1-24. Independent claim 1 contains all of the di sputed 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 c enter 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 wit h the stability of convent ional boards having flat top and bottom surfaces. Id. at col. 4, ll. 19-30. 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 construc ting a flooring surface for exterior use, said board having a convex t op surface, a bottom surface and opposite side edges; said convex top su rface 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 t he longitudinal centerline and the opposite side edges, with 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 ar e laid in side-by-side relationship, presenting a surface that is co mfortable to stand and walk on. Id. at col. 6, ll. 16-29. 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

03-1092 4December 5, 2001, Nystrom filed suit in t he Eastern District of Virginia, alleging TREX infringed the ’831 patent. TREX counterclaim ed, seeking a declar atory judgment of non-infringement, invalidity, and unenforceability, and alleging antit rust violations on the part of Nystrom, his company, and his attorne ys. Nystrom then filed a motion to dismiss the antitrust counterclaims. In response, TREX voluntarily dism issed the antitrust counterclaims, but then fil ed an amended antitrust countercl aim alleging many of the same antitrust violations against Nystrom alone. Soon after the amended counterclaim was filed, TREX dismissed its amended antitru st counterclaim, pr ompting Nystrom to move for sanctions on the ground that TREX’s attorneys “multiplie[d] the proceedings . . . unreasonably and vexatiously.” 28 U.S.C. § 1927 (200 0). 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 dis puted claim terms of the ’831 patent. Nystrom v. TREX Co., Inc. , No. 2:01cv905 (E.D. Va. Aug. 19, 2002) (“ Claim Construction Order ”). Based on the district court’s claim constr uction ruling, Nystrom conceded that he could not prove his infringement case against TREX. Therefore, Nystrom asked the district court to enter judgment of non-infringement in favor of TREX and to dismiss TREX’s invalidity and unenforceability counterclaims without prejudice. TREX then moved for summary judgment of non-infringement and fo r summary judgment of invalidity of claims 18-20. The district court entered j udgment of non-infringement of all claims and deferred ruling on the outstanding mo tion regarding claims 18-20. Nystrom v. TREX Co., Inc. , No. 2:01cv905 (E.D. Va. Sept. 11, 2002) . Subsequently, the district court

03-1092 5granted TREX’s motion for summary judgment of invalidity of claims 18-20. Nystrom v. TREX Co., Inc. , No. 2:01cv905 (E.D. Va. Oct. 17, 2002) (“ Invalidity Order ”). On October 25, 2002, the district court ent ered its initial final judgment. In that judgment, the invalidity and unenforceability counterclaims r egarding claims 1-17 were stayed pending appeal. Nystrom appealed the claim construction ru lings, the grant of summary judgment of non-infringement based ther eon, the grant of summary judgment of invalidity of claims 18-20, and the district c ourt’s denial of sanctions to this court. On August 8, 2003, we dismissed Nystrom’s appeal for lack of finality in light of the stayed invalidity and unenforceability counterclaims regarding claims 1-17. Nystrom v. TREX Co., Inc. , 339 F.3d 1347 (Fed. Cir. 2003). Following the entry by the district court on October 21, 2003 of an Amended Final Judgment nunc pro tunc October 25, 2002, that repeated the previously entered judgments of non-infringement and of inva lidity of claims 18-20 and dismissed without prejudice the remainder of TREX’s declaratory judgment counterclaims regarding claims 1-17, we reinstated the appeal. Nystrom v. TREX Co., Inc. , 83 Fed. Appx. 321, 322 (Fed. Cir. 2003). We have jurisdiction pursuant to 28 U. S.C. § 1295(a)(1) and address the merits of Nystrom’s appeal in this opinion. II. DISCUSSION A. Standard of Review “We review the grant of summary j udgment de novo, drawing all reasonable inferences in favor of the non-moving party.” Teleflex, Inc. v. Ficosa N. Am. Corp. , 299 F.3d 1313, 1323 (Fed. Cir. 2002) (citing Anderson v. Liberty Lobby, Inc. , 477 U.S. 242,

03-1092 6255 (1986)). Summary judgment is only appropriate if there are no genuine issues of material fact and the movant is entitl ed to judgment as a matter of law. SRI Int’l v. Matsushita Elec. Corp. , 775 F.2d 1107, 1116 (Fed. Cir. 1985) (en banc). Claim construction is a questi on of law reviewed de novo. Ferguson Beauregard v. Mega Sys., Inc. , 350 F.3d 1327, 1338 (Fed. Cir. 2003). Infringement, whether literal or under the doctrine of equivalents, is a question of fact. Id. This court reviews a district court’s denial of a motion for sanctions under 28 U.S.C. § 1927 pursuant to the law of the regional circuit. See Phonometrics, Inc. v. Westin Hotel Co. , 350 F.3d 1242, 1246 (Fed. Cir . 2003). The Fourth Circuit reviews the denial of sanctions pursuant to § 1927 for an abuse of discretion. Chaudhry v. Gallerizzo , 174 F.3d 394, 410 (4th Cir. 1999). B. Claim Construction Nystrom argues that the district court misconstrued three patent claim limitations: “board,” “manufactured to have,” and “convex top surface.” TREX responds that the district court’s claim c onstructions were correct. 1. “Board” The district court construed the word “board” in independent claim 1 to mean a “piece of elongated construction material made from wood cut from a log.” Claim Construction Order , slip op. at 9. The district c ourt held that Nystrom had limited the scope of the claim term “board” by statements in the written descrip tion that a board is cut or obtained from a log, id. at 7 (citing ’831 paten t, col. 2, ll. 22-23; id. at col. 2, l. 34), and statements made by Nystrom during pros ecution in arguing against an obviousness rejection, id. at 8.

03-1092 7Nystrom argues that “board” in claim 1 is not limited to conventional wood boards that are cut from a log. He argues that the claim language “boar d” does not contain a description of the material from which t he board is composed and that the claim should not be so limited. He contends it was error for the district court to rely on statements in the specification to limit the claim because those statem ents do not represent a clear disavowal of claim scope. Moreover, Nystro m asserts that there was no disavowal in the prosecution history, because his comment in response to an obviousness rejection was not intended to limit but to establish t hat the resin tiles disclosed in the Yoshida reference were not properly combined wit h the wood planks of the Zagelmeyer reference in the examiner’s § 103 obviousne ss rejection. Thus, Nystrom argues, the comment was not such a clear and unambiguous disclaimer as to justify limiting the claim term. TREX responds that the ordi nary meaning of “board” is a piece of sawn lumber. Because the specification only disclosed a board as made of wood and cut from a log, TREX contends that the claim term “board” must be limited to wood boards cut from a log. TREX further argues that Nystrom di sclaimed non-wood boards by the statements he made during prosecution in overcoming an obviousness rejection based on Yoshida and Zagelmeyer. As this court recently articulated in our en banc decision in Phillips v. AWH Corp. , “[i]t is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’” 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Sa fari Water Filtration Sys., Inc. , 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Therefore, we begin our claim construction analysis with

03-1092 8the words of the claim. Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996). The words of the claim are gener ally given their ordinary and customary meaning. Id. at 1582. The ordinar y and customary meaning of a claim term “is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips , 415 F.3d at 1313. The person of ordinary skill in the art views the claim term in the light of the entire intrinsic record. See id. Thus, the claims “must be read in view of the spec ification, of which they are a part.” Markman v. Westview Instruments, Inc. , 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc). “‘The construction that stays true to the clai m language and most natura lly aligns with the patent’s description of the in vention will be, in the end, t he correct construction.’” Phillips , 415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa’ per Azioni , 158 F.3d 1243, 1250 (Fed. Cir. 1998)). In additi on to the written description, “the prosecution history can often inform the meaning of the claim language by demonstrating how the invent or understood the invention and whether the inventor limited the invention in the c ourse of prosecution, making the claim scope narrower than it would otherwise be.” Id. at 1317. In discerning the m eaning of claim terms, resort to dictionaries and treatises also may be helpful. Id. at 1318. However, “undue reliance on extrinsic evidence poses the risk that it will be used to change the meaning of claims in derogation of the ‘indisputable public records consisting of the claims, the specification and the prosecut ion history,’ thereby undermini ng the public notice function of patents.” Id. at 1319 (quoting Southwall Techs., Inc. v. Cardinal IG Co. , 54 F.3d 1570, 1578 (Fed. Cir. 1995)).

03-1092 9The claims at issue do not include any language describing the “board” as cut from a log or necessarily bei ng made of wood. In fact, cl aim 16, which is similar to claim 1, covers “[a] wood decking board for use in constructing a flooring surface for exterior use, said decking board having a convex top surface, a bottom surface, opposite side edges, and curved growth rings

. . . .” ’831 patent, col. 5, ll. 32-35 (emphases added). By contrast, claim 1 simply claims a “board,” without restricting the term to a particular material or describing characteristics of wooden boards cut from logs. See id. at col. 4, ll. 19-21 (“A board for use in constructing a flooring surface for exterior use, said board having a top surface, a bo ttom surface and opposite side edges . . . .” (emphases added)). When differ ent words or phrases are used in separate claims, a difference in meaning is presumed. Tandon Corp. v. United States Int’l Trade Comm’n , 831 F.2d 1017, 1023 (Fed. Cir. 1987). This principle of claim construction would suggest that the difference in the use of terms has significance and that “board” should not be limited to wood that is cut fr om a log. However, simply noting the difference in the use of claim language does not end the matter. Different terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosec ution history indicate that such a reading of the terms or phrases is proper. Id. at 1023-24 (affirming the International Trade Commission’s holding that “the inclusion of the term ‘non-gi mballed’ in claim 5 did not require that claims 1 and 12 be read to encompass a gimballed first transducer”). An examination of the term “board” in the context of the written description and prosecution history of the ’ 831 patent leads to the conclusi on that the term “board” must be limited to wood cut from a log. The wri tten description begins by noting that “[a]

03-1092 10variety of specialized flooring materials have been developed for interior and exterior use.” ’831 patent, col. 1, ll. 13-14. The discussion then proceeds to the specific context of wood flooring materials for exterior use. In the context of the discussion of wood flooring materials for exteri or use, the patent states, “In all conventional flooring materials known to applicant, the top and botto m horizontal surfaces of these flooring materials are flat and planar. As a result, water tends to stand on the surface of the decking material, causing it to deteriorate more quickly than it otherwise would.” Id. at ll. 57-61. The discussion continues, “Further, t he process used to cut such lumber from logs can produce inferior product on the out ermost boards, often leading to scrap.” Id. at ll. 65-67. The Background of the Invention, thus, frames the invention in the context of wood decking materials cut from logs , even though it acknowledges that other materials ex ist. This context is maintained throughout the written description. For example, the written description states, “With particular refe rence to FIGS. 1-5, it can be seen that the convex top surface 13 is curved in the same general direction as the curvature of the growth rings GR.” Id. at col. 3, ll. 25-27. The written description goes on to note that the manner of installation of conventional decking boards “leads to accelerated deterioration of the boards when exposed to weather.” Id. at ll. 34-35. Similarly, the written description states, “FIG. 4 shows the relationship of the outermost boards B cut from a log L.” Id. at ll. 65-66. Throughout the writt en description, Nystrom consistently used the term “board” to describe wood decking material cut from a log. See AquaTex Indus., Inc. v. Techniche Solutions , No. 05-1088, slip op. at 9 (Fed. Cir. Aug. 19, 2005)

03-1092 11(“Here, the context of the spec ification ‘makes clear that the patentee did not intend the term [fiberfill] to encompass’ natural materials.” (citation omitted)). The prosecution history provides additional context that is consistent with the written description. In a preliminary amendm ent, Nystrom stated t hat “the particular configuration and dimensions of the board result in a uniformly superior product and reduction in waste or rejects due to bark or other flaws along the edges of the board when it is cut from near the out er circumference of a log.” Prelim. Amendment at 2. In responding to a rejection, Nystrom stated, The present invention represents a unique and significant advance in the art of exterior wood floori ng. Wood floors have been in use for hundreds of years, and except for the development of different installation techniques, i.e., the use of nails, scr ews, various fastening clips, and/or adhesives, very little has been done to the basic shape of the board itself. Amendment rec’d Sept. 30, 1993, at 2. Similarly, when arguing against an obviousness rejection, Nystrom stated, “YOSIDA [sic] is clearly not concerned with materials made from wood, and especially an elongate board fo r exterior use and having a convex top surface when installed that will shed water and at the same time prov ide a surface that is suitable for supporting furnitur e and comfortable to walk on.” Id. at 4. Although Nystrom argues that the latter statement wa s limited to explaining why Yoshida could not be combined with the Zagelmeyer referenc e, which was directed to wood, we are not convinced that the statem ent is so limited. Nystrom explained in the same response that “the extent of curvature used by ZA GELMEYER in his boards was such that a distinctly uneven surface resulted, giving any surface constructed from them a corduroylike texture which would have been unsuitable for supporting furniture, and which would have produced a distinct tactile sensat ion of roughness or uneven surface.” Id. at 3. Thus, it is clear that when Nystrom was distinguishing Yoshi da from an elongate board 03-1092 12that is suitable for supporting furniture and co mfortable to walk on, he was referring to the invention and not Zagelmeyer. We need not decide, however, whether this statement represents a clear disavowal of claim scope because the context reflects Nystrom’s consistent use of the term board to refer to wood decking materials cut from a log. Nystrom contends that although some di ctionaries define “board” solely in reference to its material composition, see Webster’s Third International Dictionary 243 (2002) (defining “board” as “a piece of sawed lumber of littl e thickness but considerable surface area usu. being rectangular and of a length generally exceeding its width”), not all dictionaries are so cons trained. For example, the American Heritage Dictionary of the English Language 203 (4th ed. 2000) defines “board” as “1. A long flat slab of sawed lumber; a plank. 2. A flat piece of wood or similarly rigi d material adapted for a special use.” Nystrom argues that t he ordinary meaning of the word “board” encompasses both a piece of cu t wood or sawn timber and a similarly-shaped item made of a rigid material. However, as explained in Phillips , Nystrom is not entitled to a claim construction divorced from the context of the written descr iption and prosecution hi story. The written description and prosecution histor y consistently use the term “board” to refer to wood decking materials cut from a log. Nystrom argues repeatedly that t here is no disavowal of scope in the written description or pros ecution history. N ystrom’s argument is misplaced. Phillips , 415 F.3d at 1321 (“The problem is that if the district court starts with the broad dictionary definition in every case and fails to fully appreciate how the specification implicit ly limits that definit ion, the error will systematically cause the

03-1092 13construction of the claim to be unduly expansive.”). What Phillips now counsels is that in the absence of something in the written description and/ or prosecution history to provide explicit or implicit notice to the public—i.e., those of ordinary skill in the art—that the inventor intended a disputed term to co ver more than the ordinary and customary meaning revealed by the context of the intrinsic record, it is improper to read the term to encompass a broader definition si mply because it may be found in a dictionary, treatise, or other extrinsic source. Id. ; see also Snow v. Lake Shore & Mich. S. Ry. Co. , 121 U.S. 617, 629-30 (1887) (“It is not admissi ble to adopt the argum ent made on behalf of the appellants, that this language is to be taken as a mere recommendation by the patentee of the manner in which he prefers to arrange thes e parts of his machine. There is nothing in the context to indicate that the patentee contemplat ed any alternative for the arrangement of the pi ston and piston-rod.”). Our recent decision in AquaTex Industries illustrates this princi ple. In that case, the patentee consistently used the term “fiberf ill” throughout the written description to refer to synthetic material s. Although the written descr iption indicated that the composition of the fiber fill was not known to be critical, we held that “the context of the specification ‘makes clear that the patentee did not in tend the term [fiberfill] to encompass’ natural materials.” Id. , slip op. at 9 (citation omitted). In particular, we noted that “[n]one of the patent s [incorporated by reference] discusses the possibility of using natural fibers as co mmercial fiberfill batting.” Id. , slip op. at 10. Although there was no disavowal of natural materials, we held that the consistent use of the term “fiberfill” to refer to synthet ic materials and the extrinsic definitions supporting that interpretation led to the conclusion that a per son of ordinary skill in the art would have

03-1092 14understood the term to be limited to synthetic materials. The present case is analogous. Nystrom consistently used the term “ board” to refer to wood cut from a log. Although there was no clear disavo wal of claim scope, there was nothing in the intrinsic record to support the conclusion that a skilled artisan would have construed the term “board” more broadly than a pi ece of construction material made from wood cut from a log. In Phillips , we held that the term “baffle” did not require any specific angle—even in view of the written description’s limited discl osure of baffles orient ed at right angles to the walls—because the ordinary m eaning of the term “baffle,” as reflected in a dictionary definition to which the parties stipulated and as supported by the ov erall context of the written description, was simply “objects that check, impede, or obstruct the flow of something.” 415 F.3d at 1324. In this ca se, both parties acknowledge the ordinary meaning of “board” as “a piec e of sawed lumber.” Nystrom, however, seeks to broaden the term “board” to encompass relatively obscu re definitions that are not supported by the written description or pros ecution history. Broadening of the ordinary meaning of a term in the absence of support in the intrin sic record indicating that such a broad meaning was intended violates the principles articulated in Phillips . Therefore, we affirm the district court’s construction of the term “board.” 2. “Manufactured To Have” The district court construed the expre ssion “manufactured to have” as used in claim 1 of the ’831 patent to be “a manufacturing process utilizing woodworking techniques.” Claim Construction Order , slip op. at 11. The district court relied on statements in the ’831 patent written description that “t he advantages of the invention”

03-1092 15were achieved through “cutting or milling and the like.” Id. at 10. The district court found this statement in the wr itten description, combined wit h its prior construction of the claim term “board” to be “construction mate rial made from wood cut from a log,” to be tantamount to a redefiniti on of the scope of the claim ed manufacturing process. Id. at 11. Nystrom argues that for many of the sa me reasons the distri ct court erred in construing the word “board,” the district court’s construction of the phrase “manufactured to have” is also in error. Further, he argues the dist rict court’s reliance on language in the written description menti oning “cutting or milling or the like” impermissibly reads a limitation from a pref erred embodiment into the claim. TREX responds that the district court properly reli ed on the reference to “cutting or milling and the like” in restricting “manufac tured to have” in all of the claims to solely woodworking techniques. TREX argues that the district court’s construction makes sense because the ’831 patent covers only wood materials. In light of our construction of “board” as encompassing only materials made from wood cut from a log, we see no error in the district cour t’s limitation of the phrase “manufactured to have” in claim 1 to woodw orking techniques. The use of the phrase “manufactured to have” in refer ence to the top surface of t he board is necessarily limited to manufacturing techniques related to wood. Thus, we affirm t he district court’s construction of “manufactured to have.” 3. “Convex Top Surface” The district court construed “convex t op surface” to mean “an upper surface with an outward curve that has a ratio of its radi us of curvature to wid th of the board between

03-1092 164:1 to 6:1.” Claim Construction Order , slip op. at 13. It not ed that “the specification does not contain any indication that the te rm convex top surface is to be assigned a specific range of curvature.” Id. at 12. The district c ourt relied on statements the applicant made in the prosecution history that “the preferred [r adius of curvature] ration [sic, ratio] is about 5:1.” Id. at 13. Nystrom argues that the district court erred by ignoring the ordinary and customary meaning of this claim term, wh ich is “an upper surf ace with an outward curve,” and by importing additional limitations into this claim term from the written description. He observes that claim 1 does not provide an explicit radius of curvature ratio, and that such radii measurements ar e recited only in dependent claims 3, 7, and 13. Nystrom also argues that the district court erred in fi nding that he restricted the term to a specific radius of curvature to ov ercome a rejection based on the Zagelmeyer reference. He thus contends it was error fo r the court to construe “convex top surface” to include a specific radius of curvature ra tio. TREX responds that the district court properly held that Nystrom limited his claim to a particular radius of curvature in the range of 4:1 to 6:1 to distinguish the invent ion over the prior art Zagelmeyer reference. The dictionary definition of the claim term “convex” is “having a surface or boundary that curves or bulges outward, as the exterior of a sphere.” American Heritage Dictionary of the English Language 402 (4th ed. 2000). This is consistent with the specification of the ’831 patent. See, e.g. , ’831 patent, col. 3, ll. 10-14 (“More importantly, the board of t he invention has a slightly rounded upper surface 13 that slopes gradually off to either side of the cent er of the board, defi ning a convex surface that promotes the runni ng off of water. This surface may have a radius of curvature R 1 ,

03-1092 17for example, of about 24 inches.”). The district court relied on statements Nystrom made during prosecution to distinguish t he Zagelmeyer reference as limiting the expression “convex top surface” to a surface with a radius of curvat ure in the range of 4:1 to 6:1. Claim Construction Order , slip op. at 12-13. Nystrom stated in a supplemental amendment amending claim 16 of the issued patent (referred to as claim 19 during prosecution): Applicant then began trying diffe rent radiuses of curvature, but some were too shallow and when the board tried it tended not to shed water. Others had too short a radius of curvature and a distinct sensation of an uneven surface. Eventually, by trying a vari ety of curvatures, applicant discovered that a ratio of radius of curvatur e to width of the board of about 5:1 produced the desired result, i.e., it shed water and did not produce and uneven sensation to someone standing on it. * * * Claim 19 [claim 16 in the iss ued patent] and the claims dependent therefrom (the remaining claims have been previously allowed), are directed to a decking board that has a particular configuration which produces specific results not achiev ed with any of the prior art.

. . . It should be noted, however, that the ratio of the radius of curvature of a board to its width can vary within certai n relatively narrow limits, e.g. from about 4:1 to about 6:1, and st ill meet the basic objecti ves of the invention, although the preferred ratio is about 5:1. Anything much outside this range does not provide satisfactory performance and/or is not acceptable to the consumer. Supplemental Amendment, Sept. 7, 1994, at 2- 3 (emphasis added). The district court noted that Nystrom’s statement that “[a]nything much outside this range

. . . is not acceptable” implied that his statements regarding t he radius of curvature ratio applied to the entire patent, and was not intended to apply solely to issued claim 16. The district court erred in its analysis of the prosecution history. Nystrom’s statements were expressly directed to iss ued claim 16. There is no indication that Nystrom intended the term “convex top surface” in all of the pending patent claims to be

03-1092 18limited to a specific radi us of curvature ratio. The distri ct court ignored the fact that the language of claim 16 at the time Nystrom made the disputed stat ements included the following claim language expressly providing for a radius of curvature ratio of approximately 5:1: “ said top surface having a radius of curvature that is approximately five times as great as the width of the board , thereby defining a smoothly shaped and shallow convex top surface that sheds water

. . . .” Supplemental Amendment, Sept. 7, 1994, at 1 (emphasis added). Other statements in the pr osecution history support this view. Nystrom points to the examiner’s prior rejection of claims 1, 2, 5, 6, 11 and 12 under 35 U.S.C. § 102(b): “This rejection is being made over the broad claims since they fail to specify any particular degree for the curve of the board.” Examiner’s Action, Ma r. 24, 1994, at 2. The examiner eventually allowed claims 1- 14 and 18 because the “pri or art fail[ed] to teach both sides of the board with a curved configuration,” not because the invented board specified a particular radius of curvature ratio. Exami ner’s Action, Dec. 8, 1994, at 4. The prosecution histor y did not redefine or disclaim “c onvex top surface” in claim 1 to be limited to a particular radi us of curvature ratio. Accordingly, we hold that the correct construction of the expression “convex top surface” as used in claim 1 is the ordinary and customary meaning of an upper surface that curves or bulges outward, as the exterior of a sphere. C. Invalidity The district court granted summary judgm ent in favor of TREX, holding claims 18-20 of the ’831 patent in valid as anticipated in light of the Zagelmeyer reference. The

03-1092 19parties principally dispute whether Figure 3 of the Zagel meyer patent anticipates the following limitation of independent claim 18: said convex top surface being manufactu red to have a radi us of curvature with a slightly rounded or curved conf iguration 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, with the ratio of said difference in thickne ss to the width of the board being about 1:40

. . . . ’831 patent, col. 6, ll. 18-25 (emphasis added). The district court hel d that boards 2, 3, and 5 depicted in Figure 3 of the Zagelmeye r patent anticipate this limitation by illustrating a board with a convex top having a relevant thickness ratio to the width of the board of 1:39, 1:39, and 1:37, respectively. Invalidity Order , slip op. at 6. The district court found that our precedents in Hockerson-Halberstadt, Inc. v. Avia Group International, Inc. , 222 F.3d 951 (Fed. Cir. 2000), and In re Wright , 569 F.2d 1124 (CCPA 1977), were not applicable, because it considered the correct inquiry to be whether a person of ordinary skill in the art would use measurements from the Zagelmeyer reference to ascert ain the degree of curvature. Invalidity Order , slip op. at 6-7. Finding that a person of skill in the art would take such measurements from the boards depicted in Figure 3 of the Zagelmeyer patent, the district court found claim 18 and the associated dependent claims anticipated. Id. at 7. Nystrom argues that the district court erred by basing its in validity determination not on the disclosure of the Z agelmeyer patent itself, but instead from renderings made by a TREX employee of hypothet ical boards based on the perspective drawings in the Zagelmeyer patent. He argues th is violates our precedent in Hockerson-Halberstadt that “patent drawings do not define the precise pr oportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the

03-1092 20issue.” Hockerson-Halberstadt , 222 F.3d at 956 (citing In re Wright , 569 F.2d at 1127). Nystrom contends that the dist rict court erred in relying on extrinsic evidence in invalidating the ’831 patent. The invalidity data relied on by the district court was generated by a TREX employee who made a softw are model of the boards depicted in the perspective drawings of Figure 3 of Zagelmeyer patent, then performed computations on the modeled boards to co me up with the allegedly invalidating curvature to width ratio. TREX responds that the district cour t correctly found that it had presented evidence that persons of ordinary skill in the art would understand Zagelmeyer to disclose the same dimensions as claims 18- 20. TREX submitted declarations that it contended detailed the process by which the boards depicted in the Zagelmeyer reference were modeled and from which the invalidating measurements were taken. “A party seeking to estab lish that particular claims are invalid must overcome the presumption of validity in 35 U.S.C. § 282 by clear and convincing evidence.” State Contracting & Eng’g Corp. v. Condotte Am., Inc. , 346 F.3d 1057, 1067 (Fed. Cir. 2003). A patent is invalid as anticipated if every limitation in a claim is found in a single prior art reference. Teleflex , 299 F.3d at 1335. The district court erred in not properly appl ying the principles set forth in our prior precedents that argument s based on drawings not explicit ly made to scale in issued patents are unavailing. Hockerson-Halberstadt indicated our disfavor in reading precise proportions into patent drawings which do not expressly provide such proportions: The ’792 patent is devoid of any indi cation that the proportions of the groove and fins are drawn to scale. [The patent owner’s] argument thus hinges on an inference drawn from cert ain figures about the quantitative relationship between the respective wid ths of the groove and fins. Under

03-1092 21our precedent, however, it is well est ablished that patent drawings do not define the precise proportions of t he elements and may not be relied on to show particular sizes if the specificat ion is completely silent on the issue. Hockerson-Halberstadt , 222 F.3d at 956 (citing In re Wright , 569 F.2d at 1127). In re Wright similarly noted: We disagree with the [PTO]’s conclusi on, reached by a co mparison of the relative dimensions of appellant’s and [the] Bauer [references]’s drawing figures, that Bauer “clearly points to the use of a chime length of roughly 1/2 to 1 inch for a whiskey barrel.” This ignores the fact that Bauer does not disclose that his drawi ngs are to scale. Absent any written description in the specification of quantitat ive values, arguments based on measurement of a drawi ng are of little value. 569 F.2d at 1127. The district court’s acceptance of TREX’s invalidity arguments based on models made from drawings contained in the Zagelme yer patent was incorrect. The basis of the district court’s summary judgment of invalidity was a model that TREX developed based on that reference, and not on drawing dimensions or a written disclosure of dimensions contained directly in the patent itself. Under the principles set forth in our prior cases, the speculativ e modeling premised on unstated assumptions in prior art patent drawings cannot be the basis for challenging the validity of claims reciting specific dimensions not disclosed directly in such prior art. Thus, we conclude that the district court erred in granting summary judgment of invalidity based on TREX’s models. Because the district court erred in determining invalidity based on evidence improperly derived from a pat ent drawing, we need not address Nystrom’s argument based on the district court’s rejection of Nyst rom’s declaration. For the reasons stated, we reverse the district court’s summary judgm ent of invalidity of claims 18-20 of the ’831 patent as anticipated by Zagelmeyer.

03-1092 22D. Sanctions Section 1927, in Title 28 of the United States Code, imposes liability on counsel for excessive costs, and provides: Any attorney or other person admitted to conduct cases in any court of the United States or any Territory thereof who so multiplies the proceedings in any case unreasonably and vexatiously may be required by the court to satisfy personally the excess costs, expenses, and attorneys’ fees reasonably incurred because of such conduct. 28 U.S.C. § 1927 (2000). The Supreme Court has explained that § 1927 “is indifferent to the equities of a dispute and to the values advanced by the substantive law. It is concerned only with limiting the abuse of court processes.” Roadway Express, Inc. v. Piper , 447 U.S. 752, 762 (1980). Under the law of the Fourth Circuit, the district court’s decision denying sanctions pursuant to 28 U.S.C. § 1927 is revi ewed for an abuse of discretion. Chaudhry , 174 F.3d at 410. “A district court abuses its discretion if its conclusion is guided by erroneous legal principles, or rests upon a clearly erroneous factual finding.” Westberry v. Gislaved Gummi AB , 178 F.3d 257, 261 (4th Cir. 1999) (int ernal citation omitted). An appellate court “is obligated to review the re cord and reasons offered by the district court and to reverse if the c ourt has a definite and firm conviction that the court below committed a clear error of j udgment in the conclusion it reached upon a weighing of the relevant factors.” Id. (internal quotation ma rks omitted). “[S]ection 1927 also requires a finding of counsel’s bad faith as a prec ondition to the imposit ion of fees.” Chaudhry , 174 F.3d at 411 n.14 (internal quot ation marks omitted). The Fourth Circuit has further held “as a matter of law that the filing of a single complaint cannot be held to have multiplied the proceedings unreasonably and ve xatiously and therefore that § 1927

03-1092 23cannot be employed to impose sanctions.” DeBauche v. Trani , 191 F.3d 499, 511-12 (4th Cir. 1999). TREX’s counsel originally filed four ant itrust counterclaims and a supporting brief in response to Nystrom’s infringement comp laint (“the original counterclaims”). TREX voluntarily dismissed these original c ounterclaims and then f iled a second, amended antitrust counterclaim (“amended counterclai m”). TREX’s counsel eventually dropped its original and amended counterclaims. Nystrom sought § 1927 sanctions against TREX. In light of DeBauche v. Trani , 191 F.3d at 511-12, which held as a matter of law that the filing of a single complaint cannot multiply the proceedings unreasonably under § 1927, the district court lim ited its inquiry to whether TREX’s filing of the amended counterclaim was a basis for sanctions in this case. Nystrom argues that the district court erred in finding that TREX had pled all of the essential elements of an antitrust counterclaim in its amended counterclaim, because TREX failed to establish that Nystrom posed a dangerous probability of success in monopolizing the relevant market for composite decking. Nystrom argues that when TREX’s counsel filed the amended count erclaim, it “knew as a matter of law” that Nystrom lacked market power in t he composite decking market because TREX’s counsel knew both that Nystrom was not a par ticipant in that market and that the ’831 patent itself did not create the required market power in that market. Appellant’s Br. at 61-63. TREX responds that it had ample ev identiary basis for its amended counterclaims, even though it adm its its original counterclaims were flawed. TREX asserts that when the flaws in its original counterclaims were pointed out, its counsel

03-1092 24immediately admitted the mistake and amended them. TREX argues that its counsel did not act in bad faith and that the district court did not abuse its discretion in denying § 1927 sanctions. The district court declined to find that TREX acted in bad faith in alleging that Nystrom posed a dangerous probability of success in monopolizing the relevant market. Sanctions Order , slip op. at 7. Although Nystrom asse rted to the district court that he operated solely in the market for milled decking material, TREX asserted that it relied on several statements by Nystrom during the prosecution of the ’831 patent that he intended to monopolize both the milled and co mposite decking material markets. Id. at 6-7. Stating that it lack ed sufficient evidence to limit TREX’s supporting evidence to products only in the milled decking material ma rket, the district court declined to find bad faith on the part of TREX and award § 1927 sanctions. Id. at 7. Nystrom fails to establish how the dist rict court’s conclusion that it lacked sufficient evidence to find TREX acted in bad faith in filing its amended counterclaim constituted an abuse of discretion. From our review of the stat ements that TREX relied upon in its amended counterclaim, it is not cl ear which market Nystrom was referencing when he stated in the prosecut ion history that “licensi ng negotiations are presently underway with most major manufacturers and distributors of decking boards,” Prelim. Amendment at 3, and the “product

. . . has the potential of capturing a significant market share,” Amendment rec’d Sept. 30, 1993, at 5. The district court’s finding that these statements were not limited just to the milled decking materi al market was not clearly erroneous. The district court did not err in declining to find TREX acted in bad faith. Because there was no legal error or clearly erroneous factual finding underlying the

03-1092 25district court’s conclusion that Nystrom had failed to present sufficient evidence to justify the imposition of sanctions, see Westberry , 178 F.3d at 261, the c ourt did not abuse its discretion in declining to award § 1927 sanctions. CONCLUSION Because we affirm the district court’s constructions of “board” and “manufactured to have,” we affirm the district court’s grant of summary judgment of non-infringement of claims 1-15 and 18-20. We reverse the distri ct court’s construction of “convex top surface.” The district court’s summary judgm ent of invalidity of cl aims 18-20 of the ’831 patent as anticipated by the Zagelmeyer refe rence is also reversed. Because the district court did not abuse its discretion, we affirm the distri ct court’s refusal to award sanctions under 28 U.S.C. § 1927 in favor of Nystrom. The case is remanded for further proceedings consistent with this opinion. AFFIRMED-IN-PART, REVERSED -IN-PART, AND REMANDED COSTS No costs.

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