NOTE: This disposition is nonprecedential. 

United States Court of Appeals for the Federal Circuit 

2007-1460, -1486 

BRADY CONSTRUCTION INNOVATIONS, INC., 

Plaintiff-Appellant, 

v. 

PERFECT WALL, INC. 

and METAL-LITE, INC., 

Defendants-Cross Appellants, 

and 

STEELER, INC., 

 Defendant-Appellee, 

and 

SCAFCO CORPORATION, 

 Defendant-Appellee. 

 R. Joseph Trojan, Trojan Law Offices, of Beverly Hills, California, argued for 

plaintiff-appellant. 

 Ronald P. Oines, Rutan & Tucker, LLP, of Costa Mesa, California, argued for 

defendants-cross appellants. With him on the brief was Treg A. Julander. 

Delbert J. Barnard, Barnard Intellectual Property Law, Inc., of Seattle, 

Washington, argued for defendant-appellee Steeler, Inc. 

 Breton A. Bocchieri, Thelen Reid Brown Raysman & Steiner LLP, of Los 

Angeles, California, argued for defendant-appellee Scafco Corporation. 

Appealed from: United States District Court for the Central District of California 

Chief Judge Alicemarie H. Stotler 
NOTE: This disposition is nonprecedential. 

United States Court of Appeals for the Federal Circuit 

 

2007-1460, -1486 

BRADY CONSTRUCTION INNOVATIONS, INC., 

Plaintiff-Appellant, 

v. 

PERFECT WALL, INC. and METAL-LITE, INC., 

Defendants-Cross 

Appellants, 

and 

STEELER, INC., 

Defendant-Appellee, 

and 

SCAFCO CORPORATION, 

Defendant-Appellee. 

Appeal from United States District Court for the Central District of California in case no. 

07-CV-219, Judge Alicemarie H. Stotler. 

__________________________ 

DECIDED: August 15, 2008 

__________________________ 

Before MICHEL, Chief Judge, RADER and MOORE, Circuit Judges. 

MICHEL, Chief Judge. 
2007-1460, -1486 

2

 Brady Construction Innovations, Inc. (“Brady”) appeals from the district court’s 

summary judgment of invalidity, and Perfect Wall, Inc. and Metal Lite, Inc. cross-appeal 

from the district court’s denial of their motion for attorneys’ fees. Order, Brady 

Construction Innovations, Inc. v. Perfect Wall, Inc., No. 07-219 (C.D. Cal. Jun. 13, 2007) 

(“Summary Judgment Order”). We heard oral argument on July 7, 2008. Because we 

conclude that claim 11 of U.S. Reissued Patent No. RE39,462 (“the reissue patent”), for 

which Brady applied more than two years after issuance of the original patent, enlarged 

the scope of the claims of that patent, we affirm the district court’s grant of summary 

judgment of invalidity. We also conclude that the district court did not clearly err in 

finding the case not exceptional and thus affirm its denial of the motion for attorneys’ 

fees. 

I. 

Todd Brady is the inventor of the patent at issue and the president of SlipTrack 

Systems and Brady Construction Innovations, Inc. (“Brady”).1

 In 1990, Todd Brady filed 

a patent application that issued as U.S. Patent No. 5,127,760 (“the ’760 patent” or 

“original patent”). The ’760 patent claimed a building construction assembly that allows 

a header in a wall some vertical freedom of movement relative to the studs, such that 

stresses applied to the assembly do not result in wall cracks. Such a configuration is 

useful when stresses vary in a wall for example through accumulation of snowfall or 

from an earthquake. 

The ’760 patent describes two preferred embodiments. In the first embodiment, 

the stud and the header are aligned and then a hole is drilled in the stud using a self-

 1

 Brady Construction Innovations, Inc. was formerly known as SlipTrack. 
2007-1460, -1486 

3

tapping screw. In the other embodiment, the holes in the stud are pre-existing, allowing 

the stud and header to be aligned using the holes. 

The original patent application contained nine claims, with claims 1 and 6 being 

independent. Original claim 1 recited: 

1. A building construction assembly that includes a header and 

a stud wherein the header is capable of vertical movement relative to said 

stud comprising: 

a header having a web and flanges with said flanges connected to 

said web; 

at least one of said flanges having at least one vertical slot therein; 

a stud having a width less than the distance between said flanges 

of said header; 

said stud being aligned with said vertical slot; and 

an attachment means passing through said slot and through said 

hole to unit[e] said header to said stud whereby said slot permits said 

header to move vertically with respect to said stud while restricting 

horizontal movement of said header. 

J.A. at 268 (emphasis added).2 

The examiner rejected all nine claims in the original application as indefinite and 

obvious. As to indefiniteness, the examiner queried, “how is the stud ‘aligned’ with the 

vertical slot?” J.A. at 259.3 In response, Brady canceled claims 6 through 9, and in 

claim 1, the only remaining independent claim, Brady deleted the limitation that the stud 

be “aligned with said vertical slot” and amended it to read “said stud having at least one 

hole formed therein proximal to said top end.” Brady explained: “[T]he Examiner’s 

question of how the stud is aligned with the vertical slot has been answered by adding 

hole 22 proximal to top end 40 of the stud as an element of the claims. The hole 22 

serves as a reference point on the stud which is used to align the stud and the slot.” 

 2

 Claim 6 included a limitation that an “elongated slotted passage” be 

“aligned” with the stud. 

3

 The examiner also cited the “aligned” limitation of claim 6, the only other 

independent claim, as having the same indefiniteness problem. 
2007-1460, -1486 

4

J.A. at 278. In the same response, Brady also added a new independent claim 7, which 

included the same limitation now in claim 1: “said stud having at least one hole formed 

therein proximal to said top end.” The examiner ultimately allowed the claims as 

amended, and the ’760 patent issued in 1992. 

As issued, claim 1 of the ’760 patent recited: 

 1. A building construction assembly that includes a header and 

a stud wherein the header is capable of vertical movement relative to said 

assembly comprising: 

a header having a web and flanges with said flanges connected to 

said web; 

at least one of said flanges having at least one vertical slot therein; 

a stud having a width less than the distance between said flanges 

of said header and having a top end; 

said stud having at least one hole formed therein proximal to said 

top end; 

said top end fitting between said flanges perpendicular to said 

header positioned so that said hole is aligned with said vertical slot; and 

an attachment means passing through said slot and through said 

hole to slideably unite said header to said stud whereby said slot permits 

said header to move vertically with respect to said stud while restricting 

horizontal movement of said header. 

’760 patent, col.4 ll.35-54 (emphasis added). 

 SlipTrack then sued Metal Lite in the Central District of California alleging that the 

’760 patent had priority over a Metal Lite patent that issued on the same day, and that 

Metal Lite’s products infringed the ’760 patent. In September 2003, a jury found that the 

’760 patent was entitled to priority, that Metal Lite’s products infringed the ’760 patent, 

and that SlipTrack was entitled to damages. 

On appeal, this court affirmed the priority determination but vacated and 

remanded the infringement determination. SlipTrack Sys., Inc. v. Metal Lite, Inc., 113 

Fed. Appx. 930 (Fed. Cir. Dec. 1, 2004). Specifically, this court held that the claim 

limitation “said stud having at least one hole formed therein proximal to said top end” 
2007-1460, -1486 

5

means “that a hole must be formed in the stud prior to insertion of the stud between the 

flanges so that the hole can be used to align the stud with the vertical slot before 

passing the attachment means through the vertical slot and into the stud.” Id. at 938. 

This court based its claim construction primarily on statements in the prosecution 

history, holding that “the prosecution history of the ’760 patent reveals that the patentee 

limited its invention to studs having pre-existing holes.” Id. at 937.4

 We vacated the 

district court’s judgment of infringement and remanded for further proceedings 

consistent with our claim construction. Id. at 938. 

On remand, the district court granted Metal Lite’s motion for summary judgment 

of non-infringement because the accused products did not use studs with pre-existing 

holes. SlipTrack Sys., Inc. v. Metal Lite, Inc., No. 98-20 AHS, slip op. at 8 (C.D. Cal. 

June 15, 2005). Although SlipTrack initially appealed that decision, it later moved to 

voluntarily dismiss its appeal. SlipTrack Sys., Inc. v. Metal Lite, Inc., 168 Fed. Appx. 

943 (Fed. Cir. Feb. 10, 2006). 

On February 5, 2005, following our claim construction decision and more than 

twelve years after the original patent issued, Brady filed an application for reissue of its 

’760 patent. The reissue application included all of the original claims and one 

additional claim: 

11. A building construction assembly that includes a header and 

a stud wherein the header is capable of vertical movement relative to said 

assembly comprising: 

 4

 Just before our decision construing this claim term, a different district court 

in a case involving the same patent but a different defendant also concluded that the 

claims of the ’760 patent require a pre-existing hole. SlipTrack Sys., Inc. v. Steeler 

Metals, Inc., No. C-04-0462-PVT, slip op. at 11 (N.D. Cal. Oct. 12, 2004). This court 

issued a Rule 36 affirmance of that decision. Sliptrack Sys., Inc. v. Steeler Metals, Inc., 

158 Fed. Appx. 283 (Fed. Cir. Nov. 21, 2005).
2007-1460, -1486 

6

a header having a web and flanges with said flanges connected to 

said web; at least one of said flanges having at least one vertical slot 

therein; 

a stud having a width less than the distance between said flanges 

of said header and having a top end; 

said stud having at least one hole formed therein proximal to said 

top end by an attachment means passing through said slot and through 

said hole to slideably unite said header to said stud whereby said slot 

permits said header to move vertically with respect to said stud while 

restricting horizontal movement of said header; 

said top end fitting between said flanges perpendicular to said 

header positioned so that said hole is aligned with said vertical slot. 

Reissue patent, col.6 ll.6-27 (emphasis added). In prosecuting the reissue, Brady 

alerted the PTO to the fact that two courts, including this court, had construed claim 1 of 

the ’760 patent to cover only one of the disclosed embodiments in the patent and made 

clear that claim 11 was being added in reissue to claim the preferred embodiment that 

had been excluded by our claim construction. But Brady argued that claim 11 was 

narrower in scope than original claim 1 because claim 11 requires the additional 

limitation that the hole be made by a self-tapping screw. Metal Lite protested the 

reissue application before the PTO, although the examiner may not have considered the 

protest since it was never included as part of the reissue file wrapper. The examiner 

allowed claim 11 stating: “[N]ewly presented claim 11 includes all of the limitations of 

previously allowed claim 1 with the additional limitation ‘by’ [] which further narrows the 

scope to a specific embodiment of the invention wherein the ‘at least one hole’ is formed 

by the ‘attachment means’ [].” J.A. at 153. 

 In June 2006, after receiving the Notice of Allowability as to the reissue 

application, Brady issued an “Industry Announcement,” which stated that it would 

receive “a new patent for [its] SLP-TRK Brand slotted track product.” The 

announcement also stated: 
2007-1460, -1486 

7

Previously, the Court of Appeals had limited the original slotted track 

patent in a way that Brady never intended. This new patent removes the 

limitation recently imposed by the Court of Appeals. From this date 

forward, anyone who manufactures and sells [any style of] slotted track 

will infringe Brady’s new patent regardless of how the slotted track is 

installed. 

J.A. at 438 (emphasis in original). The patent reissued on January 9, 2007. 

The same day, Brady sued a number of companies including Perfect Wall, Inc., 

Metal Lite, Inc., Steeler, and SCAFCO (collectively “defendants”), alleging that certain 

“slotted track products” infringed the claims of the reissue patent. Defendants moved 

for summary judgment of invalidity as to the reissue patent. The district court issued a 

tentative ruling on June 11, 2007, tentatively granting defendants’ motion for summary 

judgment of invalidity because the reissue violated Section 251’s prohibition on 

broadening reissues more than two years after the original patent issued, denying Metal 

Lite’s motion on the alternative ground that the reissue violated the recapture rule, and 

denying Metal Lite’s motion for attorney’s fees. Following a hearing on the motions, the 

district court granted the motion for summary judgment of invalidity on June 13, 2007. 

The district court concluded that claim 11 “includes within its scope a user who places a 

stud without a pre-existing hole between the flanges of the header and then creates the 

hole through the stud with a self-tapping screw.” Summary Judgment Order at 7. 

Because reissue claim 11 broadened the scope of the original patent and Brady filed his 

reapplication more than two years after the original patent issued, the district court held 

reissue claim 11 invalid. The district court also denied Metal Lite’s motion for attorney’s 

fees. 
2007-1460, -1486 

8

II. 

We review a district court’s grant of summary judgment de novo. Ethicon EndoSurgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998). At summary 

judgment, all ambiguous facts and inferences must be construed in the light most 

favorable to the non-movant. Id. Summary judgment is only appropriate if no genuine 

issues of material fact exist and the movant is entitled to judgment as a matter of law. 

Id.

A. Reissue Validity

Under 35 U.S.C. § 251, a patentee can seek reissue of his patent when he 

“through error without any deceptive intention . . . claim[ed] more or less than he had a 

right to claim in the patent.” If the patentee seeks reissue more that two years from the 

grant of the original patent, however, the reissued patent cannot “enlarg[e] the scope of 

the claims of the original patent.” Id.5 

“Whether the claims of a reissue patent violate 35 U.S.C. § 251, and thus are 

invalid, is a question of law, which we review de novo.” N. Am. Container, Inc. v. 

Plastipak Packaging, Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005). In this case, we 

conclude that Brady’s reissue claim 11, the only asserted claim, enlarged the scope of 

the claims of the original patent. Since Brady applied for reissue more than two years 

 5

 Metal Lite argues, as an alternative ground for affirmance, that Brady’s 

reissue patent violated the recapture rule. The recapture rule, however, bars certain 

reissues within the first two years after the original patent issued if the patentee 

voluntarily surrendered claim scope during the original prosecution. E.g., N. Am. 

Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1340, 1349 (Fed. Cir. 

2005); Ball Corp. v. United States, 729 F.2d 1429, 1433, 1436 (Fed. Cir. 1984). In this 

case, Brady did not apply for reissue until well after the two-year period had expired, 

making the recapture rule inapplicable. Thus, we need only determine whether the 

reissue violates the proscription in Section 251 that reissues outside the two-year period 

may not “enlarge[e] the scope of the claims of the original patent.” 
2007-1460, -1486 

9

after issuance of the original patent, the reissue violated Section 251, and we affirm the 

district court’s grant of summary judgment of invalidity. 

This court has held: 

A claim of a reissue application is broader in scope than the original 

claims if it contains within its scope any conceivable apparatus or process 

which would not have infringed the original patent. A reissue claim that is 

broader in any respect is considered to be broader than the original claims 

even though it may be narrower in other respects. 

Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987); see also In re 

Freeman, 30 F.3d 1459 (Fed. Cir. 1994). 

In this case, the accused products did not infringe the claims of the original 

patent as construed by this court in SlipTrack Systems, Inc. v. Metal Lite, Inc., 113 Fed. 

Appx. 930 (Fed. Cir. Dec. 1, 2004), which held that the claim limitation “said stud having 

at least one hole formed therein proximal to said top end” was limited to a pre-existing 

hole. Under the principles of stare decisis and the Supreme Court’s guidance in 

Markman, this court follows the claim construction of prior panels absent exceptional 

circumstances. Miken Composites, L.L.C. v. Wilson Sporting Goods Co., 515 F.3d 

1331, 1338 n.* (Fed. Cir. 2008) (“[T]reating interpretive issues as purely legal will 

promote (though it will not guarantee) intrajurisdictional certainty through the application 

of stare decisis.” (quoting Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 

(1996))). 

Brady does not ask that we explicitly overrule the prior panel’s construction of the 

claims of the original patent, and Brady admits that products that would not infringe the 

claims of the original patent do infringe reissue claim 11. This is because reissue claim 

11 requires that “said stud having at least one hole formed therein proximal to said top 
2007-1460, -1486 

10

end by an attachment means.” In other words, in reissue claim 11, the hole is not preexisting but is formed using a self tapping screw (the attachment means disclosed in the 

specification). Because products in which the hole is not pre-existing but instead 

formed using a self-tapping screw (i.e., the accused products in this case) would not 

infringe the claims of the original patent but would infringe reissue claim 11, we 

conclude that reissue claim 11 enlarged the scope of the original patent. We affirm the 

district court’s grant of summary judgment of invalidity as to that claim. 

B. Attorney’s Fees

Metal Lite and Perfect Wall (collectively “Metal Lite”) cross-appeal the district 

court’s denial of their motion for attorney’s fees. In reviewing a district court’s decision 

on Section 285 attorney’s fees, we review the decision as to whether the case is 

exceptional for clear error, and we review the subsequent determination as to whether 

fees are appropriate for abuse of discretion. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 

1448, 1460 (Fed. Cir. 1998) (en banc). Metal Lite argues that the district court erred in 

not finding the case exceptional because Brady made misrepresentations to the PTO 

during prosecution of the reissue patent, namely that claim 11 was narrower than the 

original claims. The district court determined that Brady or its counsel had not 

committed inequitable conduct: 

I can tell you that based upon everything I know of this case and these 

inventions, which is probably more than I ever care to know in a lifetime, 

that the record from what I can see does not support a conclusion of 

inequitable conduct by the patentee or counsel for the patentee. 

J.A. at 1793. The district court did not clearly err in concluding that Brady did not 

commit inequitable conduct. In the reissue prosecution, Brady provided the PTO with 

this court’s prior decision in which we limited the claims of the original patent to only 
2007-1460, -1486 

11

those with pre-existing holes. Brady argued to the PTO that claim 11 was narrower 

based on the same arguments it advances here. Nevertheless, the PTO could have 

rejected those arguments, and the district court did not clearly err in finding that Brady 

did not commit inequitable conduct and the case was not exceptional on that basis. 

 Metal Lite also argues that the case is exceptional because Brady filed suit in 

bad faith, knowing that claim 11 was invalid as a broadening reissue. While Brady’s 

press release stating that the reissue patent “removes the limitation recently imposed by 

the Court of Appeals” suggests that Brady may have known that its claim 11 was not 

narrower, the district court was in the best position to observe Brady and its counsel 

both during the prior case and this case. We see no clear error in its determination that 

the present litigation was not brought in bad faith. 

III. 

In sum, we affirm the district court’s summary judgment of invalidity as to reissue 

claim 11 because that claim enlarged the scope of the original patent claims and Brady 

applied for reissue more than two years after the original patent issued. We also affirm 

the district court’s denial of attorneys’ fees.