IP Law Daily, PATENT—Fed. Cir.: Written description findings of PTAB affirmed on appeal in truss hanger dispute, (Apr 3, 2023)

By Kevin M. Finson, J.D.

A PTAB decision finding claims for hangers used to mount support beams to wall frames in construction projects unpatentable for lack of written description was affirmed because expert testimony supported the board’s findings.

Patent claims directed at truss hangars that could extend past drywall or other sheathing were invalid for lack of written description, the U.S. Court of Appeals for the Federal Circuit has held. The PTAB’s claim construction, which was the center of the dispute, was supported by expert testimony (Columbia Insurance Co. v. Simpson Strong-Tie Co. Inc., March 31, 2023, Hughes, T.).

Columbia Insurance Company (Columbia) was the owner of U.S. Patent No. 10,316,510 (the ’510 patent), which claimed a construction product called a “truss hanger” which was used to connect support beams to wall frames. The claimed inventive component was a feature that allowed the hanger to fit around layers of sheathing such as drywall, a claimed improvement over prior products which required cutting through the sheathing, thus reducing its protectiveness from fire.

Simpson Strong-Tie Company, Inc. (Simpson) petitioned for post grant review of claims 1-20 of the ’510 patent under several theories of invalidity. Columbia filed a contingent motion to amend, proposing substitute claims 21-40 in the event that the original claims were found invalid. The Patent Trial and Appeal Board found all of the original and substitute claims with the exception of claim 40 invalid as either lacking written description or obvious under the prior art. Columbia appealed as to claims 1-39 and Simpson appealed as to claim 40.

Written description. The Board held that the majority of the original and all of the substitute claims lacked written description because the claim language described an extension portion sized to fit two layers of 5/8” sheathing to fit in the hanger, but too small to allow three layers of 5/8” sheathing to fit, while the specification disclosed only the lower bound of this range of sizes, describing the product as having space for exactly two layers of 5/8” sheathing. Unlike the claims, there was nothing in the specification suggesting any sort of upper limit on the size of the extension portion, and the Board found that a skilled artisan would not consider disclosure of just one extension portion size to show possession of the claimed range. Throughout its analysis, the Board relied on the disclosure in the specification, including the figures, as well as expert testimony to find that a person skilled in the art would not take this description of space for exactly two layers as encompassing the greater range described in the claim language. The Federal Circuit found that the record evidence supported the Board’s written description findings.

Obviousness. Columbia argued that the obviousness determination hinged on an error of claim construction because the Board violated the Administrative Proceeding Act and due process requirements by adopting a construction of the term “an extension portion extending from the channel-shaped portion and configured to extend through the sheathing” which differed from either party’s proposed construction. The Federal Circuit determined that the construction, although not worded identically, was so close to Simpson’s proposed construction as to not constitute a change of theories mid-stream, and Columbia had notice of the contested claim construction and the opportunity to be heard. The court found that absent any error in claim construction the Board’s obviousness determination was supported by substantial evidence in the form of expert testimony.

The Federal Circuit affirmed the decision of the Board.

Dissent. Chief Judge Limberly Moore dissented in part. She would have held that claims 1-19 were not invalid for lack of written description because the simplicity of the technology at issue made it clear that the specification and nearly all accompanying figures disclosed a hanger with a space large enough for two 5/8” sheets of sheathing but not large enough for three sheets.

The Case is No. 21-2145.

Attorneys: Kurt James (Stinson LLP) for Columbia Insurance Co. Richard Crudo (Sterne Kessler Goldstein & Fox, PLLC) for Simpson Strong-Tie Co. Inc.

Companies: Columbia Insurance Co.; Simpson Strong-Tie Co. Inc.

Cases: Patent FedCirNews USPTO