Columbia Insurance Company v. Simpson Strong-Tie Company Inc. ( 2023 )

Case: 21-2145 Document: 48 Page: 1 Filed: 03/31/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
COLUMBIA INSURANCE COMPANY,
Appellant
v.
SIMPSON STRONG-TIE COMPANY INC.,
Cross-Appellant
______________________
2021-2145, 2021-2157
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. PGR2019-
00063.
______________________
Decided: March 31, 2023
______________________
KURT JAMES, Stinson LLP, St. Louis, MO, argued for
appellant. Also represented by BRADLEY SCOTT EIDSON,
JOHN R. SCHROEDER.
RICHARD CRUDO, Sterne Kessler Goldstein & Fox,
PLLC, Washington, DC, argued for cross-appellant. Also
represented by MICHELLE HOLOUBEK, JON WRIGHT.
______________________
Case: 21-2145 Document: 48 Page: 2 Filed: 03/31/2023
2 COLUMBIA INSURANCE COMPANY v.
SIMPSON STRONG-TIE COMPANY INC.
Before MOORE, Chief Judge, PROST and HUGHES, Circuit
Judges.
Opinion for the court filed by Circuit Judge HUGHES.
Dissenting-In-Part Opinion filed by Chief Judge MOORE.
HUGHES, Circuit Judge.
Columbia Insurance Company appeals a decision from
the Patent Trial and Appeal Board that original claims 1–
20 and substitute claims 21–39 of U.S. Patent No.
10,316,510 are unpatentable. Simpson Strong-Tie Com-
pany, Inc. cross-appeals the Board’s decision that substi-
tute claim 40 is patentable. As to the lead appeal, we affirm
the unpatentability of claims 1–39 because substantial ev-
idence supports the Board’s decision that claims 1–19 and
21–39 lack written description; and because the Board did
not err in finding claims 1–11, 13–18, and 20 unpatentable
as obvious. As to the cross-appeal, we affirm the patenta-
bility of claim 40 because the Board did not err in finding
claim 40 definite and non-obvious.
I
A
U.S. Patent No. 10,316,510 relates to a construction
product called a “truss hanger.” A truss is an example of a
support beam commonly used to build structures. Support
beams must be securely connected to a wall frame on either
side of the beam. One way to connect the beam to the frame
is to use a hanger that attaches to the top of the wall frame
with an upper hook and holds the bottom of the support
beam with a lower hook.
This type of conventional hanger has been used to con-
nect support beams to wall frames for over a century. In
modern buildings, these hangers must account for a layer
of sheathing, such as drywall, between the edge of the sup-
port beam and the wall frame. In some buildings, two-
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COLUMBIA INSURANCE COMPANY v. 3
SIMPSON STRONG-TIE COMPANY INC.
layers of sheathing are required to ensure fire resistance
and meet building codes.
A common way to account for sheathing between a sup-
port beam and a wall frame is to cut out the portion of the
sheathing that overlaps with the hanger. While this type of
cutout allows the hanger to be secured directly onto the
wall frame, larger cutouts in the sheathing lead to de-
creased fire-resistance.
The ’510 patent purports to solve this problem by
claiming a hanger that extends through the sheathing. The
claimed hanger has three main parts: (1) a “channel-
shaped portion” (52), (2) a “connection portion” (74 and 66),
and (3) an “extension portion” (60). The channel-shaped
portion is the lower hook of the hanger—it holds the sup-
port beam. The connection portion is the upper hook of the
hanger—it attaches to the wall frame by draping over the
top and down the side of the frame. The “extension portion”
is the purportedly inventive aspect of the invention—it de-
fines a space to fit sheathing by extending from the lower
hook to the upper hook.
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4 COLUMBIA INSURANCE COMPANY v.
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’510 patent, Fig. 2.
Claim 1 is representative of claims 1–19 and substitute
claims 21–39:
1. A hanger for connecting a structural component
to a wall adapted to have sheathing mounted
thereon, the hanger comprising:
a channel-shaped portion configured to receive the
structural component . . . ;
an extension portion extending from the channel-
shaped portion and configured to extend through
the sheathing; and
a connection portion including a top flange config-
ured for attachment to a top surface of a top plate
of the wall, the connection portion further includ-
ing a back flange extending from an edge of the top
flange in a direction toward a plane of the base of
the channel-shaped portion, . . . the extension por-
tion spacing the side panels from the back flange
plane by a distance sized large enough to permit two
layers of ⅝ inch thick sheathing to be received be-
tween the rear edge plane and the back flange
plane, but too small to permit three layers of ⅝ inch
thick sheathing to be received between the rear
edge plane and the back flange plane.
’510 patent, 12:10–36 (emphasis added).
Claim 20 is similar to these claims but defines the size
of the extension portion differently:
20. . . . the extension portion spacing the channel-
shaped portion from the back flange plane by a dis-
tance sized large enough to permit the drywall to be
received between the channel-shaped portion and
the back flange plane.
’510 patent, 14:22–39 (emphasis added).
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Substitute claim 40 is the same as claim 20 but adds,
“wherein the extension portion includes an extension flange
extending from the back flange of the connection portion to
the channel-shaped portion,” to the end of the claim. J.A.
93 (emphasis added).
B
Appellee/Cross-Appellant Simpson Strong-Tie Com-
pany, Inc. petitioned for post-grant review of claims 1–20
of the ’510 patent under various theories of unpatentabil-
ity, including lack of written description, indefiniteness,
and obviousness. 1 During the proceeding, Appellant/Cross-
Appellee Columbia Insurance Company filed a revised con-
tingent motion to amend that proposed substitute claims
21–40 to replace claims 1–20 if the Board were to find the
original claims unpatentable.
The Board found claims 1–19 unpatentable for lack of
written description and claims 1–11, 13–18, and 20 un-
patentable as obvious over Simpson’s proposed combina-
tion of Gilb ’155, Bundy, and Allan. 2,3 As to the contingent
substitute claims, the Board found claims 21–39 invalid for
the same lack of written description as claims 1–19. The
1 Simpson also challenged claims 1–19 as antici-
pated by Brekke ’370, to which the ’510 patent claims pri-
ority. The parties agree that this anticipation ground rises
and falls with the written description ground, and so we
need not address anticipation separately. Appellant’s Br.
68; Appellee’s Br. 20, n. 4.
2 Gilb, U.S. Patent No. 4,261,155, issued April 14,
1981 (Gilb ’155); Bundy et al., U.S. Patent No. 9,394,680,filed December 14, 2013 and issued July 19, 2016 (Bundy);
Allan, U.S. Patent No. 4,827,684, issued May 9, 1989 (Al-
lan).
3 The Board rejected Simpson’s arguments that
claim 20 is unpatentable for indefiniteness, as well as
Simpson’s other obviousness arguments.
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6 COLUMBIA INSURANCE COMPANY v.
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only claim the Board found patentable was claim 40, which
it concluded was neither indefinite nor obvious.
Columbia appeals as to claims 1–39, and Simpson
cross-appeals as to claim 40. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
II
We set aside the Board’s actions if they are “arbitrary,
capricious, an abuse of discretion, or otherwise not in ac-
cordance with law,” or “unsupported by substantial evi-
dence.” 5 U.S.C. § 706(2). The Board’s legal determinations
are reviewed de novo, and its factual findings are reviewed
for substantial evidence. Arendi S.A.R.L. v. Google LLC,
882 F.3d 1132, 1133 (Fed. Cir. 2018). Written description
is a question of fact that we review for substantial evidence.
Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1225 (Fed.
Cir. 2022). Claim construction and obviousness are ques-
tions of law that depend on underlying findings of fact,
which are reviewed for substantial evidence. Teva Pharms.
USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 325–28 (2015); In
re Brandt, 886 F.3d 1171, 1175 (Fed. Cir. 2018). “Indefi-
niteness is a question of law that we review de novo, subject
to a determination of underlying facts, which we review for
substantial evidence.” Guangdong Alison Hi-Tech Co. v.
Int’l Trade Comm’n, 936 F.3d 1353, 1359 (Fed. Cir. 2019).
III
We begin with the Board’s conclusion that claims 1–19
and substitute claims 21–39 lack written description under
35 U.S.C. § 112(a). Because this conclusion is a finding of
fact supported by substantial evidence, we affirm.
To satisfy the written description requirement, “the
disclosure of the application relied upon [must] reasonably
convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing
date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc.
Case: 21-2145 Document: 48 Page: 7 Filed: 03/31/2023
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v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). In
a patent system which allows claim amendments and con-
tinuation applications long after an initial application is
filed, the written description requirement serves an im-
portant purpose: to ensure that the patent owner may only
exclude others from what they had actually invented as of
the priority date. See Ariad, 598 F.3d at 1351. The written
description analysis thus requires the factfinder to com-
pare the claim scope with what is disclosed in the specifi-
cation from the perspective of a skilled artisan. See, e.g.,
ULF Bamberg v. Dalvey, 815 F.3d 793, 797–98 (Fed. Cir.
2016) (affirming the Board’s decision that there was insuf-
ficient written description because the claim covered a
layer that melted both above and below 220 ºC, but the
specification only disclosed a layer melting above 220 ºC).
Here, the claims are drafted to require an extension
portion that:
spac[es] the side panels from the back flange plane
by a distance sized large enough to permit two lay-
ers of ⅝ inch thick sheathing to be received between
the rear edge plane and the back flange plane, but
too small to permit three layers of ⅝ inch thick
sheathing to be received between the rear edge
plane and the back flange plane.
’510 patent, 12:30–36 (emphasis added). This claim lan-
guage covers a range of extension portion sizes. It specifies
both a lower bound (large enough to fit two layers of ⅝-
inch-thick sheathing) and an upper bound (too small to fit
three layers of ⅝-inch-thick sheathing), while covering all
sizes that fall in between these two values.
In contrast, the Board found that the specification only
discloses the lower bound of this range: an extension por-
tion sized to fit exactly two layers of ⅝ inch drywall, with
no additional space left between the wall frame and the
support beam. Unlike the claims, there is nothing in the
specification suggesting any sort of upper limit on the size
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8 COLUMBIA INSURANCE COMPANY v.
SIMPSON STRONG-TIE COMPANY INC.
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. J.A. 25–29 (cit-
ing, e.g., ’510 patent 4:10–28, Figs. 1, 10A, 11, 13A, 14A,
35, 36, 38, and 39). The Board also relied on expert testi-
mony by Simpson’s expert, who testified that nothing in the
specification or prosecution history would suggest to a
skilled artisan the claimed upper limit. J.A. 25–29 (citing,
e.g., Ex. 1003 (Fennell Expert Declaration) ¶¶ 18, 68, 70–
71). This constitutes substantial evidence and is sufficient
support for the Board’s conclusion that these claims lack
written description.
Columbia presents various arguments to support its
position to the contrary, but none warrant remand or re-
versal. First, Columbia argues that the Board erred in con-
struing the claim to cover a range of extension portion
sizes. Rather, Columbia contends that a skilled artisan
would understand the claim limitation as providing what
Columbia calls a “go or no go” requirement—meaning that
the extension portion is sized to fit “exactly” two ⅝-inch lay-
ers of sheathing. Appellant’s Br. 63. Columbia argues the
claims were drafted this way to account for a small amount
of extra room for installing the sheathing and points to col-
umn 10, line 65 to column 11, line 23 of the ’510 patent.
Oral Argument at 7:10–9:10, https://oralargu-
ments.cafc.uscourts.gov/default.aspx?fl=21-2145_0310202
3.mp3. Because this part of the specification describes
sheathing being inserted after installation of the hanger,
Columbia argues a skilled artisan would know there was
necessarily more space than just the width of two ⅝-inch
layers of sheathing. Id.The argument that this limitation is a “go or no go” re-
quirement is a claim construction argument that Columbia
did not raise before the Board in its patent owner response
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and is thus forfeited. 4 But more importantly, even if the
argument were not forfeited, this proposed construction is
incorrect because it re-writes the claims. As discussed
above, this claim was written in terms of a range with a
lower bound and a specific upper bound. Regardless of Co-
lumbia’s alleged intention to claim only an extension por-
tion sized to fit “exactly” two layers of ⅝ inch thick
sheathing, that is not what the claim states. The language
of the claim is precise—it sets an upper limit of just under
three ⅝-inch layers of sheathing. This is a large enough
range to include more than “exactly” two layers of ⅝ inch
sheathing. Indeed, during oral argument, Columbia’s coun-
sel expressed this view multiple times. E.g., Oral Argu-
ment at 1:42–2:05, 5:37–6:20, 9:25–47 (agreeing that the
claims cover an extension portion, for example, sized to fit
two ⅝-inch layers of sheathing and an additional ½-inch
layer of sheathing, for example). Thus, on top of belying the
claim language, Columbia’s argument that we should con-
strue the claimed hanger as “receiv[ing] exactly two sheets
of sheathing,” Appellant’s Br. 63, contradicts its own coun-
sel’s interpretation of the claims.
4 Neither Columbia’s patent owner response nor sur-
reply asks the Board to construe this limitation. See Simp-
son Strong-Tie Co., Inc. v. Columbia Ins. Co., PGR No.
2019-00063, Paper 27 (Patent Owner Response), 21–30; see
also Simpson Strong-Tie Co., Inc. v. Columbia Ins. Co.,
PGR No. 2019-00063, Paper 36 (Patent Owner Sur-Reply),
2–11. Moreover, Columbia’s written description section in
the patent owner response says nothing about the claims
not covering a range. See Patent Owner Response at 93–
96. The closest Columbia gets to making this argument is
in a single sentence in the written description section of its
sur-reply, which states, “the claims merely require that the
spacing must be sized to receive a discrete number of layers
of a specific type of sheathing.” Patent Owner Sur-Reply at
26.
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Second, Columbia argues that Simpson’s construction
of this claim as a range is a shifting theory raised for the
first time on reply. This is not so. The petition made clear
Simpson’s argument—the claims cover a range of exten-
sion portion sizes while the specification discloses only one
size of extension portion. See, e.g., J.A. 398 (stating this
limitation “identifies a measurable range that includes dis-
tances within that range and excludes distances outside
that range”). In asking the Board to construe this limita-
tion as covering a range, the petition explicitly expressed
the range in terms of 1¼ inches to 1⅞ inches. J.A. 398–99
(“Also, because two layers of 5/8″ sheathing equates to a
distance of 1¼″, and three layers of 5/8″ sheathing equates
to a distance of 1⅞″, a POSITA would have understood the
range recited in this claim element as equal to at least 1¼”
but less than 1⅞″.”). And Columbia understood that this
was Simpson’s argument because Columbia said so in its
patent owner response. Simpson Strong-Tie Co., Inc. v. Co-
lumbia Ins. Co., PGR No. 2019-00063, Paper 27 (Patent
Owner Response), 93 (describing Simpson’s theory as being
that the claims lacked written description support for “the
upper limit of the claim limitations”); see id. at 96. Thus,
Simpson’s argument did not shift between its petition and
reply.
Third, Columbia presents factual arguments about
how a skilled artisan would have understood the specifica-
tion. But the fact that Columbia disagrees with the Board’s
finding that a skilled artisan would not have understood
the specification to disclose the claimed range of sizes is not
a basis for reversal. Written description is a fact-dependent
inquiry, and as explained above, the Board’s conclusion
was supported by substantial evidence.
Fourth, Columbia tries to distinguish this case from
our precedent about the chemical arts and criticizes the
Board for citing such cases. But the fact that this case in-
volves a more predictable technology than the cases cited
by the Board is not a basis for reversal. While it may be
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SIMPSON STRONG-TIE COMPANY INC.
factually more likely in a predictable arts case for the spec-
ification to be one from which a skilled artisan could “rea-
sonably discern a disclosure” of a claimed range, Indivior
UK Ltd. v. Dr. Reddy’s Labs. S.A., 18 F.4th 1323, 1328
(Fed. Cir. 2021), this does not mean that the legal standard
itself is any different. Whether a claim covers a range that
a skilled artisan could not “reasonably discern” from the
specification is a question of fact. Here, the Board found
that a skilled artisan could not “reasonably discern” the
claimed range based on the specification’s disclosure of just
the lower bound. As explained above, this was a factual
finding supported by substantial evidence.
We have considered Columbia’s remaining arguments
about written description and find them unpersuasive. Ac-
cordingly, we affirm the unpatentability of claims 1–19 and
substitute claims 21–39 for lack of written description.
IV
Next, we address the Board’s conclusion that claims 1–
11, 13–18, and 20 are unpatentable as obvious over
Gilb ’155, Bundy, and Allan. 5 Because the Board did not
err in its claim construction and the Board’s factual find-
ings supporting its obviousness conclusion under that con-
struction were supported by substantial evidence, we
affirm.
Starting with claim construction, we hold that the
Board correctly construed “an extension portion extending
from the channel-shaped portion and configured to extend
through the sheathing,” as requiring “an extension portion
extending from the channel-shaped portion toward the con-
nection portion and defining a space to receive sheathing.”
5 Because the Board found that Gilb ’155 and Bundy
disclose the structural limitations of claims 1, 13, and 20,
it found these claims obvious over Gilb ’155 and Bundy
without having to consider Allan.
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12 COLUMBIA INSURANCE COMPANY v.
SIMPSON STRONG-TIE COMPANY INC.
J.A. 57. The claims at issue are apparatus claims that only
cover the hanger itself, not the sheathing. But this limita-
tion is worded in functional terms; it requires the extension
portion to extend through the sheathing. Before the Board,
Columbia did not dispute that a construction for this term
required some structural or physical explanation of what is
needed to extend through the sheathing. J.A. 55–56. But
Columbia’s proposed solution was to construe the claims by
reading in additional limitations specific to fire-resistant
sheathing having an opening for the extension portion. J.A.
51. Staying true to the claim language, the Board correctly
declined to read in this extra language that would artifi-
cially narrow the claim to require fire-resistant sheathing
with a cutout. We agree with the Board’s construction,
which properly balances the claim language itself with the
specification and prosecution history. J.A. 56–57.
Columbia argues that the Board’s claim construction
violated the Administrative Procedure Act and Columbia’s
due process rights because the Board’s construction dif-
fered from either party’s proposed claim construction. Ap-
pellant’s Br. 38–44. We are not persuaded by these
arguments. While the Board’s construction does not mirror
the exact wording of Simpson’s proposed construction for
this limitation, it is “similar enough to [Simpson’s] con-
structions so as to not constitute changing theories mid-
stream in violation of the APA.” Hamilton Beach Brands,
Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1338–39 (Fed Cir.
2018). This is not a situation where the Board sua sponte
raised claim construction post-institution. Rather, the par-
ties disputed the meaning of this very limitation through-
out the proceeding, and Columbia “had notice of the
contested claim construction issues and an opportunity to
be heard.” Id. at 1339. Thus, we find no procedural or con-
stitutional error with the Board’s construction.
Having arrived at the correct claim construction, the
only remaining issue is whether the Board erred in finding
these claims obvious over Gilb ’155, Bundy, and Allan. We
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SIMPSON STRONG-TIE COMPANY INC.
find no such error. The Board’s decision depends from un-
derlying findings of fact that are supported by substantial
evidence. For example, the Board found that Gilb ’155 dis-
closes the “extend through” limitation and supported this
finding with citations to Gilb ’155’s disclosure; Simpson’s
expert testimony; and Columbia’s own statements during
the post-grant review proceeding and prosecution of the
’510 patent. J.A. 52–54. And, despite Columbia’s argu-
ments to the contrary, the Board also found motivation to
combine the relevant references and cited ample support-
ing evidence. J.A. 63–69 (citing, e.g., Simpson’s expert’s tes-
timony about simple substitution and predictable results).
We have considered Columbia’s remaining arguments
about the obviousness of these claims and find them unper-
suasive. Accordingly, we affirm the unpatentability of
claims 1–11, 13–18, and 20 as obvious over Gilb ’155,
Bundy, and Allan.
V
Finally, on Simpson’s cross-appeal, we consider
whether the Board erred in finding claim 40 definite and
non-obvious. We find no error and thus affirm.
A
Starting with indefiniteness, we hold that the Board
correctly concluded claim 40 is not indefinite. A claim is in-
definite if it does not inform, with “reasonable certainty,” a
skilled artisan about the scope of the claimed invention.
Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901
(2014). We agree with the board that the claim language
here—“large enough to permit the drywall to be re-
ceived”—informs a skilled artisan with reasonable cer-
tainty that the scope of this claim includes any extension
portion sized larger than the smallest commonly known
sheathing size. J.A. 29–34 (citing expert testimony that
there were well-known, standardly available drywall sizes
at the time when holding claim 20 not indefinite); J.A. 110
(adopting claim 20 indefiniteness analysis for claim 40).
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14 COLUMBIA INSURANCE COMPANY v.
SIMPSON STRONG-TIE COMPANY INC.
While the fact that this range of possible sizes is exceed-
ingly broad may pose a question of written description or
enablement under § 112(a), 6 the breadth of this range by
itself is not an issue of indefiniteness under § 112(b). Niazi
Licensing Co. v. St. Jude Med. S.C., Inc., 30 F. 4th 1339,
1347 (Fed. Cir. 2022) (“[A] claim is not indefinite just be-
cause it is broad.”). Because the claim informs a skilled ar-
tisan with reasonable certainty about the claim scope, we
affirm the Board’s conclusion that claim 40 is not indefi-
nite.
B
Finally, we address the Board’s conclusion that claim
40 is not obvious. Claim 40 recites the same elements as
claim 20 but also requires “an extension flange extending
from the back flange of the connection portion to the chan-
nel-shaped portion.” J.A. 87 (emphasis added). The Board
construed this limitation as requiring the extension flange
to start from the back flange and end at the channel-shaped
portion. J.A. 112–13. We agree that this is the natural
reading of what it means to “extend from” the back flange.
We also agree that the specification uses the term “extend-
ing from” consistent with this reading, J.A. 114–16, and
thus affirm the Board’s claim construction.
Simpson argues that, by requiring the starting point of
the extension flange to be at the back flange, the Board’s
construction improperly requires the extension flange to
extend directly from the back flange. For support, Simpson
points to a place in the specification where the phrase “ex-
tending away from” is used to refer to two components that
are indirectly connected. But we do not depart from the
natural reading of a phrase absent clear lexicography or
prosecution disclaimer. Luminara Worldwide, LLC v.
6 Simpson does not argue this limitation lacks writ-
ten description or enablement, and we do not reach that
issue for claim 40.
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COLUMBIA INSURANCE COMPANY v. 15
SIMPSON STRONG-TIE COMPANY INC.
Liown Elecs. Co. Ltd., 814 F.3d 1343, 1353 (Fed. Cir. 2016).
Here, “extending away from” is a different phrase from “ex-
tending from.” Moreover, the specification uses the phrase
“extending away from” only once in passing to refer to two
components that are indirectly connected. This is not a def-
inition of a term, and thus does not warrant ignoring the
natural reading of the phrase “extending from.” Finally,
although the specification never defines the actual phrase
at issue (“extending from”), it does repeatedly use this term
consistent with the Board’s construction to refer to one
component starting at the other component (direct connec-
tion). In fact, Simpson conceded before the Board that every
time the specification uses the phrase “extending from,” it
does so in the context of the beginning of element B’s ex-
tension being on element A (and not any intervening com-
ponent). J.A. 115. We decline to look to one instance of a
different phrase (“extending away from”) to overlook the
clear meaning of the phrase “extending from,” especially
when this meaning coincides with how “extending from” is
used in the specification.
Given the Board’s correct construction, the only re-
maining issue is whether the Board erred in not finding
claim 40 obvious under this construction. We find no error.
Once again, the Board’s decision depends from underlying
findings of fact that are supported by substantial evidence.
E.g., J.A. 116–24.
We have considered Simpson’s remaining arguments
on cross-appeal and find them unpersuasive. Accordingly,
we affirm the patentability of claim 40.
AFFIRMED
COSTS
No costs.
Case: 21-2145 Document: 48 Page: 16 Filed: 03/31/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
COLUMBIA INSURANCE COMPANY,
Appellant
v.
SIMPSON STRONG-TIE COMPANY INC.,
Cross-Appellant
______________________
2021-2145, 2021-2157
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. PGR2019-
00063.
______________________
MOORE, Chief Judge, dissenting in part.
The Board erred in finding claims 1–19 lack written de-
scription support. Properly applied, written description re-
quires only that the ’510 patent reasonably convey to a
skilled artisan that the inventor possessed a joist hanger
with an extension portion designed to create a spacing to
receive two but not three sheets of 5/8”-thick drywall. Par-
ticularly in light of the simplicity of the claimed technology,
the patent provides ample support for this limitation.
The Board found the ’510 patent supports written de-
scription only for an extension portion that creates a 10/8”
spacing. That conclusion neglects to look at the patent as
Case: 21-2145 Document: 48 Page: 17 Filed: 03/31/2023
2 COLUMBIA INSURANCE COMPANY v.
SIMPSON STRONG-TIE COMPANY INC.
a whole through the eyes of a skilled artisan. The majority
holds that “there is nothing in the specification suggesting
any sort of upper limit on the size of the extension portion.”
Maj. at 7–8. But nearly every figure in this patent that
displays sheathing shows exactly what is claimed: a space
large enough for two 5/8” sheets of drywall but not large
enough for 3. Figures 1, 10, 10A, 11, 13, 13A, 14, 14A, 34–
36, and 38–39 of the ’510 patent teach an extension portion
creating a spacing that clearly permits two but not three
sheets of drywall, as the example below shows:
’510 patent at Fig. 11; see id. at 4:13–17 (stating dimen-
sions of the two layers in the figures); see also J.A. 3296 ¶
107 (expert declaration stating figures in context of dimen-
sions in specification “provide[] the necessary context (e.g.,
scale) to allow” a skilled artisan “to understand a third
layer . . . cannot be received”). It is clear from these figures,
which are part of the specification, that the patentee pos-
sessed and disclosed in the figures themselves that the
hanger can accommodate two but not three 5/8” sheets into
the space.
Moreover, not only is it clear that the inventor pos-
sessed a hanger that could fit two and not three sheets, but
the Board found that the ’510 patent discloses only a
Case: 21-2145 Document: 48 Page: 18 Filed: 03/31/2023
COLUMBIA INSURANCE COMPANY v. 3
SIMPSON STRONG-TIE COMPANY INC.
hanger that no skilled artisan could possess. The evidence
of record demonstrates that a skilled artisan would under-
stand that the spacing cannot be precisely 10/8” (i.e., a dis-
tance exactly the thickness of the two sheets) but rather
must be the thickness of the two sheets plus a “tolerance.”
J.A. 3176–78 (expert testimony). Indeed, engineering in
this field always includes tolerances because “two pieces of
material of a certain thickness” will not fit “in a space that
has exactly the same width.” Id. There is no dispute that
the ’510 patent’s written description contemplates adding
sheathing into the space defined by the extension portion
after the hanger is installed. ’510 patent at 10:65–67 (stat-
ing the hanger is “installed on the wall 28 before the
sheathing 34 is mounted on the wall”). “This simplifies
construction by allowing the building to be completely
framed and roofed before requiring the sheathing 34 to be
installed.” Id. at 10:67–11:2. There is also no dispute that
the space must include a tolerance in order for the two
sheets to be added after and thus the inventor possessed
more than just 10/8” thickness. In fact, if the space was
only 10/8” it would be impossible to add the sheets after as
the specification expressly disclosed. Given the figures
showing space for two but not three sheets of drywall, there
is no reasonable basis for concluding that the inventor did
not possess this claimed invention.
While the majority recognizes “it may be factually more
likely in a predictable arts case” that the same level of dis-
closure provides sufficient written description of a claimed
range, it nonetheless treated this claim as though it were
in an unpredictable field rather than simply a claim to a
hanger for drywall. Maj. at 10–11; see Hologic, Inc. v.
Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed. Cir. 2018)
(“[T]he field of this invention is a predictable art, such that
a lower level of detail is required to satisfy the written de-
scription requirement than for unpredictable arts.”). Un-
like the chemical arts, which involve “the unpredictable
performance” of new combinations of chemical compounds,
Case: 21-2145 Document: 48 Page: 19 Filed: 03/31/2023
4 COLUMBIA INSURANCE COMPANY v.
SIMPSON STRONG-TIE COMPANY INC.
this case involves the simple and predictable dimensions
required for a construction hanger to accommodate two
5/8”-thick sheets of drywall. In re Smythe, 480 F.2d 1376,
1383 (C.C.P.A. 1973). The ’510 patent explicitly discloses
dimensions for a spacing that can accommodate two but not
three 5/8”-thick sheets of drywall and depicts that spacing
throughout the patent. ’510 patent at 4:15–19, Figs. 1, 10,
10A, 11, 13, 13A, 14, 14A, 34–36, and 38–39. This is suffi-
cient written description support.