Case: 21-2145
`
`Document:48
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`Page:1_
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`Filed: 03/31/2023
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`NOTE: This disposition is nonprecedential.
`
`GAnited States Court of Appeals
`for the Federal Circuit
`
`COLUMBIA INSURANCE COMPANY,
`Appellant
`
`Vv.
`
`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.
`
`

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`COLUMBIA INSURANCE COMPANY v.
`SIMPSON STRONG-TIE COMPANY INC.
`
`Before MOORE, Chief Judge, PROST and HUGHES, Circuit
`Judges.
`
`Opinionfor 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 thatoriginal 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 1-389 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, 18—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 usedto build structures. Support
`beams mustbe securely connected to a wall frame on either
`side of the beam. One wayto connect the beam to the frame
`is to use a hangerthat 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 usedto 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.
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`3
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`layers of sheathing are required to ensure fire resistance
`and meet building codes.
`
`A commonwayto accountfor sheathing between a sup-
`port beam anda wall frameis 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-
`creasedfire-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 (8) 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 downthesideof 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.
`
`FIG, 2
`
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`COLUMBIA INSURANCE COMPANY v.
`SIMPSON STRONG-TIE COMPANY INC.
`
`510 patent, Fig. 2.
`
`Claim 1 is representative of claims 1-19 and substitute
`claims 21-89:
`
`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 edgeof 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 distancesized large enough to permit two
`layers of % 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 % inch
`thick sheathing to be received between the rear
`edge plane andthe backflange 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 flangeplane bya 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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`COLUMBIA INSURANCE COMPANY v.
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`5
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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.! During the proceeding, Appellant/Cross-
`Appellee Columbia Insurance Companyfiled 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 7155, 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
`
`Simpson also challenged claims 1-19 as antici-
`1
`pated by Brekke ’370, to which the ’510 patent claimspri-
`ority. The parties agree that this anticipation groundrises
`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); Bundyet 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 (AI-
`lan).
`The Board rejected Simpson’s arguments that
`3
`claim 20 is unpatentable for indefiniteness, as well as
`Simpson’s other obviousness arguments.
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`COLUMBIA INSURANCE COMPANY v.
`SIMPSON STRONG-TIE COMPANY INC.
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`only claim the Board found patentable was claim 40, which
`it concluded wasneither 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
`
`Weset aside the Board’s actionsif 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 reviewedde novo, andits 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 questionof 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.
`Intl Trade Comm'n, 936 F.3d 1353, 1359 (Fed. Cir. 2019).
`
`Ii
`
`Webegin 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.
`
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`COLUMBIA INSURANCE COMPANY v.
`SIMPSON STRONG-TIE COMPANY INC.
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`7
`
`v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991)). In
`a patent system which allows claim amendments andcon-
`tinuation applications long after an initial application is
`filed, the written description requirement serves an 1m-
`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 1851. The written
`description analysis thus requires the factfinder to com-
`pare the claim scope with whatis 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 °C, but the
`specification only disclosed a layer melting above 220 °C).
`
`Here, the claims are drafted to require an extension
`portion that:
`
`spac[es] the side panels from the backflange plane
`by a distance sized large enough to permit two lay-
`ers of % inch thick sheathing to be received between
`the rear edge plane and the back flange plane, but
`too small to permit three layers of % inch thick
`sheathing to be received between the rear edge
`plane andthe backflange plane.
`
`"510 patent, 12:30-86 (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 %-
`inch-thick sheathing) and an upper bound(too small to fit
`three layers of %-inch-thick sheathing), while coveringall
`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 % 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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`COLUMBIA INSURANCE COMPANY v.
`SIMPSON STRONG-TIE COMPANY INC.
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`of the extension portion, and the Board foundthat a skilled
`artisan would not consider disclosure of just one extension
`portion size to show possession of the claimed range.
`Throughoutits 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-
`monyby Simpson’s expert, whotestified that nothing in the
`specification or prosecution history would suggest to a
`skilled artisan the claimed upperlimit. J.A. 25-29 (citing,
`e.g., Ex. 1003 (Fennell Expert Declaration) {{ 18, 68, 70—
`71). This constitutes substantial evidence andis 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 remandor 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 portionis sizedto fit “exactly” two %-inchlay-
`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 andpointsto 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 %-inch
`layers of sheathing. Jd.
`
`The argumentthat this limitation is a “go or no go”re-
`quirementis a claim construction argument that Columbia
`did not raise before the Board in its patent owner response
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`COLUMBIA INSURANCE COMPANY v.
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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 anda specific upper bound. Regardless of Co-
`lumbia’s alleged intention to claim only an extension por-
`tion sized to fit “exactly” two layers of % inch thick
`sheathing, that is not what the claim states. The language
`of the claim is precise—it sets an upperlimit of just under
`three %-inch layers of sheathing. This is a large enough
`range to include more than “exactly” two layers of % 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 %-inch layers of sheathing and an additional %-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 norsur-
`reply asks the Board to construethis limitation. See Simp-
`son Strong-Tie Co., Inc. v. Columbia Ins. Co., PGR No.
`2019-00063, Paper 27 (Patent Owner Response), 21—380; 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 argumentis
`in a single sentence in the written description section ofits
`sur-reply, which states, “the claims merely require that the
`spacing must besized to receive a discrete numberof layers
`of a specific type of sheathing.” Patent Owner Sur-Reply at
`26.
`
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`COLUMBIA INSURANCE COMPANY v.
`SIMPSON STRONG-TIE COMPANY INC.
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`Second, Columbia argues that Simpson’s construction
`of this claim as a rangeis a shifting theory raised for the
`first time on reply. This is not so. The petition madeclear
`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 includesdis-
`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 1% inches to 1% inches. J.A. 398-99
`(“Also, because two layers of 5/8” sheathing equates to a
`distance of 1%", and three layers of 5/8” sheathing equates
`to a distance of 1%", a POSITA would have understood the
`rangerecited in this claim element as equalto at least 1%”
`but less than 1%”.”), 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. 2019-00068, Paper 27 (Patent
`OwnerResponse), 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 argumentdid not shift between its petition and
`reply.
`
`Third, Columbia presents factual arguments about
`how a skilled artisan would have understood thespecifica-
`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
`Boardfor 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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`Case: 21-2145
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`Document:48
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`Filed: 03/31/2023
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`COLUMBIA INSURANCE COMPANY Vv.
`SIMPSON STRONG-TIE COMPANY INC.
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`11
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`factually more likely in a predictable arts case for the spec-
`ification to be one from whicha skilled artisan could “rea-
`sonably discern a disclosure” of a claimed range, Jndivior
`UK Lid. v. Dr. Reddy’s Labs. S.A., 18 F.4th 1328, 13828
`(Fed. Cir. 2021), this does not meanthat 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 basedon the specification’s disclosure of just
`the lower bound. As explained above, this was a factual
`finding supported by substantial evidence.
`
`Wehave 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—89 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 underthat con-
`struction were supported by substantial evidence, we
`affirm.
`
`Starting with claim construction, we hold that the
`Boardcorrectly 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-shapedportion 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, 18, and 20,
`it found these claims obvious over Gilb ’155 and Bundy
`without having to consider Allan.
`
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`COLUMBIA INSURANCE COMPANY v.
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`J.A. 57. The claims at issue are apparatus claims that only
`cover the hangeritself, not the sheathing. But this limita-
`tion is wordedin 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 somestructural 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 openingfor 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 languageitself 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. freal 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 Boarderred in finding
`these claims obvious over Gilb 155, Bundy, and Allan. We
`
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`COLUMBIA INSURANCE COMPANY v.
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`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. 638-69 (citing, e.g., Simpson’s expert’s tes-
`timony about simple substitution and predictable results).
`
`Wehave 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 7155,
`Bundy, and Allan.
`
`V
`
`Finally, on Simpson’s cross-appeal, we consider
`whether the Board erred in finding claim 40 definite and
`non-obvious. Wefind 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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`COLUMBIA INSURANCE COMPANY v.
`SIMPSON STRONG-TIE COMPANY INC.
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`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),® 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 13839,
`1347 (Fed. Cir. 2022) (“[A] claim is not indefinite just be-
`cause it is broad.”). Because the claim informsa 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
`construedthis limitation as requiring the extension flange
`to start from the backflange and end at the channel-shaped
`portion. J.A. 112-138. We agree that this is the natural
`reading of what it means to “extend from”the back flange.
`Wealso 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 thespecification 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 uv.
`
`Simpson does not arguethis limitation lacks writ-
`6
`ten description or enablement, and we do not reach that
`issue for claim 40.
`
`

`

`Case: 21-2145
`
`Document:48
`
`Page:15_
`
`Filed: 03/31/2023
`
`COLUMBIA INSURANCE COMPANY v.
`SIMPSON STRONG-TIE COMPANY INC.
`
`15
`
`Liown Elecs. Co. Lid., 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 passingto refer to two
`componentsthat 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 thespecification 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
`componentstarting at the other component(direct connec-
`tion). In fact, Simpson concededbefore the Board that every
`timethe 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
`usedin the specification.
`
`Given the Board’s correct construction, the only re-
`maining issue is whether the Board erred in not finding
`claim 40 obvious underthis construction. Wefind noerror.
`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.
`
`GAnited States Court of Appeals
`for the federal Circuit
`
`COLUMBIA INSURANCE COMPANY,
`Appellant
`
`Vv.
`
`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.
`
`MookrE,Chief Judge, dissenting in part.
`
`The Boarderred 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 supportfor 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 throughthe eyes of a skilled artisan. The majority
`holds that “there is nothing in thespecification 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 whatis claimed: a space
`large enough for two 5/8” sheets of drywall but not large
`enoughfor 3. Figures 1, 10, 10A, 11, 18, 138A, 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:
`
`FIG. 11
`
`
`347"
`
`
`
`34,
`
`
`“1
`
`
`74
`74
`74
`74
`34
`°° * | “ 30
`° g “a
`
`
`38
`I
`48
`|
`
`
`
`68
`68
`
`
`
`
`52
`st
`wv
`467
`\ 46
`
`510 patent at Fig. 11; see id. at 4:13—17 (stating dimen-
`sions of the two layers in thefigures); see also J.A. 3296 J
`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 hangerthat 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.
`SIMPSON STRONG-TIE COMPANY INC.
`
`3
`
`hangerthat no skilled artisan could possess. The evidence
`of record demonstrates that a skilled artisan would under-
`stand that the spacing cannotbe precisely 10/8”(i.e., a dis-
`tance exactly the thickness of the two sheets) but rather
`must be the thicknessof 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.” Jd. There is no dispute that
`the ’510 patent’s written description contemplates adding
`sheathing into the space defined by the extension portion
`after the hangeris 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.” Jd. 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 samelevel 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 lowerlevel 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 Page:19_Filed: 03/31/2023Document:48
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`
`
`4
`
`COLUMBIA INSURANCE COMPANY v.
`SIMPSON STRONG-TIE COMPANY INC.
`
`this case involves the simple and predictable dimensions
`requ