Capital Machine Company, Inc. and Indiana Forge, LLC v. Miller Veneers, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CAPITAL MACHINE COMPANY, INC. AND INDIANA
FORGE, LLC,
Plaintiffs/Counterclaim Defendants-Appellants,
AND
WILLIAM L. KOSS,
Counterclaim Defendant,
v.
MILLER VENEERS, INC.,
Defendant/Counterclaimant-Appellee,
AND
THOMAS A. MILLER, BENJAMIN R. MILLER,
SALLY M. SANDO, ROBERT D. BRAND,
INDIANAPOLIS VENEER WORKS, LLC, EGENOLF
MACHINE, INC., AND MERRITT PLYWOOD
MACHINERY, INC.,
Defendants/Counterclaimants-Appellees.
______________________
2012-1288
______________________
Appeal from the United States District Court for the
Southern District of Indiana in No. 09-CV-0702, Judge
Jane Magnus-Stinson.

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CAPITAL MACHINE COMPANY , INC. v. MILLER VENEERS, INC. 2
______________________
Decided: April 15, 2013
______________________
P AUL B. O VERHAUSER , Overhauser Law Offices, LLC,
of Greenfield, Indiana, argued for Plaintiffs/Counterclaim
Defendants-Appellants.
MICHAEL A. S WIFT , Maginot, Moore & Beck, LLP, of
Indianapolis, Indiana, argued for defend-
ants/counterclaimants-appellees. With him on the brief
were J. L EE MCN EELY , CYNTHIA A. BEDRICK , and CHARLES
B. D AUGHERTY , McNeely Stephenson Thopy & Harrold, of
Shelbyville, Indiana.
______________________
Before L OURIE, M OORE, and O'MALLEY , Circuit Judges.
MOORE, Circuit Judge.
Capital Machine Company, Inc., et al. (Capital) ap-
peal from the district court’s grant of summary judgment
that Miller Veneers, Inc., et al. (Miller) do not infringe the
asserted claims of Capital’s patents: U.S. Patent Nos.
5,562,137, 5,694,995, 5,701,938, 5,678,619, 5,819,828, and
7,395,843. Because the court incorrectly construed some
claim terms, we vacate its grant of summary judgment
and remand.
I. BACKGROUND
Capital’s patents, which are all part of the same pa-
tent family, are directed to producing thin sheets of wood
veneer from a portion of a log called a “flitch.” The pa-
tents’ specifications explain that “[a] flitch is formed by
cutting a log down the middle along its longitudinal axis
so that the plane formed by the cut defines a flitch mount-
ing surface and the periphery of the log defines a veneer-

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CAPITAL MACHINE COMPANY , INC. v. MILLER VENEERS, INC. 3
producing surface.” ’619 col.1 ll.52–55. One method of
making wood veneer is to repeatedly move a flitch past a
veneer slicing knife to cut individual sheets of veneer.
The part of the veneer slicing machine that holds the
flitch in place is called a “staylog.”
Before cutting, the flitch must first be prepared so it
can be mounted on the staylog. A conventional method of
preparing the flitch is to cut axially-extending grooves
that run the length of the flitch. The staylog has clamp-
ing members called “dogs” that extend from the surface of
the staylog and are inserted into the grooves in the flitch.
The dogs can be moved toward each other to pinch the
flitch using the grooves, keeping it in place. The figure
below, adapted from figures in the patents-in-suit, depicts
a flitch mounted on a staylog using one stationary dog
(134) and one movable dog (136).
Capital’s patents purport to increase the yield of ve-
neer obtained from each log by solving problems associat-
ed with conventional methods. Most notably, the patents
address problems caused by the natural taper in flitches,
which occurs because trees are thicker at the base and get
thinner going up the trunk. When a tapered flitch is
mounted on the staylog, its outer surface is not parallel to
the cutting axis of the knife. As shown below, the first

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CAPITAL MACHINE COMPANY , INC. v. MILLER VENEERS, INC. 4
several slices are thus not full length because the knife
cuts only the thicker portion of the flitch. J.A. 860. This
is undesirable because the outside portion of the log
produces the best quality veneer. Capital’s patents at-
tempt to solve this problem by positioning the flitch so its
outer surface is parallel to the axis of the knife. This can
be done either by cutting deeper holes for the dogs in the
thicker end of the flitch than in the thinner end or by
rotating the staylog so that the flitch’s outer surface is
parallel to the slicing knife. See, e.g., ’137 patent col.2
ll.31–42.
Capital sued Miller for infringement. After the dis-
trict court’s Markman ruling, the parties stipulated to
summary judgment of noninfringement. Capital appeals,
challenging the court’s construction of several claim
terms. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
II. D ISCUSSION
We review the district court’s claim construction de
novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1454 (Fed. Cir. 1998) (en banc). Claim terms are general-
ly given their ordinary and customary meaning as under-
stood by a person of ordinary skill in the art when read in
the context of the specification and prosecution history.
See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005) (en banc). The two exceptions to this rule are: (1)
when a patentee acts as his own lexicographer; or (2)
when the patentee disavows claim scope either in the

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CAPITAL MACHINE COMPANY , INC. v. MILLER VENEERS, INC. 5
specification or during prosecution. Thorner v. Sony
Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir.
2012). A statement in the prosecution history can only
amount to disclaimer if it clearly and unambiguously
disavows claim scope. Toshiba Corp. v. Imation Corp.,
681 F.3d 1358, 1370 (Fed. Cir. 2012). When construing
claim in patents that derive from the same parent appli-
cation and share common terms, “we must interpret the
claims consistently across all asserted patents.” NTP,
Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1293
(Fed. Cir. 2005).
A. “Flitch”
The district court construed the term “flitch” as “a
portion of a log resulting from the log being cut along its
longitudinal axis and thus having a taper at the butt end
of the log.” J.A. 12 (emphasis added). This term appears
in every asserted claim. Capital argues that the court’s
construction is wrong because nothing in the specifica-
tions of the patents-in-suit limits a “flitch” to having a
“taper” or a “butt end.” Capital also contends that the
fact that some of the asserted claims recite a “tapered
flitch” demonstrates that a “flitch” is not necessarily
tapered. Capital argues that, because a “flitch” need not
be tapered, the term should not be construed to require a
“butt end.”
Miller argues that the patents-in-suit expressly define
a “flitch” as being tapered. It points to the specifications’
explanation that “because the tree trunk is naturally
tapered, one end of the flitch is thicker than the other
end, and consequently extends a greater distance from the
mounting surface of the staylog. As a result, the veneer-
producing zone of the flitch is frusto-conical . . . .” ’137
patent col.1 ll.55–59. Miller further argues that the
patents use the terms “flitch” and “tapered flitch” inter-
changeably. Miller points out that the ’619 patent, which
Capital admitted is limited to tapered flitches, nonethe-

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CAPITAL MACHINE COMPANY , INC. v. MILLER VENEERS, INC. 6
less has claims that simply recite “a flitch” (e.g., claims
22–29).
Miller also argues that Capital disclaimed untapered
flitches during prosecution of the patents-in-suit before
the U.S. Patent and Trademark Office (PTO). During
prosecution of the ’619 patent, for example, Capital
sought to overcome an anticipation rejection over U.S.
Patent No. 5,101,874 (Weil) by arguing that Weil “does
not disclose applicant’s invention” because it “does not
show, and is silent with respect to, tapered flitches and
their cutting.” J.A. 356. Miller argues that Capital’s
statements apply to some claims that simply recited “a
flitch” with no mention of a taper. Miller points to similar
characterizations of Weil during prosecution of other
patents in the same patent family.
We agree that Capital disclaimed untapered flitches
during prosecution of the patents-in-suit. The PTO
rejected claims from the application that issued as the
’619 patent as anticipated by Weil, including some claims
that expressly recited “a tapered flitch” and others that
recited only “a flitch.” See, e.g., J.A. 348 (claim 1); J.A.
351 (claim 22). In response to these rejections, Capital
argued that Weil “does not show, and is silent with re-
spect to, tapered flitches and their cutting.” J.A. 356
(emphasis added). Capital then characterized its inven-
tion as removing veneer from a “tapered flitch”:
Weil ’874 is completely silent with regard to the
problem solved by applicant’s invention, that is,
applicant’s novel method and apparatus for re-
moving veneer from substantially the entire outer
veneer-producing surface of the frusto-conical or
tapered flitch, and mounting the flitch by means,
such as applicant’s novel dog arrangement, to
maximize the wood left in the flitch and the rigidi-
ty of the flitch as presented for cutting. Appli-
cant’s novel method and apparatus provide

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CAPITAL MACHINE COMPANY , INC. v. MILLER VENEERS, INC. 7
maximal recovery of veneer from a tapered and
frusto-conical flitch with a simple and effective
apparatus unlike anything disclosed by Weil ’874.
J.A. 357–58 (emphases added).
In a subsequent office action response, Capital again
emphasized that its invention “is directed to [a] method
and apparatus for cutting veneer from a tapered flitch
with minimal waste . . . .” J.A. 364 (emphasis in original).
Capital reiterated that its invention differed from Weil
because “[n]othing in [Weil] discloses or suggests use of a
tapered flitch, or a method or apparatus for cutting ve-
neer from the tapered out surface of a tapered flitch, or
applicant’s claimed method and apparatus for cutting
veneer from the tapered outer surface of a tapered flitch.”
J.A. 366.
Capital made similar arguments during prosecution of
the ’938 patent, stating that “[n]othing in Weil ’874 dis-
closes or suggests use of a tapered flitch.” J.A. 371.
Capital’s argument applied to some claims reciting “a
flitch,” rather than “a tapered flitch,” demonstrating that
Capital was unmistakably disclaiming untapered flitches.
Similarly, during prosecution of U.S. Patent No.
5,868,187, an unasserted patent in the same family as the
patents-in-suit, Capital again distinguished Weil because
it does not disclose using tapered flitches. J.A. 381–83.
Through these prosecution statements, Capital sought
to overcome anticipation rejections by arguing that its
invention, unlike Weil, is directed to tapered flitches.
Importantly, Capital made these arguments even with
respect to claims that recited only “a flitch,” and thus
might not otherwise have been limited to a tapered flitch.
This is a clear and unmistakable disclaimer of untapered
flitches.
Because each patent-in-suit has clear and unmistaka-
ble prosecution history disclaimer in either a parent or a

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CAPITAL MACHINE COMPANY , INC. v. MILLER VENEERS, INC. 8
child, we interpret the term “flitch” consistently across all
the patents.1 See NTP, 418 F.3d at 1293. We have held
that the prosecution history regarding a claim term is
pertinent when interpreting the same term in both later-
issued and earlier-issued patents in the same family.
Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340,
1350 (Fed. Cir. 2004). Capital’s disclaimer of scope during
prosecution of some of the patents-in-suit therefore ap-
plies equally to limit the term “flitch” in the other pa-
tents-in-suit. We thus hold that the district court
correctly construed the term “flitch” as “having a taper at
the butt end of the log” for every patent-in-suit.
B. “Staylog-Engaging Zone”
The district court construed “staylog-engaging zone”
as “[t]he portion of the flitch that includes holes of varying
depths, as distinct from the veneer-producing zone.” J.A.
18. This term appears in the asserted claims from of the
’995 and ’828 patents. Capital argues that the term
should not be limited to being “distinct from the veneer-
producing zone” or to “holes of varying depths.”
We hold that the district court correctly concluded
that the “staylog-engaging zone” must be “distinct from
the veneer-producing zone.” The plain language of the
claims shows that the two zones are distinct. Both claim
1 Disclaimer during the prosecution of one patent
applies to other patents in the same family when the
patents are directly related, such as through a parent-
child relationship. If the patents at issue are familial, but
are not directly related, the question whether disclaimer
applies will depend on the facts of the case. Based on the
common use of the term “flitch” in the specifications of the
patents-in-suit and their familial relationship to each
other, we conclude that disclaimer applies equally to each
asserted claim.

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CAPITAL MACHINE COMPANY , INC. v. MILLER VENEERS, INC. 9
16 of the ’995 patent and claim 15 of the ’828 patent, for
example, recite cutting a “hole that extends through the
staylog-engaging zone to the veneer-producing zone.”
This is consistent with the patents’ specifications, which
state that holes used to secure the flitch to the staylog
“extend from a flitch mounting surface to the veneer-
producing zone so as to define a boundary between the
veneer-producing zone and the staylog-engaging zone.”
’995 patent at [57]; ’828 patent at [57].
We conclude, however, that the court erred by limit-
ing the term to “holes of varying depths.” Nothing in the
term “staylog-engaging zone” requires varying depth
holes, and both the ’995 and the ’828 patents disclose that
cutting varying depth holes is just one possible way to
orient a tapered flitch so that its outside surface is paral-
lel to the slicing knife. These patents also disclose an
embodiment in which the tapered flitch is mounted flat on
the staylog, which is then rotated to orient the flitch
parallel to the knife. ’995 patent col.9 ll.60–64; ’828
patent col.9 l.66–col.10 l.3. This embodiment does not
require holes of varying depths.
C. “Predetermined Pattern/Predetermined Position”
The district court similarly construed the terms “pre-
determined pattern” and “predetermined position” to
require that the holes cut in the flitch to mount it to the
staylog have varying depths. J.A. 18–19, 24. The term
“predetermined pattern” appears in the asserted claims of
the ’995 patent and the term “predetermined position”
appears in the asserted claims of ’938 patent.
The plain and ordinary meaning of these terms does
not require holes of varying depths. Furthermore, as
discussed above, the ’995 patent discloses an embodiment
in which a tapered flitch is oriented parallel to the slicing
knife by rotating the staylog. ’995 patent col.9 ll.60–64.
Varying depth holes would be unnecessary in that embod-
iment. Moreover, with respect to the term “predeter-

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CAPITAL MACHINE COMPANY , INC. v. MILLER VENEERS, INC. 10
mined position,” the ’938 patent discloses an embodiment
with holes of equal depth. ’938 patent col.8 ll.31–42. The
district court erred by construing these terms to require
varying depth holes.
D. “Veneer-Producing Zone”
The district court construed “veneer-producing zone”
as “[t]he portion of the flitch parallel to the veneer-slicing
knife and from which veneer is cut, as distinct from the
staylog-engaging zone.” J.A. 16. Capital argues that this
term should not be limited to being parallel to the veneer-
slicing knife because the ’828 patent is directed to prepar-
ing a flitch rather than slicing it, and thus the claims do
not require a “veneer-slicing knife.” Capital also contends
that the “veneer-producing zone” need not be “distinct
from the staylog-engaging zone.”
We hold that the district court correctly construed this
term. The ’828 patent states that normally, when tapered
flitches are mounted to a staylog, the veneer-producing
zone is not parallel to the slicing knife. ’828 patent col.7
ll.19–23. As a result, the patent states that “a need
exists . . . to allow the flitch to be mounted on a staylog so
as to orient the semi-cylindrical veneer-producing zone of
the flitch parallel to the veneer slicing knife while the
flitch mounting surface may be oriented at an angle to the
staylog mounting surface.” Id. col.2 ll.28–35. In the
claimed invention, “the veneer-producing zone . . . is
arranged with its axis of rotation parallel to the slicing
knife.” Id. col.7 ll.23–27. The patent thus defines the
“veneer-producing zone” as being parallel to the slicing
knife.
With regard to Capital’s second argument, we con-
clude that the district court correctly construed “veneer-
producing zone” as being distinct from the “staylog-
engaging zone” for the reasons discussed above. We thus
hold that the court correctly construed the term “veneer-
producing zone.”

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CAPITAL MACHINE COMPANY , INC. v. MILLER VENEERS, INC. 11
E. “Dogs”
The district court construed the term “dogs” as
“[d]evices without movable parts that apply force to grip
or retain a flitch on the veneer slicer.” J.A. 14–15 (em-
phasis added). This term appears in the asserted claims
of the ’137, ’938, and ’843 patents.
Capital argues that the patents do not restrict “dogs”
to having no movable parts, and points out that the
patents disclose “movable dogs.” Miller counters that the
specifications disclose only dogs without movable parts.
Miller contends that “movable dogs” are simply dogs
mounted on a pivotable arm, and thus may move them-
selves but have no movable parts.
The plain and ordinary meaning of “dogs” does not re-
strict the term to having no movable parts, and Miller
points to nothing in the patents’ specifications showing
that Capital limited dogs in this way. Although Miller is
correct that having movable dogs does not mean that the
dog itself has movable parts, this does not justify limiting
the term in a way that is inconsistent with its plain
meaning and is not supported by the intrinsic record. We
thus hold that the district court erred by restricting “dogs”
to devices “without movable parts.”
III. CONCLUSION
We have considered the parties’ other arguments on
appeal and find them to be without merit. Because the
district court erroneously construed the terms “staylog-
engaging zone,” “predetermined pattern/predetermined
position,” and “dogs,” we vacate the grant of summary
judgment of noninfringement. It is unclear from the
district court’s final judgment, however, whether the
construction of any one claim term is case-dispositive. We
therefore leave it to the court on remand to determine
whether, in view of this opinion, summary judgment of

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CAPITAL MACHINE COMPANY , INC. v. MILLER VENEERS, INC. 12
noninfringement is appropriate with respect to any of the
asserted claims.
VACATED AND REMANDED
COSTS
Each party shall bear its own costs.

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