Appealed from: U.S. District Court for the Southern District of New York; Judge Pollack.
Rich, Mayer and Lourie, Circuit Judges. Rich, Circuit Judge, dissenting.
Unique Concepts, Inc. and Floyd M. Baslow (collectively "Unique") appeal from the May 4, 1990, final judgment of the United States District Court for the Southern District of New York, holding that certain products produced by defendants Kevin Brown (d/b/a Creative Walls, Templar and Schram) and World Plastics Extruders, Inc. (collectively "Brown") do not infringe Unique's patent. Unique Concepts, Inc. v. Brown, 735 F. Supp. 145 (S.D.N.Y. 1990). We affirm.
Unique is the exclusive licensee under U.S. Patent 4,108,260 ('260 patent), entitled "Fabric Wall Coverings," issued April 19, 1977, and owned by Floyd M. Baslow. Contrary to its title, the patent is not directed to wall coverings themselves, but to an "assembly of border pieces" used to attach a fabric wall covering to a wall. The assembly is made up of a number of "right angle corner border pieces" and "linear border pieces" which are arranged so as to form a frame around the area of a wall to be covered.
Below is Fig. 2 from the '260 patent, showing an exploded view of the assembly of border pieces forming the framework.
The '260 patent issued from application Serial No. 680,703, filed April 27, 1976 (Baslow application), which as originally filed contained 14 claims. Claim 1, the only independent claim, recited an assembly comprising "linear border pieces and right angle corner border pieces," each of the border pieces having a raised face, a storage channel, and a keyway. The original claims of the Baslow application were rejected by the Patent and Trademark Office (PTO) as being unpatentable in view of various references. The Examiner found that the references "show frames including corners in arrangements similar to that of applicant . . . ."
In response, the applicant amended his claims and argued against the references, stating that "the main advantage of the present invention is that it greatly simplifies the mounting of a fabric covering . . . . Thus an amateur can practice the present invention . . . ."
The next item in the file history is a notice of allowability together with an examiner's amendment cancelling claims 1-3 and 5-14, and amending claim 4 to depend from claim 15. Application claims 15-17 and 4 issued as claims 1-4 of the '260 patent, respectively. Claim 1, the sole independent claim, reads:
1. An assembly of border pieces for creating a framework attachable to a wall or other flat surface for mounting a fabric sheet which is cut to dimensions at least sufficient to cover the surface, said assembly comprising linear border pieces and right angle corner border pieces which are arranged in end-to-end relation to define a framework that follows the perimeter of the area to be covered, each piece including a raised face, a storage channel running adjacent the outer edge of the piece and having a narrow inlet communicating with said face, the portion or the selvage of said sheet which includes fabric material in excess of that necessary to cover said surface being stuffed in said storage channel so that the exposed selvage of the sheet lies against said face to present a smooth appearance which extends to said inlet and is directly adjacent said perimeter, said linear pieces being formed of an integral one piece plastic material of sufficient elasticity to permit dilation of said inlet whereby said inlet may be temporarily expanded to admit said excess material and then contracted to retain said excess material in said storage channel.
B. The Proceedings in the District Court
Unique brought the present suit in 1986, alleging that certain products made by Brown infringed claims 1-3 of the '260 patent, as well as another patent owned by Floyd Baslow. Brown denied infringement and filed counterclaims based on breach of contract, unfair competition, and antitrust.
After some initial maneuvering, the parties entered into an extensive "Stipulation and Order," which substantially narrowed the issues for trial. Pursuant to the stipulation, the sole issue which remained was whether two of Brown's products (the "regular flat track with heel" and the "cove track") infringed claims 1-3 of the '260 patent. Validity was not at issue; the stipulation prevented a claim interpretation which would render the claims invalid.
Brown maintained that its accused products do not infringe for two reasons. First, the accused products do not have corner pieces which were performed at a right angle, but instead employ two linear pieces which are each mitered, i.e., cut at a 45 degree angle, and then placed together to form a right angle. Second, the accused products do not employ a keyway. While recognizing that the language of the claims does not expressly recite a keyway, Brown urged that its omission from the claims was an error by the PTO, and that such a limitation must be read into the claims; otherwise, it was urged, the claims would be invalid in view of the prior art, primarily U.S. Patent 3,657,850 (the Billerant patent). Brown reasoned that since the stipulation prevented a claim interpretation which would render the claims invalid, the keyway must be read in to "save" the claims.
A trial was held, at which each party, by agreement, presented as its only witness a patent expert. After hearing the testimony, the judge entered judgment for Brown, finding that (1) the keyway feature was inadvertently omitted from claim 1 by the examiner and must be read into the claim to avoid anticipation by Billerant, and (2) the mitered linear pieces used by Brown do not meet the claim language "right angle corner border pieces," either literally or under the doctrine of equivalents. Unique appealed.
The '260 patent claims a framework for mounting a fabric sheet "comprising linear border pieces and right angle corner border pieces." The district court found the patent not infringed because, inter alia, the language "right angle corner pieces" is limited to preformed corner pieces, whereas the mitered linear pieces used by Brown do not meet this limitation either literally or under the doctrine of equivalents.
Unique argues that the district court erred in finding that the claims do not literally cover assemblies having mitered corners. Claim construction is an issue of law, which we review de novo. ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1578, 6 U.S.P.Q.2d (BNA) 1557, 1559 (Fed. Cir. 1988). To ascertain the meaning of claims, we consider three sources: the claims, the specification, and the prosecution history. Loctite Corp. v. Ultraseal, Ltd., 781 F.2d 861, 867, 228 U.S.P.Q. (BNA) 90, 93 (Fed. Cir. 1985).
The language of claim 1 makes unambiguous reference to two distinct elements of the claimed structure: linear border pieces and right angle corner pieces. If, as Unique argues, linear border pieces of framing material, whose ends are mitered, are the same as linear border pieces and a right angle corner piece, the recitation of both types of pieces is redundant. Unique's argument for merging the two types of claim elements into one also violates the oft-quoted "all elements rule," the essence of which is that to prove infringement, every element in the claim must be found in the accused device either literally or equivalently. See SmithKline Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878, 889, 8 U.S.P.Q.2d (BNA) 1468, 1477 (Fed. Cir. 1988). The ...