Unique Concepts, Inc., and Floyd M. Baslow v. Kevin Brown D/B/A Creative Walls, Templar and Schram, and World Plastics Extruders, Inc.

939 F.2d 1558, 19 U.S.P.Q. 2d (BNA) 1500, 1991 U.S. App. LEXIS 15558, 1991 WL 132424

• Court: Court of Appeals for the Federal Circuit
• Decided: July 19, 1991
• Docket: 90-1378
• Status: Published

Opinions

LOURIE, Circuit Judge.

Unique Concepts, Inc. and Floyd M. Bas-low (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, —USPQ2d — (S.D.N.Y.1990). We affirm.

BACKGROUND

A. The Patent in Suit

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.

[[Image here]]

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 “[t]he 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 of 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.

(Emphasis added).

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 preformed 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 key-way 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.

DISCUSSION

The ’260 patent claims a framework for mounting a fabric sheet “comprising linear border pieces and right angle corner border pieees.” 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 USPQ2d 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 USPQ 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 USPQ2d 1468, 1477 (Fed.Cir.1988). The district court thus correctly held that the plain language of the claim includes two distinct types of elements, including right angle corner border pieces, thereby precluding literal infringement.

The specification also shows that the claim language “right angle corner border piece” means a single preformed piece. The specification repeatedly refers to the preformed pieces 15 and 16, using only the words “right angle” border pieces or “corner pieces.” In addition, the drawings show only preformed corner pieces and no mitered pieces.

The specification does refer once to “improvise[d] corner pieces” as an alternative to the preformed pieces:

Instead of using preformed right-angle corner pieces of the type previously disclosed, one may improvise corner pieces by miter-cutting the ends of a pair of short linear border pieces at right angles to each other and providing a space between the cut ends to define the necessary storage slot. For this purpose, a temporary spacer may be used to provide exactly the right amount of storage space. The advantage of such corner pieces resides in the fact that linear pieces may be mass-produced at low cost by continuous extrusion, whereas preformed corner pieces must be molded or otherwise fabricated by more expensive techniques. On the other hand, a preformed corner piece is somewhat easier for a do-it-yourselfer to work with.

Col. 8, lines 28-41 (emphasis added). However, this reference does not negate the claim language clearly reciting right angle corner pieces. This paragraph, rather than providing an illustration of a right angle corner border piece, as the dissent indicates, provides an alternative to it. The language right angle corner border piece is too clear to encompass linear pieces that are not right angle corner pieces. The fact that mitered linear border pieces meet to form a right angle corner does not make them right angle corner pieces, when the claim separately recites both linear border pieces and right angle corner border pieces. Such an interpretation would run counter to the clear meaning of the language. Linear border pieces are not right angle corner border pieces. Both types of pieces are required by the claim.

The statute requires that an inventor particularly point out and distinctly claim the subject matter of his invention. 35 U.S.C. § 112 (1988). It would run counter to this statutory provision for an applicant for patent to expressly state throughout his specification and in his claims that his invention includes right angle corner border pieces and then be allowed to avoid that claim limitation in a later infringement suit by pointing to one paragraph in his specification stating an alternative that lacks that limitation, and thus interpret the claim contrary to its plain meaning. Such a result would encourage an applicant to escape examination of a more broadly-claimed invention by filing narrow claims and then, after grant, asserting a broader scope of the claims based on a statement in the specification of an alternative never presented in the claims for examination.

The claims as granted contain the right angle corner border piece limitation. All the limitations of a claim must be considered meaningful, Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532-33, 3 USPQ2d 1321, 1324-25 (Fed.Cir.1987), and Brown’s avoidance of that limitation avoids literal infringement.

It is also well-established that subject matter disclosed but not claimed in a patent application is dedicated to the public. Edward Miller & Co. v. Bridgeport Brass Co., 104 U.S. 350, 352, 26 L.Ed. 783 (1881). That is what occurred here. If Unique intended to claim mitered linear border pieces as an alternative to its right angle corner border pieces, it had to persuade the examiner to issue such a claim. As will be shown below, Unique failed to do so.

The prosecution history also supports the district court’s decision. During the prosecution of the ’260 patent, the examiner understood the right angle corner pieces of Claim 1 to be distinct from mitered linear pieces, because he initially rejected the claims, citing and referring to other references as showing preformed, right angle corner pieces or braces. The applicant overcame the rejection by arguing the advantage of simplification for the do-it-yoursel-fer. As noted in the specification, a preformed corner piece is one of the advantages of the invention making it attractive to the do-it-yourselfer.

There then occurred a telephone interview between the attorney and the examiner, following which the Examiner cancelled certain claims. Among the cancelled claims was original Claim 9, which depended from original Claim 1 (also cancelled) and recited short linear mitered pieces as forming a right angle corner piece.

The dissent relies upon Claim 9 to construe what is now Claim 1 as including linear pieces which are mitered to form a corner piece. It interprets “linear pieces whose ends are mitered” to be a species of generic Claim l’s “right angle corner border pieces,” and therefore within its scope. Such a construction is unjustified because the language of Claim 1 is clear and is inconsistent with Claim 9 being dependent thereon.

The record contains no indication of what transpired in the interview and why Claim 9 was cancelled. A plausible reason is that Claim 9 was cancelled because it was not properly dependent upon original Claim 1. The court referred to Brown’s expert, who stated that the claim was cancelled because it did not encompass an invention suitable for a do-it-yourselfer. The dissent finds this expert testimony to be “wholly incredible.” We do not know why Claim 9 was cancelled and cannot speculate on the reasons for the cancellation; we can only interpret the clear language of the claims as granted.

When the language of a claim is clear, as here, and a different interpretation would render meaningless express claim limitations, we do not resort to speculative interpretation based on claims not granted. See White v. Dunbar, 119 U.S. 47, 52, 7 S.Ct. 72, 75, 30 L.Ed. 303 (1886) (“The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.”). Our interpretation gives full effect to the recitation of two distinct elements in the claimed structure: linear border pieces and right angle corner border pieces. It also gives full effect to the specification and the expert testimony, and a reasonable interpretation of the prosecution history. See Perini America, Inc. v. Paper Converting Mach. Co., 832 F.2d 581, 584, 4 USPQ2d 1621, 1624 (Fed.Cir.1987).

With respect to infringement by equivalents, since Brown conceded that the “result” of the right angle corner piece of the accused device is substantially the same as that of Claims 1, 2, and 3, the district court held that “the result is substantially the same; however, the means and function of the patented and accused devices are not the same, negating a finding of equivalents.” 735 F.Supp. at 147. Unique argues that the district court erred as a matter of law by omitting the word “substantial” in its eonclusory statement regarding infringement by the doctrine of equivalents. We disagree.

The issue of law on this point is whether the trial court understood and properly applied the requisite elements for finding infringement by equivalence, i.e., determining whether the ’260 patent and Brown’s structure are substantially the same in function, way and result. See Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934, 4 USPQ2d 1737, 1739 (Fed.Cir.1987) (en banc), cert. denied, 485 U.S. 961, 108 S.Ct. 1226, 99 L.Ed.2d 426 (1988). On review of the record, we conclude that the court understood and correctly applied the appropriate test. The court-appointed expert told the judge that a finding of infringement by equivalents requires a determination whether the accused devices achieve substantially the same result and substantially the same function of the claimed invention, in substantially the same way. At trial, Unique’s expert similarly testified. Brown’s expert repeated the test, with short-hand reference to “the same ” instead of substantially the same. However, there is no indication that the judge (or either party) misunderstood this short-hand reference and eliminated the word “substantially” from his analysis. Brown’s counsel recounted the substantially the same test while examining its witness. Unique’s counsel did not cross-examine Brown’s expert on this point. In the opinion itself, the judge's use of “substantially,” taken in context, refers to all of the factors in a doctrine of equivalents analysis.

The determination whether an accused device infringes the claims of a patent is one of fact, reviewed under the clearly erroneous standard. Lemelson v. United States, 752 F.2d 1538, 1547, 224 USPQ 526, 530 (Fed.Cir.1985). Therefore, we may reverse the district court’s finding of no infringement only if we are left with a “definite and firm conviction that a mistake has been committed” by the trial court. U.S. v. Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948). The court explained that because Brown’s device performs the function and achieves the result in a substantially different way, there was no infringement by Brown's frame of the ’260 patent:

One of the main objects of the invention was stated to be to make something useful for a do-it-yourselfer. In fact, claim 9, as originally presented, expressly called for mitered pieces and was can-celled because it was not something that a do-it-yourselfer could do, according to [Brown’s] expert witness. The accused device has a different and complicated way of doing what the right-angle piece does in the patented device. It is a lot simpler for the do-it-yourselfer to use the preformed right-angle pieces of the patented device and far more difficult to create corners by the mitered means used and the function of the accused device.

735 F.Supp. at 147 (emphasis added). This finding is supported by the testimony of Brown’s expert as to the difference between mitered corners and preformed corners:

In this particular case it is more than simply cutting two pieces because you have to cut four pieces to make two mates. You have the channel and the inlet that has to be made also.

Additionally, you have to have a spacer and make the proper space so you can shove the little piece of selvage that’s left over at the end and make a nice fine product.

Additionally, you have to put that corner piece up in the right place in the right section. It is simply quite a different procedure to do all of this and to end up with the same result as a right-angle corner piece. I think you are doing something in a completely different way.

(Emphasis added). On review of the record, we see no clear error in the district court’s findings.

CONCLUSION

The district court was correct in concluding that the claim language “right angle corner border pieces,” properly construed with reference to the specification and prosecution history, requires a preformed corner piece. The district court did not clearly err in finding that the ’260 patent does not literally cover Brown’s corners formed by aligning two mitered straight pieces. Moreover, the district court did not clearly err in finding that Brown’s accused frame does not infringe under the doctrine of equivalents because it does not perform in the same way. In view of this result, we do not review the district court’s holding with respect to the keyway issue. For the foregoing reasons, the decision of the district court is

AFFIRMED.