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September 3, 1986

INDECOR, INC., Plaintiff,
FOX-WELLS & CO., INC., Defendant

The opinion of the court was delivered by: LEISURE

LEISURE, District Judge :

This is an action by Indecor, Inc. ("Indecor") against Fox-Wells & Co., Inc. ("Fox-Wells") for infringement of claims 1-2 and 4-15 of United States Patent No. 4,377,195 ('195 Patent) entitled "Private Cubicle Enclosure." Indecor markets its product under the name KOMPLETE KUBE. Fox-Wells markets its product under the name TOTAL CUBE. Indecor seeks an injunction, damages and an award of costs and attorneys' fees. Jurisdiction for this action arises in this Court under the Patent Laws of the United States, 35 U.S.C. §§ 101 et seq., and upon 28 U.S.C. § 1338. Venue is proper in this district pursuant to 28 U.S.C. § 1400(b).

 As defined in the Pre-Trial Order, the issues to be tried with respect to liability are the following:

 (1) Whether the cubicle enclosures made from Defendant's TOTAL CUBE fabric by Defendant's customers infringe claims 1-2 and 4-15 of the '195 Patent.

 (2) Whether Defendant actively induced infringement of the '195 Patent.

 (3) Whether TOTAL CUBE fabric as offered for sale by Defendant infringes claims 1-2 of the '195 Patent.

 (4) Whether Defendant sells its TOTAL CUBE fabric knowing it to be especially made or especially adapted for use in cubicle enclosures that infringe the '195 Patent.

 (6) Whether plaintiff is estopped from asserting that cubicle curtains comprising fabric not made of inherently flame retardant yarn materials infringe the '195 Patent.

 (7) Whether the '195 Patent is valid.

 (8) Whether the applicant for the '195 Patent failed to disclose the best mode contemplated of carrying out the invention.

 (9) Whether Roger R. Varin was a joint inventor of the subject matter claimed in the '195 Patent.

 This matter was tried to the Court without a jury on March 10 and 11, 1986 and May 1, 7, 8 and 9, 1986 on liability issues only. A trial on damages will take place subsequently. The following shall constitute the Court's findings of fact and conclusions of law pursuant to Fed. R. Civ. P. 52(a).



 The '195 Patent was issued in the name of Hans Jack Weil on March 22, 1983. Indecor is the exclusive licensee under the '195 Patent pursuant to a license agreement dated June 1, 1983. Indecor is an Illinois corporation, with its principal place of business at 5009 North Winthrop, Chicago, Illinois. Mr. Weil founded Indecor in 1950 and is its president. Fox-Wells is a New York corporation having a regular and established place of business at 58 West 40th Street, New York, New York.

 It is common practice in non-private hospital rooms to use curtains drawn around each individual bed to provide privacy for the patient. Usually, the curtain is made of a lower opaque portion to provide privacy, and an upper mesh portion to provide for the transmission of light and air into the private space. Along the top margin are eyelets or grommets to facilitate the support of the curtain. Conventionally, such a curtain is made of initially separate opaque and mesh fabrics which are sewn together. The standard cubicle curtain has a fabric portion made of jean cloth, usually 38 inches wide. Several sections are sewn together to make the width for the finished cubicle curtain. The nylon mesh portion was then sewn to the top of the jean cloth sections.

 For safety reasons, a hospital cubicle curtain must be flame resistant. The jean cloth is usually treated to make it flame resistant. For the purposes of this action, the terms "flame resistant," "flame retardant," and "fire retardant" are used interchangeably. As a practical matter, this means that the curtain fabric must pass certain recognized tests, such as those prescribed by the National Fire Protection Association, and identified as the NFPA 701 small scale and NFPA 701 large scale tests. In conducting these tests, a sample of fabric is brought into contact with a flame, and the flame is then removed. To pass the test, the fabric must not burn for more than a specified period after the flame is removed. Any material which breaks away or drips from the test specimen must not burn after reaching the floor of the testing chamber. The vertical spread of burning, i.e., the "char length" must not exceed a certain length.

 Prior Art

 Other cubicle curtain constructions that were known before the '195 Patent are shown in Boerner U.S. Patent No. 3,321,003 and Tames U.S. Patent No. 3,438,422. These patents were called to the attention of the Examiner in the specification of the '195 Patent application. The Boerner patent discloses a hanging drapery assembly for use in hospital rooms which has upper and lower sections attached to each other. The Tames patent discloses a ventilating curtain for hospital rooms which employs a complicated and costly construction to provide an upper portion with ventilating openings which do not become clogged with airborne cotton lint normally present in the atmosphere of hospital rooms. This patent contemplates the attachment of the lower and upper portions.

 Private cubicle enclosure curtains that were known before the '195 Patent had many problems and disadvantages that were overcome by the Weil invention. Because the upper and lower portions of the prior art cubicle enclosure curtains were made of different materials, the two portions had different wear, maintenance and laundering characteristics. Also, the upper and lower portions were not uniform in color. For example, it was common for the nylon upper mesh portion to become brittle and prematurely wear out after repeated laundering. The nylon, which originally was white, tended to yellow after time. Since the manufacture of the prior art cubicle enclosure curtain involved sewing together several fabric sections for the lower portion, and then sewing the lower fabric portion to the upper mesh portion, the construction of the prior art curtain was labor intensive and costly. The multiple seams this process entailed caused problems such as puckering, breaking and they provided a site for the accumulation of bacteria. Cubicle curtains for use in hospital areas where there was frequent spillage of blood and other solutions were made with an impervious plastic sheet material called Staph Check.

 Before the '195 Patent, it was also known to make fabrics with an open lace-like portion at one end and a more closely woven portion at the opposite end. U.S. Patent No. 2,125,422 and No. 2,037,629 to Bosworth and to Holgate disclose such fabrics. These patents were called to the attention of the Examiner in the application for the '195 Patent. The Holgate patent, No. 2,037,629, shows a curtain for home window use made of an integrally woven fabric having adjacent tightly and loosely woven sections, the loosely woven section serving the purpose of passing light and air. Similar woven constructions were described in two patents issued to Fischel, U.S. Patent No. 2,149,011 and U.S. Patent No. 2,416,438 and cited by the Examiner in the Official Action issued December 4, 1981. These Fischel patents do not suggest, however, the use of such woven fabrics as private cubicle enclosure curtains.

 French Patent No. 1,366,224, issued June 1, 1964, introduced by Fox-Wells, discloses a window blind made of a fabric with alternating horizontal bands formed by tight weave and open weave. The fabric is made of fiberglass, an inherently flame resistant yarn. This patent does not suggest or disclose an integrally knit cubicle curtain for hospital use.

 The Weil Invention

 As part of its business, Indecor sold cubicle curtains to hospitals. Also, Indecor made draperies of VEREL and fiberglass fire resistant material. As a result of his experience in the cubicle enclosure business, Mr. Weil conceived of making an integral private cubicle enclosure curtain in the early 1970's in order to overcome the problems associated with the sewn multiple-section cubicle enclosure products that were then on the market.

 Mr. Weil first experimented with the Staph Check material, which was sufficiently opaque to provide privacy to the bedridden patient. Since Staph Check was essentially impervious, Mr. Weil machine perforated the material to create openings for the transmission of air. Then, a 22" wide section of perforated Staph Check material was sewn to an unperforated 72" wide section of Staph Check material, to obtain a product that was comprised of the same color and material throughout. The perforated portion of the Staph Check material had adequate air transmission properties, but the perforations did not permit sufficient ventilating air to pass through. A private cubicle enclosure requires material with a minimum width of eight-to-nine feet. Since Staph Check was available only in a 72" width, further experimentation with the Staph Check material was discontinued.

 Mr. Weil next experimented with opaque woven materials by perforating such material to provide for the passage of air. This was unsatisfactory since the perforations caused the woven material to fray around the perforations. Mr. Weil unsuccessfully expended a considerable amount of time and funds to develop a chemical to coat the fabric and bond the frayed fibers around the perforations. The chemical which prevented fraying at the perforations made the fabric too stiff. Also, the only looms available to weave material in a width suitable for a cubicle enclosure curtain were high volume production looms, which were not practical for the manufacture of such fabric.

 In 1978, while visiting Israel, Mr. Weil observed knitting machines that were capable of knitting fabrics of almost unlimited width. This prompted him to conceive of knitting an integral cubicle enclosure curtain, although the problem still remained of simultaneously knitting and integrating a single fabric of mesh that was sufficiently open to pass light and air and a solid section sufficiently opaque to provide privacy. Upon his return from Israel, Mr. Weil contacted Professor Bruner of the Philadelphia School of Textiles and discussed with him the types of fabrics that could be produced by knitting machinery then available. These telephone discussions convinced Mr. Weil that an integral cubicle enclosure curtain with the requisite diverse physical properties could be made with available knitting technology.

 Mr. Weil was reluctant to contact a large knitting mill because he felt that his concept had significant value and he was concerned that the proprietary nature of his idea could not be maintained in a large corporation. Professor Bruner suggested that Mr. Weil contact Dr. Roger Varin, the owner of Varinit Corporation ("Varinit"), a small knitting mill located in Greenville, South Carolina.

 Dr. Varin has a graduate degree in bio-chemistry and was experienced in new product development as the former director of research for Riegel Textile Corporation. Dr. Varin had many years of knitting experience and was knowledgeable with respect to knitted fabrics. He disclaimed any expertise in flame and fire resistant yarns and fabrics.

 Mr. Weil contacted Dr. Varin by telephone on or about September 13, 1979. Dr. Varin was not familiar with cubicle enclosure curtains or their special requirements as to light and air. Mr. Weil explained to Dr. Varin the physical structure of the integrally knitted cubicle enclosure fabric. He told Dr. Varin that he. wanted a knitted fabric of 100% polyester for hospital end use which would be flame resistant. Dr. Varin advised Mr. Weil that he could assist Mr. Weil in producing such a fabric.

 On September 19, 1979, Mr. Weil wrote to Dr. Varin to confirm their telephone conversation and to forward to him a sample of a cubicle enclosure curtain made of a nylon mesh section sewn to a solid jean cloth fabric section. The purpose of the model was to indicate to Dr. Varin the stitch density that Mr. Weil wanted for the various sections of the integral cubicle enclosure fabric.

 After Dr. Varin received the sample from Mr. Weil, they again discussed the project by telephone and Dr. Varin confirmed his earlier opinion that Varinit's equipment could knit the integral cubicle enclosure fabric with sections of the stitch density that Mr. Weil desired. Mr. Weil asked Dr. Varin to knit prototype cubicle enclosure fabrics for Mr. Weil to evaluate. Dr. Varin furnished such prototype fabrics within the next few months.

 Based upon his involvement in the contract fabricating business, Mr. Weil was aware in 1979 that yarns then in use for flame retardant fabrics had a tendency to shrink during laundering, thereby damaging the fabric. At this time, Mr. Weil became aware of TREVIRA type polyester yarn, made by Hoechst Fibers Industries ("Hoechst"), which was a superior flame resistant yarn that could be laundered at higher temperatures than other yarns without shrinking.

 After receiving the Dr. Varin's initial prototype samples from Varinit, Mr. Weil suggested to Dr. Varin in November of 1979 that the cubicle enclosure fabric should be made of a yarn like the TREVIRA type polyester material, and asked Dr. Varin to investigate what yarns of that type were then available. Dr. Varin first approached Monsanto, which did not make a fire resistant fiber or yarn. DuPont told Dr. Varin that its Dacron polyester did not pass the NFPA-701 tests, but that Hoechst made a fire retardant polyester. Dr. Varin learned from Hoechst that its TREVIRA 692 yarn was fire retardant. (More recently, Hoechst refers to this yarn as "TREVIRA 695.") TREVIRA type polyester yarn is an inherently flame resistant yarn material. Simply stated, this means that when a fabric made of TREVIRA type polyester yarn material is subjected to flame, and the flame is removed, the fabric does not continue to burn.

 Dr. Varin realized that the cubicle curtain fabric could be made out of regular polyester, such as Dacron, after which the fabric could be provided with a flame retardant finish. In March of 1980, however, Mr. Weil decided that the cubicle enclosure fabric should be made using the TREVIRA polyester yarn. Mr. Weil was dissatisfied with the other polyester yarns, and had determined that TREVIRA would be most suitable. Accordingly, Mr. Weil instructed Dr. Varin to make a commercial run of cubicle enclosure fabric made of TREVIRA polyester yarn. Successful flammability tests were conducted on samples of that commercial run by Hoechst Fibers Industries in the summer of 1980.

 Making the cubicle curtain fabric described in the '195 Patent involves knitting the solid and mesh portions simultaneously on one knitting machine. Yarn must be fed to the machine at different rates in the section of the machine knitting the solid portion of the fabric and in the section of the machine knitting the mesh portion. Through painstaking analysis, the knitting machine is set up and adjusted to resolve this problem. After the fabric is knitted, it is stretched and heat set. Steps must therefore be taken in knitting the fabric so that after stretching the mesh openings have the desired final shape.

 Dr. Varin, in his deposition testimony introduced into evidence as part of these proceedings, described how the resolution of these problems varied from machine to machine and required the operator to find an optimum setting for all the machine's variables. He stated that while it was easy to make a ten-yard sample, making a commercial production run was more challenging. Dr. Varin stated that the '195 Patent at Column 6, line 53 through Column 7 to the claims, describes how to set up a particular type and brand of knitting machine to knit mesh and solid fabric at the same time. When he was asked how to knit the openings of the mesh so that they will result in the desired shape after they are heat stretched, Dr. Varin refused claiming that it constituted Varinit's proprietary information.

 Mr. Weil does not know how a knitting machine is warped to create solid and mesh portions of a knitted fabric and does not know how a mesh-type fabric construction is created on a knitting machine. He does not know how to adjust a knitting machine to create mesh openings having different shapes. It was Dr. Varin, working under Mr. Weil's instructions, who resolved these problems in developing the patented invention.

 Prosecution History of the '195 Patent

 Mr. Weil informed Dr. Varin of his intent to file a patent application on the KOMPLETE KUBE fabric. Because of Dr. Varin's extensive background in textile technology, Mr. Weil asked Dr. Varin to recommend a patent attorney. Dr. Varin suggested a New York City patent law firm that had done patent work for Dr. Varin in the past. Mr. Weil retained the firm to prepare and file a patent application on his behalf. Mr. Weil met with his patent attorney and provided him with all the information that he had with respect to the invention, including a sample of the fabric. Mr. Weil described conventional cubicle enclosure curtains that were then on the market and explained the differences between the conventional curtains and the KOMPLETE KUBE product. After the attorney searched the U.S. Patent & Trademark Office records and discussed the results with Mr. Weil, preparations of the patent application began. Pursuant to Mr. Weil's authorization and instruction, the attorney contacted Dr. Varin to obtain information about the knitting apparatus Varinit used to make the KOMPLETE KUBE product.

 After he was satisfied that the patent application was a complete and accurate description of his invention, on June 17, 1980, Mr. Weil filed the application which matured into the '195 Patent. Before examination of the patent application took place, a document was filed calling attention to the patents that were located in the pre-filing search.

 In an Official Action issued by the Patent Examiner on December 4, 1981, all the claims of the patent application were rejected as defining subject matter which was obvious in view of the disclosures of five earlier issued patents, namely, "Fishel [sic] (1) or (3) each in view of Boerner or Tames and considering Laywood, et al [a British patent] under 35 U.S.C. 103." The Examiner also made reference to a French patent.

 Further, the Examiner rejected Claims 1 through 4 on more specific grounds, namely that they were "indefinite" or "incomplete" under 35 U.S.C. § 112, in that they failed to recite sufficient structure or structural characteristics of the fabric "to support the functional language of the claims, particularly the preamble of claims 1, 2 [which eventually became independent claims 1 and 6 of the patent]." The preamble of Claims 1 and 2 of the application disclosed a curtain "for use with a supporting structure." Weil patent application Claim 5, which contained a broad disclosure in the specification and claims of means that could be used to suspend the private cubicle enclosure from a supporting structure, was not rejected by the December 4, 1981 Official Action under 35 U.S.C. § 112. Claim 5 of the application as originally filed, stated:

 5. The integral ventilating curtain according to claim 4 wherein said third section comprises means positioned thereon to suspend the entire fabric construction from a supporting structure.

 Thus, Claim 5 states that the third section is the means for suspending the entire fabric.

 After Mr. Weil and his attorney had an interview with the Examiner, a response to the Official Action was filed on March 19, 1982. In his response, Mr. Weil argued that his cubicle enclosure differed from two of the earlier patents cited by the Examiner, since "[t]he products of these patents have different wear, washing and shrinking characterstics and are not formed in their entirety of inherently flame resistant yarn materials." Mr. Weil also addressed the Examiner's rejection of Claims 1 and 2 under 35 U.S.C. § 112 by cancelling original Claim 5 and incorporating the broad "means" to suspend the structure found therein into the independent claims of the Weil patent. Claim 1 was thus amended by adding the words "and means associated with said fabric for suspending the entire fabric construction from a supporting structure." Claim 2, later renumbered as Claim 6, was amended by the addition of the words "and means associated with the third section for suspending the entire fabric construction from a supporting structure." The "means" are illustrated as described in the patent as grommets by dependent Claim 9. According to the testimony of Mr. Weil and Dennis McGowan of Fox-Wells, the use of the "means" language in Claims 1 and 6, the independent claims of the patent, encompasses the header section of the Fox-Wells product, as well as other means, such as grommets, clamps and the like.

 On or about March 17, 1982, two protests against issuance of a patent to Mr. Weil were filed. One protester submitted a sample of a cubicle curtain which his company marketed. The second protestor cited prior patents which he contended foreclosed the Weil application. By Official Action dated June 23, 1982, the Patent Examiner again rejected all the claims of the application on the basis of the materials submitted by the protestors and two of the patents previously cited.

 After a further interview with the Patent Examiner, a response to the Official Action was filed on August 17, 1982. In that ...

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