The opinion of the court was delivered by: Milton Pollack, Senior District Judge.
On May 2, 1988, the parties entered into a stipulation which
was so ordered by the Court reading that "this stipulation and
order represents a compromise of disputes and claims and is not
to be construed as an admission of liability on the part of
either party. The parties expressly deny liability for all such
disputes and claims and intend merely to limit further
litigation with respect to such disputes and claims."
As an aid to the Court, the parties further agreed with
respect to the Court's order filed September 2, 1987, to the
appointment of Thomas F. Reddy as the court-appointed expert
and stipulated "that the expert and the Court will only address
the interpretation and scope of claims 1, 2 and 3 of the '260
patent based on the prior art, the prosecution history of the
application leading to the '260 patent, any other patents,
applications and prosecution histories of plaintiffs as are
deemed relevant, and the '260 patent as issued. And inasmuch as
validity is not an issue they shall reach no conclusion and
make no finding with respect to the validity, including alleged
indefiniteness of the '260 patent."
The stipulation of the parties further recited "however, in
construing the claims of the '260 patent for purposes of
determining alleged infringement of the Exhibit A and Exhibit
B products as provided for herein, said claims shall not be
construed by the expert or the Court so that they are or would
be rendered invalid for any reason including indefiniteness."
The issue remaining to be resolved by this trial is presented
and defended by the parties on the documentary record and the
testimony of accredited experts. Mr. Thomas F. Reddy reported
as his opinion that the claims of the patent in suit were
infringed. The plaintiffs agree and the defendant disagrees
Basically, the question presented for trial is whether the
claims in suit read on prior art that was not given effect by
the patent examiner and what effect that prior art has on the
stipulated posture of the case at this time.
The Court's expert reported his opinion on the issue of
infringement assuming that he was foreclosed from considering
invalidity by the stipulation of the parties. While invalidity
was thus removed from the scope of the reference, it is
established law that the issue of non-infringement invokes
consideration whether a claim reads on the prior art, since a
claim which reads on the prior art is not subject to
infringement; the claim must be given the same scope in
determining validity or infringement.
We are dealing here with the defendants' accused assembly of
border pieces attachable to a wall for furnishing a framework
for mounting wall coverings. The defendant contends that, for
purposes of determining infringement, the claims in suit read
on prior art that should have been considered and found by the
examiner and that prior art is to be taken into account.
The opinion of the plaintiffs' expert was that the patent is
both literally infringed as well as being infringed under the
doctrine of equivalents. The Court's expert reported
infringement under the doctrine of equivalents.
The defendant's expert testified that correctly construed it
was necessary to read into claim 1 a keyway which is not
present or required in the defendant's assembly and further,
that the patent calls for preformed corners, rather than the
mitered corners used by the defendant. The defendant's device
employs means and a function that are different and more
difficult than those in claim 1.
I have seen the diagrams, read the claims in suit, heard and
evaluated the testimony of the rival experts, considered the
proffered prior art, considered the stipulations of the parties
mentioned above; and I have given due deliberation to all the
facts and circumstances in the record before me and the
The file wrapper labelled a keyway as the "crucial" feature
of the invention. However, as printed, claim 1 did not state
that a keyway was needed. It appears convincingly that an error
of omission was made by the examiner. Upon analysis, claim 1
has to be read as including the keyway language. Apart
therefrom, claim 1 as written ...