There is no basis for finding that there was literal
infringement. Additionally, it has been shown that the devices
are not substantial equivalents, since that of the defendants,
while performing the same result, does not do so by the same
means or function. Claims 2 and 3 are dependent claims and when
combined with claim 1 properly construed and dealt with as
integrated claims, necessarily, include a keyway which is no
part of the accused device. Consequently, there has been no
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 would read directly on the
Billarant patent dated April 25, 1972, U.S.P. # 3,657,850.
Claim 1 basically includes two things. It has linear pieces
and it has right-angle pieces. Each of the pieces has a raised
face. The border piece of the molding is essentially the same
in claim 1 as in the Billarant patent; each has a channel
behind the face which can be used to store fabric; each has to
be made of an integral one-piece plastic material which is
relatively resilient material.
It is clear that the Billarant device and the defendants'
material perform the same function as the patented item and
make a product which looks essentially the same. It is possible
to construct samples of the Billarant device, the patented
device and the accused device all looking identical and capable
of performing identically. The accused product is a structure
which basically reads on prior art and if, as charged by
plaintiffs, defendant's structure reads on the patented claim,
the latter may not be and is not infringed by defendant's
Moreover, adding the "crucial" keyway (so styled by plaintiff
in the file wrapper), which is to be read as a limitation on
claim 1, a different structure is produced than that of the
In addition to the Billarant patent, there is a variety of
other prior art described in the record which, if considered in
detail, also demonstrates that claims 1, 2 and 3 would be
reading on such prior art significantly, so that it could be
concluded that there is no infringement by the accused device.
By stipulation of the parties, we may not deal with
invalidity. However, the question of infringement still imports
all the prior art.
So far as concerns the subject of equivalents, it was
contended by defendant that the right-angle mitered corner
piece of the accused device and that of claims 1, 2 and 3 are
not equivalents. It was conceded by defendant 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. In light of what needs to be done to
make these corner pieces, the means and functions of the two
devices are not the same. 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 cancelled because
it was not something that a do-it-yourselfer could do,
according to the defendant'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.
In short, as properly construed, claim 1 of the patent and
consequently claims 2 and 3 are not infringed by the accused
device. Claim 1 of the patent, properly construed, necessarily
includes a keyway which defendant's device does not have.
Further, the accused device uses mitered right-angle corner
pieces rather than preformed right-angle corner pieces.
expert, whom the Court credits, testified:
A. I believe that if the claims are read without
the keyway that they would have been rendered
obvious under Section 103 by the Billarant
Q. And that's the reason why — since we
can't reject them as obvious under our
stipulation, what conclusion must the court
reach here, in your opinion?
A. The conclusion that the court must reach is
that there must be something there which makes
them valid and that is the keyway.
Q. And if the keyway is added in there is no
infringement, is that right?
A. That's correct.
The foregoing shall constitute the Findings of Fact and
Conclusions of Law in accordance with Rule 54(b) of the
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