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UNIQUE CONCEPTS, INC. v. BROWN

May 4, 1990

UNIQUE CONCEPTS, INC., AND FLOYD M. BASLOW, PLAINTIFFS,
v.
KEVIN BROWN, ET AL., DEFENDANTS.



The opinion of the court was delivered by: Milton Pollack, Senior District Judge.

OPINION AND DECISION

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 therewith.

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 applicable law.

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 ...


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