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AMERICAN PERMAHEDGE, INC. v. BARCANA

July 11, 1994

AMERICAN PERMAHEDGE, INC., Plaintiff,
v.
BARCANA, INC. and NATIONAL METAL INDUSTRIES, INC., Defendants.



The opinion of the court was delivered by: SHIRLEY WOHL KRAM

 SHIRLEY WOHL KRAM, U.S.D.J.

 Plaintiff American Permahedge, Inc. ("American Permahedge") moves, pursuant to Rule 65(a) of the Federal Rules of Civil Procedure, for an order enjoining defendant Barcana, Inc. from manufacturing, using or selling Barcana's "Evergreen Hedge" product on the grounds that the "Evergreen Hedge" infringes upon plaintiff's patent for the "American Permahedge." Defendants Barcana, Inc. and National Metal Industries, Inc. *fn1" (collectively "Barcana") oppose plaintiff's motion and cross-move for an order, pursuant to Rule 56 of the Federal Rules of Civil Procedure, dismissing this action on the grounds that there is no genuine issue of material fact as to non-infringement and invalidity of plaintiff's patent. For the reasons stated below, the Court denies both motions.

 BACKGROUND *fn2"

 In July 1987, American Permahedge was incorporated for the sole purpose of marketing and selling the "American Permahedge," artificial shrubbery that creates the appearance of a hedge when threaded through the holes of a chain link fence. The "American Permahedge" is composed of individual units (the "branches") consisting of a pair of metal wires twisted together (the "twig") through which are threaded a multitude of stiff, green plastic bristles that resemble evergreen needles (the "needles"). The branches are then woven into the openings of a chain link fence so that the needles overlap, forming a hedge.

 On September 29, 1987, Francis M. Paradise ("Paradise"), one of the inventors of the "American Permahedge," applied for a patent. In January 19, 1989, the Patent Examiner notified Paradise that his patent application was rejected, under 35 U.S.C. § 102(b), *fn3" as being anticipated by U.S. Patent No. 3,343,357 (the "Goodridge Patent"). The Patent Examiner found that the Goodridge Patent met the claimed structure of "American Permahedge's" branches and, as to insertion into a chain-link fence, that language was "purely functional in the sense of intended use," and therefore was entitled to no patentable weight.

 In response, by a patent amendment dated March 1, 1989, Paradise distinguished the Goodridge Patent, stating:

 
In Goodridge the fibers [needles] are bunched together in discontiguous clumps, leaving defined spaces between each clump at the root, i.e., where the wires are twisted. Further, the fibers [needles] are bent permanently at an angle to the axis so that a planar array capable of forming shrubbery is not possible. As a result, Goodridge could not provide a densely packed contiguous planar array simulative of shrubbery. Goodridge provides a tree branch but not shrubbery.

 On October 10, 1989, United States Patent No. B1 4,872,647 (the "'647 patent") for a "Decorative Attachment For A Chain Link Fence" was issued to Paradise, who promptly assigned it to American Permahedge. The hedge, which is manufactured by another company, is American Permahedge's sole product.

 A. The '647 Patent

 The '647 patent contains five claims. Three of those claims, Claims One, Four and Five, are at issue here. Reduced to its essential components, Claim One provides for a chain link fence and camouflage assemblies (branches), consisting of "stiff densely packed filaments" (needles) along a wire "axial support" (the twig). Specifically, Claim One recites in pertinent part:

 
Camouflage assemblies comprising a central elongated axial support element and relatively stiff densely packed filament means fixedly carried by said support element and extending laterally of the axis thereof, said filament means forming a bush-like planar array that extends along the entire length of said support element.
 
decorative attachment comprising a length of a cooperating pair of wires twisted lengthwise about each other with laterally extending plastic fibers engaged in the twists thereof, that said filaments present a generally planar hedge-like array, said plastic fibers thereafter move under the bias of the resiliency of the plastic construction material thereof into positions extending laterally of said twisted wire length, to substantially cover the corresponding openings in said fence by occluding the openings.

 Claim Five recites in pertinent part:

 
decorative attachments comprising a length of a cooperating pair of wires twisted lengthwise about each other with laterally extending plastic fibers engaged in the twists, said filaments present a generally planar hedge-like array, said plastic fibers thereafter move under the bias of the resiliency of the plastic construction material thereof into positions extending laterally of said twisted wire length, to substantially cover the corresponding openings in said fence.

 B. The "Evergreen Hedge"

 In June 1991, Paradise first learned of Barcana's "Evergreen Hedge" product. Like the "American Permahedge," the "Evergreen Hedge" is a decorative attachment for a chain link fence that is composed of twisted wires covered by stiff green bristles that, when threaded through a chain link fence, create the appearance of a natural hedge. Like the "American Permahedge," the "Evergreen Hedge" is sold with instructions on how to combine the individual garlands with a chain link fence to form a hedge.

 In November 1991, upon purchasing Barcana's product and comparing it with the "American Permahedge," Paradise concluded that Barcana was infringing upon the '647 patent. Shortly thereafter, by letter dated November 21, 1991, American Permahedge's counsel notified Barcana that the manufacture and sale by Barcana of its "Evergreen Hedge" infringed Claims One, Four and Five of American Permahedge's '647 patent. Additional letters were sent on December 5, 1991 and February 14, 1992, renewing American Permahedge's objections to the manufacture and sale of Barcana's "Evergreen Hedge."

 By letter dated December 12, 1991, Barcana denied any infringement, stating: "It is clear that Barcana's 'Evergreen Hedge' product does not infringe the ['647] patent and that the "permahedge product itself is not covered by the ['647] patent." Specifically, Barcana argued that the needles which form the shrubbery of the "Evergreen Hedge" bend at an angle to the axis of the twisted wire stems, while the needles of the "American Permahedge" are, or should be, perpendicular. *fn4" Barcana claimed that American Permahedge relied upon this difference to distinguish the Goodridge Patent when the Patent Examiner questioned the "American Permahedge's" novelty. Barcana argued further that the subject matter of its product had existed for many years prior to the filing of the '647 patent, a fact which should have foreclosed the patent's issuance.

 As a result of Barcana's claims, American Permahedge conducted a validity study of the '647 patent in an attempt to locate any prior art that was not considered by the Patent and Trademark Office (the "PTO") when the patent was issued. American Permahedge thereafter submitted a Request for Reexamination of the '647 patent to the PTO for the purpose of considering the prior art located by the new search. The PTO granted the request, finding that a substantial new question of patentability affecting the claims of the '647 patent was raised by the request for reexamination.

 Thereafter, on September 1, 1992, after conducting its review, the PTO issued a certificate reaffirming the validity of American Permahedge's patent. Specifically, the PTO found that:

 
There is no teaching in the prior art of using a decorative element as claimed assembled with a chain link fence so as to have the fence assume a hedge-like appearance. Also there is no decorative element taught by the prior art that has filaments extending laterally from a length of support and presenting a generally planar hedge-like or bush-like array.

 See Reasons for Confirmation, dated July 6, 1992.

 C. The Instant Litigation

 On August 20, 1992, American Permahedge filed the instant action in this Court, alleging that Barcana knowingly and willfully infringed Claims One, Four and Five of the '647 patent. Shortly thereafter, American Permahedge filed this motion for a preliminary injunction on that grounds that the continued manufacture, use or sale of the "Evergreen Hedge" will cause American Permahedge severe and irreparable injury.

 Specifically, American Permahedge alleges that, while Barcana's "Evergreen Hedge" has been on the market, American Permahedge has been unable to arrange for the exclusive distributorship of its product. American Permahedge alleges further that specific deals have fallen through, including an offer in 1991 from a third party to distribute the "American Permahedge" product in Canada. That offer was withdrawn and given to Barcana. American Permahedge also alleges that it has experienced significant damage to its good will and has lost numerous opportunities to make sales, particularly as Barcana, unlike American Permahedge, is a large, multinational corporation with substantial resources at its disposal to market its "Evergreen Hedge." For example, an article in the September 1992 edition of "Home Improvement Center" magazine attributed the "American Permahedge" product to Barcana, indicating that Barcana, rather than American Permahedge, is being associated with the patented product. According to American Permahedge, it will be forced out of business unless Barcana is enjoined from its activities.

 In response, Barcana contends that Claims One, Four and Five of the "American Permahedge" patent are not infringed by Barcana's "Evergreen Hedge" and are, in fact, invalidated by prior art. According to Barcana, a critical claim of the '647 patent, which was relied upon by Paradise to distinguish his patent from prior art, was the angle of the needles. While the '647 patent calls for the lateral, i.e., 90 degree, attachment of the bristles to the wire twig, the "American Permahedge's" needles are attached to the wire twig at 45 degree angles, thus forming a "V" shaped, rather than an "L" shaped array when viewed as a whole. Thus, "American Permahedge" is not being manufactured in accordance with its patent. Moreover, even if "American Permahedge" was manufactured in accordance with the '647 patent, the "Evergreen Hedge" does not infringe Claims One, Four and Five as its needles (1) are permanently bent at a 45 degree angle to the axis of the twisted wire twig, and thus, are not "lateral;" and (2) do not lie flat, in an orderly plane, but rather, are oriented in many directions, creating more of a three-dimensional look.

 In reply, plaintiff maintains that, not only is its product manufactured in conformity with the '647 patent, but in addition, the precise angle at which the needles extend from the wire axis does not form any critical or inventive feature of the patent at issue. Rather, the invention resides in the formation of the shrubbery assemblies for use with a chain link fence. *fn5" As both the "Evergreen Hedge" and "American Permahedge" contain identical elements consisting of densely packed needles extending laterally from a wire support which are threaded through a chain link fence to create a hedge, the '647 patent is infringed.

 D. The Hearing

 Claim One of the '647 patent recites an artificial hedge and/or shrubbery assembly requiring certain elements: (1) a chain link fence; and (2) the presence of a plurality of camouflage assemblies. See Transcript of Hearing, dated March 10, 1993 ("Tr."), at 17. Rzucidlo testified further that one of the elements necessary for the '647 patent was that the needles are fastened and carried on a twig, and that the needles extend laterally from the twig. However, "laterally does not necessarily include perpendicular. Laterally simply means extending from the side." Tr. at 18; see also Transcript of Continued Hearing, dated April 28, 1993 ("Tr2."), at 5. More exactly:

 
The claim requires that there be a central elongated axial support element. Clearly this [the "American Permahedge"] has a central axial support element, and it is a relatively stiff support element. It goes on to say that the element must have relatively stiff, densely packed filament means fixedly carried by the support element. Your Honor can see that we have elements extended from the support and, of course, fixedly attached to it. It further says that they extend laterally from the axis of the support, those are the claims, they extend laterally. . . . These of course extend laterally, they extend from the side of these things. Laterally, of course, means from the side . . . . Branches on the tree are lateral to the trunk of the tree. Lateral includes anything extending to the side, and these do that.

 Tr. at 21. Thus, according to Rzucidlo, the term "lateral" was not limited so as to require that the needles extend perpendicularly at a 90 degree angle to the axis.

 With respect to the planar array, Rzucidlo testified further that "the planar array is the planar array which is obtained after inserting this element into the fence, so that you get in the plane of the fence, in planes of the fence, back side, either side, an appearance of a hedge . . . you can see here that this plane looks certainly like a hedge, forms a hedge-like planar array and that back side does also. The plane of the fence itself is the planar array that they're talking about." Tr. at 22. Thus, according to Rzucidlo, the term "planar array," when read in conjunction with the language of the claim that the combination of element and fence must form a hedge-like appearance, refers to the plane formed along the front and back surfaces of the fence when a multitude of branches are inserted.

 With respect to Claim Four, Rzucidlo testified that Claim Four recites a combination of a decorative attachment and a wire fence. Tr. at ...


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