The opinion of the court was delivered by: KRAM
SHIRLEY WOHL KRAM, U.S.D.J.
In this patent infringement action, defendants Barcana, Inc. and National Metal Industries, Inc. (collectively, "Barcana") renew their motion, pursuant to Rule 56 of the Federal Rules of Civil Procedure, for summary judgment dismissing plaintiff American Permahedge, Inc.'s ("American Permahedge") patent infringement claim against them. For the reasons set forth below, Barcana's motion is granted.
I. The '647 Patent and the Evergreen Hedge
American Permahedge is in the business of marketing and selling artificial shrubbery designed to create the appearance of a hedge when threaded through the holes of a chain link fence. The hedge is composed of individual branches consisting of a pair of metal wires twisted together as a twig through which are threaded a multitude of plastic bristles resembling evergreen needles.
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 United States Patent and Trademark Office (the "PTO") notified Paradise that his patent application was rejected as having been anticipated by U.S. Patent No. 3,343,357 (the "Goodridge Patent"). The Patent Examiner concluded that the hedge's structure was included in the Goodridge Patent and that its chain link fence design was "purely functional" and thus entitled to no patentable weight.
Subsequently, Paradise reapplied for a patent, distinguishing the Goodridge Patent as follows:
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.
See American Permahedge v. Barcana, Inc., 857 F. Supp. at 311. On October 10, 1989, after reviewing the renewed application, the PTO issued U.S. Patent No. B1 4,872,647 to Paradise for a "Decorative Attachment For A Chain Link Fence" (the "'647 Patent"). Thereafter, Paradise assigned the '647 Patent to American Permahedge, which markets and sells the hedge today.
Although the '647 Patent contains five claims, only Claims One, Four and Five are at issue here. Claim One provides for a chain link fence and branches consisting of needles along a wire axial support. Specifically, Claim One includes:
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.
Id. (emphasis added). Claims Four and Five differ from Claim One in that they describe combining the camouflage assemblies in specific types of chain link fences. Specifically, Claim Four recites in pertinent part:
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 ...