Gentry Gallery, Inc. v. Berkline Corp.

• Decision Date: 27 January 1998
• Docket Number: Nos. 97-1076,97-1104 and 97-1182,s. 97-1076
• Citation: 134 F.3d 1473,45 USPQ2d 1498
• Parties: The GENTRY GALLERY, INC., Plaintiff-Appellant, v. The BERKLINE CORPORATION, Defendant/Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1473

134 F.3d 1473

45 U.S.P.Q.2d 1498

The GENTRY GALLERY, INC., Plaintiff-Appellant, v. The BERKLINE CORPORATION, Defendant/Cross-Appellant.

Nos. 97-1076, 97-1104 and 97-1182.

United States Court of Appeals Federal Circuit.

Jan. 27, 1998.

Rehearing Denied; Suggestion For Rehearing In Banc

Declined April 3, 1998.

James J. Foster, Wolf, Greenfield & Sacks, P.C., Boston, MA, argued for plaintiff-appellant. With him on the brief was Douglas R. Wolf.

Ronald L. Engel, Rudnick & Wolfe, Chicago, IL, argued for defendant-cross appellant. With him on the brief was Richard A. Machonkin. Of counsel on the brief was David D. Kaufman, Hamman & Benn, Chicago, IL.

Before RICH, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and LOURIE, Circuit Judge.

LOURIE, Circuit Judge.

The Gentry Gallery appeals from the judgment of the United States District Court for the District of Massachusetts holding that the Berkline Corporation does not infringe U.S. Patent 5,064,244, and declining to award attorney fees for Gentry's defense to Berkline's assertion that the patent was unenforceable. See Gentry Gallery, Inc. v. Berkline Corp., 30 USPQ2d 1132, 1994 WL 171795 (D.Mass.1994) (Gentry I). Berkline cross-appeals from the decision that the patent was not shown to be invalid. See Gentry Gallery, Inc. v. Berkline Corp., 939 F.Supp. 98, 41 USPQ2d 1345 (D.Mass.1996) (Gentry II). Because the court correctly concluded that the claims were not infringed by Berkline, and that the subject matter of the asserted claims was not shown to have been obvious, and did not abuse its discretion in declining to award attorney fees, we affirm these decisions. However, because the court clearly erred in finding that the written description portion of the specification supported certain of the broader claims asserted by Gentry, we reverse the decision that those claims are not invalid under 35 U.S.C. § 112, p 1 (1994).

BACKGROUND

Gentry owns the '244 patent, which is directed to a unit of a sectional sofa in which two independent reclining seats ("recliners") face in the same direction. Sectional sofas are typically organized in an L-shape with "arms" at the exposed ends of the linear sections. According to the patent specification, because recliners usually have had adjustment controls on their arms, sectional sofas were able to contain two recliners only The invention of the patent solved this supposed dilemma by, inter alia, placing a "console" between two recliners which face in the same direction. This console "accommodates the controls for both reclining seats," thus eliminating the need to position each recliner at an exposed end of a linear section. Id. at col. 1, ll. 36-37. Accordingly, both recliners can then be located on the same linear section allowing two people to recline while watching television and facing in the same direction. Claim 1, which is the broadest claim of the patent, reads in relevant part:

if they were located at the exposed ends of the linear sections. Due to the typical L-shaped configuration of sectional sofas, the recliners therefore faced in different directions. See '244 patent; col. 1, ll. 15-19. Such an arrangement was "not usually comfortable when the occupants are watching television because one or both occupants must turn their heads to watch the same [television] set. Furthermore, the separation of the two reclining seats at opposite ends of a sectional sofa is not comfortable or conducive to intimate conversation." Id. at col. 1, ll. 19-25.

A sectional sofa comprising:

a pair of reclining seats disposed in parallel relationship with one another in a double reclining seat sectional sofa section being without an arm at one end ...,

each of said reclining seats having a backrest and seat cushions and movable between upright and reclined positions ...,

a fixed console disposed in the double reclining seat sofa section between the pair of reclining seats and with the console and reclining seats together comprising a unitary structure,

said console including an armrest portion for each of the reclining seats; said arm rests remaining fixed when the reclining seats move from one to another of their positions,

and a pair of control means, one for each reclining seat; mounted on the double reclining seat sofa section ....

Id. at col. 4, line 68 to col. 5, ll. 1-27 (emphasis added to most relevant claim language). Claims 9, 10, 12-15, and 19-21 are directed to a sectional sofa in which the control means are specifically located on the console.

In 1991, Gentry filed suit in the District Court for the District of Massachusetts alleging that Berkline infringed the patent by manufacturing and selling sectional sofas having two recliners facing in the same direction. In the allegedly infringing sofas, the recliners were separated by a seat which has a back cushion that may be pivoted down onto the seat, so that the seat back may serve as a tabletop between the recliners. In response to Gentry's complaint, Berkline moved and was granted a transfer to the District of Massachusetts of its earlier-filed action in the United States District Court for the Middle District of North Carolina seeking a declaration that the patent was invalid and not infringed. After that declaratory judgment action was consolidated with Gentry's infringement suit, Berkline added a counterclaim asserting that the patent was unenforceable because of inequitable conduct. The district court granted Berkline's motion for summary judgment of non-infringement, but denied its motions for summary judgment of invalidity and unenforceability. In construing the language "fixed console," the court relied on, inter alia, a statement made by the inventor named in the patent, James Sproule, in a Petition to Make Special (PTMS). See 37 C.F.R. § 1.102 (1997). Sproule had attempted to distinguish his invention from a prior art reference by arguing that that reference, U.S. Patent 3,877,747 to Brennan et al. ("Brennan"), "shows a complete center seat with a tray in its back." Gentry I, 30 USPQ2d at 1137. Based on Sproule's argument, the court concluded that, as a matter of law, Berkline's sofas "contain[ ] a drop-down tray identical to the one employed by the Brennan product" and therefore did not have a "fixed console" and did not literally infringe the patent. Id. The court held that Gentry was also "precluded from recovery" under the doctrine of equivalents. Id. at 1138.

Gentry then requested that final judgment be entered so that it could immediately appeal the non-infringement decision. Berkline Gentry appeals from the decision of non-infringement and the court's refusal to award attorney fees. Berkline cross-appeals from the decision that the claims are not invalid under §§ 103 or 112. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994).

                requested that its invalidity and unenforceability counterclaims proceed to trial on the authority of Cardinal Chemical Co. v. Morton International, Inc., 508 U.S. 83, 113 S.Ct. 1967, 124 L.Ed.2d 1, 26 USPQ2d 1721 (1993).  The court agreed with Berkline, stating "that further proceedings will be necessary on the issues of invalidity and inequitable conduct."   After a bench trial, the court held that the patent was not invalid under 35 U.S.C. §§ 102 or 103 (1994), and that the claims in which the location of the controls is not limited to the console (claims 1-8, 11, and 16-18) are not invalid under 35 U.S.C. § 112, p 1 (1994).  See Gentry II, 939 F.Supp. at 101-06, 41 USPQ2d at 1348-52.   The court also held that Berkline had failed to prove that the patent was obtained by inequitable conduct and in so ruling noted that "[t]he evidence at trial was not even close."  Id. at 101, 41 USPQ2d at 1347.   The court denied Gentry's motion for the attorney fees it had incurred in overcoming Berkline's allegation of inequitable conduct.  The court expressed "sympathy for Gentry, especially in view of Berkline's insistence on pressing the case after prevailing on the infringement issue," but nonetheless concluded that "these circumstances do not permit consideration of an award of fees."
                

DISCUSSION

A. Infringement

Gentry argues that the district court erred in construing the claim terms "fixed" and "console" in granting summary judgment of non-infringement. Gentry asserts that the term "fixed" merely requires that the sofa section be rigidly secured to the adjoining recliners and that the term "console" refers to any sofa section that separates two recliners and can function as a tabletop. Accordingly, Gentry argues that on the undisputed facts it, not Berkline, is entitled to summary judgment on the issue of infringement. Berkline argues that summary judgment was properly granted because the term "fixed" requires that no part of the console be movable, while Berkline's sofa has a center seat back that can pivot. Berkline also argues that Gentry effectively defined a center seat with a retractable seat back as not a "console" when it distinguished the Brennan reference in the PTMS. On the basis of Berkline's second argument, we agree that it is entitled to judgment as a matter of law that it does not infringe the '244 patent.

We review a district court's grant of summary judgment de novo. See Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994). Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c); Johnston v. IVAC Corp., 885 F.2d 1574, 1576-77, 12 USPQ2d 1382, 1383 (Fed.Cir.1989). A determination of infringement requires a two-step analysis. "First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process." Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573, 1576, 27 USPQ2d 1836, 1839 (Fed.Cir.1993).

Because there is no dispute...