Paeco, Inc. v. Applied Moldings, Inc., 76-1495

Decision Date19 August 1977
Docket NumberNos. 76-1495,No. 76-1496,76-1496,No. 76-1495,76-1495,s. 76-1495
PartiesPAECO, INC., Appellant in, v. APPLIED MOLDINGS, INC. and Michael R. Sigal, Appellants in, v. ARLEN REALTY AND DEVELOPMENT CORP.
CourtU.S. Court of Appeals — Third Circuit

Michael D. Bull, May, Grove, Stork & Blakinger, Lancaster, Pa., James E. Siegel, Henry A. Marzullo, Jr., Lackenbach, Lilling & Siegel, New York City, for appellant in No. 76-1495 and as cross-appellee in No. 76-1496.

William P. Cole, Philadelphia, Pa., Richard O. Church, Reading, Pa., Synnestvedt & Lechner, Philadelphia, Pa., for appellees in No. 76-1495 and as cross-appellants in No. 76-1496.

Before GIBBONS, FORMAN and ROSENN, Circuit Judges.

OPINION OF THE COURT

ROSENN, Circuit Judge.

Plaintiff, Paeco, Inc., is the assignee of U.S. Letters Patent No. 3,561,181 issued to Stephen Bassett for an article of manufacture described as "replica wooden beams." Although molded entirely out of plastic, the beams have the appearance of real wood and can be used for decorative, although not structural, purposes in place of the more costly natural material.

Paeco brought an action in the United States District Court for the Eastern District of Pennsylvania for patent infringement and unfair competition against defendants, Applied Moldings, Inc., and Michael R. Sigal, its president, (hereinafter referred to collectively as "AMI"). The defendants denied infringement and counterclaimed for a declaration that the patent was invalid and for damages resulting from Paeco's alleged violations of the Clayton and Sherman Antitrust Acts.

In determining whether to grant Paeco an injunction against further infringement the district court, Troutman, J., severed the issues of damages and antitrust violations and tried the issues of validity and infringement. 1 In two thorough and scholarly opinions, 2 Judge Troutman concluded that Claim 1 of the patent was invalid under 35 U.S.C. § 102(b) (1970), 3 that Claims 2 and 3 were invalid under 35 U.S.C. § 102(a) and (b) (1970) and also under 35 U.S.C. § 103, and that Claims 4 and 5 were not infringed. Accordingly, the district court denied Paeco's request for injunctive relief. Although holding that AMI had failed to prove by clear and convincing evidence that Paeco had procured the patent through fraud on the patent office, the district court nevertheless concluded that the case was "exceptional" under 35 U.S.C. § 285 (1970) entitling AMI to reasonable attorney fees. Both Paeco and AMI have filed appeals to this court.

For reasons discussed hereafter, we have concluded that our sole source of jurisdiction is 28 U.S.C. § 1292(a)(1) and that our review is therefore directed to those issues bearing on the district court's denial of injunctive relief.

I. CLAIM 1

Claim 1 of the patent reads as follows:

1. Replica wooden beams fabricated entirely of molded foam plastic material having the characteristics of rigid urethane foam comprising portions thereof molded to present the appearance of fasteners utilized to secure the replica beams with a surface or with similar replica beams.

The district court held Claim 1 invalid under § 102(b) and Paeco appeals from that holding.

Section 102(b) 4 establishes "novelty" as a prerequisite to a patent. If the invention described in a patent claim was in public use or on sale or described in a printed publication more than one year prior to the date of application for the patent, 5 the invention is said to lack "novelty" and the claim is invalid.

The learned district judge accurately stated the law concerning invalidity under § 102(b): Every patent comes into court clothed with a presumption of validity, 35 U.S.C. § 282 (1970); and the party challenging the validity of a patent bears a heavy burden of demonstrating by clear and convincing proof a prior use or sale of the patented invention or the patent's deficiency in some other respect. See Trio Process Corp. v. L. Goldstein's Sons, Inc., 461 F.2d 66, 70 (3d Cir.), cert. denied, 409 U.S. 997, 93 S.Ct. 319, 34 L.Ed.2d 262 (1972). Once the party asserting invalidity has convincingly proven the prior use or sale, however, the burden shifts to the patentee to prove that any prior use, sale, or printed publication was for experimental, not commercial, purposes. Azoplate Corp. v. Silverlith, Inc.,367 F.Supp. 711 (D.Del.), aff'd, 506 F.2d 1050 (3d Cir.), cert. denied,421 U.S. 914, 95 S.Ct. 1572, 43 L.Ed.2d 780 (1975).

Applying these principles to the instant case, the district court found that prior to the critical date, Paeco itself sold replica wooden "Colony" beams substantially identical to those described in Claim 1, 6 and that the sale of these beams was commercially, not experimentally, motivated. Accordingly, Claim 1 was adjudged invalid.

A. Prior Use or Sale

The controversy concerning the Colony beams, in this court as in the district court, centers on the characterization of the protuberances randomly spaced along the sides at the top of each Colony beam giving the appearance of somehow connecting or affixing the beam to the ceiling. Paeco concedes that it sold Colony beams prior to the critical date and that the beams featured protuberances along their sides. The question is whether these protuberances were substantially identical to those described as follows in Claim 1:

1. Replica wooden beams fabricated entirely of molded foam plastic material . . . comprising portions thereof molded to present the appearance of fasteners utilized to secure the replica beams with a surface or with similar replica beams.

To prove the substantial identity between the protuberances of the Colony beam and those described in Claim 1, AMI relied first on the following explanatory language from the patent specification:

(T)he replica beam or panels may be molded or fabricated to additionally represent or provide replicas of fastening means, such as bolts, pegs, dowels, or the like, particularly adjacent the edges or ends therewith, as would ordinarily be utilized to secure the wooden beams with a surface or with each other.

Secondly, AMI presented evidence showing that the Colony beam protuberances were characterized as "pegs" on Paeco's advertising display boards and in at least one inter-office daily report prepared by Paeco's president. AMI also used scholarly books on the history of barn architecture to show that peg-shaped pieces of wood were sometimes employed to fasten beams to ceilings. Based on this evidence, AMI argued that the protuberances of the Colony beams as well as the beams themselves fit well within the language of and the specification explaining the Claim.

Paeco attempted to counter AMI's argument with testimony by Bassett, the patentee, that the terms "edges" and "ends" in the specification were intended by him to denote a location not along the side of the beams but instead at either end of a given beam. Bassett testified that he had envisioned a pattern of short beam segments joined end-to-end or intersecting on a ceiling to create an integrated beamed ceiling system. The protuberances described in Claim 1 and in the specifications, according to Bassett, were intended to give the appearance of fasteners which joined one beam segment to the next in such an integrated system of beams. As such, Bassett reasoned, the protuberances could be located only at the ends of beams, not along the side of the beams where the Colony beam "pegs" were placed. Paeco presses these same arguments on appeal, stressing Bassett's concept of a beamed ceiling system with molded protuberances at the end of each beam designed to give the appearance of fastening one beam to the next in tandem or at right angles.

Interesting as Bassett's idea may be, we agree with the district court that given the words of the Claim, it is completely irrelevant. Paeco's argument is premised entirely on Bassett's concept of a beamed ceiling system. We are told that if we picture how beams would be used in such a system, we will quickly appreciate why the protuberances described in Claim 1 must be located on the ends, not the sides, of the beam. Claim 1, however, contains not a single word describing or even hinting at a beamed ceiling system. In fact, the very language of the Claim contradicts the contention advanced by Bassett and Paeco that the protuberances there described must be such as would appear to connect one beam with another. The words of the Claim are "fasteners utilized to secure the replica beams with a surface or with similar replica beams." (Emphasis added). It is not possible to read this phrase as exclusively describing fasteners which connect one beam to another; the use of the disjunctive word "or" serves as conclusive proof to the contrary.

Paeco cannot now be allowed to limit its claim in order to exclude the Colony beam from its reach. "(T)he claims measure the invention," Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419, 28 S.Ct. 748, 52 L.Ed. 1122 (1908), and the patentee may not narrow his claims to meet the exigencies of litigation. See Nichols v. Minnesota Mining and Mfg. Co., 109 F.2d 162, 165 (4th Cir. 1940). See also Graver Tank Co. v. Linde Air Co., 336 U.S. 271, 277, 69 S.Ct. 535, 93 L.Ed. 672 (1949); McClain v. Ortmayer, 141 U.S. 419, 12 S.Ct. 76, 35 L.Ed. 800 (1891).

Where the language of a patent claim is clear, the court need not and may not go beyond the claim to the specification. Noll v. O. M. Scott, Co.,467 F.2d 295, 298 (6th Cir. 1972), cert. denied, 411 U.S. 965, 93 S.Ct. 2143, 36 L.Ed.2d 685 (1973); Schmidinger v. Welsh, 383 F.2d 455, 460 (3d Cir. 1967). But even if we were disposed to examine the specification, we would find only further refutation of Paeco's contentions. Rather than specifying that bolts or pegs are to be placed exclusively at the ends of the beams, the specification speaks of beams "molded . . . to . . ....

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