American Permahedge, Inc. v. Barcana, Inc., 92 Civ. 6369 (SWK).
| Decision Date | 25 October 1995 |
| Docket Number | No. 92 Civ. 6369 (SWK).,92 Civ. 6369 (SWK). |
| Citation | 38 USPQ 2d 1048,901 F. Supp. 155 |
| Court | U.S. District Court — Southern District of New York |
| Parties | AMERICAN PERMAHEDGE, INC., Plaintiff, v. BARCANA, INC. and National Metal Industries, Inc., Defendants. |
Rosenman & Colin by Albert L. Jacobs, Jr., Mark H. Sparrow, David A. Slossberg, New York City, for Plaintiff.
Richard B. Klar, New York City, for Defendants.
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.
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 wire length, to substantially cover the corresponding openings in said fence by occluding the openings.
Id. at 312. Similarly, Claim Five delineates as follows:
In June 1991, Paradise learned of the existence of Barcana's "Evergreen Hedge" product. The Evergreen Hedge is another decorative attachment for a chain link fence composed of wires and bristles that creates the appearance of a natural hedge. Paradise immediately informed Barcana that the Evergreen Hedge was an infringement of the American Permahedge. Barcana responded that its product was noninfringing under the language of '647 Patent because its needles (1) bend at a forty-five degree angle to the axis of the twisted wire twig and thus are not "extending laterally" as described in Claim One; and (2) do not lie flat in a "planar array" as set forth in the '647 Patent.
On August 20, 1992, American Permahedge commenced the present action, alleging that Barcana knowingly and willfully infringed Claims One, Four and Five of the '647 Patent. Shortly thereafter, American Permahedge filed a motion for a preliminary injunction on that ground that the continued manufacture, use or sale of the Evergreen Hedge would cause American Permahedge severe and irreparable injury. In response, Barcana moved for summary judgment dismissing the complaint on the basis of patent invalidity and noninfringement.
After a hearing held in March and April, 1993, the Court denied both motions. See American Permahedge v. Barcana, Inc., 857 F.Supp. at 326. Addressing the issue of patent infringement, the Court noted that American Permahedge must prove either (1) that every element in the '647 Patent is also found in the Evergreen Hedge, i.e. literal infringement; or (2) that the Evergreen Hedge performs substantially the same function in substantially the same way to obtain the same result as the American Permahedge, i.e. equivalent infringement. Id. at 319. The Court determined that both methods of proof depended on the meaning of the phrases "extending laterally" and "planar array" contained in Claim One.
With respect to literal infringement, based on all of the evidence presented, including the prosecution history, expert testimony presented at the hearing and other relevant considerations, the Court agreed with Barcana (1) that the phrase "extending laterally" means that bristles extend perpendicularly from the wire twig; and (2) that the phrase "planar array" refers to "the branches themselves, rather than the overall hedge." Id. at 321-22. Despite these findings, the Court denied Barcana's motion for summary judgment on the basis of noninfringement, noting that "when the meaning of the term of a patent claim is disputed and extrinsic evidence is necessary to explain that term ... an underlying factual question arises and the claim construction must be left to the jury." Id. at 326 (citing Palumbo v. Don-Joy Co., 762 F.2d 969, 974 (Fed.Cir.1985)). As for American Permahedge's claim based on the doctrine of equivalents, the Court agreed with Barcana that the difference in the angle and flatness of the needles precluded a finding that the Evergreen Hedge functions in substantially the same way as the American Permahedge product. Id. at 323.
Subsequent to the issuance of the 1994 Opinion, the Federal Circuit Court of Appeals decided Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en banc), which held that the interpretation and construction of patent claims is an issue of law reserved for the court. Specifically, the Markman Court determined:
In a case tried to a jury, the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim. As such, "a patent covers the invention or inventions which the court, in construing its provisions, decides that it describes and claims."
Id. (quoting 3 William C. Robinson, The Law of Patents for Useful Inventions § 1019, at 247 (1890)).
Based on this change in law, Barcana now renews its motion, pursuant to Federal Rule of Civil Procedure 56, for summary judgment dismissing American Permahedge's patent infringement claim. American Permahedge opposes the motion on the grounds that (1) the determination of patent infringement remains a question of fact for the jury post-Markman; and (2) issues of fact preclude granting summary judgment in the present case.
The 1994 Opinion set forth the applicable standard in deciding a motion for summary judgment and need not be repeated at length here. In brief, summary judgment is appropriate where "the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). If the court determines that "the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no `genuine issue for trial,'" and summary judgment must be granted. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986) (quoting First Nat'l Bank of Arizona v. Cities Serv. Co., 391 U.S. 253, 289, 88 S.Ct. 1575, 1592-93, 20 L.Ed.2d 569 (1968)).
In a patent infringement case, a plaintiff has the burden of proving a defendant's infringement by a preponderance of the evidence. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570,...
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