Isham v. Pillowtex Corp.
| Decision Date | 03 March 2000 |
| Docket Number | No. 1:97-CV-77.,1:97-CV-77. |
| Parties | Barbara K. ISHAM, Plaintiff, v. PILLOWTEX CORPORATION, Defendant. |
| Court | U.S. District Court — Eastern District of Texas |
James H. Riley II, Shook, Hardy & Bacon, Houston, TX, Paul W. Gertz, Lawrence L. Germer, Germer & Gertz, Beaumont, TX, for plaintiff.
Roy William Hardin, Locke, Liddel & Sapp, Dallas, TX, Carl A. Parker, Parker & Parks, Port Arthur, TX, for defendant.
This is a patent infringement case brought by Barbara K. Isham [Isham] against Pillowtex Corporation [Pillowtex]. Isham alleges that the defendant infringed her patent of a bedding article. The defendant has filed three separate motions for summary judgment. All of them are currently before the court. For the reasons set forth below, the court holds that Pillowtex has not infringed Isham's patent.
Isham is an individual who from 1985 to 1987 manufactured and sold bedding products allegedly covered by the defendant's patent. Pillowtex, the lone defendant, is a corporation headquartered in Dallas, Texas who sells bedding products.
The patents involved in this case are not very technical. The only issue to be decided is whether or not Isham's patent can be said to cover a bedding article that has a stretchable skirt around the entirety of the product. Isham is the owner of U.S.Patent No. 4,672,702 entitled "Articles of Bedding with Stretch Fit Ends" ['702 patent]. Pillowtex is alleged to have infringed this patent by making bedding articles that have a stretchable skirt around the entire product.
Isham's patent discloses a bedding article which the court simply would call a mattress pad. The article is made from a rectangular top fabric panel (13) and at least one rectangular stretch panel (15) combined to form a box-like construction defined on the top and each side by the fabric panel (13) and on the end by the stretch panel (15). The '702 patent discloses that the top fabric panel has a specified width and specified cutouts so that a portion of the stretch panel (15) extends a nominal distance beyond the corners of the box end. The drawings below are illustrative of the '702 patent.
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
The Pillowtex products that are alleged to infringe the 702 patent are made in accordance with Pillowtex's own United States Patent No. 5,127,115 issued on July 7, 1992. ['115 patent].1 The Pillowtex products have a stretchable skirt attached along the edge of the top fabric panel. In essence, the Pillowtex product has a stretchable skirt around the entire mattress pad. The drawings below illustrate the '115 patent.
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
The broadest claim in Isham's '702 patent is Claim 1. It reads:
1. A bedding article for use with a rectangular mattress, having opposing head and foot ends, comprising:
a fabric panel of substantially rectangular shape nominally exceeding the width of the mattress, measured parallel to said head and foot ends, plus twice the depth of the mattress in width,
said fabric panel having at each corner of said foot end substantially rectangular cutouts forming at each foot end corner a first edge non-parallel to the foot end of said fabric panel and a second edge parallel to said foot end;
a substantially rectangular stretch panel having two long sides and two ends attached along one long side to the foot end and to said first edges of said fabric panel and along each end of said stretch panel to said second edges of said fabric panel so as to form a box-like construction defined on the top and each side by said fabric panel and on the end by said stretch panel wherein said stretch panel extends a nominal distance beyond the corners of said box end.
Claim 1 details two main elements — a fabric panel and a stretch panel. The description of these elements is at the heart of this case. Isham has maintained that Pillowtex has infringed her patent by selling a mattress pad that has stretch fitting around the entirety of the pad. Isham claims that Pillowtex's products have every element of the '702 patent or the equivalent of every element. Isham relies on the doctrine of equivalents to prove the infringement. Pillowtex, on the other hand, argues that the doctrine of prosecution history estoppel (also known as "file wrapper estoppel") prevents Isham from succeeding on her claim for patent infringement. Thus, it is necessary to discuss the prosecution history of the '702 patent.
The '702 patent resulted from U.S.Patent Application Serial No. 06/682,345 which was filed on December 17, 1984. In the application, claim 1 originally read:
1. A bedding article for use with a mattress comprising:
a fabric panel of a shape substantially congruent to that of the upper surface of said mattress;
at least one substantially rectangular stretch panel attached along one side and along each end of said rectangle to said fabric panel so as to form a box-like construction defined on the top and each side by said fabric panel and on the end by said stretch panel wherein said stretch panel extends a nominal distance beyond the corners of said box end; and an elastic band attached along the free side of said stretch panel.
See Relevant Parts of File History for U.S.Patent Application Serial No. 06/682,345, (Ex. D of Pillowtex's First Motion for Summary Judgment).
This original Claim 1 (as well as other claims) was rejected by the examiner under 35 U.S.C. § 112, second paragraph,1 as being indefinite for failing to particularly point out and distinctly claim the subject matter which Isham regarded as the invention. Specifically, the Examiner found that the claims did not make it clear that the lateral side panels of the mattress pad are extensions of the top fabric panel. Also, Claim 1 was rejected under 35 U.S.C. § 1032 as being obvious over certain earlier patents that the Examiner declared made the claimed invention "obvious" and unpatentable. See Examiner's Action, pgs ISH-00031-34 (submitted as Exhibit D) ( how Isham's patent was unpatentable over Grattan in view of Mazera and Bahr (other patents)).
In response to this rejection, Isham filed a declaration under 37 C.F.R. § 1.132. In this declaration, Isham stated that a full peripheral skirt design (i.e. stretch fabric extending completely around the top of the fabric panel sheet) was unsuccessful. Isham stated that the best results were achieved when the stretch panel extended around the corner of the sheet for a short distance. See Declaration Pursuant to 37 C.F.R. § 1.132 of Barbara Isham, Dec. 17, 1984 (submitted as Exhibit D) at ISH-00036-37. The relevant parts of the declaration are in paragraphs 4 and 5.
In paragraph 4(a), Isham stated Id. (emphasis added). In paragraph 5, Isham stated that her invention was most successful when she Id.
It is these statements that Pillowtex relies on to establish prosecution history estoppel. Pillowtex maintains that these statements are part of the public record and that the public is justified in relying on them. Thus, they claim they did not infringe the '702 patent. Pillowtex marketed and sold their own product which had a stretchable skirt around the entire mattress pad. Since Isham stated she tried that and it did not work, Pillowtex maintains she is estopped from asserting a claim for patent infringement on this very ground.
Even after Isham made the statements at issue, her patent was again rejected by the Examiner under 35 U.S.C. § 112, second paragraph. This time, the Examiner stated that it was unclear as to what part of the fabric panel the stretch panel attached. See Final Office Action, Sept. 17, 1986 at ISH-00066 (Exhibit D). In response to this rejection, Isham filed an Amendment adding the language found in the current Claim 1. See Amendment Pursuant to 37 C.F.R. § 1.116, Dated Dec. 17, 1986 at ISH-00068-70 (Exhibit D). This language defines the cutouts and the attachment of the stretch panel to the edges of the cutouts. Isham stated that she added this language to clarify the manner in which the stretch panel is attached to the fabric panel. Id. at ISH-00073.
II. DISCUSSION
Summary judgment is appropriate only "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). A factual dispute is genuine only "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
All evidence submitted must be viewed in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The initial burden of demonstrating that there are no issues of material fact rests with the moving party. See Goodman v. Mead Johnson & Co., 534 F.2d 566, 573 (3d Cir.1976). "This burden ... may be discharged by `showing' ... that there is an absence of evidence to support the nonmoving party's case." Celotex Corp. v....
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