American Permahedge, Inc. v. Barcana, Inc., and National Metal Industries
Docket: 18-1323
Court: Court of Appeals for the Federal Circuit; January 30, 1997; Federal Appellate Court
American Permahedge, Inc. appeals a summary judgment granted by the United States District Court for the Southern District of New York, which ruled in favor of Barcana, Inc. and National Metal Industries, Inc. on grounds of noninfringement of U.S. Patent No. 4,872,647 (the '647 patent). The Federal Circuit affirms this ruling. Summary judgment is appropriate when there is no genuine issue of material fact, and the moving party is entitled to judgment as a matter of law, even if some material facts are disputed.
The '647 patent pertains to artificial shrubbery designed to create a hedge appearance when threaded through a chain link fence. This shrubbery consists of individual units, formed by twisted metal wires and stiff plastic bristles resembling evergreen needles. American Permahedge's claims against Barcana's Evergreen Hedge product involve allegations of knowing and willful infringement of claims 1, 4, and 5 of the patent.
Claim 1 outlines an artificial hedge assembly that includes a chain link fence with interlocking wires and camouflage assemblies consisting of a central support element with densely packed filaments extending laterally, inserted into the fence openings to create a hedge-like appearance. Claims 4 and 5 similarly describe laterally extending plastic fibers that contribute to the planar hedge-like array.
The district court interpreted the term "extending laterally" to mean that needles radiate at right angles from the branch, leading to a finding of noninfringement based on the accused product having needles at a 45-degree angle. However, the appellate court found this interpretation to be erroneous but harmless, as the correct construction of the "planar array" limitation was sufficient to resolve the case. To establish infringement, the patentee must demonstrate that all limitations of the asserted claim are met by the accused product. The court highlighted that "lateral" generally means "coming from the side," and the specification supports this interpretation, showing that filaments can extend at about a 45-degree angle. The district court's reliance on certain passages indicating perpendicularity was deemed inappropriate, as claims define protection scope rather than preferred embodiments in the specification. Thus, the term "extending laterally" should not be limited to perpendicular extensions.
The district court's interpretation of the "extending laterally" limitation was unduly influenced by a statement from American Permahedge regarding the Goodridge patent, which described a Christmas tree branch with needles radiating from the stem at a fixed angle. American Permahedge argued that the Goodridge design could not achieve a contiguous planar array, implying it could only produce a tree branch, not shrubbery. The district court erroneously concluded that the "extending laterally" limitation restricted needle angles to 90 degrees. However, the patentee's statement actually indicated that Goodridge's needles were permanently bent but did not impose constraints on the angle of extension. Therefore, "extending laterally" simply refers to side extension without angle restrictions.
Regarding the "planar array" issue, the critical question is whether this limitation entails that the branches and needles form a flat plane or that the overall hedge appears planar when woven into a fence. The accused Barcana product has needles radiating from the stem but forms a uniform surface when woven, indicating that it does not literally infringe if "planar array" refers to the branches themselves. Claim 1 requires that the filament means (needles) create a planar array before insertion into the fence, leading to a hedge-like appearance rather than a planar one. The specification supports this interpretation, showing embodiments where the needles create a flat plane, without examples of needles radiating in all directions as seen in a circular brush.
American Permahedge's prosecution history indicates that they clearly defined "planar array" during their response to a prior art rejection, asserting that a Christmas tree branch configuration with needles extending in all directions, like the Goodridge patent, does not qualify as a "planar array." The Barcana product, with its needles protruding at various angles, similarly fails to meet the "planar array" limitation literally.
Even if there is no literal infringement, the doctrine of equivalents could still apply if the differences are insubstantial. However, prosecution history estoppel prevents a patentee from claiming equivalence for subject matter that was relinquished during patent prosecution. The district court determined that American Permahedge's statements regarding the "planar array" limitation barred findings of infringement under the doctrine of equivalents, a conclusion the court supported.
American Permahedge argued that there should be no estoppel because the statements were made in response to canceled claims; however, estoppel applies to all claims where clear assertions were made, regardless of whether they were directly linked to the claims at issue. The court emphasized that consistent interpretation of identical claim terms is necessary across different claims.
Ultimately, since the Barcana product does not meet the "planar array" limitation in either literal or equivalent terms, the district court's ruling of noninfringement is affirmed.
