Unique Concepts, Inc. v. Brown

939 F.2d 1558 (1991)

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Nature of the Case

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Facts

P is the exclusive licensee of the '260 patent. The patent details an 'assembly of border pieces' used to attach a fabric wall covering to a wall. The assembly is made up of a number of 'right angle corner border pieces' and 'linear border pieces' which are arranged so as to form a frame around the area of a wall to be covered. The original filing contained 14 claims. Claim 1 recited an assembly comprising 'linear border pieces and right-angle corner border pieces,' each of the border pieces having a raised face, a storage channel, and a keyway. The original claims were rejected as being unpatentable in view of various references that showed frames including corners in arrangements similar to that of P. P amended his claims and argued against the references. P claimed the main advantage was that it greatly simplifies the mounting of a fabric covering. An amateur can practice the present invention. Claim 1 now reads: ... an assembly comprising linear border pieces and right-angle corner border pieces... The drawings showed preformed corner pieces. The specification referred to these preformed pieces and also mentioned improvised corner pieces. Those could be made by mitering two linear border pieces and fitting them together at a right angle. The mitered pieces could be a replacement to the preformed corner pieces. P sued D alleging infringement. D denied infringement and filed counterclaims based on breach of contract, unfair competition, and antitrust. D maintained that his products do not have corner pieces which were preformed at a right angle, but instead employ two linear pieces which are each mitered and then placed together to form a right angle. D also claimed that his products do not employ a keyway. The language of the claims does not expressly recite a keyway, but D urged that its omission from the claims was an error by the PTO, and that such a limitation must be read into the claims; otherwise, it was urged, the claims would be invalid in view of the prior art. The judge entered judgment for D, finding that (1) the keyway feature was inadvertently omitted from claim 1 by the examiner and must be read into the claim and (2) the mitered linear pieces used by D do not meet the claim language 'right-angle corner border pieces,' either literally or under the doctrine of equivalents. D appealed. Unique argues that the court erred in finding that the claims do not literally cover assemblies having mitered corners.