Silver Line Building Products v. J-Channel Industries

8/13/2019 Silver Line Building Products v. J-Channel Industries

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IN THE UNITED STATES DISTRICT COURTFOR THE EASTERN DISTRICT OF NEW YORK

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SILVER LINE BUILDING PRODUCTSLLC,

Plaintiff,

v.

J-CHANNEL INDUSTRIESCORPORATION,

Defendant.

:

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:

Civil Action No. _________________

JURY TRIAL DEMANDED

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COMPLAINT

Plaintiff Silver Line Building Products LLC (Silver Line) for its complaint

against Defendant J-Channel Industries Corporation (JCI), states as follows:

NATURE OF THE ACTION

1. This is a civil action arising under the Federal Declaratory Judgment Act,28 U.S.C. 2201-2202. Plaintiff Silver Line seeks a declaration that its windows,

including the Silver Line 3000 Series Double-Hung Window (Silver Line 3000 Series

Window) and the American Craftsman 70 Double Hung Fin Vinyl Window (Home

Depot Model # 70 DH FIN) (American Craftsman 70 Series Window) do not

infringe and that U.S. Reissued Patent No. RE40,041 (the 041 reissue patent) patent is

invalid and unenforceable, under the patent laws of the United States, 35 U.S.C. 1, et

seq., and for such other relief as the Court deems just and proper. A copy of the 041

reissue patent is attached as Exhibit A.


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2

THE PARTIES

2. Plaintiff Silver Line is a Delaware limited liability company with itsprincipal place of business at One Silver Line Drive, North Brunswick, New Jersey

08902.

3. Upon information and belief, Defendant JCI is a Delaware corporationwith its principal place of business at 900 Walt Whitman Road, Melville, NY 11747.

4. Upon information and belief, Defendant JCI claims to own the 041 reissuepatent, but JCI does not practice any claims of the 041 reissue patent.

JURISDICTION AND VENUE

5. This action arises under the Declaratory Judgment Act, 28 U.S.C. 2201and 2202, and the Patent Laws of the United States, Title 35 of the United States Code.

6. This Court has subject matter jurisdiction over this action pursuant to28 U.S.C. 1331 and 1338(a).

7. This Court has personal jurisdiction over Defendant JCI because JCIsprincipal place of business is in Melville, NY and JCI transacts business in the State of

New York.

8. Venue is proper in this Judicial District pursuant to 28 U.S.C. 1391 and1400(b). Further, venue is proper in this Judicial District because JCIs principal place of

business is in Melville, NY and JCI transacts business in this Judicial District.


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3

FACTUAL BACKGROUND

9. Plaintiff Silver Lines business began in 1947. Silver Line has been apioneer in the design and manufacture of windows and doors and is a national leader

in the manufacturing of vinyl windows and doors.

10. Silver Line manufactures and sells the Silver Line 3000 Series Windowand the American Craftsman 70 Series Window.

11. Defendant JCI claims to own the 041 reissue patent.12. The041 reissue patent is a reissue patent of U.S. Patent No. 5,660,010 (the

010 patent).

13. Silver Line used Silver Lines prior art windows with a J-channel tosuccessfully invalidate the 010 patent in litigation filed by the previous assignee of the

010 patent, Sealmaster, L.L.C. in the Eastern District of Tennessee. Sealmaster, L.L.C. v.

Silver Line Building Products Corp., 199 F. Supp. 2d 783 (E.D. Tenn. 2001), aff'd, 32 Fed.

Appx. 587, 2002 WL 519811 (Fed. Cir. 2002). A copy of the district court decision is

attached as Exhibit B.

14. The 041 reissue patent has expired.15. After the expiration of the 041 reissue patent, and more than ten years

after Silver Line invalidated the 010 patent, on October 9, 2013, Defendant JCI filed a

lawsuit in the Eastern District of Tennessee against Andersen Corporation and The

Home Depot U.S.A., Inc., Case No. 3:13-cv-00606-TAV-CCS, alleging that Silver Lines

3000 Series and 70 Series windows directly infringed at least claim 1 of the 041 reissue

patent. A copy of JCIs Complaint is attached as Exhibit C.


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16. The Silver Line 3000 Series and American Craftsman 70 SeriesWindows accused of infringement in a lawsuit filed on October 9, 2013are

manufactured, marketed and sold by Silver Line, not Andersen Corporation.

17. Silver Lines windows do not infringe any valid claim of the 041 reissuepatent.

18. In view of JCIs allegations regarding Silver Lines windows assertedagainst Andersen Corporation in the pending litigation in the Eastern District of

Tennessee (Case No. 3:13-CV-00606) and the history of past litigation, there is an actual,

substantial, and justiciable controversy between Silver Line and JCI regarding the

alleged infringement, validity, and enforceability of the 041 reissue patent and Silver

Lines intervening rights.

19. A declaration of rights between the parties is necessary to establish thatSilver Line does not infringe any valid claim of the 041 reissue patent, that the patent is

invalid and unenforceable and that Silver Line has intervening rights.

CAUSES OF ACTION

Count I Declaratory Judgment of Invalidity

20. Silver Line repeats and realleges the allegations contained in paragraphs 1through 19.

21. The claims of the 041 reissue patent are invalid for failure to satisfy one ormore of the conditions for patentability specified in Title 35 of the United States Code,

including without limitation 101, 102, 103, and/or 112.


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22. Silver Line is entitled to entry of judgment pursuant to 28 U.S.C. 2201and 2202 declaring that the 041 reissue patent is invalid.

Count II Declaratory Judgment of Non-infringement


24. Silver Line does not infringe any valid claim of the 041 reissue patent.25. Silver Line is entitled to entry of judgment pursuant to 28 U.S.C. 2201

and 2202 declaring that Silver Line does not infringe any valid claim of the 041 reissue

patent.

Count III Declaratory Judgment of Unenforceability


27. The 041 reissue patent has expired and JCI is not entitled to any damagesor relief under the patent laws of the United States, 35 U.S.C. 1, et seq.

28. The 041 reissue patent is unenforceable under the doctrines of laches,waiver and/or estoppel.

29. Silver Line is entitled to entry of judgment pursuant to 28 U.S.C. 2201and 2202 declaring that the 041 reissue patent is unenforceable.

Count IVDeclaratory Judgment of Intervening Rights



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31. Silver Line is entitled to entry of judgment that it has absolute andequitable intervening rights under the 041 Reissue patent pursuant to 35 U.S.C. 252.

DEMAND FOR JURY TRIAL

Pursuant to Fed. R. Civ. P. 38(b), Plaintiff Silver Line demands a trial by jury on

all issues so triable.

REQUEST FOR RELIEF

Plaintiff Silver Line requests that the Court enter a judgment:

A. Declaring that the claims of U.S. Reissued Patent No. RE40,041 are invalid;

B. Declaring that Silver Line does not infringe any valid claim of U.S.

Reissued Patent No. RE40,041;

C. Declaring that the U.S. Reissued Patent No. RE40,041 is unenforceable.

D. Declaring that Silver Line is not liable to JCI by virtue of Silver Lines

intervening rights.

E. Finding that this is an exceptional case under 35 U.S.C. 285 and awarding

Silver Line its reasonable attorney fees, expenses, and costs incurred in this action.

F. Such other and further relief as this Court may deem just and proper.

Dated: New York, New York Robins, Kaplan, Miller & Ciresi L.L.P.

November 26, 2013By: /s/Annie Huang

Ronald J. SchutzAnnie Huang601 Lexington Ave., Suite 3400New York, NY 10022Tel: (212) 980-7400


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Fax: (212) [email protected]@rkmc.com

Attorneys for Plaintiff Silver Line BuildingProducts LLC


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Exhibit A


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USOORE4 41E19) United States

c12) Reissued PatentSayers

10) Patent Number: US RE40,041 E45) Date of Reissued Patent: Feb. 5, 2008

54) WINDOW FRAME OR MANUFACTUREDHOUSING75) Inventor: Leland D. Sayers, Knoxville, TN US)73) Assignee: Sealmaster, L.L.C.* Notice: This patent is subject to a terminal disclaimer.

21) Appl. No.: 10/219,57322) Filed: Aug. 15, 2002

Related U.S. Patent DocumentsReissue of:64) Patent No.:Issued:Appl. No.:Filed:

U.S. Applications:

5,660,010Aug. 26, 199708/347,907Dec. 1, 1994

63) Continuation of application No. 07/934,257, filed on Aug.25, 1992, now Pat. No. 5,392,574, which is a continuationin-part of application No. 07/570,818, filed on Aug. 22,1990, now abandoned, which is a continuation-in-part ofapplication No. 07/338,306, filed on Apr. 17, 1989, nowabandoned, which is a continuation-in-part of applicationNo. 07/083,255, filed on Aug. 10, 1987, now Pat. No.4,747,753.51) Int. Cl.

E 6B 26E 6B 36

2006.01)2006.01)52) U.S. Cl. ..................... 52/217; 52/204.5; 52/204.55;

52/204.56; 52/210; 52/211; 52/213; 49/DIG. 258) Field of Classification Search ................... 52/217,52/213, 204.55, 204.56, 204.5, 210, 211,52/656.5; 49/DIG. 2See application file for complete search history.56) References Cited

U.S. PATENT DOCUMENTS2,326,549 A 8/1943 Miller

DEDE

2,454,523 A2,718,291 A 1111948 Philip9/1955 Goldberg

Continued)FOREIGN PATENT DOCUMENTS25393831960024 3/197610/1977OTHER PUBLICATIONS

Alcan Building Products, A lean Thermally Superior Weath-erbuffer 1980.Silverline Building Products, Silverline 1600 S/H.Sentinel Aluminum Schelenberg Industries, AluminumWindows for Metal Buildings.Remington, Remington Door.Alcan Building Products, Sunview Aluminum Window andDoor System Oct. 10, 1983.

Continued)Primary Examiner-Jeanette E. Chapman74) Attorney Agent or Firm-Wood Herron Evans,L.L.P.57) ABSTRACT

A window frame construction particularly useful in a manufactured housing unit to provide a structure for receiving andsupporting at least one window and to provide coverage ofends of siding applied to the exterior of the housing unit. Thewindow frame includes a window body mem ber to generallycircumscribe an opening in the housing unit, with a J-railreturn member integrally formed therewith to provide aflange member for attachment of the window frame to thehousing unit and to cover and secure ends of the siding in aslot formed between the flange member and the returnmember of he J-rail return. The return member has sufficientwidth to cover the siding ends even when the siding contracts during lowered temperatures. The window frame, inthe preferred form, is constructed from extruded vinyl, andit is used principally for vinyl siding.

3 Claims, 4 Drawing Sheets


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US RE40 041 EPage 2

U.S. PATENT DOCUMENTS2 725 608 A 12/1955 Parslow2 733 787 A 2/1956 Morra2 770 335 A 1111956 Sylvan2 826 282 A 3/1958 Goldberg2 912 078 A 1111959 Kiehl eta .2 983 001 A 5/1961 Guldager ..... ..... .... ..... .. 52/2083 239 976 A 3/1966 Hall ............... ............. 52/2023 416 271 A 12/1968 Heeney3 583 114 A 6/1971 Belfor3 715 836 A 2/1973 Monroe3 800 488 A 4/1974 Swanson3 943 679 A 3/1976 Dissinger4 280 309 A 7/1981 Huelsekopf ...... ..... ... 52/204.544 299 060 A 1111981 Tippmann ...... ..... ..... . 52/212 X4 413 446 A 1111983 Dittrich4 521 991 A 6/1985 Sayer eta . .................. 49/1614 555 868 A 12/1985 Mancuso ..... ..... .... ..... .. 49/1814 563 846 A 111986 Webb ..... ..... ..... ..... .... .. 52/208

9/198611119869/198711119889/19905/19912/1995

4 608 800 A4 624 091 A4 694 612 A4 787 184 A4 958 468 A5 018 325 A5 392 574 A

FredetteBiro .......................... 52/656.5Pruden eta .Boidron ....................... 52/217Nolan ..................... 52/204.51Geen et a . ................... 52/211Sayers ................. 52/204.55 X

OTHER PUBLICATIONSMiller Industries Single HungPeerless Single Hung Tilt Sash Nailing FinNorandex Norguard Series 500Victor Sun Control of Philadelphia Inc. Victor Sun ControlRemington Remington WindowSilverline Building Products Silverline TW 1000CertainTeed Window CertainTeed Window

cited by examiner


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U.S. atent Feb.5 2008 Sheet 1 of 4 US RE40 041 E

18

24 6 22F IG 1A R OR ART)

30

F IG.l B PRIORART)


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U.S. atent Feb.5,2008 Sheet 2 of 4 US RE40,041 E

F JG c RIOR ART)

F IG l D PRIOR ART)


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U.S. Patent Feb.5 2008 Sheet 3 of 4 US RE40 041 E

L6 68EO 6

48

8

5I a__

r . 1 I IL_JFIG 2

98

88

FIG J 7654


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U.S. atent Feb.5 2008 Sheet 4 of 4 US RE40 041 E

1 6

90

FIG 4


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US RE40 041 E1

WINDOW FRAME FOR MANUFACTUREDHOUSINGMatter enclosed in hea vy brackets [ ] appears in theoriginal patent but forms no part of this reissue specifi-cation; matter printed in italics indicates the additions

made y reissueThis is a continuation application of application Ser. No.07/934,257, filed Aug. 25, 1992, now U.S. Pat. No. 5,392,574, issued Feb. 28, 1995, which is a continuation-in-partapplication ofSer. No. 07/570,818, filed Aug. 22, 1990, nowabandoned, which is a continuation-in-part application ofSer. No. 07/338,306, filed Apr. 17, 1989, now abandoned,which is a continuation-in-part application of Ser. No.07/083,225, filed Aug. 10, 1987, [abandoned] ow U S Pat.

No. 4 747 753.TECHNICAL FIELD

2The manufacturers of the homes with lap siding werefaced with the problem of encasing the ends of the vinyl/aluminum lap siding to exclude rain. Also, there is oftensmall misalignment of ends of he siding since the pieces arecut from strips, and both vinyl and alnminnm expand andcontract significantly under extremes of temperature. Thesolution utilized by these manufacturers to the enclosure ofthe ends to meet the requirements was a separate J-rail orJ-channel element attached to the building frame with

10 suitable fasteners. The J-rail has a fastening flange forattachment to the building, an outwardly projecting portionto cover the siding ends, and a return portion to contact theouter surface of the lap siding so that the ends are enclosedeven during construction of the siding. In some embodi-15 ments this element is abutted to the outer edge of flange ofthe window frame (see FIG. lB ; and in other embodiments,this element overlaps the flange to hide the flange fasteners

(see FIG. lC . These embodiments of dealing with coveringThis invention relates to a window frame construction for 20

siding ends were state of the art at the time of the presentinvention. Such construction is illustrated in Rigid VinylSiding Application Instructions a currently-available docu-principal use in manufactured housing, the frame receiving

and supporting at least one window, the frame for beingmounted in a window opening provided in a wall structurement published by the Vinyl Siding Institute, The Society ofthe Plastics Industry, Inc., New York, N Y In addition, thisseparate J-rail construction is shown as state-of-the-art inof the manufactured unit. This particular frame includes anintegrally formed J-rail or J-channel portion such thatends of vinyl or aluminum lap siding applied to the exterior

25 U.S. Pat. No. 4,608,800 issued Sep. 2, 1986.of the housing unit are enclosed even when dimensionalchanges occur due to thermal effects. In one embodiment theframe of the invention has an inner portion that encloses 30edges of interior wall covering, this inner portion alsohaving an integral J-rail.

BACKGROUND ART

Although the J-rail element satisfactorily seals the ends ofthe lap siding, there are certain drawbacks. For example,there are occasionally color differences between the materialof the window frame and that of the J-Rail. There is also aproblem that there is separate material that must be carriedto (or stored at) a site offabrication . The main problem is theextra time that is required for its installation-measuring,cutting and fastening of separate pieces. As described in theabove-referenced publication, the side J-rail members areThe manufactured housing industry has undergone asignificant evolution in the past two decades. Initially thehousing units were constructed using techniques previously

employed for mobile homes: small structural frame members covered with a skin of sheet metallic material. Theentire unit was wrapped with the skin material and thenwindow openings were cut out to receive window units.These window units had mounting flanges extending aroundthe edges, with these flanges receiving screws for fasteningthe frames into the structural members. The back surface of

35 cut longer than the height of the window and are notched atthe top. Then the free end of the top J-rail flange is miteredat each end, and bent at 90 to fit over the side members. Insome installations, a special J-rail configured comer unit isutilized (see above-referenced U.S. Pat. No. 4,608,800).

40 Unless significant care is taken during the cutting, bendingand fastening of the J-rail, gaps can occur such that thefinished product is less than aesthetically attractive. Caulking is recommended around the window frames prior to thisthe flange normally carried a compound to seal against the 45building skin. (This structure is illustrated in FIG. lA .

Although the metal skin construction is continued in use

installation of the J-rail units. As stated above, the windowframes for these constructions are substantially the same asin earlier manufactured homes (and for retrofit installation)with a nailing flange near the outer portion of the unit. Thus,although the other structural portions of manufacturedhomes have changed, the window manufacturers apparently

on very low-end economy manufactured housing units, amore decorative and sturdy construction began in about1985. This improved design utilizes more of he constructiontechniques of stick-built housing in that walls are thicker,and the exterior surface is covered with lap-type siding made50 did not consider other known windows to be of use for this

type of siding. Accordingly, they have not varied the window frames significantly to match the other building fabrication changes.f aluminum or vinyl. The principal manufacturers of windows and siding are either the manufacturers of windowframes (e.g., Reynolds Aluminum, Mastic, Certainteed,Alcoa, Wolverine.) or are closely related such that thewindow frames used previously were continued into thesenewer styles. Thus, window frames with conventionalflanges are utilized, with suitable fasteners (screws, staples,etc.) penetrating the mounting flange into the buildingframe. This use of the same window frame existed eventhough other window frames had been patented over aseveral year period. Some of these patents include: U.S. Pat.Nos. 2,326,549; 2,454,523; 2,733,787; 2,770,335; 2,912,078; 3,239,976; 3,416,271; 3,583,114; 4,280,309; 4,299, 65060; 4,413,446 and 4,624,091. Other patents that may bepertinent are German Patents 1,960,024 and 2,539,363.

Therefore, it is an object of the present invention to55 provide a window frame that does no t require the utilizationof a separate J-rail for enclosing ends of lap siding.

t is another object of the present invention to provide aJ-rail construction in an integral combination with a support60 for at least one window wherein there is a color match.A further object of the present invention is to provide awindow frame construction that significantly simplifies theinstallation of windows into housing units with a saving ofmaterials and labor.

t is also another object of the present invention to providea window frame construction that is very functional, and isaesthetically attractive to the viewer.


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US RE40,041 E3

Another object of the present invention is to provide auniversal window frame for use in manufactured housingthat increases the speed offabr ication by significantly reducing the labor of installing windows in this type of housing.These and other objects of the present invention willbecome apparent upon a consideration of the appended

drawings and a complete description thereof that follows.DISCLOSURE OF THE INVENTION

4some embodiments, embossed or corrugated to give someimproved visual appearance. There may be, or may not be,a thin sheeting layer 14 The inner surface of this buildingframe was typically covered with panelling 16, and the voidbetween the layers was filled with insulation 18. At placeswhere windows were desired, an opening was cut throughthe wall of appropriate size, a nd a prefabricated window unit20 was inserted having a perimeter flange 22. Although thisFIG. 1A and FIGS. 1B-1D illustrate upper and lower

In accordance with the present invention, there is provided a window frame for being received in an opening of1 double-glazed window sashes, it will be understood thatwindows for a single-glazed sash are fabricated in a similarmanner. Appropriate fasteners 24 secured the window unit tothe wall, and a suitable mastic 26 on the reverse side of thewall of a structure, the window frame for receiving andsupporting at least one window. This frame has a bodyportion circumscribing the wall opening with a window 15receptor intermediate an inner portion of the body portionextending toward an inner wall of the structure and an outer

portion of the body portion extending proximate an outerframe wall of the structure. A J-rail portion is integrallyformed with the body portion so as to project outwardly 2from the body portion to receive and cover ends oflap sidingelements applied to the outer frame wall of the structure.This J-rail portion includes a flange portion to receivefasteners for securing the window frame to the outer framewall of the structure, an outwardly-extending portion to 25cover the siding ends, and a return portion for overlappingends of the lap siding elements, the ends being held betweenthe flange portion and the return portion to provide a weatherseal. The return portion has sufficient length to providecoverage of the lap siding ends under all conditions of 3dimensional change due to temperature variations.

BRIEF DESCRIPTION OF THE DRAWINGSFIG. 1A is a drawing showing one embodiment of astate-of-the-art window frame as utilized in manufactured 35housing fabrication where the exterior of the housing unit ismade up of sheet metal or the like.FIG. 1B is drawing showing the use of the state-of-the-artwindow frame of FIG. 1A as utilized in manufacturedhousing fabrication where the exterior of the housing unit is 4lap siding, particularly vinyl or aluminum siding, and theends of the siding are encased in a J-rail element positionedso as to abut the flange of the window frame.FIG. 1C is a drawing illustrating another utilization of aJ -rail element for covering ends oflap siding, wi th this J -rail 45

element overlapping the flange of the window unit.FIG. 1D is a drawing illustrating a modification of thestate-of-the-art window frame that can be used with either

installation practice illustrated in FIGS. 1B or 1C. 5FIG. 2 is a cross sectional drawing of a sill portion of awindow frame according to the present invention.FIG. 3 is a cross sectional drawing of a jamb portion ofa window frame according to the present invention.FIG. 4 is a perspective view, partially in section, of a 55window frame of the present invention.

BEST MODE FOR CARRYING OUT THEINVENTION

flange provided sealing against the weather.In some subsequent manufactured homes, lap siding wasemployed, as illustrated at 28 in FIG. 1B, this siding havinga sloped surface, For this construction the window unit 20was installed in an opening in the wall by passing thefasteners 24 through the flange 22 into the frame memberstypically into the studding 10 ), or into sheathing 30 if suchwas used. The siding 28 was fastened to the exterior of thewall after a J-rail unit 32 was attached so as to abut the flange

22, the J-rail covering the ends of the lap siding. As before,a sealant 26 was typically employed to prevent ingress ofmoisture. With this construction the fasteners 24 through theflange 22 were visible in the completed building.A slight variation of this type of installation of a prefabricated window unit 20 is illustrated in FIG. 1C. By installing the J -rail unit 32 over the flange 22 all of the fasteners

24 are hidden and improved weather sealing is accom-plished.Some commercial manufacturers of prefabricated window units produced a window that permitted the abutment ofbrick mold along the edge. This structure is shown in FIG.

1D t 20 and illustrates an extension 34 on the body portionof the frame. This style of prefabricated window has alsobeen used like that illustrated in FIGS. 1B and 1C togetherwith a separate J-rail element 32.

The embodiments of the prior art, in addition to beingused in manufactured housing, have routinely been used inrenovation work where new siding and/or windows areinstalled.In order to overcome the drawbacks arising from theconstructions illustrated in FIGS. 1A-1C, the present invention is depicted at 36 in FIG. 2 wherein the sill portion of heinvention is shown in a cut-away cross section. The windowframe 36 is placed in an opening 38 in the building that isat least partially defined by a typical frame sill 40 and typicalsheathing 42. Also, a typical wall stud 43 is illustrated. Thiswindow frame 36 has a body portion 44 that generallycircumscribes the wall opening 38 and extends from proximate the exterior of the sheathing 42 to at least midway thethickness of the building wall, and an integral J-rail returnportion 46 that extends beyond the sheathing. In thisembodiment the body portion 44 is provided with a slot 48to accept, in sliding relationship, a body extension portion

50 such that the window frame extends toward the interior52 of the building wall. This will be described in greater

The departure of the present invention from the prior art 60 detail hereinafter.of window/siding relationships will be better understood byfirst considering the construction that had existed prior to thepresent invention. Therefore, referring to FIG. 1A, showntherein is an early wall/window structure as utilized inmanufactured housing. The frame of the housing unit was 65typically a series of 2 in.x2 in. elements 10 that werecovered on the exterior with sheet metal 12 which was, in

The J-rail return portion 46 has three major components.There is a flange member 54 typically about 1 o inch wide)that provides for the attachment of the window frame 36 tothe sheathing 42 using, for example, nails or screws 56There is an outwardly projecting member 58 having a lengthtypically about inch) away from the sheathing 42 that issubstantially the same as thickness of lap siding 60, and a


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US RE40,041 E5

return portion 62 that, in this sill portion, extends downwardly so as to be parallel to the flange member 54. Thee n g t ~ of this .return portion 62, which is typically aboutmch, 1s sufficient to cover the edge of the siding 60 evenwhen the siding contracts under low temperatures. In apreferred embodiment, the distal edge of this return portion

6 2 a e v e r ~ e l y - d i r e c t e d bead 64 to prevent chaffing of thes1dmg 60 dunng relative movement therebetween. Becausethis is the sill portion of the window frame, the outwardlyextended portion 58 of the J-rail return 46 (and the outeredge 63 of the body portion 44 are sloped as indicated by 1the arrows at 66 to allow drainage of water.

The body portion 44 of the window frame 36 is typicallyprovided with a plurality of window sash retainer elements,such as depicted at 68, 70, and 72 as will be known topersons skilled in the art. As stated above, the body portion 1544 provided with a slot 48 for slidably receiving a tongueportwn 7 4 of he body extension portion 50 to adjust for wallthickness. This body extension portion 50 can terminate atthe frame inner wall 52 of the building with a flange 76 20which is fastened to the building frame as with nails orscrews 78. f he wall is relatively thin, the flange 76 wouldbe at the position indicated at 77. Alternatively, the bodyextension portion 50 can be terminated with a J-rail return 80such that edges of interior wall covering 82 are covered, and 25that the wall covering 82 covers the fasteners 78. In thisembodiment, the flange portion of the J-rail return substitutes for and serves the function of flange 76.

FIG. 2 also illustrates that portions of the window frame36 are provided with means for joining the sill portion to jam 30

p ~ r t ~ o n s , and a header portion to the jam portions. Typically,th1s 1s accomplished by providing screw-receiving bosses asat 84. This will be discussed in greater detail in connectionwith a description of FIG. 4

A typical jamb portion of the window frame 36 is shown 35in cross section in FIG. 3 Here it can be seen how the returnportion 62 of the J-rail return 46 covers the ends 85 of siding60 even when the siding 60 moves during thermal fluctuations in directions indicated by the double-ended arrow 86.The embodiment of the window frame 36 illustrated has 40projections 88, 90 which receive a window sash retainer 92for securing the two sashes 94, 96 each containing doubleglazing 98, 100. The void 102 between the sash retainer 82and the window frame body member 44 is typically filledwith foam insulation 104. The window frame 36 can include 45if desired, a window screen retainer flange 105. Again,sliding tongue 74 of the extension 50 in the slot 48 permitsadjustment for wall thickness. Also, the interior can beterminated with a J-rail return 80 or simply by the flange 76.

A further view of the present window frame 36 is shown 50in the persp ective cu t away view in FIG. 4 Morespecifically, this illustrates the header portion 6A of theframe and a side jam portion 36B, and means for joiningthese two portions. t will be understood that joining of othercorners of the frame 36 are accomplished in a similar 55manner. As indicated, a portion of the header 6A isremoved at end 106 so that the J -rail return 46 thereofalignswith end 108 of J-rail return 46 of the jam portion 36B.Although not shown, the projections 88, 90 of the headerportion 6A are also cut back so as to have their ends in 60

a l i g n n ~ e n t with their corresponding parts of the jam portion36B. The header portion 6A and the jam portion 36B arejoined by passing screws 110 through openings 112 in theheader portion 6A into the openings in the screw-retainingbosses 84. This permits fixedly joining of the two campo- 65nents of the window frame 36. Although this is the preferredmethod of joining the portions of the window frame 36, it

6will be understood that other conventional joining methodscan be used. Since the header portion 6A overlaps the endsof the jam portions 36B of the window frame, the J-railreturn 46 serves as a gutter element to any moisture fallingupon siding of the housing unit.

From the above description of the components and themethod of joining the portions of the window frame 36 itwill be understood that the assembled frame 36 can beinserted in an opening 38 of a building structure. Thisopening 38 can be in a building as manufactured, or in abuilding under renovation. The window frame 36 is fastenedto the building using screws, nails, staples, etc. passingthrough the flange 54. Lap siding 60 is then attached to theexterior of the building, with ends of the lap siding 60 beinginserted into the slot formed by the flange 54 and the returnportion 62. This return portion 62 is sufficient in width tomaintain coverage of the ends of the siding 60 even duringcontraction of the siding 60 at lowered temperatures. Thebead 64 prevents chaffing of the siding 60 during anymovement thereof. In most installations, an inner portion ofthe window frame 36 is created by the addition of theextension 50 by inserting the tongue 74 into the slot 48.Thus, the window frame can be adjusted for the thickness ofthe structure wall. As stated the edge of the extension 50 caneither terminate with the flanges 76, or a J-rail returnmember 80 can be an integral component.

From the foregoing it will be understood that a windowframe has been developed that solves a problem of retainingand c ~ v e r i n g ends of lap siding with a singular structures,wherem the problem was solved in the prior art with separatestructures. As a result, a considerable savings in time isachieved. Further, the result is a substantially improvedaesthetic appearance of any building for which thisimproved window frame is used. While developed primarilyfor manufactured housing, the present window frame can beused in any building, either manufactured or stick built. tcan be used in original construction, or can be installedduring renovation of the building. Further, while designedprimarily for use with lap siding applied to the exterior of thebuilding, it can be used with other types of siding, some ofwhich may abut the distal edge of he J-rail return portion 46.In a preferred form, the window frame is fabricated from asuitable plastic material (typically vinyl) using conventionalextrusion techniques.

The description given above, and any typical sizes andmaterials, is given as an illustration of the present inventionand not as a limitation. The invention is to be limited onlyby the appended claims and their equivalents.What is claimed is:

1. A window frame for being fixedly mounted in anopening provided in a wall of a structure, the structurehaving a frame defining an inner wall and an ou ter wall, saidwindow frame comprising:

a window frame body membe r for being received in andcircumscribing the opening in the wall and adapted toextend from proximate the outer wall toward the innerwall when received in the opening, said window framebody member having a retainer means for receiving andsupporting at least one window, said window framebody member having a header portion, a sill portion,and first and second jamb portions;

a J-rail return member integrally formed with said window frame body member so as to extend outward fromsaid window frame body member when said windowframe body member is received in the opening, saidJ-rail return member having


18/38


19/38

US RE40 041 E9 1

window nd at least one bottom edge in said J rail c a return portion having a proximate edge and areturn member on said header portion nd an upper distal edge, said proximate edge being connected toedge ofsaid siding in said channel in said sill portion an outermost extent of said projecting portion, saidsaid J rail return member on said header portion acting return portion being substantially parall el with saidas a rain gutter for said window frame. fl nge portion to define a subst nti l ly

9 The window fr me assembly claimed in claim 8 rectangularly-shaped slot between said return par-wherein said projecting portion on said header portion is tion nd said flange portion, said slot having anunperforated from said first j mb section to said second opening at said distal edge of aid return portion forj mb section. accepting siding to be attached to the outer wall of

10 The window frame assembly claimed in claim 9 1 the structure, said return portion having a width offurther comprisingfirst nd second windows in said retainer. at least about- inch and effective to cover the siding11 A window frame for being fixedly mounted in an nd to accommodate movement ofsaid siding due toopening provided in a wall of a structure, the structurehaving a fr me defining an inner wall nd an outer wall, thermal fluctuation, said J rail return member pro-said window frame comprising: 15 viding an unperforated channel on sa id header por-tion from beyond an inner edge of said first j mba window frame body member for being received in andcircumscribing the opening in the wall and adapted to section to beyond an inner edge ofsaid second j mbsection said J rail return member having a sizeextend from proximate the outer wall toward the innerwall when received in the opening, sai d window fr me effective to receive siding and conceal cut edges ofbody member having a retainer for receiving and 20 said siding to provide a neat finished appearance,supporting at least one window said window fr me whereby said window fr me can be installed as a unitbody member having a header portion, a sill portion within the opening of he structure with minimal laborand a first nd second j mb portions; to receive at least one window nd the siding in a

a J-rail return member integrally formed with said win- secure manner.dow frame body member so as to extend outward from 25 12. The window fr me of claim 8 wherein said windowsaid window fr me body member when said window fr me body member is of extruded vinyl nd said J-railfr me body member is received in the opening, said return member is integrally formed with said window bodyJ-rail return member having member.a) a continuous flange portion for extending radially 13. The window assembly claimed in claim 8 wherein saidaround the entire opening and or attachment of aid 30 projecting portion has a width approximately equal to awindow fr me to the structure, width of said siding thereby concealing any exposed edgesb) a projecting portion extending away rom said lange of said siding in such a J rail return member.portion in a direction perpendicular to said flangeportion, nd


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Exhibit B


21/38

SEALMASTER, L.L.C., Plaintiff v. SILVER LINE BUILDING PRODUCTS and

HOME DEPOT USA, INC., Defendants

No. 3:99-cv-279

UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF

TENNESSEE, KNOXVILLE DIVISION

199 F. Supp. 2d 783;2001 U.S. Dist. LEXIS 23513

January 10, 2001, Filed

SUBSEQUENT HISTORY: Reconsideration denied,

Sealmaster, L.L.C. v. Silver Line Bldg. Prods., 2001 U.S.

Dist. LEXIS 23517 (E.D. Tenn. May 22, 2001).

DISPOSITION: [**1] Defendants' motion for

summary judgment partially granted.

CASE SUMMARY:

PROCEDURAL POSTURE: Plaintiff patent holder

sued defendants, two corporations, alleging patent

infringement. The corporations moved for summary

judgment, alleging that the patents were invalid under 35

U.S.C.S. 102(b) because the subject matter of the

claims was in public use for more than a year before the

filing date of the patents.

OVERVIEW: The patent holder alleged that the

corporations infringed on two of its window frame

patents. The corporations argued that the prior sale of the

windows with the claimed invention by one of thecorporation's invalidated the patents and that the prior

sale of the windows with the claimed invention by the

patent holder itself invalidated the patents. The court

found that there was no genuine issue of material fact that

one of the corporation's manufactured and sold windows

in the U.S. having every feature later claimed as an

invention by the patent holder for years, if not decades,

prior to the earliest possible patent application. The

corporations presented clear and convincing evidence that

the window was placed on sale in the U.S. by one of the

corporations well more than a year before the earliest

possible filing date of the patent. In fact, the proof in this

case indicated that the windows were sold in

commercially significant quantities. Furthermore, once

the windows were installed, they were in public use. The

window that was placed on sale and in public use

embodied each element of what the patent holder later

claimed in its patents.

OUTCOME: The corporations' motion for summary

judgment was granted in part and denied as to one of the

claims pending further briefing.

LexisNexis(R) Headnotes

Patent Law > Statutory Bars > Public Use Bar >

General Overview

[HN1] See35 U.S.C.S. 102(b).

Evidence > Documentary Evidence > Writings >

General Overview

Patent Law > Infringement Actions > Claim

Interpretation > General Overview

[HN2] In interpreting an asserted patent claim, a district

Page 1


22/38

court should look first to the intrinsic evidence of record,

i.e., the patent itself, including the claims, specifications,

and, if in evidence, the prosecution history. Such intrinsic

evidence is the most significant source of the legally

operative meaning of disputed claim language. In most

situations, an analysis of the intrinsic evidence alone will

resolve any ambiguity in a disputed claim term. In such

circumstances, it is improper to rely on extrinsic

evidence. In those cases where the public record

unambiguously describes the scope of the patented

invention, reliance on any extrinsic evidence is improper.

The claims, specifications, and file history, rather than

extrinsic evidence, constitute the public record of the

patentee's claim, a record on which the public is entitled

to rely. In other words, competitors are entitled to review

the public record, apply the established rules of claim

construction, ascertain the scope of the patentee's claimed

invention and, thus, design around the claimed invention.Allowing the public record to be altered or changed by

extrinsic evidence introduced at trial, such as expert

testimony, will make this right meaningless.

Patent Law > Infringement Actions > Claim

Interpretation > General Overview

[HN3] In the context of a patent claim interpretation,

while a district court may utilize extrinsic evidence to

understand the patent, the court may not use it to vary or

contradict the terms of the claims. Although the central

focus remains on the claim language as illuminated by

the written description and the prosecution history,

extrinsic evidence may supply context to understand the

claim language.

International Trade Law > General Overview

Patent Law > Claims & Specifications > Description

Requirement > General Overview

Patent Law > U.S. Patent & Trademark Office

Proceedings > Reissues > General Overview

[HN4] In the context of a patent claim interpretation,

when the preferred embodiment is described in the

specification as the invention itself, the claims are notnecessarily entitled to a scope broader than that

embodiment.

Patent Law > Claims & Specifications > Description

Requirement > General Overview

Patent Law > Date of Invention & Priority > General

Overview

Patent Law > Statutory Bars > General Overview

[HN5] Under 35 U.S.C.S. 102(b), patent claims are

invalid, among other things, if the subject matter was in

public use in the United States for more than a year

before the filing date. This public use bar serves the

policies of the patent system, for it encourages prompt

filing of patent applications after inventions have been

completed and publicly used, and sets an outer limit to

the term of exclusivity. The requirements of the public

use bar of 102(b) are two-fold: (1) the completed

invention must be used in public; and (2) the use must not

be primarily experimental in purpose.

Patent Law > Inequitable Conduct > General Overview


General Overview

[HN6] In discussing the concept of public use, it is notnecessary that more than one of the patented articles

should be publicly used. The use of a great number may

tend to strengthen the proof, but one well-defined case of

such use is just as effectual to annul the patent as many.

A single public use is sufficient to invalidate a patent

under35 U.S.C.S. 102(b). Additionally, whether the use

of an invention is public or private does not necessarily

depend upon the number of persons to whom its use is

known. If an inventor, having made his device, gives or

sells it to another, to be used by the donee or vendee,

without limitation or restriction, or injunction of secrecy,

and it is so used, such use is public, even though the use

and knowledge of the use may be confined to one person.

Patent Law > Statutory Bars > On Sale Bar > General

Overview


General Overview

[HN7] Under 35 U.S.C.S. 102(b), a patent claim is

invalid if the subject matter of the claim was on sale in

the United States more than a year before the effective

filing date. Like the public use bar, the on sale bar

encourages early disclosure and prevents extension of the

statutory patent term. In order to trigger the on sale bar,no actual sale is necessary, an offer to sell is sufficient.

Consistent with the public use bar, a single sale or offer

for sale is enough to trigger the on sale bar. Furthermore,

the on sale bar is not limited to sales by the future

patentee, rather, the doctrine applies with equal force

when the invention is placed on sale by a third party.

Page 2199 F. Supp. 2d 783, *; 2001 U.S. Dist. LEXIS 23513, **1


23/38


24/38

patents. Second, defendants contend that the prior sale of

windows with the claimed invention by SealMaster itself

invalidates these patents. The issues raised have been

exceptionally well briefed by the parties [see Docs. 19,

22, 23, 24, and 25], and oral argument was heard on May

22, 2000. For the reasons that follow, defendants' motion

will be partially granted, the court concluding that there is

no genuine issue of material fact that Silver Line

manufactured and sold windows in the United States

having every feature later claimed as an invention by

SealMaster for years -- if not decades -- prior to August

10, 1987, the date of the earliest possible patent

application. 2 However, the court will reserve ruling on

that prong of defendants' motion addressing Claim 2 of

the'010 Patentpending further briefing by the parties.

1 Specifically, 35 U.S.C. 102(b) provides as

follows:

[HN1] A person shall be entitled

to a patent unless --

. . .

(b) the invention was patented

or described in a printed

publication in this or a foreign

country or in public use or on sale

in this country, more than one year

prior to the date of the application

for patent in the United States.

[**4]

2 Therefore, the court need not address the more

complicated issues raised by that prong of

defendants' motion addressing whether

SealMaster itself sold window frames having the

features claimed in the'574and '010 patentsmore

than a year prior to the date of the applicable

patent applications.

I.

The '574 and '010 patents collectively have several

independent and dependent claims. 3 The claims of both

patents define a window frame with an integral J-rail, 4

all of which is adapted to be mounted to an opening in a

window. That J-rail is defined in Claim 1 of the '010

patentas follows:

... J-rail return member integrally formed

with said window frame body member so

as to extend outward from said window

frame body member when said window

frame body member is received in the

opening, said J-rail return member having

a) a flange portion for extending

radially around the opening and for

attachment of said window frame to the

structure,

b) a projecting portion extending

away from said flange portion in a

direction perpendicular to said flange

portion, and

c) a return portion having [**5] a

proximate edge and a distal edge, saidproximate edge being connected to an

outermost extent of said projecting

portion, said return portion being

substantially parallel with said flange

portion to define a substantially

rectangularly shaped slot between said

return portion and said flange portion, said

slot having an opening at said distal edge

of said return portion for accepting siding

to be attached to the outer wall of the

structure, said return portion having a

width to cover the siding even during any

contraction of the siding, whereby said

window frame can be installed as a unit

within the opening of the structure with

minimal labor to receive at least one

window and the siding in a secure manner.

[SeeDoc. 1, Ex. 2, pp.6-7]. A J-rail is similarly defined in

Claim 1 of the '574 patent[see id., Ex. 1, p.7]. Thus, the

term [*787] J-rail is defined in its claims quite

specifically as having three members: (1) a "flange

portion"; (2) a "projecting portion"; and (3) a "return

portion."

3 Claim 1 of the '574 patentand claims 1 and 5

of the '010 patent are the independent claims.

Claims 3 and 6 of the '010 patentdepend directly

from independent claims 1 and 5. Because the

parties did not separately argue the patentability

of the dependent claims, the dependent claims

therefore "stand or fall" together with the

independent claims. See Finnegan Corp. v.

Page 4199 F. Supp. 2d 783, *786; 2001 U.S. Dist. LEXIS 23513, **3


25/38

International Trade Com'n., 180 F.3d 1354, 1365

n.7 ("The parties do not separately argue the

validity of dependent claims 2-4. These claims

therefore stand or fall together with independent

claim 1.").

[**6]

4 The J-rail is also referred to by some in the

window industry as a J-channel [see, e.g., Doc.

15, Ex. A].

According to Kendall Sayers, the Chief Manager of

SealMaster, L.L.C., 5 and president of SealMaster

Industries, Inc., the integral J-rail feature is the patented

invention being asserted against the defendants [seeDoc.

20, attachment]. An integral J-rail is simply a J-rail that is

extruded as part of the window frame. Consequently,

when the siding is installed, there is no need to use a

separate J-rail to hide the siding edges.

5 SealMaster, L.L.C., is the current owner of the

patents in suit [see Doc. 20, p.2, n.2]. Kendall

Sayers is the son of Leland Sayers, the inventor

listed on both patents.

In engineering drawings, a J-rail is typically viewed

in a cross section. Not surprisingly, that is also the

manner in which the J-rail is depicted in both of

SealMaster's patents, reproduced as follows:

[**7] [*788]

Again, as is readily apparent from the above patent

drawings, and as set forth in SealMaster's claims, a J-rail

has three structural components: (1) a nailing flange

(numbered as 54 in SealMaster's patent drawings); (2) aprojecting portion (numbered as 58); and (3) a return

portion (numbered as 62). 6

6 The court would note that the "C" shaped

portion (numbered as 84) is a cross section of a

"screw boss," which is a semi-cylindrical bore in

the sill and header that allows for attachment to

the jams, thereby making up the window frame

unit. According to Arthur Silverman, the founder

of Silver Line, the screw bosses "have no effect

on the structure or function of the J-rail." [See

Doc. 15, p.10, P 29].

A.

In support of its position that the defendants have

infringed these two patents, SealMaster relies exclusively

on a drawing in a brochure distributed by defendants [see

Doc. 1, Ex. 3]. According to SealMaster, that brochure

accurately depicts a cross section of [**8] a window

frame that has been sold by defendants in this judicial

district and elsewhere [seeDoc. 1, Ex. 3]. The drawing in

that brochure is set forth below: 7

7 The numbers and their defining parts on thedrawing have been added.

[*789]



26/38

SealMaster's comparison of the claim elements to

defendants' window is essentially as follows:

A projecting portion 58 extending away

from flange portion 54 in a direction

perpendicular thereto, and a J-rail returnmember 46 connecting to the projecting

portion 58, which together provide a

substantially rectangular-shaped slot 69

with a width sufficient to cover siding

during any contraction of the siding.

B.

In support of their position that each and every

element of the claimed invention is contained in the

invalidating prior art, defendants rely heavily on the

declaration of Arthur Silverman, Silver Line's founder

[see Doc. 15]. In his declaration, Mr. Silverman [*790]

first explains the historical background of the types of

windows [**9] at issue in this litigation. Mr. Silverman

then describes how, beginning in the late 1960s:

... Silver Line realized that its windows

were being installed in homes that had

siding of aluminum or manufactured

shingle, and there needed to be a system to

hide the rough edges of these materials.

35. Silver Line found that the

simplest, cheapest and most obvious way

to hide the edge of the siding was with an

integral J-rail. Thus, Silver Line modified

its jam, sill and header extrusion to add an

integral J-rail to the nailing flange. Silver

Line manufactured and sold windows with

such integral J-rails at least as early as the

early 1970s.

36. At least since the early 1970s,

Silver Line sold a number of windows that

incorporated such an integral J-rail. Each

of these windows were [sic] sold with anintegral J-rail that was deep enough to

accommodate various types of siding and

wide enough to allow for the expansion

and construction of the siding without

exposing its ends.

[SeeDoc. 15, pp.11-12, P34-36]. Mr. Silverman next lists

five different types of windows which incorporated that

integral J-rail feature [see id., p.12, P36]. However, Mr.

Silverman only [**10] discusses and analyzes features of

the Series 1000 Awning Window (the ATW 8 1000) and

the Series 6100 Picture Window for purposes of the

pending motion. During argument, the defendants

focused only upon the similarities between the ATW

1000 window and the patents-in-suit and utilized a

mock-up of that window for demonstrative purposes.

Because the court finds that the ATW 1000 window

anticipates SealMaster's present claims, the court will

only discuss that window.

8 ATW is an acronym for "Awning Type

Window."

The ATW 1000 window is an aluminum framed

window that pivots open from the bottom. In themock-up, a stud wall with an opening for a window was

first covered with sheathing. The window was then

installed into the opening as is done in typical new frame

construction -- by nailing or screwing through the nailing

flange, through the sheathing, and into the studs.

Mr. Silverman testifies that the mock-up of the

awning window is installed exactly the way the ATW



27/38

1000 was designed to be installed, and in the [**11] way

that the ATW 1000 was installed in homes through the

Eastern United States in the 1970s [see id., p.14, P43].

Mr. Silverman testifies further that, "the frame extrusions

leave a continuous J-rail channel around the window

opening so that when siding was placed over the

sheathing the ends of the siding were covered." [See id.].

In support of his position, Mr. Silverman points to

Silver Line's old catalogues and engineering drawings,

dated prior to August 10, 1987, 9 regarding the ATW

1000. For example, one of Silver Line's brochures from

the 1970s shows the ATW 1000 [see id., Ex. B]. Mr.

Silverman also relies on documentation reflecting prices

and sizes for the ATW 1000 [see id., pp.00153-00162].

Additionally, Mr. Silverman relies on a color brochure

for the ATW 1000 which lists awning windows "with or

without integral fin trim." [See id., Ex. C]. Mr. Silvermanthen testifies that, "the windows with the 'fin trim' were

those that incorporated a J-rail." [See id., p.16, P 48]. Mr.

Silverman relies further on drawings in the catalogues

which show the integral J-rail feature in a general view

[see id., Ex. C, p.2].

9 Again, this is the earliest possible date on

which SealMaster filed a patent application.

[**12] An even more detailed depiction is set forth

in Silver Line's engineering drawings. [*791] Mr.

Silverman testifies that he located the engineering

drawings of the ATW 1000, each of which is almost 30

years old [see id., p.17, P51]. Set forth below is an

enlargement of a portion of an engineering drawing dated

December 7, 1971, for the jamb of an ATW 1000:

According to Mr. Silverman, the above extrusion has

a "integral J-rail, comprising a nailing flange (the long

vertical line on the right), a projecting portion (the

horizontal line at the bottom), and a return portion (the

short vertical line on the left), thus creating a slot for the

insertion of siding." [See id., p.18, P 53].

Mr. Silverman's declaration next sets forth the ATW

1000 header J-rail as follows:

[*792] The following drawing represents the ATW

1000 sill J-rail:

Mr. Silverman then testifies as follows regarding the

above engineering drawings:

These engineering drawings show thatthe jamb, sill, and header extrusions for a

Series 1000 Awning Window, which was

engineered in 1971 and manufactured and

sold in the [**13] eastern United States

throughout the 1970s and early 1980s,

contained a J-rail for the insertion of

siding. Importantly, as shown in each



28/38

extrusion, the J-rail had a flange, a

projecting portion and a return portion,

which were respectively an integral part of

the jamb, an integral part of the header,

and an integral part of the sill extrusion,

thus making an integral J-rail.

[See id., p.20, P56 (emphasis in original)].

Mr. Silverman next testifies that actual windows

incorporating the J-rail were sold by Silver Line prior to

August 10, 1986 10 [see id., p.21, P57]. Mr. Silverman

specifically testifies that he contacted both distributors to

whom Silver Line sold windows and home owners who

had Silver Line's windows installed in their homes prior

to August 10, 1986 [see id., pp.21-22, PP58-61]. One of

the homeowners provides some of the most significant

testimony in this regard. Sara Gellerstein testifies that shepurchased her home on June 2, 1971, in the Township of

Berkeley, New Jersey, and that the windows and siding

of her home are original and have not been replaced [see

Doc. 14]. The corroborating declaration of James J. Bitz,

a product engineer [**14] for Silver Line, confirms that

Ms. Gellerstein's "awning" window is an ATW 1000

window and that it incorporates the "integral J-rail into

which the siding is fit." [SeeDoc. 13, p.3, P7].

10 The court assumes that Mr. Silverman meant

1987 as opposed to 1986 since August 10, 1987,

is the date of the earliest possible patent

application by SealMaster. Either way, the court's

analysis is the same.

The most compelling testimony in support of this

prong of defendants' motion is the detailed analysis by

Mr. Silverman regarding each and every element of

Claim 1 of the '574 patentand Claims 1 and 5 of the '010

patent, 11 and how every limitation [*793] of these

claims, which are alleged to read on Silver Line's current

commercial window, reads directly on the prior art. Mr.

Silverman's analysis is set forth in the claim chart

attached to defendants' original brief [seeDoc. 19, Ex. A]

12 and is further illustrated by the pictures (accompaniedby similar analysis) attached to defendants' reply brief

[see[**15] Doc. 23, Ex. A].

11 Thus, Mr. Silverman has analyzed each

element of SealMaster's independent claims.

12 Again, the court is not considering that

portion of Mr. Silverman's claim chart which

pertains to the Series 6100 picture window.

C.

In response to this proof, SealMaster does not

dispute the fact that these ATW 1000 windows were sold

prior to August 10, 1987. Nor does SealMaster dispute

the fact that these ATW 1000 windows were sold many

years prior to the date of SealMaster's earliest patent

applications regarding the '574 patentand the '010 patent

SealMaster does, however, vigorously dispute defendants'

contention that these ATW 1000 windows incorporate

integral J-rails. In support of its position, SealMaster

relies on the declaration of Kendall Sayers and Timothy

Jones. Mr. Sayers testifies generally that the ATW 1000

windows do not incorporate an integral J-rail [see Doc.

20, attachment].

Mr. Jones' testimony contributes considerable detail

supporting SealMaster's position regarding this [**16]window. Mr. Jones testifies from the vantage point of one

who has been employed in the window industry for more

than 20 years, employed by SealMaster, Inc., from 1986

to 1992 and employed by SealMaster Industries, Inc., as

general manager from 1992 to the present [see Doc. 20,

attachment, p.1-2]. 13 Mr. Jones testifies that

SealMaster's J-rail has the following features: (1) that it

directs water away from the window and permits no

leakage; (2) that it cannot have holes; (3) that the holes

cannot have screws; (4) that the J-rail windows must now

be installed without trim and caulk; and (5) that, in

addition to having flange portions extending radially

around the window opening, the corners of the window

must be covered. Mr. Jones testifies further that he has

examined the mock-up ATW 1000 window, concluding

that the ATW 1000 window does not have an integral

J-rail because of the above differences.

13 Mr. Jones has also been operating his own

business utilizing the name Preservation Windows

in Knoxville, Tennessee, from 1986 to the present

[seeDoc. 20, attachment, p.2, P6].

[**17] III.

It is well settled that, [HN2] in interpreting an

asserted claim, the court should look first to the intrinsic

evidence of record, i.e., the patent itself, including the

claims, specifications, and, if in evidence, the prosecution

history. See Markman v. Westview Instruments, Inc., 52

F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed.Cir. 1995)

(en banc),aff'd,517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed.

2d 577 (1996). "Such intrinsic evidence is the most



29/38


30/38

American Cyanamid Company, 64 F.3d 1570, 1574

(Fed.Cir. 1995). The requirements of the public use bar

of 102(b) are two-fold: (1) the completed invention

must be used in public; and (2) the use must not be

primarily experimental in purpose. Id. Here, SealMaster

does not contend that the use of the ATW 1000 window

was experimental nor does SealMaster argue that this

window was not used in public. Rather, SealMaster

primarily contends that the ATW 1000 window did not

have an integral J-rail and it is for that reason that there

was no public use.

[HN6] In discussing the concept of public use, the

law has long been established that:

... it is not necessary that more than one

of the patented articles should be publicly

used. The use of a great number may tendto strengthen the proof, but [**22] one

well-defined case of such use is just as

effectual to annul the patent as many.

Egbert v. Lippmann, 104 U.S. (14 Otto) 333, 336, 26 L.

Ed. 755 (1881) (citations omitted). See also Electric

Storage Battery Company v. Shimadzu, 307 U.S. 5, 20, 83

L. Ed. 1071, 59 S. Ct. 675 (1939)("single use" of product

for profit sufficient to invalidate); Minnesota Mining and

Manufacturing Company v. Kent Industries, Inc., 409

F.2d 99, 100 (6th Cir. 1969) ("It is settled law that a

single public use ... is sufficient to invalidate a patentunder35 U.S.C. 102(b).").

Additionally, "whether the use of an invention is

public or private does not necessarily depend upon the

number of persons to whom its use is known." Egbert,

104 U.S. at 336. The Court in Egbert explained further

that, "if an inventor, having made his device, gives or

sells it to another, to be used by the donee or vendee,

without limitation or restriction, or injunction of secrecy,

and it is so used, such use is public, even though the use

and knowledge of the use may be confined to one

person."Id.

Also [HN7] under 102(b), [**23] a patent claim is

invalid if the subject matter of the claim was "on sale" in

the United States more than a year before the effective

filing date. Like the "public use" bar, the "on sale" bar

"encourages early disclosure and prevents extension of

the statutory patent term." Intel Corporation v. U.S.

International Trade Commission, 946 F.2d 821, 830

(Fed.Cir. 1991) (citation omitted). In order to trigger the

"on sale" bar, no actual sale is necessary -- an offer to sell

is sufficient. See, e.g., King Instrument Corporation v.

Otari Corporation, 767 F.2d 853, 860 (Fed.Cir. 1985).

Consistent with the "public use" bar, a single sale or offer

for sale is enough to trigger the "on sale" bar. Intel

Corporation, 946 F.2d at 830. Furthermore, the "on sale"

bar is not limited to sales by the future patentee, i.e.,

SealMaster; rather, the doctrine applies with equal force

when the invention is placed "on sale" by a third party,

i.e., Silver Line. See J.A. LaPorte, Inc. v. Norfolk

Dredging Company, 787 F.2d 1577, 1581 (Fed.Cir.

1986)(citations omitted).

The law is also well established that [HN8] there is

no requirement that [**24] a sales offer specifically

identify all of the characteristics of an invention offered

for sale or that the parties recognize the significance of allof these characteristics at the time of the offer. See

Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378,

1383-84 (Fed.Cir. 1999). "If a product that is offered for

sale inherently possesses each of the limitations of the

claims, then the invention is on sale, whether or not the

parties to the transaction recognize that the product

possesses [*796] the claimed characteristics." Abbott

Laboratories v. Geneva Pharmaceuticals, 182 F.3d 1315,

1319 (Fed.Cir. 1999) (citations omitted). It is for that

reason that this court is not concerned that Silver Line did

not use the term "J-rail" in its literature describing the

ATW 1000 window. The critical inquiry is whether thethen so-called fin rail possessed the same characteristics

as did SealMaster's J-rail. And, as previously discussed, it

did.

Finally, [HN9] patent invalidity based on public use

is required to be proved by clear and convincing

evidence. Moleculon Research Corporation v. CBS, Inc.,

793 F.2d 1261, 1266, 229 USPQ 805, 808 (Fed.Cir.

1986), [**25] cert. denied, 479 U.S. 1030, 107 S. Ct.

875, 93 L. Ed. 2d 829 (1987). Similarly, patent invalidity

based on the on sale bar is required to be proved by clear

and convincing evidence. Intel Corporation, 946 F.2d at

830. "Clear and convincing evidence has been described

as evidence which proves in the mind of the trier of fact

an abiding conviction that the truth of [the] factual

contentions are [sic] highly probable." Id. (internal

quotations and citations omitted). "The 'clear and

convincing' standard of proof of facts is an intermediate

standard which lies somewhere between 'beyond a

reasonable doubt' and a 'preponderance of the evidence.'"



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Buildex Inc. v. Kason Industries, Inc., 849 F.2d 1461,

1463 (Fed.Cir. 1988) (internal quotations and citations

omitted).

Against this legal background, the court concludes

that the defendants have proven, by clear and convincing

evidence, that the ATW 1000 window, which embodies

each element of what SealMaster later claimed in the '574

and the'010 patents(with the exception of Claim 2 of the

'010 patent) was placed "on sale" in the United States by

Silver Line well more than a year before [**26] the

earliest possible filing date of August 10, 1987. In fact,

the proof in this case indicates that the ATW 1000

windows were sold in commercially significant

quantities. Furthermore, once the ATW 1000 windows

were installed, they were in "public use." Again, the real

question in this case is not whether the ATW 1000

window was placed "on sale" or was in "public use." Themore difficult question is whether that window embodies

each element of what SealMaster later claims in its '574

and '010 patents. For the reasons previously enunciated,

the court holds that it does.

The only remaining limitation in any of the claims of

the patents-in-suit which is not included in the earliest

Silver Line product is found in Claim 2 of the '010

patent. In view of the early dates of the ATW 1000

windows, these windows were comprised of metal and

were not constructed of vinyl. Because of this limitation,

the court will not address this claim but will allow

defendants to further brief this issue, most likely asserting

obviousness under 35 U.S.C. 103, in a subsequent

motion for summary judgment as indicated in their brief

[seeDoc. 23, p.25]. 14

14 The court recognizes that whether Claim 2 of

the '010 patent was anticipated by Silver Line's

early products has no bearing on the separate

question of whether Claim 2 of this patent was

anticipated by SealMaster's own admitted sales

more than a year before its true 1992 effective

filing date. However, because of the complexities

of the issues raised in that prong of defendants'

motion, the court will reserve ruling on that issue,

if necessary, until after SealMaster files itsanticipated motion for summary judgment

regarding Claim 2 of the '010 patent relating to

obviousness under35 U.S.C. 103.

[**27] Order accordingly.

James H. Jarvis,

UNITED STATES DISTRICT JUDGE



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Exhibit C


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1

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TENNESSEE

NORTHERN DIVISION

J-CHANNEL INDUSTRIES CORPORATION,

Plaintiff,v.

HOME DEPOT U.S.A., INC. AND

ANDERSEN CORPORATION,

Defendants.

Case No. 3:13-cv-606

PATENT CASE

JURY TRIAL DEMANDED

COMPLAINT

Plaintiff J-Channel Industries Corporation files this Complaint against Home Depot

U.S.A., Inc. and Andersen Corporation for infringement of U.S. Reissue Patent No. 40,041 (the

041 reissue patent).

THE PARTIES

1. J-Channel Industries Corporation (JCI) is a corporation organized and existingunder the laws of Delaware having an address at 900 Walt Whitman Road, Melville, NY 11747.

2. Defendant Home Depot U.S.A., Inc. (Home Depot) is a Delaware corporationwith its principal place of business in Atlanta, Georgia. Home Depot may be served with process

through its registered agent, Corporation Service Company, 2711 Centerville Road, Suite 400,

Wilmington, DE 19808.

3. Defendant Andersen Corporation (Andersen) is a Minnesota corporation withits principal place of business in Bayport, Minnesota. Andersen may be served with process

through its authorized representative in the State of Minnesota, 100 4thAvenue, North Bayport,

Minnesota 55003.

Case 3:13-cv-00606-TAV-CCS Document 1 Filed 10/09/13 Page 1 of 6 PageID #: 1


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2

4. Defendants Home Depot and Andersen are referred to collectively herein asDefendants.

JURISDICTION AND VENUE

5. This is an action for patent infringement under Title 35 of the United States Code.

6. Jurisdiction is proper in this Court pursuant to 28 U.S.C. 1331 (Federal

Question) and 1338(a) (Patents) because this is a civil action for patent infringement arising

under the United States patent statutes, 35 U.S.C. 101 et seq.

7. Venue is proper under 28 U.S.C. 1391(c) and 1400(b) because Defendants

have committed acts of infringement in this district and/or are deemed to reside in this district.

8. This Court has personal jurisdiction over Home Depot and venue is proper in this

district because Home Depot has committed acts of infringement in the State of Tennessee,

including in this district, and has engaged in continuous and systematic activities in the State of

Tennessee, including in this district. Home Depot regularly conducts business in this district and

has retail stores located in this district, including but not limited to eight locations within 25

miles of Knoxville, exemplified by a store location at 4710 Centerline Drive, Knoxville, TN

37917. Additionally, Home Depot has registered with the State of Tennessee to do business in

Tennessee and maintains an agent for service of process in Tennessee. Therefore, Home Depot

has engaged in continuous and systematic activities in this district and has purposefully availed

itself of the privileges of conducting business in this district.

9. This Court has personal jurisdiction over Andersen and venue is proper in this

district because Andersen has committed acts of infringement in the State of Tennessee,

including in this district and has engaged in continuous and systematic activities in the State of

Tennessee, including in this district. For instance, Andersen has, at a minimum, engaged in



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3

systematic activities in the State of Tennessee by virtue of its business dealings with Home

Depot. Additionally, on information and belief, Andersen markets and/or sells its window

products throughout the United States and in particular within the State of Tennessee. Therefore,

Andersen has engaged in continuous and systematic activities in this district and has

purposefully availed itself of the privileges of conducting business in this district.

COUNT I(INFRINGEMENT OF U.S. REISSUE PATENT NO. 40,041)

10. JCI incorporates paragraphs 1 through 9 herein by reference.

11. This cause of action arises under the patent laws of the United States, and in

particular, 35 U.S.C. 271, et seq.

12. The 041 reissue patent is entitled, Window Frame for Manufactured Housing.

JCI is the assignee of the 041 reissue patent with ownership of all substantial rights in the 041

reissue patent, including the right to exclude others and to enforce, sue, and recover damages for

past and future infringement. A true and correct copy of the 041 reissue patent is attached as

Exhibit 1.

13. The 041 reissue patent is valid, enforceable and was duly issued in full

compliance with Title 35 of the United States Code.

(Direct Infringement)

14. Defendants have directly infringed one or more claims of the 041 reissue patent

in this judicial district and/or elsewhere in Tennessee and the United States, including at least

claim 1, without the consent or authorization of JCI, by or through their having made, offered for

sale, and/or used products that infringe the 041 reissue patent. Defendants are thereby liable for

infringement of the 041 reissue patent pursuant to 35 U.S.C. 271.



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4

15. More particularly, Defendants have infringed at least claim 1 of the 041 reissue

patent by, among other things, having made, used, offered for sale, sold, and/or imported

windows having an integral J-Channel, including but not limited to the SilverLine by Andersen

3000 Series Double-Hung Window and the American Craftsman by Andersen 70 Double Hung

Fin Vinyl Window (Home Depot Model # 70 DH FIN). Defendants are liable for these direct

infringements of the 041 reissue patent pursuant to 35 U.S.C. 271.

16. In accordance with Fed. R. Civ. P. 11(b)(3), JCI will likely have additional

evidentiary support after a reasonable opportunity for discovery on this issue.

ADDITIONAL ALLEGATIONS PERTAINING TO PATENT INFRINGEMENTCLAIMS

17. JCI has been damaged as a result of Defendantsinfringing conduct described

herein. Defendants are, thus, liable to JCI in an amount that adequately compensates JCI for

Defendants infringements, which, by law, cannot be less than a reasonable royalty, together

with interest and costs as fixed by the Court under 35 U.S.C. 284.

JURY DEMAND

JCI hereby requests a trial by jury pursuant to Rule 38 of the Federal Rules of Civil

Procedure.

PRAYER FOR RELIEF

JCI requests that this Court find in its favor and against Defendants, and that this Court

grant JCI the following relief:

a. Enter judgment for JCI on this Complaint;b. Enter judgment that one or more claims of the 041 reissue patent has been

directly infringed by Defendants;



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5

c. Enter judgment that Defendants account for and pay to JCI all damages to andcosts incurred by JCI because of Defendants infringing activities and other

conduct complained of herein;

d. Enter judgment that Defendants account for and pay to JCI a reasonable royaltybecause of Defendants past infringing activities and other conduct complained of

herein;

e. Award JCI pre-judgment and post-judgment interest on the damages caused byDefendants infringing activities and other conduct complained of herein; and

f.

Award JCI such other and further relief as the Court may deem just and proper

under the circumstances.



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DATED: October 9, 2013 Respectfully submitted,

/s/ Van R. IrionVan R. Irion

LAW OFFICE OF VAN R. IRION, PLLC

9040 Executive Park Drive, Suite 200Knoxville, TN 37923P. 865.622.9674

F. [email protected]

Timothy E. GrochocinskiAaron W. Purser

Joseph P. OldakerINNOVALAW, P.C.

1900 Ravinia PlaceOrland Park, Illinois 60462

P. 708.675.1975F. 708.675.1786

[email protected]@[email protected]

COUNSEL FOR PLAINTIFF

J-CHANNEL INDUSTRIES

CORPORATION
mailto:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]