NOTE: This disposition is nonprecedential. 

United States Court of Appeals for the Federal Circuit 

2007-1506 

TALTECH LIMITED 

and TAL APPAREL LIMITED, 

Plaintiffs-Appellants, 

v. 

ESQUEL APPAREL, INC. 

and ESQUEL ENTERPRISES LIMITED, 

Defendants-Appellees. 

William K. West, Jr., Howrey LLP, of Washington, DC, argued for plaintiffsappellants. With him on the brief were Pamela S. Kane and Jim W. Ko. 

Thomas H. Shunk, Baker & Hostetler LLP, of Washington, DC, argued for 

defendants-appellees. With him on the brief were Gary J. Rinkerman and A. Neal 

Seth. 

 

Appealed from: United States District Court for the Western District of Washington 

Senior Judge Thomas S. Zilly 
NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit 

 

 

2007-1506 

 

TALTECH LIMITED 

and TAL APPAREL LIMITED, 

 Plaintiffs-Appellants, 

 

v. 

ESQUEL APPAREL, INC. 

and ESQUEL ENTERPRISES LIMITED, 

 

 Defendants-Appellees. 

Appeal from the United States District Court for the Western District of Washington in 

case no. 04-CV-974, Senior Judge Thomas S. Zilly. 

______________________ 

DECIDED: May 22, 2008 

_______________________ 

Before MAYER, BRYSON and GAJARSA, Circuit Judges. 

PER CURIAM. 

TALtech Limited and TAL Apparel Limited (“TAL”) appeal the judgment of the 

Western District of Washington that TAL committed inequitable conduct in the 

prosecution of U.S. Patent No. 5,568,779 (’779 Patent) and that this was an exceptional 

case under 35 U.S.C. § 285 warranting the award of attorney’s fees and costs, that 

claim 18 of the ’779 Patent is invalid for failure to disclose the best mode, and that 
Esquel Apparel, Inc. and Esquel Enterprises Limited (“Esquel”) did not infringe claims 

18, 25, and 26 of the ’779 Patent. TALtech Ltd. V. Esquel Apparel, Inc., No. 2:04-CV00974 (W.D. Wash. July 13, 2007). Because the district court did not determine 

whether disclosed prior art was merely cumulative to withheld prior art, we vacate the 

finding of inequitable conduct and exceptional case and remand. We affirm the 

invalidity of claim 18, and the finding of non-infringement of claims 18, 25 and 26. Each 

party will bear its own costs. 

I. 

John Wong invented a new seam for “wash-and-wear” dress shirts that solved 

the problem of puckering when laundered. After seeing a seam employing heat-fusible 

adhesive tapes on a raincoat produced by his employer, Hong-Kong-based TAL 

Apparel, Wong was inspired to try a similar seam in dress shirts. He obtained various 

sample adhesive tapes from Vilene and tried them in his seam. After many trials with 

the various adhesives, he eventually settled on a preference for Vilene SL33 and 

produced a shirt that did not pucker appreciably after a standard set of washings. 

Shirts produced with this seam became successful, and on May 17, 1994, Wong filed 

an application for patent protection for his invention. 

After the initial filing but before its first office action, Wong filed an information 

disclosure statement with the PTO, including another TAL produced raincoat seam 

incorporating bonding elements and a published German application of Felix Robers 

that produced a seam similar to the inspirational raincoat seam. He did not however 

present the seam from this original raincoat to the PTO at any time. Additionally, he 

2007-1506 2
never disclosed his then preference for Vilene SL33 as the preferred adhesive. On 

October 29, 1996, the ’779 Patent issued and was later assigned to TALtech. 

Esquel is a competing manufacturer, also based in Hong Kong. In 2001, aware 

of the ’779 Patent, Esquel decided to produce pucker-free wash-and-wear shirts using 

adhesive in the seams. It purchased adhesives from Bemis, another supplier of 

adhesive tapes, and subsequently received U.S. Patent No. 7,013,818 for their seam. 

On April 29, 2004, Esquel sought a declaratory judgment of non-infringement and 

invalidity of the ’779 Patent in the Western District of Washington. The next day, 

TALtech sued Esquel for infringement of their ’779 Patent in the Eastern District of 

Texas. The two suits were consolidated in the Western District of Washington. In 

response to an order to reduce the number of asserted claims, TALtech asserted claims 

18, 25, and 26, and certain claims of U.S. Patent No. 5,590,615, a continuation of the 

’779 Patent, not at issue in this appeal. 

Claim 18 is a method claim dependent on independent claim 1 and dependent 

claim 17, reciting the steps to creating the garment seam including the adhesive 

bonding element, a “set” stitch, and a “top” stitch. Claim 17 adds an additional set 

stitch. Claim 18 adds that step (e) must occur before step (c). Claims 25 and 26 both 

depend from product claim 20, which describes the finished seam. Claim 25 adds that 

the seam is a “seam of a dress shirt armhole”, while claim 26 adds the additional stitch 

of claim 17. 

Esquel’s accused seam employs two adhesive tape components, each of which 

is formed into a U-shape with one component affixed around the armhole edge of a 

sleeve, and the other component affixed around the armhole edge of the shirt body 

2007-1506 3
panels. The folding of a portion of a sleeve occurs prior to the placing of the body panel 

adjacent to the sleeve, thereby positioning the U-shaped tape along the seam. In the 

resulting seam, the U-shaped adhesive comes between the two garment components 

being mated, with the lower surface of the bonding element directly contacting the upper 

surface of the body panel occurring at the time the tape is sewn to the armhole edge of 

the body panel. 

The district court construed thirteen terms of the patents-in-suit, and in summary 

judgment found claims 25 and 26 not literally infringed, and claim 25 not infringed under 

the doctrine of equivalents. The court then held a bench trial and on March 9, 2007, 

entered findings of fact and conclusions of law finding the ’779 Patent neither 

anticipated nor obvious in view of the prior art. However, the court found that claim 18 

was invalid because Wong had not disclosed the best mode in the use of Vilene SL33. 

And it found that Wong had committed inequitable conduct during the prosecution of the 

’779 Patent for failing to disclose the inspirational raincoat seam, and that the case was 

exceptional under 35 U.S.C. § 285 in part because of the inequitable conduct. It 

awarded attorneys fees to Esquel. Finally, the court concluded that Esquel’s seams did 

not infringe claim 18. 

II. 

To support a finding of inequitable conduct, there must be clear and convincing 

evidence that the applicant made an affirmative misrepresentation of material fact, failed 

to disclose material information, or submitted false material information, intending to 

deceive the PTO. Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir. 

2007). Information is material if there is a substantial likelihood that a reasonable 

2007-1506 4
examiner would have considered the information important in deciding whether to allow 

the application to issue as a patent. Honeywell Int’l Inc. v. Universal Avionics Sys. 

Corp., 488 F.3d 982, 1000 (Fed. Cir. 2007). 

In this case, the district court found TAL liable for inequitable conduct because 

inventor John Wong had not disclosed the raincoat seam that inspired his invention to 

the PTO. However, an inventor is not required to disclose the object or article that 

inspired his invention, only material that a reasonable examiner would have considered 

important. If the material is cumulative to other disclosed material, as a matter of law, 

the inventor is not obligated to disclose it. TAL argues that the undisclosed raincoat 

seam was merely cumulative to the German application of Robers, which was disclosed 

in the initial filing. Esquel argues that this argument was not raised below. Because 

TAL raised the issue in both its pretrial motion for summary judgment and in the 

proposed findings of fact and conclusions of law, this issue was preserved for appeal. If 

the undisclosed raincoat seam was merely cumulative to Robers, then no inequitable 

conduct lies in its nondisclosure. 

Esquel also argues that TAL has misled this court by not presenting the entire 

sequence of Robers’ method to compare against the sequence as described by the ’779 

Patent. It argues that when the entire sequence is compared, it is clear that the Robers 

sequence is a distinctly different method from the method of the ’779 Patent. Be that as 

it may, the similarity of the two methods is a matter of fact which we can not discern 

from the record. Therefore, we vacate the determination of inequitable conduct and 

remand the case to the district court to determine whether Robers was, as TAL 

suggests, merely cumulative to the undisclosed raincoat seam, thus negating 

2007-1506 5
inequitable conduct. We also vacate the order of attorney fees under 35 U.S.C. § 285 

because the district court based its conclusion that this was an exceptional case at least 

in part upon its finding of inequitable conduct. 

III. 

The district court found claim 18 invalid because the inventor failed to satisfy the 

best mode requirement of 35 U.S.C. § 112 by not disclosing in the specification the 

preferred use of Vilene SL33 as the adhesive when he knew it at the time of filing. We 

have set out a two-pronged test for determining whether an inventor has met the best 

mode requirement. “First, the factfinder must determine whether, at the time of filing the 

application, the inventor possessed a best mode for practicing the invention.” Eli Lilly 

and Co. v. Barr Labs., Inc., 251 F.3d 955, 963 (Fed. Cir. 2001) (citing Chemcast Corp. 

v. Arco Indus. Corp., 913 F.2d 923, 927-28 (Fed. Cir. 1990)). This involves a subjective 

inquiry whereby the factfinder focuses on the inventor’s state of mind at the time of 

filing. Id. “Second, if the inventor possessed a best mode, the factfinder must 

determine whether the written description disclosed the best mode such that one 

reasonably skilled in the art could practice it.” Id. This involves an objective inquiry 

focused on the scope of the claimed invention and the level of skill in the art. Id. 

Because whether an inventor has met the best mode requirement is a matter of 

fact, we review the decision of the district court for clear error. The district court 

examined the inventor and found that at the time of filing, he believed that the bonding 

element formed an integral part of the present invention. The court also found that after 

experimenting with other adhesives, he settled on using Vilene SL33, and contemplated 

only using Vilene SL33 as the bonding element. It found that this was the compound he 

2007-1506 6
had determined worked best at the time of his application because it was the only 

compound he contemplated using in his invention. TAL argues that there is no best 

mode, and that the invention requires simply “a quantity of adhesive sufficient to flow 

over the garment surfaces as described” and that various commercially available fusible 

adhesives will work. However, because the inventor experimented with many 

adhesives but settled on a preference for one, we find no clear error in the district 

court’s determination that the inventor possessed a best mode at the time of filing. 

In satisfaction of the second prong, the district court found that the written 

description failed to disclose the use of Vilene SL33 as the bonding element. TAL 

responds that there was no evidence that the Vilene products offered better qualities 

than other brands, and that the PTO prefers the use of generic names of products. 

This, however, is not the proper inquiry. The district court correctly determined that the 

best mode found when analyzing the first prong was not present in the written 

description. TAL has not explained how the written description teaches one having 

reasonable skill in the art the way to practice the best mode as found in the analysis of 

the first prong – the use of Vilene SL33. There is no clear error in the district court’s 

finding that the written description did not include the best mode as found in the first 

prong. 

IV. 

Even if claim 18 were not invalid for failing to satisfy the best mode requirement, 

we agree with the district court that Esquel has not infringed it. Claim 18 of the ’779 

Patent is a method claim depending on claim 1, adding a requirement that step (e) of 

claim 1 is performed before step (c). Generally, there is no presumption of order, and 

2007-1506 7
so a claim with many steps can be infringed by an accused process performing the 

claimed steps in any order. However, we will find that the claim requires an ordering of 

steps when the claim language, as a matter of logic or grammar, requires that the steps 

be performed in the order written, or the specification directly or implicitly requires such 

a narrow construction. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369-70 (Fed. 

Cir. 2003) (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1343 

(Fed. Cir. 2001)). As the district court found, claim 18 is one such claim. The district 

court found that steps (d) and (e) of claim 18 must be performed after step (b). These 

relevant steps of claim 18 are as follows: 

(b) placing a bonding element having at least a thermal adhesive 

component along the seam such that a lower surface of the bonding 

element abuts an upper surface of the first garment component; 

. . . 

(d) folding the first garment component over the bonding element such 

that the upper surface of the first garment component is folded over and 

abuts an upper surface of the bonding element; 

(e) folding a portion of the second garment component such that a lower 

surface of the second garment component abuts the lower surface of the 

bonding element 

The logic and grammar of the claim make the requirement of an order clear. We 

agree with the district court that step (e) requires the presence of the bonding element 

because, in order to fold a portion of the second garment component such that its lower 

surface abuts the lower surface of the bonding element as required by step (e), the 

bonding element must already be in place, for it is placed in step (b). We therefore 

affirm the district court’s construction. The district court found that Esquel’s method 

practices neither the “placing” limitation of step (b), nor the “folding” limitation of step (e). 

TAL has not challenged these factual findings on appeal. 

2007-1506 8
V. 

TAL also asserts that the district court misconstrued claims 25 and 26, and that 

this resulted in a finding of non-infringement; specifically, that the term “abuts” requires 

touching and having direct contact. It argues that neither the specification nor a 

dictionary definition requires touching when two objects “abut,” but that the definition of 

abuts includes, but does not require, touching or direct contact. But the specification, 

the drawings, and the language of claims 18, 25, and 26 compel the conclusion that in 

this context “abuts” means “touching.” 

In every instance of the word, “abuts” describes two surfaces that are in direct 

contact with each other. The specification, drawings and claims all state that the lower 

surface of the first garment component is touching the upper surface of the second 

garment component with direct contact. They also all state that in the completed seam, 

the bonding element is touching both the upper surface of the first garment component 

and the lower surface of the second garment component with direct contact. In other 

words, the bonding element abuts both the first garment component and the second 

garment component. This intrinsic evidence supports the conclusion that “abuts” carries 

its ordinary meaning of touching. 

 We reject TAL’s argument that “abuts” contemplates an intervening adhesive 

between abutting elements. In support, it points to the specification which reads: 

“Preferably, the bonding element 32 comprises an adhesive web which flows during 

ironing onto the abutting surfaces of the garment components to create a very 

strong bond between the garment components along the garment seam 12.” ’779 

Patent at col. 6, ll. 1-5 (emphasis supplied by TAL.) Upon inspection, the abutting 

2007-1506 9
2007-1506 10

surfaces described in the excerpt are those surfaces of the bonding element that 

directly touch the upper surface of the first garment component and the lower surface of 

the second garment component. They are not, as TAL suggests, the abutting lower 

surface of the first garment component and upper surface of the second garment 

component. 

In fact, as Esquel correctly points out, the only time the patent directly describes 

a garment component abutting another garment component, the two components touch 

without an intervening element: “a portion of said upper surface of the second garment 

component abuts a lower surface of the first garment component along the seam.” ’779 

Patent at col. 8, ll. 19-24. The drawings are consistent with this language. The 

adhesive is not flowing between the two garment components, leaving their direct 

contact intact. We affirm the construction of the district court. 

Turning to infringement, we again agree with the district court that Esquel’s seam 

does not literally infringe claims 25 and 26 as construed, because Esquel places a 

bonding element between the first and second garment components, thus avoiding the 

abuts limitation. The Esquel seam under this construction also cannot infringe claim 25 

under the doctrine of equivalents because to do so would read the abutting limitation out 

of the claim. Therefore, there is no infringement.