NOTE: This disposition is nonprecedential.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States District Court for the Western District of Washington Senior Judge Thomas S. ZillyNOTE: This disposition is nonprecedential.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 Limit ed (“TAL”) appeal the judgment of the Western District of Washington that TA L 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 atto rney’s fees and costs, that claim 18 of the ’779 Patent is invalid for failure to disclose the best mode, and thatEsquel Apparel, Inc. and Esquel Enterprises Limited (“Es quel”) 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 conduc t and exceptional case and remand . We affirm the invalidity of claim 18, and the finding of non-infringement of cl aims 18, 25 and 26. Each party will bear its own costs. I. John Wong invented a new seam for “was h-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, H ong-Kong-based TAL Apparel, Wong was inspired to try a similar s eam in dress shirts. He obtained various sample adhesive tapes from Vilene and tried t hem 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 su ccessful, and on May 17, 1994, Wong filed an application for patent protecti on for his invention. After the initial filing but before its first office acti on, Wong filed an information disclosure statement with t he PTO, including another TAL produced raincoat seam incorporating bonding elements and a publish ed German application of Felix Robers that produced a seam similar to the inspirat ional raincoat seam. He did not however present the seam from this original raincoat to the PTO at any time. Additionally, he

2007-1506 2never 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, al so based in Hong Kong. In 2001, aware of the ’779 Patent, Esquel decided to produc e pucker-free wash-and-wear shirts using adhesive in the seams. It purchased adhes ives 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 declara tory judgment of n on-infringement and invalidity of the ’779 Patent in the Western District of Washington. The next day, TALtech sued Esquel for infringement of t heir ’779 Patent in t he 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. Pa tent 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 creati ng the garment seam including the adhesive bonding element, a “set” stitch, and a “top” st itch. Claim 17 adds an additional set stitch. Claim 18 adds that st ep (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 dr ess shirt armhole”, while clai m 26 adds the additional stitch of claim 17. Esquel’s accused seam employs two adhe sive tape components, each of which is formed into a U-shape with one compon ent affixed around the armhole edge of a sleeve, and the other com ponent affixed around the armhole edge of the shirt body

2007-1506 3panels. The folding of a portion of a sleeve o ccurs 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 co mes between the two garment components being mated, with the lower surface of the bondi ng element directly contacting the upper surface of the body panel occu rring 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 t hen 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 co mmitted inequitable conduct durin g the prosecution of the ’779 Patent for failing to disclose the inspir ational 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 th at Esquel’s seams did not infringe claim 18. II. To support a finding of inequitable conduc t, there must be clear and convincing evidence that the applicant made an affirmative misrepresentation of material fact, failed to disclose material informati on, 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 4examiner would have c onsidered the information important in deciding whether to allow the application to issue as a patent. Honeywell Int’l Inc. v. Un iversal 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 disc losed 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 ex aminer 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 i t. TAL argues that t he undisclosed raincoat seam was merely cumulative to the Germa n 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 conc lusions of law, this issue was preserved for appeal. If the undisclosed raincoat seam was merely cu mulative to Robers, then no inequitable conduct lies in its nondisclosure. Esquel also argues that TAL has misled th is 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 th e entire sequence is compared, it is clear that the Robers sequence is a distinctly different method from the method of t he ’779 Patent. Be that as it may, the similarity of t he 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 un disclosed raincoat seam, thus negating

2007-1506 5inequitable conduct. We also va cate the order of attorney fees under 35 U.S.C. § 285 because the district court based its conclusion that this was an except ional 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 disclosi ng in the specification the preferred use of Vilene SL33 as the adhesive when he knew it at the ti me of filing. We have set out a two-pronged test for determini ng whether an invent or has met the best mode requirement. “First, the factfinder must determine whether, at the time of filing the application, the inventor possessed a bes t 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 fo cuses on the inventor’s stat e of mind at the time of filing. Id. “Second, if the inventor posse ssed 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 cl aimed invention and the level of skill in the art. Id. Because whether an inventor has met t he 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 t hat 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 se ttled on using Vilene S L33, and contemplated only using Vilene SL33 as t he bonding element. It found t hat this was the compound he

2007-1506 6had determined worked best at the time of his application because it was the only compound he contemplated us ing 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 t he inventor experimented with many adhesives but settled on a preference for one, we find no clear erro r in the district court’s determination that the inventor posse ssed 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 t he Vilene products offered better qualities than other brands, and that th e PTO prefers the use of gener ic names of products. This, however, is not the proper inquiry. The district court correctly determined that the best mode found when analyzing the first pr ong was not present in the written description. TAL has not explained how t he written description teaches one having reasonable skill in the art the wa y to practice the best mode as found in the analysis of the first prong – the use of Vile ne SL33. There is no clear error in the district court’s finding that the written description did not in clude the best mode as found in the first
prong. IV. Even if claim 18 were not invalid for faili ng to satisfy the best mode requirement, we agree with the district cour t that Esquel has not infri nged 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 7so a claim with many steps can be infrin ged by an accused pr ocess 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 lo gic 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 distri ct 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 hav ing 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 com ponent over the bonding element such that the upper surface of the first garment compo nent is folded over and abuts an upper surface of the bonding element; (e) folding a portion of the second ga rment component such that a lower surface of the second ga rment 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 pres ence of the b onding element because, in order to fold a por tion of the second garment co mponent such that its lower surface abuts the lower surface of the bonding el ement 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. Th e district court found that Esquel’s method practices neither the “placing” lim itation of step (b), nor the “fol ding” limitation of step (e). TAL has not challenged thes e factual findings on appeal.

2007-1506 8V. 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 co ntact. It argues that neither the specification nor a dictionary definition requires to uching 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” descr ibes two surfaces that are in direct contact with each other. The sp ecification, drawings and claims all st ate that the lower surface of the first garment component is t ouching the upper surf ace of the second garment component with direct contact. They also all state that in the completed seam, the bonding element is touchi ng 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 s upports the conclusion that “abuts” carries its ordinary meaning of touching. We reject TAL’s argument that “abut s” contemplates an intervening adhesive between abutting elements. In support, it points to the specification which reads: “Preferably, the bonding element 32 compri ses an adhesive web which flows during ironing onto the abutting surfaces of the garment components to create a very strong bond between the garm ent components along the ga rment seam 12.” ’779 Patent at col. 6, ll. 1-5 (emphasis supplied by TAL.) Upon inspection, the abutting

2007-1506 92007-1506 10 surfaces described in the excerpt are thos e surfaces of the bonding element that directly touch the upper surface of the firs t 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 garm ent 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 consist ent with this language. The adhesive is not flowing between the two ga rment components, leaving their direct contact intact. We affirm the c onstruction of the district court. Turning to infringement, we again agree with the district court t hat 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 se am under this construction also cannot infringe claim 25 under the doctrine of equivalent s because to do so would read the abutting limitation out of the claim. Therefore, there is no infringement.