## Facts

- Gentry Gallery owned U.S. Patent No. 5,064,244 (the “’244 patent”) directed to a unit of a sectional sofa with two independent reclining seats facing the same direction.
- The specification described a problem with prior sectional sofas: recliner controls were typically placed on the recliner arms, so sectional designs could place recliners only at exposed ends, often leaving recliners facing different directions and separated by distance.
- The ’244 patent’s disclosed solution placed two recliners side-by-side in the same direction, separated by a fixed center console, with controls for the recliners located on the console.
- The written description and drawings portrayed the console as the location for the controls; the disclosure did not describe alternative control locations as part of the invention.
- During prosecution, Gentry distinguished prior art by characterizing the invention in terms of a fixed console and console-mounted controls, contrasting designs with arm-mounted controls.
- Berkline sold sectional sofas with two recliners facing the same direction, but used a pivoting seat back that could function as a table top rather than a fixed center console, and located controls in places not limited to a fixed console.
- In the District of Massachusetts, the court granted summary judgment of noninfringement, rejected Berkline’s invalidity and unenforceability defenses (including inequitable conduct), and denied Gentry’s request for attorney fees.
- Gentry appealed noninfringement and denial of fees; Berkline cross-appealed on invalidity.

## Issues

1. Whether Berkline’s sectional sofas infringed the asserted ’244 patent claims, either literally or under the doctrine of equivalents, given the claim limitations concerning a fixed console and control placement.
2. Whether certain asserted claims were invalid for lack of written description under 35 U.S.C. § 112, ¶ 1 because they were broad enough to cover recliner controls located somewhere other than the console.
3. Whether Berkline proved the asserted claims invalid as obvious under 35 U.S.C. § 103.
4. Whether the district court abused its discretion by denying Gentry attorney fees under 35 U.S.C. § 285 after Gentry defeated the unenforceability/inequitable-conduct charge but lost on infringement.

## Decision

- Affirmed summary judgment of noninfringement.
- Reversed the district court’s validity ruling as to certain broader claims, holding them invalid for failure to satisfy the written description requirement of § 112, ¶ 1.
- Affirmed the district court’s determination that Berkline did not prove obviousness under § 103.
- Affirmed denial of attorney fees to Gentry under § 285.

## Legal Principles

- Claim construction considers the claim language in view of the specification and prosecution history; statements made to obtain allowance can restrict claim scope in infringement disputes.
- The doctrine of equivalents cannot extend claim scope to recapture subject matter surrendered during prosecution.
- Written description under 35 U.S.C. § 112, ¶ 1 requires the specification to convey to a person of ordinary skill that the inventor possessed the full scope of the claimed invention at filing.
- Claims may be no broader than the supporting disclosure; where the disclosure identifies a feature as part of the invention as described, claims that omit that feature may fail written description.
- Obviousness under § 103 is based on underlying factual determinations; an appellate court will generally defer to supported findings.
- Attorney fees under § 285 are discretionary and reviewed for abuse of discretion; losing on infringement can matter to prevailing-party status and whether the case is “exceptional.”

## Conclusion

The Federal Circuit affirmed that Berkline’s sofas did not infringe the ’244 patent when the claims were read in light of the specification and prosecution history, affirmed that Berkline did not carry its burden to prove obviousness, reversed the district court on written description by invalidating broader claims that extended beyond the disclosure’s console-based control placement, and affirmed the denial of attorney fees to Gentry.


Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998)