The Gentry Gallery appeals from the judgment of the United States District Court for the District of Massachusetts holding that the Berkline Corporation does not infringe U.S. Patent 5,064,244, and declining to award attorney fees for Gentry’s defense to Berk-line’s assertion that the patent was unenforceable.
See Gentry Gallery, Inc. v. Berkline Corp.,
30 USPQ2d 1132,
BACKGROUND
Gentry owns the ‘244 patent, which is directed to a unit of a sectional sofa in which two independent reclining seats (“recliners”) face in the same direction. Sectional sofas are typically organized in an L-shape with “arms” at the exposed ends of the linear sections. According to the patent specification, because recliners usually have had adjustment controls on their arms, sectional sofas were able to contain two recliners only *1475 if they were located at the exposed ends of the linear sections. Due to the typical L-shaped configuration of sectional sofas, the recliners therefore faced in different directions. See ‘244 patent; col. 1, 11. 15-19. Such an arrangement was “not usually comfortable when the occupants are watching television because one or both occupants must turn their heads to watch the same [television] set. Furthermore, the separation of the two reclining seats at opposite ends of a sectional sofa is not comfortable or conducive to intimate conversation.” Id. at col. 1, 11.19-25.
The invention of the patent solved this supposed dilemma by, inter alia, placing a “console” between two recliners which face in the same direction. This console “accommodates the controls for both reclining seats,” thus eliminating the need to position each recliner at an exposed end of a linear section. Id. at col. 1, 11. 36-37. Accordingly, both recliners can then be located on the same linear section allowing two people to recline while watching television and facing in the same direction. Claim 1, which is the broadest claim of the patent, reads in relevant part:
A sectional sofa comprising:
a pair of reclining seats disposed in parallel relationship with one another in a double reclining seat sectional sofa section being without an arm at one end
each of said reclining seats having a backrest and seat cushions and movable between upright and reclined positions
a fixed console disposed in the double reclining seat sofa section between the pair of reclining seats and with the console and reclining seats together comprising a unitary structure,
said console including an armrest portion for each of the reclining seats; said arm rests remaining fixed when the reclining seats move from one to another of their positions,
and a pair of control means, one for each reclining seat; mounted on the double reclining seat sofa section ....
Id. at col. 4, line 68 to col. 5,11.1-27 (emphasis added to most relevant claim language). Claims 9,10,12-15, and 19-21 are directed to a sectional sofa in which the control means are specifically located on the console.
In 1991, Gentry filed suit in the District Court for the District of Massachusetts alleging that Berkline infringed the patent by manufacturing and selling sectional sofas having two recliners facing in the same direction. In the allegedly infringing sofas, the recliners were separated by a seat which has a back cushion that may be pivoted down onto the seat, so that the seat back may serve as a tabletop between the recliners. In response to Gentry’s complaint, Berkline moved and was granted a transfer to the District of Massachusetts of its earlier-filed action in the United States District Court for the Middle District of North Carolina seeking a declaration that the patent was invalid and not infringed. After that declaratory judgment action was consolidated with Gentry’s infringement suit, Berkline added a counterclaim asserting that the patent was unenforceable because of inequitable conduct. The district court granted Berkline’s motion for summary judgment of non-infringement, but denied its motions for summary judgment of invalidity and unenforceability. In construing the language “fixed console,” the court relied on, inter alia, a statement made by the inventor named in the patent, James Sproule, in a Petition to Make Special (PTMS). See 37 C.F.R. § 1.102 (1997). Sproule had attempted to distinguish his invention from a prior art reference by arguing that that reference, U.S. Patent 3,877,747 to Brennan et al. (“Brennan”), “shows a complete center seat with a tray in its back.” Gentry I, 30 USPQ2d at 1137. Based on Sproule’s argument, the court concluded that, as a matter of law, Berkline’s sofas “eontain[ ] a drop-down tray identical to the one employed by the Brennan product” and therefore did not have a “fixed console” and did not literally infringe the patent. Id. The court held that Gentry was also “precluded from recovery” under the doctrine of equivalents. Id. at 1138.
Gentry then requested that final judgment be entered so that it could immediately appeal the non-infringement decision. Berkline
*1476
requested that its invalidity and unenforce-ability counterclaims proceed to trial on the authority of
Cardinal Chemical Co. v. Morton International, Inc.,
Gentry appeals from the decision of non-infringement and the court’s refusal to award attorney fees. Berkline cross-appeals from the decision that the claims are not invalid under §§ 103 or 112. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994).
DISCUSSION
A. Infringement
Gentry argues that the district court erred in construing the claim terms “fixed” and “console” in granting summary judgment of non-infringement. Gentry asserts that the term “fixed” merely requires that the sofa section be rigidly secured to the adjoining recliners and that the term “console” refers to any sofa section that separates two reeliners and can function as a tabletop. Accordingly, Gentry argues that on the undisputed facts it, not Berkline, is entitled to summary judgment on the issue of infringement. Berkline argues that summary judgment was properly granted because the term “fixed” requires that no part of the console be movable, while Berkline’s sofa has a center seat back that can pivot. Berkline also argues that Gentry effectively defined a center seat with a retractable seat back as not a “console” when it distinguished the Brennan reference in the PTMS. On the basis of Berk-line’s second argument, we agree that it is entitled to judgment as a matter of law that it does not infringe the ’244 patent.
We review a district court’s grant of summary judgment
de novo. See Conroy v. Reebok Int'l, Ltd.,
Because there is no dispute concerning the structure of the accused device, our infringement analysis involves only claim construction, a question of law which we review
de novo. See Markman v. Westview Instruments, Inc.,
*1477
We agree with Gentry that the term “fixed” requires only that the console be rigidly secured to its two adjacent reeliners. The term “fixed” and the explanatory clause “with the console and reclining seats together comprising a unitary structure” were added during prosecution to overcome a rejection based on a sectional sofa in which the seats were not rigidly attached. Thus, because the term “console” clearly refers to the complete section between the reeliners, the term “fixed” merely requires that the console be rigidly attached to the reeliners. Moreover, Berkline’s interpretation of the term “fixed” unnecessarily excludes from the claim Sproule’s preferred embodiment, in which the console can be opened by pivoting its lid.
See Vitronics Corp. v. Conceptronic, Inc.,
However, Berkline’s sofas do not have a “console.” The prosecution history indicates that the term “console” is not met by a sofa section having a seat back that folds down to serve as a table top, as in Brennan’s seat or Berkline’s sofas. As noted by the district court, Sproule’s PTMS distinguished the Brennan reference in the following passage: *
Even if one were to apply the disclosure of reclining vehicle seats such as Brennan ... to furniture, one would not produce the pair of reclining seats joined by a center console as taught by [Applicant], The tray units of Brennan ... while disposed between tandem reclining vehicle seats, are freestanding retractable structures that are not, per se, consoles nor do they join the pair of reclining seats as taught by Applicant. Rather Brennan shows a complete center seat with a tray unit in its bach
Gentry I,
30 USPQ2d at 1137 (emphasis added). This statement unambiguously indicates that the tray units in Brennan are not “consoles” as that term is used in the patent, regardless of the term’s ordinary meaning or the way in which Gentry now urges us to interpret it. The relevant feature of Berk-line’s sofas,
viz.,
a center seat back that may be folded down to provide a table top between the adjacent reeliners, is indistinguishable from the comparable feature in Brennan, a fold-down tray table. In the PTMS, that feature was distinguished from the claimed “console.” Thus, we conclude that Berkline’s sofas do not contain the claimed “console.”
See Ekchian v. Home Depot, Inc.,
B. Invalidity
In its cross-appeal, Berkline first argues that all of the claims of the patent are invalid under § 103 as having been obvious, based on the combination of U.S. Patent 4,668,009 (“Talley”), which discloses an armless reeliner with a push-button control on its side, and an industry-standard sectional sofa ensemble developed by Kanowsky. Berkline asserts that “[a]nyone who set out to provide a side-by-side reeliner configuration as in the ‘244 patent would recognize that all that was required was to replace the inside armless
*1478
chair with an armless recliner.” Berkline also argues that the district court clearly erred in finding that “the Talley recliner would be completely inappropriate for use in the sectional arrangement,”
Gentry II,
We agree with Gentry that Berkline has not overcome the statutory presumption of validity,
see
35 U.S.C. § 282 (1994), by proving facts that clearly and convincingly show that the claimed invention would have been obvious at the time the invention was made. On appeal from a bench trial, we review the legal conclusion of non-obviousness
de novo,
and the factual inquiries underlying that conclusion for clear error.
See B.F. Goodrich Co. v. Aircraft Braking Sys. Corp.,
Contrary to Berkline’s argument, the mere possibility that the Talley and Kanow-sky references could have been combined is insufficient to demonstrate that the claimed invention would have been obvious because, as noted above, the invention of the patent requires a “fixed console” between the recliners, which neither Talley nor Kanowsky provided. Moreover, even if the claimed invention did only involve the physical insertion of Talley’s free-standing recliner into Kanowsky’s sectional sofa, such simplicity alone is not determinative of obviousness.
See In re Oetiker,
Berkline also argues that claims 1-8, 11, and 16-18 are invalid because they are directed to sectional sofas in which the location of the recliner controls is not limited to the console. According to Berkline, because the patent only describes sofas having controls on the console and an object of the invention is to provide a sectional sofa “with a console ... that accommodates the controls for both the reclining seats,” ‘244 patent, col. 1, 11. 35-37, the claimed sofas are not described within the meaning of § 112, ¶ 1. Berkline also relies on Sproule’s testimony that “locating the controls on the console is definitely the way we solved it [the problem of building sectional sofa with parallel reeliners] on the original group [of sofas].” Gentry responds that the disclosure represents only Sproule’s preferred embodiment, in which the controls are on the console, and therefore supports claims directed to a sofa in which the controls may be located elsewhere. Gentry relies on
Ethicon Endo-Surgery, Inc. v. United States Surgical Corp.,
We agree with Berkline that the patent’s disclosure does not support claims in which the location of the recliner controls is other than on the console. Whether a specification complies with the written description requirement of § 112, ¶ 1, is a question of fact, which we review for clear error on appeal from a bench trial.
See Vas-Cath Inc. v. Mahurkar,
It is a truism that a claim need not be limited to a preferred embodiment. However, in a given case, the scope of the right to exclude may be limited by a narrow disclosure. For example, as we • have recently held, a disclosure of a television set with a keypad, connected to a central computer with a video disk player did not support claims directed to “an individual terminal containing a video disk player.”
See id.
(stating that claims directed to a “distinct invention from that disclosed in the specification” do not satisfy the written description requirement);
see also Regents of the Univ. of Cal. v. Eli Lilly & Co.,
In this case, the original disclosure clearly identifies the console as the only possible location for the controls. It provides for only the most minor variation in the location of the controls, noting that the control “may be mounted on top or side surfaces of the console rather than on the front wall ... without departing from this invention.” ‘244 patent, col. 2, line 68 to col. 3, line 3. No similar variation beyond the console is even suggested. Additionally, the only discernible purpose for the console is to house the controls. As the disclosure states, identifying the only purpose relevant to the console, “[a]nother object of the present invention is to provide ... a console positioned between [the reclining seats] that accommodates the controls for both of the reclining seats.” Id. at col. 1,11. 33-37. Thus, locating the controls anywhere but on the console is outside the stated purpose of the invention. Moreover, consistent with this disclosure, Sproule’s broadest original claim was directed to a sofa comprising, inter alia, “control means located upon the center console to enable each of the pair of reclining seats to move separately between the reclined and upright positions.” Finally, although not dispositive, because one can add claims to a pending application directed to adequately described subject matter, Sproule admitted at trial that he did not consider placing the controls outside the console until he became aware that some of Gentry’s competitors were so locating the recliner controls. Accordingly, when viewed in its entirety, the disclosure is limited to sofas in which the recliner control is located on the console.
Gentry’s reliance on
Ethicon
is misplaced. It is true, as Gentry observes, that we noted that “an applicant ... is generally allowed claims, when the art permits, which cover more than the specific embodiment shown.”
Ethicon,
*1480
Similarly,
In re Rasmussen
does not support Gentry’s position. In that case, our predecessor court restated the uncontroversial proposition that “a claim may be broader than the specific embodiment disclosed in a specification.”
In sum, the cases on which Gentry relies do not stand for the proposition that an applicant can broaden his claims to the extent that they are effectively bounded only by the prior art. Rather, they make clear that claims may be no broader than the supporting disclosure, and therefore that a narrow disclosure will limit claim breadth. Here, Sproule’s disclosure unambiguously limited the location of the controls to the console. Accordingly, the district court clearly erred in finding that he was entitled to claims in which the reeliner controls are not located on the console. We therefore reverse the judgment that claims 1-8, 11, and 16-18, were not shown to be invalid.
C. Attorney Fees
Finally, Gentry argues that its success in overcoming Berkline’s accusations of inequitable conduct entitles it to a partial award of attorney fees under 35 U.S.C. § 285 (1994) (“The court in exceptional cases may award reasonable attorney fees to the prevailing party.”). Thus, Gentry asserts that the district court abused its discretion in refusing to consider an appropriate award of attorney fees. We do not agree.
The requirements for awarding attorney fees under section 285 are that “(1) the case must be exceptional, (2) the district court may exercise its discretion, (3) the fees must be reasonable, and (4) the fees may be awarded only to the prevailing party.”
Machinery Corp. of Am. v. Gullfiber AB,
CONCLUSION
The district court’s judgment holding that Berkline does not infringe the ‘244 patent, that the patent claims are not invalid under § 103 as obvious, and that Gentry is not entitled to attorney fees is affirmed. However, because the district court clearly erred in finding that the disclosure of the ‘244 patent describes a sectional sofa in which the location of the reeliner controls is not limited to the console, we reverse the decision that *1481 claims 1-8, 11, and 16-18 were not shown to be invalid under § 112, ¶ 1.
COSTS
No costs.
AFFIRMED-IN-PART and REVERSED-IN-PART.
Notes
Gentry asserts that Sproule distinguished the Brennan reference on several other grounds. Such an observation is not relevant to our analysis of the prosecution history, for even if Brennan was distinguished on multiple grounds, any of those grounds may indicate the proper construction of particular claim terms and provide independent bases for prosecution history estoppel.