IN THE UNITED STATES DISTRICT COURT
FOR THE _________ DISTRICT OF ______________ (Name of State)
_______________ (Name of Division)
Plaintiff’s Pretrial Memorandum
TABLE OF CONTENTS
TABLE OF AUTHORITIES Page _____
INTRODUCTION Page _____
STATEMENT OF THE CASE Page _____
ARGUMENT Page _____
A. The Determination of Infringement is a Two-Step Process.
B. The First Step is to Construe the Meaning and Scope of the Claims.
C. The "Tool" Claims (Claim 36 of the ____________ Patent and Claim 24 of the
____________ Patent) are Directly Infringed by the Thick paper Disc Manufactured and
Sold by __________________ (Name) .
CONCLUSION Page _____
EXHIBITS
Exhibit A Identification of Plaintiff’s Trial Exhibits 1–22, Contained in a Separate
Volume
Exhibit B Identification of Plaintiff’s Witnesses
Exhibit C Stipulated Facts
Exhibit D Plaintiff’s Proposed Findings of Facts and Conclusions of Law
INTRODUCTION
The sole issue in this case is whether the Defendant’s manufacture and sale of a
triangular piece of thick paper specifically shaped to fit on the end of a polisher
marketed by the Plaintiff is an infringement of Plaintiff’s U.S. Patent No. 0001 , issued
_________________ (date) , hereinafter called the 01 Patent, Plaintiff’s Trial Exhibit 1,
and U.S. Patent No. 0002, issued ______________ (date) , hereinafter called the 02
Patent, the ____________ Patent), Plaintiff’s Trial Exhibit 2. These Patents have claims
which cover not only a moveable polisher, but also a "tool" for use with the polisher
which works (or polishes) in the corner between a planar surface and two adjacent
upright walls and along an edge of one upright surface and the adjacent planar surface.
The 02 Patent is a continuation of the 01 Patent , and as such is entitled to the same
filing date. The 01 Patent has the same disclosure as the 02 Patent, but has claims of
different breadth and scope. Both Patents will expire co-terminally to avoid any issue of
double Patenting or unauthorized extension of the monopoly. (See Joint Statement of
Stipulated Facts, Plaintiff’s Trial Exhibit 12, No. 8.)
The thick paper manufactured and sold by defendant is identical in every respect
to paper mounted on the end of Plaintiff’s polisher as the working or abrading element.
There is no dispute as to this fact. Defendant’s president, _______________ (Name) ,
testified to this at his deposition along with Defendant’s Patent expert,
___________________ (Name) (Plaintiff’s Trial Exhibit 16, _______________ (Name)
Dep. at 14–18; Plaintiff’s Trial Exhibit 17, __________________ (Name) Dep. at 11).
________________ (Name) , Plaintiff’s expert witness, who as President of
_________________ (Name) , of address, has manufactured custom abrasive products
for over 16 years, will also confirm this at trial.
The only dispute which arises is whether (1) Defendant’s abrasive material
mounted on the end of Plaintiff’s polisher comes directly within the scope of certain
claims charged to be infringed, i.e., claim 36 of the ____________ Patent and claim 24
of ____________ Patent as the "tool" defined thereby and (2) contributorily infringes
certain other claims, i.e., Claim 50 of the 01 Patent and Claim 30 of the 02 Patent
under 35 U.S.C.A. § 217(c) as being a component of the patented polisher constituting
a material part of the invention; the same being especially adapted for use in a direct
infringement of such Patent and as a separately Patented component not being a staple
article of commerce suitable for substantial non-infringing use.
Validity of the 01 and 02 Patents is conceded by Defendant, as long as the
claims charged as an infringement are not interpreted by the Court to read on the prior
art Patents to _______________ (Name) (U.S. Patent No. _______) cited by the Patent
Office during the prosecution of the 01 and 02 Patents and _______________ (Name)
(U.S. Patent No. _______) cited during the prosecution of the 01 Patent. (See Joint
Statement of Stipulated Facts, Plaintiff’s Trial Exhibit 11, Nos. 10 and 23.)
STATEMENT OF THE CASE
Plaintiff’s expert witness, _____________ (Name) , will testify that Claim 36 of the 01
Patent and Claim 24 of the 02 Patent cover a sanding tool, and a piece of thick paper is
one form of such tool. He will testify that it is common in the polishing business to refer
to Thick paper and abrasive articles which work to refine a surface as "tools." In fact,
________________ (name) , the German counterpart of _______________ (Name) ’s
U.S. company utilizes the term " Polierer " on its letterhead, which literally translated
means "polishing tools ".
__________________ (Name of Witness) will testify, as indicated, that the
Defendant’s thick paper is identical to that used by Plaintiff itself with its patented
polisher. __________________ (Name of Witness) will demonstrate the configuration
and operation of such thick paper when used in combination with a power polisher. To
summarize, the thick paper is specifically designed in that there are three corners, each
of less than 90°, formed by straight edge portions adjacent each corner (so the paper
and its supporting polisher can be placed to work on a planar surface between two
upright walls, or a corner) with the straight edge portions adjacent each corner joined by
convex side edges. The convex side edges, when abutted against an adjacent upright
wall cause the thick paper disc to sand along the juncture of the wall and a planar (flat)
surface adjacent the wall in the direction of the region of the paper adjacent the edge,
rather than bounce off perpendicular to the upright wall with no or little polishing action.
This would be the case if a straight edge was used along the junction of the upright
surface and planar surface. In fact, this is one of the serious deficiencies with the prior
art to ________________ (Name) (U.S. ____________) cited by the Patent and
Trademark Office during the prosecution of the 01 Patent. ___________________
(Name) (U.S. _______), on the other hand, cited during the prosecution of the 02
Patent , does not have a planar working surface or corners of less than 90° to effect
polishing as per the present invention.
This polishing action relating to certain novel features of ________________
(Name) 's thick paper or "tool," e.g., the convex side edges, is described in detail in an
amendment presented to the U.S. Patent and Trademark Office filed on or about
_________________ (date) , which resulted in allowance of the claims of the 01 Patent.
A copy of the relevant portions of this amendment has been pre-marked as Plaintiff’s
Trial Exhibit 10, and the manner in which the paper (tool) operates will be confirmed by
_______________ (Name of Witness) . A complete copy of the amendment can be
found in the Prosecution History of the 01 Patent , which has been pre-marked as
Plaintiff’s Trial Exhibit 3.
To deal with the objections the Examiner raised in his last, outstanding Office
Action, Applicants have prepared a drawing enclosed as Exhibit 5. Figure 1 of Exhibit
5 shows a top view onto a tool T polishing the surface S of a work piece with an edge E.
The tool T has corners C and side edges SE extending between corners C. The
side edges SE are bent outwardly or convex so that tool T, in action, abuts on edge E
with its middle, outwardly bent part M of the side edge SE.
If tool T now performs an oscillating pivoting movement with pivot axis PA as the
axis of rotation, moving within an angle in the region of about 7° as indicated by dashed
lines in the upper right corner C, it can be seen from the arrows that the direction of
movement of both corners C adjacent to edge E has a major component perpendicular
to edge E and a minor component parallel to edge E whereas the direction of movement
of the middle region M of side edge E of the tool T abutting edge E has a major
component parallel to edge E and a negligible component perpendicular to edge E.
Also, the dashed lines show that the outwardly bent middle region M of side edge SE
prevents corners C adjacent to edge E from bouncing against edge E and that the fact
that the middle region M of the side edge SE of tool T abuts on edge E does not have
the effect that tool T is accelerated in a direction perpendicular to edge E during the
oscillating motion of the tool with pivot axis PA as the axis of rotation. Figure 3 shows a
cross section along lines 3-3 of the arrangement in Figure 1. As can be seen from
Figure 3, tool T abrades mainly with its working surface WS acting on surface S of the
work piece. This should not, however, exclude the fact that side edges SE, in addition to
working surface WS, can also abrade a work piece if tool T is used in a special field, in
which it would also be of advantage to abrade edge E of the work piece.
Comparing Figures 1 and 2 of Exhibit 5, it can be seen immediately that the
outwardly bent region M of side edge SE in tool T is important to avoid any bouncing of
corners C against edge E.
This is exactly the situation described in the last paragraph of page 3 of the
specification which discloses the fact that when the outermost region (M) of the curve
abuts against the inside longitudinal edge (E) and executes, with its oscillatory motions,
a movement oriented parallel to this inside longitudinal edge (E), the tool T can be
guided along this inside longitudinal edge (E) without being struck away from it
whereas, with a straight side edge (according to Figure 2), the front and rear regions of
the side edge (the regions close to corners C' adjacent edge E) would strike
perpendicularly against the inside longitudinal edge during the oscillatory motion of tool
(T') and, hence, would also accelerate the polishing tool (T) away from this longitudinal
inside edge (E).
By means of the special shape of the tool, this swinging motion with a small
angle allows polishing along side edges. Thus, it should now be evident, by virtue of the
convex side edges, the tool is guided along an inside longitudinal edge, as described in
the last paragraph, on page 3 of the specification. [Grounds of Rejection, item 1(a).]
With regard to whether the tool works upon the inside longitudinal edge [Grounds
of Rejection, item 1(d)], this can be answered by studying Exhibit 5 and Exhibit 3. In
general, the tool works with its working surface WS and abrades surface S of the work
piece, hereby being guided by edge E.
This should not, however, exclude use of a tool which may also be provided with
polishing material on the edges so that the tool polishes surface S of the work piece as
well as edge E.
It should be noted that this amendment arguing the Patentable novel features of
the "tool" of the polisher illustrates a piece of thick paper , with a working surface that
polishes surface S which is guided by its edge E. It is clear that the tool T is the
polishing element.
Since the thick paper of ________________ (name) and ________________
(name) are identical, _______________ (name) will also read claim 24 of the 01 Patent
and claim 36 of the 02 Patent on the accused thick paper, using the same terminology
employed in Figure 1 of the above amendment. A synopsis follows of the direct
infringement analysis for claim 36 of the 02 Patent and claim 24 of the 01 Patent , with
the referenced drawing following both claim charts:
Patent; Claim 36 Claim Elements
Corresponding Structure in ________________ (Name) Triangular Thick Paper
36. Polishing tool for a polisher with drive means for pivotally oscillating said
polishing tool about a pivot axis, comprising tool (T) a working surface with a plurality of
side edges meeting to form at least one corner having an angle of less than 90°,
working surface (WS) has a plurality of side edges (SE) meeting to form at least one
corner (C) having an angle of about 89 degrees; wherein regions along said side edges
are exposed such that the side edge regions can work along an inside edge along the
junction of two surfaces angled relative to each other. Regions (ER) along side edges
(SE) are exposed such that the regions (ER) can work along the junction of two
surfaces (S-1 and S-2) angled relative to each other.
Patent; Claim 24 Claim Elements
Corresponding Structure in ___________________ (Name) Triangular Thick Paper
24. A polishing tool for a polisher with drive means for oscillatingly moving said
polishing tool, comprising tool (T) a working surface with a plurality of side edges
meeting to form at least one corner region and working surface (WS) has a plurality of
side edges (SE) meeting to form at least one corner region (C); regions along said side
edges being exposed such that the side edge regions can work along an inside edge
along the junction of two surfaces angled relative to each other and regions (ER) of
working surface along the side edges (SE) are exposed such that the regions (ER) work
along an inside edge (E) along the junction of two surfaces (S-1and S-2) angled relative
to each other; having a convex outwardly bent configuration adjoining the region of the
corner the regions (ER) have a convex outwardly bent configuration adjoining the region
of corner (C); wherein the side edges are of straight-line configuration in the region of
the corner. But the side edges (SE) are of straight line configuration (L) in the region of
corner (C).
Claim 50 of the 01 Patent and claim 30 of the 02 Patent will also be read on the
infringing paper being used in combination with an oscillating polisher of any
manufacturer, e.g., ________________ (name) or ____________ (name) , to show
contributory infringement by sale of the "tool" (paper) for such infringing use, as with
reference to the drawing which follows, as follows:
Patent; Claim 50 Claim Elements (Contributory Infringement)
Corresponding Structure in _________________ (Name) Triangular Thick Paper
when used in combination with power polisher
50. A moveable polisher comprising power polisher (G) a housing; housing (H)
a polishing or polishing tool having a first working surface with a plurality of side edges
meeting to form at least one corner; and tool (T) having a working surface (WS) with a
plurality of side edges (SE) meeting to form at least one corner region (C); drive means,
supported in said housing for pivotally oscillating said polishing tool about a pivot axis,
said pivot axis intersecting said polishing tool in a central region thereof; drive means
(D) for oscillating the tool (T) about a pivot axis (PA) in a central region (CR) of the tool
(T)
and wherein regions of said polishing tool along said side edges are exposed such that
the side edge regions can work along an inside longitudinal edge along the junction of
two surfaces angled relative to each other and having a convex outwardly bent
configuration adjoining said corner regions (ER) of the tool (T) along the side edges
(SE) are exposed such that the regions (ER) work along an inside edge (E) along the
junction of two surfaces (S-1 and S-2) angled relative to each other and the regions
(ER) have a convex outwardly bent configuration adjoining the region of the corner (C).
Patent; Claim 30 Claim Elements (Contributory Infringement)
Corresponding Structure in ___________________ (Name) Triangular Thick Paper
when used in combination with power polisher
30. A moveable polisher comprising power polisher (G) a housing; housing (H)
a polishing or polishing tool having a first working surface with a plurality of side edges
meeting to form at least one corner region having an angle less than 90°; and
tool (T) having a working surface (WS) with a plurality of side edges (SE) meeting to
form at least one corner region (C); drive means, supported in said housing for
oscillatingly moving said polishing tool; drive means (D) for oscillating the tool (T)
wherein regions of said polishing tool along said side edges are exposed such that the
side edge regions can work along an inside longitudinal edge along the junction of two
surfaces angled relative to each other and having a convex outwardly bent configuration
adjoining said corner region, and wherein said side edges adjoining said corner are
straight regions (ER) of the tool (T) along the side edges (SE) are exposed such that the
regions (ER) work along an inside edge (E) along the junction of two surfaces (S-1 and
S-2) angled relative to each other and the regions (ER) have a convex outwardly bent
configuration adjoining the region of the corner (C), and the side edges adjoining the
corner are straight (L).
A copy of _________________ (Name) ’s statement has been pre-marked as
Plaintiff’s Trial Exhibit 14 and will be offered in evidence at the trial. Finally, the Patent
itself confirms that thick paper per se can be the subject of the "tool claims," namely,
claim 24 of the 01 Patent and for claim 36 of the 02 Patent.
Figures 9 to 11 of both Patents illustrate an embodiment of the invention wherein
the tool 3 is defined as consisting of a polishing element 9 (the thick paper) and a
support member or plate 8 for connecting it to the polisher. See, for example, column 7,
lines 21–26, of the 01 Patent. The working elements of the tool are on the polishing
element, i.e., the planar working surface, the convex edges and corners of less than 90°
and side edge regions for abutting the upright wall to sand adjacent the wall. The
working elements of the "tool" are all on the thick paper. Thus in this embodiment of the
Patent it is clear that the thick paper is the tool.
________________ (Name) , Defendant’s own Patent expert, admits that Figures 9
through 11 of the 01 and 02 Patents include a polishing element 9 and that the claim(s)
relating to the tool (e.g., claim 24 of 02 Patent) "read" on and thus cover that element.
(Plaintiff’s Trial Exhibit 17, ______________ (Name) Dep. at 65–67.) Both Messrs.
__________________ (Name) and _______________ (Name) acknowledge that the
polishing element 9 can be a piece of thick paper. (Plaintiff’s Trial Exhibit 17, name Dep.
at 28, line 7; Plaintiff’s Trial Exhibit 16, _________________ (Name) Dep. at 49, line 19
through 50, line 3.)
As noted, the claims reflect this disclosure. Claim 36 of the 02 Patent and claim 24 of
the 01 Patent call for "a tool for a polisher with drive means for oscillatingly moving said
polishing tool, comprising a working surface with a plurality of side edges meeting to
form at least one corner region and regions along said side edges being exposed such
that the side edge regions can work along an inside edge along the junction of two
surfaces angled relative to each other and having a convex outwardly bent configuration
adjoining the region of the corner wherein the side edges are of straight-line
configuration in the region of the corner". The word comprising is not meant to be all
inclusive in Patent practice, but relates to the Patentable features of the tool, per se, all
of which are on the polishing element or thick paper evidencing that the intent of the
inventor was to define the "tool" of the invention as including the unique thick paper. As
more precisely put by ________________ (Name) , "comprises means includes one or
the other" of any element depicted as the tool. (Plaintiff’s Trial Exhibit 17,
__________________ (Name) Dep. at 30, line 24.) Would there be any question that
the thick paper was the "tool" if it were inflexible, thicker, or had a backing?
It is also important to reiterate that the Patent and Trademark Office was
apprised during the prosecution of the 01 Patent that the "tool" was essentially no more
than a piece of thick paper with the special shape and features disclosed and claimed in
the application. In the amendment of Plaintiff’s Trial Exhibit 10, the "tool T" is referred to
as being no more than a planar triangular shaped disc which abuts the work surface
and has corners of less than 90° and convex edges. (See Figure 1 thereof.) There is no
mystery as to what the tool comprises and the Patent and Trademark Office was well-
apprised of this fact, i.e., that a Thick paper abrasive disc was essentially the claimed
working tool.
Finally, the term "tool" is defined as: "the cutting or shaping part in a machine"!
Webster's New Collegiate Dictionary 1230 (1973). This is the precise use of the thick
paper implement of the ________________ (Name) polisher. Thus, the ordinary
meaning of "tool" encompasses the thick paper of the present invention.
ARGUMENT
A. The Determination of Infringement is a Two-Step Process
In accordance with ______________________________ (citations omitted) ,
infringement is determined by a two-step analysis. In the first step, the claims, including
terms of art within the claims, are interpreted by the court, as a matter of law. In the
second step, the claims are applied to the accused device by the trier of fact.
B. The First Step is to Construe the Meaning and Scope of the Claims
Thus, in determining literal infringement, the first step is to construe the claims. A
claim is construed in the light of the claim language, the other claims, the prior art, the
prosecution history, and the specification, not in light of the accused device.
_________________________________________________ (citations omitted) . It is
an error to interpret a claim with reference to the accused device, and it is only after the
claims have been construed without reference to the accused device that those claims
are applied to the accused device to determine infringement. _____________________
___________________________ (citations omitted) . The prosecution history gives
insight as to what the applicant originally claimed as the invention and often what the
applicant gave up in order to meet the examiner's objections. _____________________
_____________________________________ (citations omitted) . If the prosecution
history of a Patent is introduced into evidence, the court, in interpreting the claims of the
Patent, should consider it. ________________________________________________
___________________ (citations omitted) .
Statements and arguments made during prosecution are used to ascertain the
meaning of the terms in the claims since such statements shed light on what the
applicant intended by the terms. The Patent and Trademark Office Examiner need not
have relied upon such statements to make them relevant for claim interpretation
purposes. ____________________________________________________________
(citations omitted) . Further, the claims can be construed by extrinsic evidence
provided by those skilled in the art. _________________________________________
_______________ (citations omitted) . The terms in a claim are to be given their
ordinary meaning to one of skill in the art unless it appears from the Patent and file
history that the terms were used differently by the inventors. ______________________
_____________________________________________________ (citations omitted) .
By every one of these standards, the term "tool" as used in claims 36 and 50 of the 01
Patent and claim 24 of the 02 Patent clearly encompasses and covers a polishing
element such as thick paper.
1. The specification of each Patent defines the "tool" 3 in at least one
embodiment (Figs. 9 to 11) as a support plate 8 and a polishing element 9 having the
requisite working configuration of the thick paper sold by the Patentee for mounting on
the polisher shown in the Patents. The claims call for the tool as " comprising " … a
working surface … and a side edge region adjacent an edge. . . ." Such a working
surface appears only on the polishing element 9, or thick paper, in the embodiment of
Figs. 9 to 11 in the specification. The Defendant’s own witnesses read the claim(s) on
and admit they could cover a piece of specially-shaped thick paper. The term
"comprising" as used in the claims is not defined to be all-inclusive of each operating
part of the "tool," but rather, the term permits the inclusion of unspecified elements of
the "tool," e.g., the support for the abrasive. __________________________________
______________________ (citations omitted) . Therefore, the claim can merely define
the novel portions or features of the workable "tool," all of which in this case are found
on the abrasive/polishing element or thick paper. The thick paper polishing element is
therefore within the encompassing language of the claim.
It is inconceivable or at the very least, unlikely, that an inventor would define an
invention in a way that would exclude a preferred embodiment, or that persons of skill in
this field would read the specification in such a way. ____________________________
_______________________ (citations omitted) . Such would be the case, if the
interpretation of the "tool" would exclude what is shown in Figs. 9 through 11, which
shows essentially, a thick paper/polishing disc. That the claims were intended to cover
this embodiment is also confirmed by the inventor, __________________ (Name) , and
stands irrefutable. (See Ans. to Interrogatories orally propounded to the German
Inventor ___________________ (Name) in Germany by defendant, Nos. 54, 55, 56,
Plaintiff’s Trial Exhibit 15 hereto.)
2. With regard to those skilled in the art, the term "tool" as ______________
(Name) will testify to, clearly encompasses Thick paper or another polishing element,
such as a polishing wheel. Evidence to this effect merely need be found in the
letterhead of ___________________________ (Name) . Just because thick paper is
flexible does not make it any less a "tool."
3. The file or prosecution history of the 01 Patent gives clear insight as to
what the Patentee meant by the term "tool." In the amendment of November 16, 1985,
the Patentee argued that the "tool" (T) (a planar thick paper disc) illustrated therein
distinguished from the cited prior art (See Plaintiff’s Trial Exhibit 10, pp. 13–17) and how
a straight edged disc would not operate properly to polish the edge or junction of a
planar and upright surface. On pages 13 and 16 the "tool" is clearly referred to as
"polishing" the surface S of a workpiece with an edge E and has a working surface WS
which abrades surface S. The tool T is illustrated as substantially planar or
undimensional. This can only be a piece of thick paper in the context of the invention.
As stated by ___________________ (Name) during his deposition: "A sheet of paper
only has one surface. It's a one-dimensional surface." (Plaintiff’s Trial Exhibit 17,
___________________ (Name) Dep. at 70, lines 20–21.)
4. Further, the ordinary meaning of the term "tool" as defined by the
dictionary is: "the cutting or shaping part in a machine." Webster’s New Collegiate
Dictionary 1230 (1973). This is the thick paper disc in the context of a polisher.
5. Finally, an analysis of other claims in each Patent supports Plaintiff’s
contention that the term "tool," as used in claim 36 of the 02 Patent and claim 24 of the
01 Patent, clearly encompasses thick paper per se. When the inventors intended to
define a tool, T, to include both a polishing element, such as thick paper, and a support
member, they clearly did so. See, for example, claim 7 of the 01 Patent. It is clear that
the "tool" was to encompass a thick paper disc with working surfaces as defined by the
claims.
C. The "Tool" Claims (Claim 36 of the 02 Patent and Claim 24 of the 01 Patent)
are Directly Infringed by the Thick Paper Disc Manufactured and Sold by AAA.
The Supreme Court, in __________________________________________________
(citations omitted) set forth the following guidelines to determine whether literal (direct)
infringement is present. "In determining whether an accused device or composition
infringes a valid Patent, resort must be had in the first instance to the words of the
claim. If the accused matter falls clearly within the claim, infringement is made out and
that is the end of it." _____________________________________________________
(citations omitted) . The Federal Circuit also has described the process of determining
literal infringement, stating:
The claims of the Patent provide the concise formal definition of the
invention. They are the numbered paragraphs which "particularly (point)
out and distinctly [claim] the subject matter which the applicant regards as
his invention." _____________________________________________________
(citations omitted) . It is to these wordings that one must look to determine whether
there has been infringement.
"These wordings" of a claim describe and point out the invention by a series of
limiting words or phrases (limitations). In the determination of infringement, the words of
the claim must first be interpreted, …..and, as properly interpreted, they must be "read
on" the accused structure to determine whether each of the limitations recited in the
claim is present in the accused structure. _____________________________________
_______________________________ (citations omitted) .
Thus, literal infringement may be found if the accused device falls within the
scope of the asserted claims as properly interpreted. ___________________________
__________________________ (citations omitted) . There is no issue here. According
to __________________ (Name) and even AAA's own president, _________________
(Name) , the AAA and BBB paper are identical in shape and use. As such, claim 24 of
the 01 Patent and claim 36 of the 02 Patent clearly "read" on the BBB paper. Thus,
there is direct or literal infringement of these claims.
D. The Sale of the BBB Thick Paper Contributorily Infringes at Least Some of the
Polisher Claims of the Patents
§ 271(c) of 35 U.S.C. states: “Whoever offers to sell or sells within the United
States or imports into the United States a component of a patented machine,
manufacture, combination or composition, or a material or apparatus for use in
practicing a patented process, constituting a material part of the invention, knowing the
same to be especially made or especially adapted for use in an infringement of such
Patent, and not a staple article or commodity of commerce suitable for substantial non-
infringing use, shall be liable as a contributory infringer.”
Claim 50 of the 01 Patent and claim 30 of the 02 Patent covers a polisher
including the combination of a polishing tool and a drive for the polisher. The thick paper
disc manufactured and sold by BBB is specifically intended for use in combination with
either a AAA or ____________________ (Name) polisher (Plaintiff’s Trial Exhibit 16,
__________________ (Name) Dep. at 14, line 24 through p. 15, line 14). Each is an
oscillating polisher having a head reciprocally mounted about a pivot axis as called for
in claim 50 of the 01 Patent or claim 30 of the 02 Patent. Since the paper or tool used
in the Patented combination is separately Patented per se in claims 24 and 36 of the 01
Patent and 02 Patent , respectively, it cannot be a "staple article of commerce suitable
for substantial non-infringing use." _________________________________________
(citations omitted) . Thus, when used in combination, the thick paper and polisher is a
direct infringing end use of the polisher of claim 50 of the 01 Patent and claim 30 of the
02 Patent.
CONCLUSION
For the foregoing reasons, the tool of claim 24 of the 01 Patent and claim 36 of
the 02 Patent embraces a thick paper disc and such claims are directly infringed by the
manufacture and sale of BBB's Thick paper disc provided with corners of less than 90°
and convex side edges providing regions along the edges for polishing along the
juncture of an upright and planar (flat) surface. Claim 50 of the 01 Patent and claim 30
of the 02 Patent , relating to the combination of an oscillating polisher and sanding tool,
likewise are contributorily infringed by such sale.
Respectfully submitted,
_________________________
(Name of Plaintiff)
By: _______________________________
(Name of Plaintiff’s Attorney)
State Bar No. _____________
His Attorney
OF COUNSEL:
_________________________
(Name of Plaintiff’s Attorney)
Post Office Box ____________
__________________________________
(City, State, Zip Code)
Telephone: _________________
CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the foregoing PLAINTIFF’S
PRETRIAL MEMORANDUM was mailed by over-night mail, postage prepaid, this
____________________ (date) to:
__________________________
(Name of Attorney)
_______________________________________
(Post Office Box No. or Street Address)
_______________________________________
(City, State, Zip Code)
This the ____ day of ________, 20_______.
Respectfully Submitted,
________________________
(Printed Name of Attorney)
________________________
(Signature of Attorney)
Plaintiff’s Attorney
State Bar No. ____________
OF COUNSEL:
__________________________
(Name of Attorney)
_______________________________
(Post Office Box or Street Address)
_______________________________
(City, State, Zip Code)
Telephone: ________________
