Silver Line Building Products v. J-Channel Industries

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NEW YORK

- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - X
SILVER LINE BUILDING PRODUCTS
LLC,
Plaintiff,
v.
J-CHANNEL INDUSTRIES
CORPORATION,
Defendant.
:
:
:
:
:
:
:
:
:
:
:
:
Civil Action No. _________________
JURY TRIAL DEMANDED
- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - X

COMPLAINT

Plaintiff Silver Line Building Products LLC (Silver Line) for its complaint
against Defendant J-Channel Industries Corporation (JCI), states as follows:
NATURE OF THE ACTION
1. This is a civil action arising under the Federal Declaratory Judgment Act,
28 U.S.C. 2201-2202. Plaintiff Silver Line seeks a declaration that its windows,
including the Silver Line 3000 Series Double-Hung Window (Silver Line 3000 Series
Window) and the American Craftsman 70 Double Hung Fin Vinyl Window (Home
Depot Model # 70 DH FIN) (American Craftsman 70 Series Window) do not
infringe and that U.S. Reissued Patent No. RE40,041 (the 041 reissue patent) patent is
invalid and unenforceable, under the patent laws of the United States, 35 U.S.C. 1, et
seq., and for such other relief as the Court deems just and proper. A copy of the 041
reissue patent is attached as Exhibit A.
2

THE PARTIES
2. Plaintiff Silver Line is a Delaware limited liability company with its
principal place of business at One Silver Line Drive, North Brunswick, New Jersey
08902.
3. Upon information and belief, Defendant JCI is a Delaware corporation
with its principal place of business at 900 Walt Whitman Road, Melville, NY 11747.
4. Upon information and belief, Defendant JCI claims to own the 041 reissue
patent, but JCI does not practice any claims of the 041 reissue patent.
JURISDICTION AND VENUE
5. This action arises under the Declaratory Judgment Act, 28 U.S.C. 2201
and 2202, and the Patent Laws of the United States, Title 35 of the United States Code.
6. This Court has subject matter jurisdiction over this action pursuant to
28 U.S.C. 1331 and 1338(a).
7. This Court has personal jurisdiction over Defendant JCI because JCIs
principal place of business is in Melville, NY and JCI transacts business in the State of
New York.
8. Venue is proper in this Judicial District pursuant to 28 U.S.C. 1391 and
1400(b). Further, venue is proper in this Judicial District because JCIs principal place of
business is in Melville, NY and JCI transacts business in this Judicial District.

3

FACTUAL BACKGROUND
9. Plaintiff Silver Lines business began in 1947. Silver Line has been a
pioneer in the design and manufacture of windows and doors and is a national leader
in the manufacturing of vinyl windows and doors.
10. Silver Line manufactures and sells the Silver Line 3000 Series Window
and the American Craftsman 70 Series Window.
11. Defendant JCI claims to own the 041 reissue patent.
12. The041 reissue patent is a reissue patent of U.S. Patent No. 5,660,010 (the
010 patent).
13. Silver Line used Silver Lines prior art windows with a J-channel to
successfully invalidate the 010 patent in litigation filed by the previous assignee of the
010 patent, Sealmaster, L.L.C. in the Eastern District of Tennessee. Sealmaster, L.L.C. v.
Silver Line Building Products Corp., 199 F. Supp. 2d 783 (E.D. Tenn. 2001), aff'd, 32 Fed.
Appx. 587, 2002 WL 519811 (Fed. Cir. 2002). A copy of the district court decision is
attached as Exhibit B.
14. The 041 reissue patent has expired.
15. After the expiration of the 041 reissue patent, and more than ten years
after Silver Line invalidated the 010 patent, on October 9, 2013, Defendant JCI filed a
lawsuit in the Eastern District of Tennessee against Andersen Corporation and The
Home Depot U.S.A., Inc., Case No. 3:13-cv-00606-TAV-CCS, alleging that Silver Lines
3000 Series and 70 Series windows directly infringed at least claim 1 of the 041 reissue
patent. A copy of JCIs Complaint is attached as Exhibit C.
4

16. The Silver Line 3000 Series and American Craftsman 70 Series
Windows accused of infringement in a lawsuit filed on October 9, 2013 are
manufactured, marketed and sold by Silver Line, not Andersen Corporation.
17. Silver Lines windows do not infringe any valid claim of the 041 reissue
patent.
18. In view of JCIs allegations regarding Silver Lines windows asserted
against Andersen Corporation in the pending litigation in the Eastern District of
Tennessee (Case No. 3:13-CV-00606) and the history of past litigation, there is an actual,
substantial, and justiciable controversy between Silver Line and JCI regarding the
alleged infringement, validity, and enforceability of the 041 reissue patent and Silver
Lines intervening rights.
19. A declaration of rights between the parties is necessary to establish that
Silver Line does not infringe any valid claim of the 041 reissue patent, that the patent is
invalid and unenforceable and that Silver Line has intervening rights.

CAUSES OF ACTION
Count I Declaratory Judgment of Invalidity
20. Silver Line repeats and realleges the allegations contained in paragraphs 1
through 19.
21. The claims of the 041 reissue patent are invalid for failure to satisfy one or
more of the conditions for patentability specified in Title 35 of the United States Code,
including without limitation 101, 102, 103, and/or 112.
5

22. Silver Line is entitled to entry of judgment pursuant to 28 U.S.C. 2201
and 2202 declaring that the 041 reissue patent is invalid.
Count II Declaratory Judgment of Non-infringement
through 22.
24. Silver Line does not infringe any valid claim of the 041 reissue patent.
and 2202 declaring that Silver Line does not infringe any valid claim of the 041 reissue
patent.
Count III Declaratory Judgment of Unenforceability
through 25.
27. The 041 reissue patent has expired and JCI is not entitled to any damages
or relief under the patent laws of the United States, 35 U.S.C. 1, et seq.
28. The 041 reissue patent is unenforceable under the doctrines of laches,
waiver and/or estoppel.
and 2202 declaring that the 041 reissue patent is unenforceable.
Count IVDeclaratory Judgment of Intervening Rights
through 29.
6

31. Silver Line is entitled to entry of judgment that it has absolute and
equitable intervening rights under the 041 Reissue patent pursuant to 35 U.S.C. 252.
DEMAND FOR JURY TRIAL
Pursuant to Fed. R. Civ. P. 38(b), Plaintiff Silver Line demands a trial by jury on
all issues so triable.
REQUEST FOR RELIEF
Plaintiff Silver Line requests that the Court enter a judgment:
A. Declaring that the claims of U.S. Reissued Patent No. RE40,041 are invalid;
B. Declaring that Silver Line does not infringe any valid claim of U.S.
Reissued Patent No. RE40,041;
C. Declaring that the U.S. Reissued Patent No. RE40,041 is unenforceable.
D. Declaring that Silver Line is not liable to JCI by virtue of Silver Lines
intervening rights.
E. Finding that this is an exceptional case under 35 U.S.C. 285 and awarding
Silver Line its reasonable attorney fees, expenses, and costs incurred in this action.
F. Such other and further relief as this Court may deem just and proper.

Dated: New York, New York Robins, Kaplan, Miller & Ciresi L.L.P.
November 26, 2013
By: /s/Annie Huang
Ronald J. Schutz
Annie Huang
601 Lexington Ave., Suite 3400
New York, NY 10022
Tel: (212) 980-7400
7

Fax: (212) 980-7499
rjschutz@rkmc.com
ahuang@rkmc.com
Attorneys for Plaintiff Silver Line Building
Products LLC

Exhibit A

111111111111111111111111111111111111111111111111111111111111111111111111111
USOORE40041E
(19) United States
c12) Reissued Patent
Sayers
(10) Patent Number: US RE40,041 E
(45) Date of Reissued Patent: *Feb. 5, 2008
(54) WINDOW FRAME FOR MANUFACTURED
HOUSING
(75) Inventor: Leland D. Sayers, Knoxville, TN (US)
(73) Assignee: Sealmaster, L.L.C.
( *) Notice: This patent is subject to a terminal dis-
claimer.
(21) Appl. No.: 10/219,573
(22) Filed: Aug. 15, 2002
Related U.S. Patent Documents
Reissue of:
(64) Patent No.:
Issued:
Appl. No.:
Filed:
U.S. Applications:
5,660,010
Aug. 26, 1997
08/347,907
Dec. 1, 1994
(63) Continuation of application No. 07/934,257, filed on Aug.
25, 1992, now Pat. No. 5,392,574, which is a continuation-
in-part of application No. 07/570,818, filed on Aug. 22,
1990, now abandoned, which is a continuation-in-part of
application No. 07/338,306, filed on Apr. 17, 1989, now
abandoned, which is a continuation-in-part of application
No. 07/083,255, filed on Aug. 10, 1987, now Pat. No.
4,747,753.
(51) Int. Cl.
E06B 1126
E06B 1136
(2006.01)
(2006.01)
(52) U.S. Cl. ..................... 52/217; 52/204.5; 52/204.55;
52/204.56; 52/210; 52/211; 52/213; 49/DIG. 2
(58) Field of Classification Search ................... 52/217,
52/213, 204.55, 204.56, 204.5, 210, 211,
52/656.5; 49/DIG. 2
See application file for complete search history.
(56) References Cited
U.S. PATENT DOCUMENTS
2,326,549 A 8/1943 Miller
DE
DE
2,454,523 A
2,718,291 A
1111948 Philip
9/1955 Goldberg
(Continued)
FOREIGN PATENT DOCUMENTS
2539383
1960024
3/1976
10/1977
OTHER PUBLICATIONS
Alcan Building Products, A lean Thermally Superior Weath-
erbuffer, 1980.
Silverline Building Products, Silverline 1600 S/H.
Sentinel Aluminum & Schelenberg Industries, Aluminum
Windows for Metal Buildings.
Remington, Remington Door.
Alcan Building Products, Sunview Aluminum Window and
Door System, Oct. 10, 1983.
(Continued)
Primary Examiner-Jeanette E. Chapman
(74) Attorney, Agent, or Firm-Wood, Herron & Evans,
L.L.P.
(57) ABSTRACT
A window frame construction particularly useful in a manu-
factured housing unit to provide a structure for receiving and
supporting at least one window and to provide coverage of
ends of siding applied to the exterior of the housing unit. The
window frame includes a window body member to generally
circumscribe an opening in the housing unit, with a J-rail
return member integrally formed therewith to provide a
flange member for attachment of the window frame to the
housing unit and to cover and secure ends of the siding in a
slot formed between the flange member and the return
member of the J-rail return. The return member has sufficient
width to cover the siding ends even when the siding con-
tracts during lowered temperatures. The window frame, in
the preferred form, is constructed from extruded vinyl, and
it is used principally for vinyl siding.
13 Claims, 4 Drawing Sheets
US RE40,041 E
Page 2
U.S. PATENT DOCUMENTS
2,725,608 A 12/1955 Parslow
2,733,787 A 2/1956 Morra
2,770,335 A 1111956 Sylvan
2,826,282 A 3/1958 Goldberg
2,912,078 A 1111959 Kiehl eta!.
2,983,001 A 5/1961 Guldager ..................... 52/208
3,239,976 A 3/1966 Hall ............................ 52/202
3,416,271 A 12/1968 Heeney
3,583,114 A 6/1971 Belfor
3,715,836 A 2/1973 Monroe
3,800,488 A 4/1974 Swanson
3,943,679 A 3/1976 Dissinger
4,280,309 A * 7/1981 Huelsekopf .............. 52/204.54
4,299,060 A 1111981 Tippmann ................. 52/212 X
4,413,446 A 1111983 Dittrich
4,521,991 A * 6/1985 Sayer eta!. .................. 49/161
4,555,868 A * 12/1985 Mancuso ..................... 49/181
4,563,846 A * 111986 Webb .......................... 52/208
9/1986
* 1111986
9/1987
* 1111988
9/1990
5/1991
2/1995
4,608,800 A
4,624,091 A
4,694,612 A
4,787,184 A
4,958,468 A
5,018,325 A *
5,392,574 A
Fredette
Biro .......................... 52/656.5
Pruden eta!.
Boidron ....................... 52/217
Nolan ..................... 52/204.51
Geen et a!. ................... 52/211
Sayers ................. 52/204.55 X
OTHER PUBLICATIONS
Miller Industries, Single Hung.
Peerless, Single Hung Tilt Sash Nailing Fin.
Norandex, Norguard Series 500.
Victor Sun Control of Philadelphia, Inc., Victor Sun Control.
Remington , Remington Window.
Silverline Building Products, Silverline ATW 1000.
CertainTeed Window, CertainTeed Window.
* cited by examiner
U.S. Patent Feb.5,2008 Sheet 1 of 4
US RE40,041 E
18
24 26 22
F I G. 1 A ( p R lOR ART)
30
F IG.l B (PRIORART)
U.S. Patent Feb.5,2008 Sheet 2 of 4 US RE40,041 E
F J G. 1 c ( PRIOR ART)
22
F I G.l D (PRIOR ART)
L6
68
:EO 36
48
8
52
I a2
1- __ ,
--r----.1 I I
L_J
FIG.2
98
88
FIG.J
76
54
106
90
FIG.4
US RE40,041 E
1
WINDOW FRAME FOR MANUFACTURED
HOUSING
Matter enclosed in heavy brackets [ ] appears in the
original patent but forms no part of this reissue specifi-
cation; matter printed in italics indicates the additions
made by reissue.
This is a continuation application of application Ser. No.
07/934,257, filed Aug. 25, 1992, now U.S. Pat. No. 5,392,
574, issued Feb. 28, 1995, which is a continuation-in-part
application ofSer. No. 07/570,818, filed Aug. 22, 1990, now
abandoned, which is a continuation-in-part application of
Ser. No. 07/338,306, filed Apr. 17, 1989, now abandoned,
which is a continuation-in-part application of Ser. No.
07/083,225, filed Aug. 10, 1987, [abandoned] now U.S. Pat.
No. 4,747,753.
TECHNICAL FIELD
2
The manufacturers of the homes with lap siding were
faced with the problem of encasing the ends of the vinyl/
aluminum lap siding to exclude rain. Also, there is often
small misalignment of ends of the siding since the pieces are
cut from strips, and both vinyl and alnminnm expand and
contract significantly under extremes of temperature. The
solution utilized by these manufacturers to the enclosure of
the ends to meet the requirements was a separate "J-rail" or
"J-channel" element attached to the building frame with
10 suitable fasteners. The J-rail has a fastening flange for
attachment to the building, an outwardly projecting portion
to cover the siding ends, and a return portion to contact the
outer surface of the lap siding so that the ends are enclosed
even during construction of the siding. In some embodi-
15 ments this element is abutted to the outer edge of flange of
the window frame (see FIG. lB); and in other embodiments,
this element overlaps the flange to hide the flange fasteners
(see FIG. lC). These embodiments of dealing with covering
This invention relates to a window frame construction for
20
siding ends were "state of the art" at the time of the present
invention. Such construction is illustrated in "Rigid Vinyl
Siding Application Instructions" a currently-available docu-
principal use in manufactured housing, the frame receiving
and supporting at least one window, the frame for being
mounted in a window opening provided in a wall structure
ment published by the Vinyl Siding Institute, The Society of
the Plastics Industry, Inc., New York, N.Y. In addition, this
separate J-rail construction is shown as state-of-the-art in
of the manufactured unit. This particular frame includes an
integrally formed "J-rail" or "J-channel" portion such that
ends of vinyl or aluminum lap siding applied to the exterior
25 U.S. Pat. No. 4,608,800 issued Sep. 2, 1986.
of the housing unit are enclosed even when dimensional
changes occur due to thermal effects. In one embodiment the
frame of the invention has an inner portion that encloses
30
edges of interior wall covering, this inner portion also
having an integral J-rail.
BACKGROUND ART
Although the J-rail element satisfactorily seals the ends of
the lap siding, there are certain drawbacks. For example,
there are occasionally color differences between the material
of the window frame and that of the J-Rail. There is also a
problem that there is separate material that must be carried
to (or stored at) a site offabrication. The main problem is the
extra time that is required for its installation-measuring,
cutting and fastening of separate pieces. As described in the
above-referenced publication, the side J-rail members are
The manufactured housing industry has undergone a
significant evolution in the past two decades. Initially the
housing units were constructed using techniques previously
employed for mobile homes: small structural frame mem-
bers covered with a skin of sheet metallic material. The
entire unit was wrapped with the skin material and then
window openings were cut out to receive window units.
These window units had mounting flanges extending around
the edges, with these flanges receiving screws for fastening
the frames into the structural members. The back surface of
35 cut longer than the height of the window and are notched at
the top. Then the free end of the top J-rail flange is mitered
at each end, and bent at 90 to fit over the side members. In
some installations, a special J-rail configured comer unit is
utilized (see above-referenced U.S. Pat. No. 4,608,800).
40 Unless significant care is taken during the cutting, bending
and fastening of the J-rail, gaps can occur such that the
finished product is less than aesthetically attractive. Caulk-
ing is recommended around the window frames prior to this
the flange normally carried a compound to seal against the 45
building skin. (This structure is illustrated in FIG. lA).
Although the metal skin construction is continued in use
installation of the J-rail units. As stated above, the window
frames for these constructions are substantially the same as
in earlier manufactured homes (and for retrofit installation)
with a nailing flange near the outer portion of the unit. Thus,
although the other structural portions of manufactured
homes have changed, the window manufacturers apparently
on very low-end economy manufactured housing units, a
more decorative and sturdy construction began in about
1985. This improved design utilizes more of the construction
techniques of "stick-built" housing in that walls are thicker,
and the exterior surface is covered with lap-type siding made
50 did not consider other known windows to be of use for this
type of siding. Accordingly, they have not varied the win-
dow frames significantly to match the other building fabri-
cation changes.
of aluminum or vinyl. The principal manufacturers of win-
dows and siding are either the manufacturers of window
frames (e.g., Reynolds Aluminum, Mastic, Certainteed,
Alcoa, Wolverine.) or are closely related such that the
window frames used previously were continued into these
newer styles. Thus, window frames with conventional
flanges are utilized, with suitable fasteners (screws, staples,
etc.) penetrating the mounting flange into the building
frame. This use of the same window frame existed even
though other window frames had been patented over a
several year period. Some of these patents include: U.S. Pat.
Nos. 2,326,549; 2,454,523; 2,733,787; 2,770,335; 2,912,
078; 3,239,976; 3,416,271; 3,583,114; 4,280,309; 4,299, 65
060; 4,413,446 and 4,624,091. Other patents that may be
pertinent are German Patents 1,960,024 and 2,539,363.
Therefore, it is an object of the present invention to
55
provide a window frame that does not require the utilization
of a separate J-rail for enclosing ends of lap siding.
It is another object of the present invention to provide a
J-rail construction in an integral combination with a support
60
for at least one window wherein there is a color match.
A further object of the present invention is to provide a
window frame construction that significantly simplifies the
installation of windows into housing units with a saving of
materials and labor.
It is also another object of the present invention to provide
a window frame construction that is very functional, and is
aesthetically attractive to the viewer.
US RE40,041 E
3
Another object of the present invention is to provide a
universal window frame for use in manufactured housing
that increases the speed offabrication by significantly reduc-
ing the labor of installing windows in this type of housing.
These and other objects of the present invention will
become apparent upon a consideration of the appended
drawings and a complete description thereof that follows.
DISCLOSURE OF THE INVENTION
4
some embodiments, embossed or corrugated to give some
improved visual appearance. There may be, or may not be,
a thin sheeting layer 14 The inner surface of this building
frame was typically covered with panelling 16, and the void
between the layers was filled with insulation 18. At places
where windows were desired, an opening was cut through
the wall of appropriate size, and a prefabricated window unit
20 was inserted having a perimeter flange 22. Although this
FIG. 1A (and FIGS. 1B-1D) illustrate upper and lower
In accordance with the present invention, there is pro-
vided a window frame for being received in an opening of
10 double-glazed window sashes, it will be understood that
windows for a single-glazed sash are fabricated in a similar
manner. Appropriate fasteners 24 secured the window unit to
the wall, and a suitable mastic 26 on the reverse side of the
a wall of a structure, the window frame for receiving and
supporting at least one window. This frame has a body
portion circumscribing the wall opening with a window
15
receptor intermediate an inner portion of the body portion
extending toward an inner wall of the structure and an outer
portion of the body portion extending proximate an outer
frame wall of the structure. A J-rail portion is integrally
formed with the body portion so as to project outwardly
20
from the body portion to receive and cover ends oflap siding
elements applied to the outer frame wall of the structure.
This J-rail portion includes a flange portion to receive
fasteners for securing the window frame to the outer frame
wall of the structure, an outwardly-extending portion to
25
cover the siding ends, and a return portion for overlapping
ends of the lap siding elements, the ends being held between
the flange portion and the return portion to provide a weather
seal. The return portion has sufficient length to provide
coverage of the lap siding ends under all conditions of
30
dimensional change due to temperature variations.
BRIEF DESCRIPTION OF THE DRAWINGS
FIG. 1A is a drawing showing one embodiment of a
state-of-the-art window frame as utilized in manufactured
35
housing fabrication where the exterior of the housing unit is
made up of sheet metal or the like.
FIG. 1B is drawing showing the use of the state-of-the-art
window frame of FIG. 1A as utilized in manufactured
housing fabrication where the exterior of the housing unit is 40
lap siding, particularly vinyl or aluminum siding, and the
ends of the siding are encased in a J-rail element positioned
so as to abut the flange of the window frame.
FIG. 1C is a drawing illustrating another utilization of a
J -rail element for covering ends oflap siding, with this J -rail 45
element overlapping the flange of the window unit.
FIG. 1D is a drawing illustrating a modification of the
state-of-the-art window frame that can be used with either
installation practice illustrated in FIGS. 1B or 1C.
50
FIG. 2 is a cross sectional drawing of a sill portion of a
window frame according to the present invention.
FIG. 3 is a cross sectional drawing of a jamb portion of
a window frame according to the present invention.
FIG. 4 is a perspective view, partially in section, of a 55
window frame of the present invention.
BEST MODE FOR CARRYING OUT THE
INVENTION
flange provided sealing against the weather.
In some subsequent manufactured homes, lap siding was
employed, as illustrated at 28 in FIG. 1B, this siding having
a sloped surface, For this construction the window unit 20
was installed in an opening in the wall by passing the
fasteners 24 through the flange 22 into the frame members
(typically into the studding 10'), or into sheathing 30 if such
was used. The siding 28 was fastened to the exterior of the
wall after a J-rail unit 32 was attached so as to abut the flange
22, the J-rail covering the ends of the lap siding. As before,
a sealant 26 was typically employed to prevent ingress of
moisture. With this construction the fasteners 24 through the
flange 22 were visible in the completed building.
A slight variation of this type of installation of a prefab-
ricated window unit 20 is illustrated in FIG. 1C. By install-
ing the J -rail unit 32 over the flange 22 all of the fasteners
24 are hidden and improved weather sealing is accom-
plished.
Some commercial manufacturers of prefabricated win-
dow units produced a window that permitted the abutment of
brick mold along the edge. This structure is shown in FIG.
1D at 20' and illustrates an extension 34 on the body portion
of the frame. This style of prefabricated window has also
been used like that illustrated in FIGS. 1B and 1C together
with a separate J-rail element 32.
The embodiments of the prior art, in addition to being
used in manufactured housing, have routinely been used in
renovation work where new siding and/or windows are
installed.
In order to overcome the drawbacks arising from the
constructions illustrated in FIGS. 1A-1C, the present inven-
tion is depicted at 36 in FIG. 2 wherein the sill portion of the
invention is shown in a cut-away cross section. The window
frame 36 is placed in an opening 38 in the building that is
at least partially defined by a typical frame sill 40 and typical
sheathing 42. Also, a typical wall stud 43 is illustrated. This
window frame 36 has a body portion 44 that generally
circumscribes the wall opening 38 and extends from proxi-
mate the exterior of the sheathing 42 to at least midway the
thickness of the building wall, and an integral J-rail return
portion 46 that extends beyond the sheathing. In this
embodiment the body portion 44 is provided with a slot 48
to accept, in sliding relationship, a body extension portion
50 such that the window frame extends toward the interior
52 of the building wall. This will be described in greater
The departure of the present invention from the prior art
60 detail hereinafter.
of window/siding relationships will be better understood by
first considering the construction that had existed prior to the
present invention. Therefore, referring to FIG. 1A, shown
therein is an early wall/window structure as utilized in
manufactured housing. The frame of the housing unit was 65
typically a series of 2 in.x2 in. elements 10 that were
covered on the exterior with sheet metal 12 which was, in
The J-rail return portion 46 has three major components.
There is a flange member 54 (typically about 1 Yo inch wide)
that provides for the attachment of the window frame 36 to
the sheathing 42 using, for example, nails or screws 56.
There is an outwardly projecting member 58 having a length
(typically about % inch) away from the sheathing 42 that is
substantially the same as thickness of lap siding 60, and a
US RE40,041 E
5
return portion 62 that, in this sill portion, extends down-
wardly so as to be parallel to the flange member 54. The
of this .return portion 62, which is typically about %
mch, 1s sufficient to cover the edge of the siding 60 even
when the siding contracts under low temperatures. In a
preferred embodiment, the distal edge of this return portion
6.2 a bead 64 to prevent chaffing of the
s1dmg 60 dunng relative movement therebetween. Because
this is the sill portion of the window frame, the outwardly
extended portion 58 of the J-rail return 46 (and the outer
edge 63 of the body portion 44) are sloped as indicated by
10
the arrows at 66 to allow drainage of water.
The body portion 44 of the window frame 36 is typically
provided with a plurality of window sash retainer elements,
such as depicted at 68, 70, and 72 as will be known to
persons skilled in the art. As stated above, the body portion
15
44 provided with a slot 48 for slidably receiving a tongue
portwn 7 4 of the body extension portion 50 to adjust for wall
thickness. This body extension portion 50 can terminate at
the frame inner wall 52 of the building with a flange 76
20
which is fastened to the building frame as with nails or
screws 78. If the wall is relatively thin, the flange 76 would
be at the position indicated at 77. Alternatively, the body
extension portion 50 can be terminated with a J-rail return 80
such that edges of interior wall covering 82 are covered, and
25
that the wall covering 82 covers the fasteners 78. In this
embodiment, the flange portion of the J-rail return substi-
tutes for and serves the function of flange 76.
FIG. 2 also illustrates that portions of the window frame
36 are provided with means for joining the sill portion to jam
30
and a header portion to the jam portions. Typically,
th1s 1s accomplished by providing screw-receiving bosses as
at 84. This will be discussed in greater detail in connection
with a description of FIG. 4.
A typical jamb portion of the window frame 36 is shown 35
in cross section in FIG. 3. Here it can be seen how the return
portion 62 of the J-rail return 46 covers the ends 85 of siding
60 even when the siding 60 moves during thermal fluctua-
tions in directions indicated by the double-ended arrow 86.
The embodiment of the window frame 36 illustrated has 40
projections 88, 90 which receive a window sash retainer 92
for securing the two sashes 94, 96 each containing double
glazing 98, 100. The void 102 between the sash retainer 82
and the window frame body member 44 is typically filled
with foam insulation 104. The window frame 36 can include 45
if desired, a window screen retainer flange 105. Again,
sliding tongue 74 of the extension 50 in the slot 48 permits
adjustment for wall thickness. Also, the interior can be
terminated with a J-rail return 80 or simply by the flange 76.
A further view of the present window frame 36 is shown 50
in the perspective cut-away view in FIG. 4. More
specifically, this illustrates the header portion 36A of the
frame and a side jam portion 36B, and means for joining
these two portions. It will be understood that joining of other
corners of the frame 36 are accomplished in a similar 55
manner. As indicated, a portion of the header 36A is
removed at end 106 so that the J -rail return 46 thereof aligns
with end 108 of J-rail return 46 of the jam portion 36B.
Although not shown, the projections 88, 90 of the header
portion 36A are also cut back so as to have their ends in 60
with their corresponding parts of the jam portion
36B. The header portion 36A and the jam portion 36B are
joined by passing screws 110 through openings 112 in the
header portion 36A into the openings in the screw-retaining
bosses 84. This permits fixedly joining of the two campo- 65
nents of the window frame 36. Although this is the preferred
method of joining the portions of the window frame 36, it
6
will be understood that other conventional joining methods
can be used. Since the header portion 36A overlaps the ends
of the jam portions 36B of the window frame, the J-rail
return 46 serves as a gutter element to any moisture falling
upon siding of the housing unit.
From the above description of the components and the
method of joining the portions of the window frame 36 it
will be understood that the assembled frame 36 can 'be
inserted in an opening 38 of a building structure. This
opening 38 can be in a building as manufactured, or in a
building under renovation. The window frame 36 is fastened
to the building using screws, nails, staples, etc. passing
through the flange 54. Lap siding 60 is then attached to the
exterior of the building, with ends of the lap siding 60 being
inserted into the slot formed by the flange 54 and the return
portion 62. This return portion 62 is sufficient in width to
maintain coverage of the ends of the siding 60 even during
contraction of the siding 60 at lowered temperatures. The
bead 64 prevents chaffing of the siding 60 during any
movement thereof. In most installations, an inner portion of
the window frame 36 is created by the addition of the
extension 50 by inserting the tongue 74 into the slot 48.
Thus, the window frame can be adjusted for the thickness of
the structure wall. As stated the edge of the extension 50 can
either terminate with the flanges 76, or a J-rail return
member 80 can be an integral component.
From the foregoing it will be understood that a window
frame has been developed that solves a problem of retaining
and ends of lap siding with a singular structures,
wherem the problem was solved in the prior art with separate
structures. As a result, a considerable savings in time is
achieved. Further, the result is a substantially improved
aesthetic appearance of any building for which this
improved window frame is used. While developed primarily
for manufactured housing, the present window frame can be
used in any building, either manufactured or stick built. It
can be used in original construction, or can be installed
during renovation of the building. Further, while designed
primarily for use with lap siding applied to the exterior of the
building, it can be used with other types of siding, some of
which may abut the distal edge of the J-rail return portion 46.
In a preferred form, the window frame is fabricated from a
suitable plastic material (typically vinyl) using conventional
extrusion techniques.
The description given above, and any typical sizes and
materials, is given as an illustration of the present invention
and not as a limitation. The invention is to be limited only
by the appended claims and their equivalents.
What is claimed is:
1. A window frame for being fixedly mounted in an
opening provided in a wall of a structure, the structure
having a frame defining an inner wall and an outer wall, said
window frame comprising:
a window frame body member for being received in and
circumscribing the opening in the wall and adapted to
extend from proximate the outer wall toward the inner
wall when received in the opening, said window frame
body member having a retainer means for receiving and
supporting at least one window, said window frame
body member having a header portion, a sill portion,
and first and second jamb portions;
a J-rail return member integrally formed with said win-
dow frame body member so as to extend outward from
said window frame body member when said window
frame body member is received in the opening, said
J-rail return member having
US RE40,041 E
7
a) a flange portion for extending radially around the
opening and for attachment of said window frame to
the structure,
b) a projecting portion extending away from said flange
portion in a direction perpendicular to said flange
portion, wherein the projecting portion of said
header portion is continuous and unperforated from
an outer edge of said first jamb section to said outer
edge of second jamb section, and
c) a return portion having a proximate edge and a distal
10
edge, said proximate edge being connected to an
outermost extent of said projecting portion, said
return portion being substantially parallel with said
flange portion to define a substantially rectangularly
shaped slot between said return portion and said
15
flange portion, said slot having an opening at said
distal edge of said return portion for accepting siding
to be attached to the outer wall of the structure, said
return portion having a width of at least about-% inch
and effective to cover the siding [even during any
20
contraction of the siding] and to accommodate move-
ment of said siding due to thermal fluctuation, said J
rail return [portion] member of said header portion
being aligned with the J-rail return [portion] member
of said jamb portions thereby serving as a rain gutter
25
for said window frame whereby said window frame
can be installed as a unit within the opening of the
structure with minimal labor to receive at least one
window and the siding in a secure manner.
2. The window frame of claim 1 wherein said window
30
frame body member is of extruded vinyl and said J-rail
[portion] return member is integrally formed with said
window body member.
3. The window frame of claim 1 wherein said distal edge
of said return portion is provided with a raised bead on a side
35
toward said flange portion, said raised bead for reducing
chaffing of the siding during any movement of the siding.
4. The window frame of claim 1 further comprising a
window body extension member slidably associated with
said window frame body member to extend said window
40
frame to the inner wall of the structure.
having a frame defining an inner wall and an outer wall, said
window frame comprising: 45
body member having a header portion, a sill portion, 50
and first and second jamb portions and a retainer for
receiving and supporting at least one window,
said window frame body member when said window 55
a) a continuous flange portion for extending radially
around the entire opening and for attachment of said
window frame to the structure, 60
portion, and
c) a return portion having a proximate edge and a distal
edge, said proximate edge being connected to said 65
projecting portion, said return portion being substan-
tially parallel with said flange portion to define a
8
substantially rectangularly shaped slot between said
return portion and said flange portion, said slot
having an opening at said distal edge of said return
portion for accepting siding to be attached to the
outer wall of the structure, said return portion having
a width of at least about -% inch and effective to cover
the siding [even during any contraction of the siding]
and to accommodate movement of said siding due to
thermal fluctuation, said J rail return [portion] mem-
ber of said header portion being aligned with the
J-rail return [portion] member of said jamb portions
thereby serving as a rain gutter for said window
frame whereby said window frame can be installed
as a unit within the opening of the structure with
minimal labor to receive at least one window and the
siding in a secure manner.
6. The window frame of claim 5 wherein the distal edge
of the return portion is provided with a raised bead on a side
toward the flange portion for reducing chaffing of the siding
during any movement of the siding.
7. The window frame of claim 5 which further comprises
a window body extension member slidably associated with
the window frame body member to extend the window
frame to the inner wall of the structure.
8. A window assembly comprising a window frame fixedly
mounted in an opening provided in a wall of a structure, the
structure having a frame defining an inner wall and an outer
wall, said window frame comprising:
body member having a retainer for receiving and
supporting at least one window said window frame
body member having a header portion, a sill portion
and a first and second jamb portions,
said window frame body member when said window
a) a flange portion for extending radially around the
opening and for attachment of said window frame to
the structure said flange portion fastened to said
wall;
portion, wherein the projecting portion of said
header portion is continuous and unperforated from
said first jamb section to said second jamb section,
and
c) a return portion having a proximate edge and a
distal edge, said proximate edge being connected to
an outermost extent of said projecting portion, said
return portion being substantially parallel with said
flange portion to define a substantially
rectangularly-shaped slot between said return por-
tion and said flange portion, said slot having an
opening at said distal edge of said return portion for
accepting siding to be attached to the outer wall of
the structure, said return portion having a width of
at least about-% inch and effective to cover the siding
thermal fluctuation, whereby said window frame is
installed as a unit within the opening of the structure
with minimal labor to receive at least one window;
and siding covering said wall said siding having terminal
edges in said J rail return member surrounding said
US RE40,041 E
9 10
window and at least one bottom edge in said J rail c) a return portion having a proximate edge and a
return member on said header portion and an upper distal edge, said proximate edge being connected to
edge of said siding in said channel in said sill portion an outermost extent of said projecting portion, said
said J rail return member on said header portion acting return portion being substantially parallel with said
as a rain gutter for said window frame. flange portion to define a substantially
9. The window frame assembly claimed in claim 8 rectangularly-shaped slot between said return par-
wherein said projecting portion on said header portion is tion and said flange portion, said slot having an
unperforated from said first jamb section to said second opening at said distal edge of said return portion for
jamb section. accepting siding to be attached to the outer wall of
10. The window frame assembly claimed in claim
9 10
the structure, said return portion having a width of
further comprisingfirst and second windows in said retainer.
at least about-% inch and effective to cover the siding
having a frame defining an inner wall and an outer wall, thermal fluctuation, said J rail return member pro-
said window frame comprising:
15
viding an unperforated channel on said header por-
tion from beyond an inner edge of said first jamb
circumscribing the opening in the wall and adapted to section to beyond an inner edge of said second jamb
section said J rail return member having a size
wall when received in the opening, said window frame effective to receive siding and conceal cut edges of
body member having a retainer for receiving and 20 said siding to provide a neat finished appearance,
supporting at least one window said window frame whereby said window frame can be installed as a unit
body member having a header portion, a sill portion within the opening of the structure with minimal labor
and a first and second jamb portions; to receive at least one window and the siding in a
a J-rail return member integrally formed with said win- secure manner.
25
12. The window frame of claim 8 wherein said window
said window frame body member when said window frame body member is of extruded vinyl and said J-rail
frame body member is received in the opening, said return member is integrally formed with said window body
J-rail return member having member.
a) a continuous flange portion for extending radially 13. The window assembly claimed in claim 8 wherein said
around the entire opening and for attachment of said
30
projecting portion has a width approximately equal to a
window frame to the structure, width of said siding thereby concealing any exposed edges
b) a projecting portion extending away from said flange of said siding in such a J rail return member.
portion, and
* * * * *

Exhibit B

SEALMASTER, L.L.C., Plaintiff v. SILVER LINE BUILDING PRODUCTS and
HOME DEPOT USA, INC., Defendants
No. 3:99-cv-279
UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF
TENNESSEE, KNOXVILLE DIVISION
199 F. Supp. 2d 783; 2001 U.S. Dist. LEXIS 23513
January 10, 2001, Filed
SUBSEQUENT HISTORY: Reconsideration denied,
Sealmaster, L.L.C. v. Silver Line Bldg. Prods., 2001 U.S.
Dist. LEXIS 23517 (E.D. Tenn. May 22, 2001).
DISPOSITION: [**1] Defendants' motion for
summary judgment partially granted.
CASE SUMMARY:
PROCEDURAL POSTURE: Plaintiff patent holder
sued defendants, two corporations, alleging patent
infringement. The corporations moved for summary
judgment, alleging that the patents were invalid under 35
U.S.C.S. 102(b) because the subject matter of the
claims was in public use for more than a year before the
filing date of the patents.
OVERVIEW: The patent holder alleged that the
corporations infringed on two of its window frame
patents. The corporations argued that the prior sale of the
windows with the claimed invention by one of the
corporation's invalidated the patents and that the prior
sale of the windows with the claimed invention by the
patent holder itself invalidated the patents. The court
found that there was no genuine issue of material fact that
one of the corporation's manufactured and sold windows
in the U.S. having every feature later claimed as an
invention by the patent holder for years, if not decades,
prior to the earliest possible patent application. The
corporations presented clear and convincing evidence that
the window was placed on sale in the U.S. by one of the
corporations well more than a year before the earliest
possible filing date of the patent. In fact, the proof in this
case indicated that the windows were sold in
commercially significant quantities. Furthermore, once
the windows were installed, they were in public use. The
window that was placed on sale and in public use
embodied each element of what the patent holder later
claimed in its patents.
OUTCOME: The corporations' motion for summary
judgment was granted in part and denied as to one of the
claims pending further briefing.
LexisNexis(R) Headnotes
Patent Law > Statutory Bars > Public Use Bar >
General Overview
[HN1] See 35 U.S.C.S. 102(b).
Evidence > Documentary Evidence > Writings >
General Overview
Patent Law > Infringement Actions > Claim
Interpretation > General Overview
[HN2] In interpreting an asserted patent claim, a district
Page 1
court should look first to the intrinsic evidence of record,
i.e., the patent itself, including the claims, specifications,
and, if in evidence, the prosecution history. Such intrinsic
evidence is the most significant source of the legally
operative meaning of disputed claim language. In most
situations, an analysis of the intrinsic evidence alone will
resolve any ambiguity in a disputed claim term. In such
circumstances, it is improper to rely on extrinsic
evidence. In those cases where the public record
unambiguously describes the scope of the patented
invention, reliance on any extrinsic evidence is improper.
The claims, specifications, and file history, rather than
extrinsic evidence, constitute the public record of the
patentee's claim, a record on which the public is entitled
to rely. In other words, competitors are entitled to review
the public record, apply the established rules of claim
construction, ascertain the scope of the patentee's claimed
invention and, thus, design around the claimed invention.
Allowing the public record to be altered or changed by
extrinsic evidence introduced at trial, such as expert
testimony, will make this right meaningless.
Patent Law > Infringement Actions > Claim
Interpretation > General Overview
[HN3] In the context of a patent claim interpretation,
while a district court may utilize extrinsic evidence to
understand the patent, the court may not use it to vary or
contradict the terms of the claims. Although the central
focus remains on the claim language as illuminated by
the written description and the prosecution history,
extrinsic evidence may supply context to understand the
claim language.
International Trade Law > General Overview
Patent Law > Claims & Specifications > Description
Requirement > General Overview
Patent Law > U.S. Patent & Trademark Office
Proceedings > Reissues > General Overview
[HN4] In the context of a patent claim interpretation,
when the preferred embodiment is described in the
specification as the invention itself, the claims are not
necessarily entitled to a scope broader than that
embodiment.
Patent Law > Claims & Specifications > Description
Requirement > General Overview
Patent Law > Date of Invention & Priority > General
Overview
Patent Law > Statutory Bars > General Overview
[HN5] Under 35 U.S.C.S. 102(b), patent claims are
invalid, among other things, if the subject matter was in
public use in the United States for more than a year
before the filing date. This public use bar serves the
policies of the patent system, for it encourages prompt
filing of patent applications after inventions have been
completed and publicly used, and sets an outer limit to
the term of exclusivity. The requirements of the public
use bar of 102(b) are two-fold: (1) the completed
invention must be used in public; and (2) the use must not
be primarily experimental in purpose.
Patent Law > Inequitable Conduct > General Overview
General Overview
[HN6] In discussing the concept of public use, it is not
necessary that more than one of the patented articles
should be publicly used. The use of a great number may
tend to strengthen the proof, but one well-defined case of
such use is just as effectual to annul the patent as many.
A single public use is sufficient to invalidate a patent
under 35 U.S.C.S. 102(b). Additionally, whether the use
of an invention is public or private does not necessarily
depend upon the number of persons to whom its use is
known. If an inventor, having made his device, gives or
sells it to another, to be used by the donee or vendee,
without limitation or restriction, or injunction of secrecy,
and it is so used, such use is public, even though the use
and knowledge of the use may be confined to one person.
Patent Law > Statutory Bars > On Sale Bar > General
Overview
General Overview
[HN7] Under 35 U.S.C.S. 102(b), a patent claim is
invalid if the subject matter of the claim was on sale in
the United States more than a year before the effective
filing date. Like the public use bar, the on sale bar
encourages early disclosure and prevents extension of the
statutory patent term. In order to trigger the on sale bar,
no actual sale is necessary, an offer to sell is sufficient.
Consistent with the public use bar, a single sale or offer
for sale is enough to trigger the on sale bar. Furthermore,
the on sale bar is not limited to sales by the future
patentee, rather, the doctrine applies with equal force
when the invention is placed on sale by a third party.
Page 2
199 F. Supp. 2d 783, *; 2001 U.S. Dist. LEXIS 23513, **1
Patent Law > Statutory Bars > On Sale Bar > General
Overview
[HN8] There is no requirement that a sales offer
specifically identify all of the characteristics of an
invention offered for sale or that the parties recognize the
significance of all of these characteristics at the time of
the offer. If a product that is offered for sale inherently
possesses each of the limitations of the claims, then the
invention is on sale, whether or not the parties to the
transaction recognize that the product possesses the
claimed characteristics.
Evidence > Procedural Considerations > Burdens of
Proof > Clear & Convincing Proof
Patent Law > Inequitable Conduct > Burdens of Proof
General Overview
[HN9] Patent invalidity based on public use is required to
be proved by clear and convincing evidence. Similarly,
patent invalidity based on the on sale bar is required to be
proved by clear and convincing evidence. Clear and
convincing evidence is described as evidence which
proves in the mind of the trier of fact an abiding
conviction that the truth of the factual contentions are
highly probable. The clear and convincing standard of
proof of facts is an intermediate standard which lies
somewhere between beyond a reasonable doubt and a
preponderance of the evidence.
COUNSEL: For SEALMASTER, LLC, plaintiff:
William F Shumate, Jr, Shumate & Bowling, Knoxville,
TN.
For HOME DEPOT USA, INC., SILVERLINE
BUILDING PRODUCTS, defendants: Arnold H
Krumholz, William L Mentlik, Lerner, David, Littenberg,
Krumholz & Mentlik, Westfield, NJ.
For SILVERLINE BUILDING PRODUCTS, defendant:
Bradley H Hodge, Gentry, Tipton, Kizer & McLemore,
PC, Andrew R Tillman, Paine, Tarwater, Bickers &
Tillman, Knoxville, TN.
For HOME DEPOT USA, INC., SILVERLINE
BUILDING PRODUCTS, counter-claimants: Arnold H
Krumholz, Lerner, David, Littenberg, Krumholz &
Mentlik, Westfield, NJ.
For SILVERLINE BUILDING PRODUCTS,
counter-claimant: Bradley H Hodge, Gentry, Tipton,
Kizer & McLemore, PC, Andrew R Tillman, Paine,
Tarwater, Bickers & Tillman, Knoxville, TN.
For SEALMASTER, LLC, counter-defendant: William F
Shumate, Jr, Shumate & Bowling, Knoxville, TN.
For SEALMASTER, LLC, counter-defendant: Bruce
Tittel, Gregory J Lunn, Wood, Herron & Evans, LLP,
Curtis L Cornett, Robert J Hollingsworth, Cors &
Bassett, Cincinnati, OH.
JUDGES: James H. Jarvis, UNITED STATES
DISTRICT JUDGE.
OPINION BY: James H. Jarvis
OPINION
[**2]
[*785] MEMORANDUM OPINION
Plaintiff, SealMaster, L.L.C. (SealMaster), a vinyl
window manufacturer based in Rockwood, Tennessee,
brings this patent infringement action against a New
Jersey corporation, Silver Line Building Products
Corporation (Silver Line), another window manufacturer
whose primary product is vinyl windows, and against
Home Depot USA, Inc., one of Silver Line's largest
customers. SealMaster alleges that the defendants have
infringed U.S. Patents Nos. 5,392,574 (the '574 patent)
and 5,660,010 (the '010 patent), both entitled "Window
Frame for Manufactured Housing." [See Doc. 1, Exs. 1
and 2, respectively]. Leland D. Sayers of Knoxville,
Tennessee, is the inventor listed on both patents.
Essentially, these two patents claim a window having a
window frame and a J-rail integrally formed with that
frame. According to SealMaster, this construction allows
a window frame to be installed as a unit in an opening of
a building with minimal labor.
This matter is presently before the court on
defendants' motion for summary judgment [Doc. 12] in
which defendants contend that the asserted claims of the
'574 and '010 patents are invalid under 35 U.S.C.
102(b) [**3]
1
because the subject matter of those
claims was in public use in the United States more than a
year before the filing date of these two patents.
Defendants' [*786] argument is two-fold. First,
defendants contend that the prior sale of windows with
the claimed invention by Silver Line invalidates these
Page 3
199 F. Supp. 2d 783, *; 2001 U.S. Dist. LEXIS 23513, **
patents. Second, defendants contend that the prior sale of
windows with the claimed invention by SealMaster itself
invalidates these patents. The issues raised have been
exceptionally well briefed by the parties [see Docs. 19,
22, 23, 24, and 25], and oral argument was heard on May
22, 2000. For the reasons that follow, defendants' motion
will be partially granted, the court concluding that there is
no genuine issue of material fact that Silver Line
manufactured and sold windows in the United States
having every feature later claimed as an invention by
SealMaster for years -- if not decades -- prior to August
10, 1987, the date of the earliest possible patent
application.
2
However, the court will reserve ruling on
that prong of defendants' motion addressing Claim 2 of
the '010 Patent pending further briefing by the parties.
1 Specifically, 35 U.S.C. 102(b) provides as
follows:
[HN1] A person shall be entitled
to a patent unless --
. . .
(b) the invention was patented
or described in a printed
publication in this or a foreign
country or in public use or on sale
in this country, more than one year
prior to the date of the application
for patent in the United States.
[**4]
2 Therefore, the court need not address the more
complicated issues raised by that prong of
defendants' motion addressing whether
SealMaster itself sold window frames having the
features claimed in the '574 and '010 patents more
than a year prior to the date of the applicable
patent applications.
I.
The '574 and '010 patents collectively have several
independent and dependent claims.
3
The claims of both
patents define a window frame with an integral J-rail,
4
all of which is adapted to be mounted to an opening in a
window. That J-rail is defined in Claim 1 of the '010
patent as follows:
... J-rail return member integrally formed
with said window frame body member so
as to extend outward from said window
frame body member when said window
frame body member is received in the
opening, said J-rail return member having
a) a flange portion for extending
radially around the opening and for
attachment of said window frame to the
structure,
b) a projecting portion extending
away from said flange portion in a
direction perpendicular to said flange
portion, and
c) a return portion having [**5] a
proximate edge and a distal edge, said
proximate edge being connected to an
outermost extent of said projecting
portion, said return portion being
substantially parallel with said flange
portion to define a substantially
rectangularly shaped slot between said
return portion and said flange portion, said
slot having an opening at said distal edge
of said return portion for accepting siding
to be attached to the outer wall of the
structure, said return portion having a
width to cover the siding even during any
contraction of the siding, whereby said
window frame can be installed as a unit
within the opening of the structure with
minimal labor to receive at least one
window and the siding in a secure manner.
[See Doc. 1, Ex. 2, pp.6-7]. A J-rail is similarly defined in
Claim 1 of the '574 patent [see id., Ex. 1, p.7]. Thus, the
term [*787] J-rail is defined in its claims quite
specifically as having three members: (1) a "flange
portion"; (2) a "projecting portion"; and (3) a "return
portion."
3 Claim 1 of the '574 patent and claims 1 and 5
of the '010 patent are the independent claims.
Claims 3 and 6 of the '010 patent depend directly
from independent claims 1 and 5. Because the
parties did not separately argue the patentability
of the dependent claims, the dependent claims
therefore "stand or fall" together with the
independent claims. See Finnegan Corp. v.
Page 4
199 F. Supp. 2d 783, *786; 2001 U.S. Dist. LEXIS 23513, **3
International Trade Com'n., 180 F.3d 1354, 1365
n.7 ("The parties do not separately argue the
validity of dependent claims 2-4. These claims
therefore stand or fall together with independent
claim 1.").
[**6]
4 The J-rail is also referred to by some in the
window industry as a J-channel [see, e.g., Doc.
15, Ex. A].
According to Kendall Sayers, the Chief Manager of
SealMaster, L.L.C.,
5
and president of SealMaster
Industries, Inc., the integral J-rail feature is the patented
invention being asserted against the defendants [see Doc.
20, attachment]. An integral J-rail is simply a J-rail that is
extruded as part of the window frame. Consequently,
when the siding is installed, there is no need to use a
separate J-rail to hide the siding edges.
5 SealMaster, L.L.C., is the current owner of the
patents in suit [see Doc. 20, p.2, n.2]. Kendall
Sayers is the son of Leland Sayers, the inventor
listed on both patents.
In engineering drawings, a J-rail is typically viewed
in a cross section. Not surprisingly, that is also the
manner in which the J-rail is depicted in both of
SealMaster's patents, reproduced as follows:
[**7] [*788]
Again, as is readily apparent from the above patent
drawings, and as set forth in SealMaster's claims, a J-rail
has three structural components: (1) a nailing flange
(numbered as 54 in SealMaster's patent drawings); (2) a
projecting portion (numbered as 58); and (3) a return
portion (numbered as 62).
6
6 The court would note that the "C" shaped
portion (numbered as 84) is a cross section of a
"screw boss," which is a semi-cylindrical bore in
the sill and header that allows for attachment to
the jams, thereby making up the window frame
unit. According to Arthur Silverman, the founder
of Silver Line, the screw bosses "have no effect
on the structure or function of the J-rail." [See
Doc. 15, p.10, P 29].
A.
In support of its position that the defendants have
infringed these two patents, SealMaster relies exclusively
on a drawing in a brochure distributed by defendants [see
Doc. 1, Ex. 3]. According to SealMaster, that brochure
accurately depicts a cross section of [**8] a window
frame that has been sold by defendants in this judicial
district and elsewhere [see Doc. 1, Ex. 3]. The drawing in
that brochure is set forth below:
7
7 The numbers and their defining parts on the
drawing have been added.
[*789]
Page 5
SealMaster's comparison of the claim elements to
defendants' window is essentially as follows:
A projecting portion 58 extending away
from flange portion 54 in a direction
perpendicular thereto, and a J-rail return
member 46 connecting to the projecting
portion 58, which together provide a
substantially rectangular-shaped slot 69
with a width sufficient to cover siding
during any contraction of the siding.
B.
In support of their position that each and every
element of the claimed invention is contained in the
invalidating prior art, defendants rely heavily on the
declaration of Arthur Silverman, Silver Line's founder
[see Doc. 15]. In his declaration, Mr. Silverman [*790]
first explains the historical background of the types of
windows [**9] at issue in this litigation. Mr. Silverman
then describes how, beginning in the late 1960s:
... Silver Line realized that its windows
were being installed in homes that had
siding of aluminum or manufactured
shingle, and there needed to be a system to
hide the rough edges of these materials.
35. Silver Line found that the
simplest, cheapest and most obvious way
to hide the edge of the siding was with an
integral J-rail. Thus, Silver Line modified
its jam, sill and header extrusion to add an
integral J-rail to the nailing flange. Silver
Line manufactured and sold windows with
such integral J-rails at least as early as the
early 1970s.
36. At least since the early 1970s,
Silver Line sold a number of windows that
incorporated such an integral J-rail. Each
of these windows were [sic] sold with an
integral J-rail that was deep enough to
accommodate various types of siding and
wide enough to allow for the expansion
and construction of the siding without
exposing its ends.
[See Doc. 15, pp.11-12, P34-36]. Mr. Silverman next lists
five different types of windows which incorporated that
integral J-rail feature [see id., p.12, P36]. However, Mr.
Silverman only [**10] discusses and analyzes features of
the Series 1000 Awning Window (the ATW
8
1000) and
the Series 6100 Picture Window for purposes of the
pending motion. During argument, the defendants
focused only upon the similarities between the ATW
1000 window and the patents-in-suit and utilized a
mock-up of that window for demonstrative purposes.
Because the court finds that the ATW 1000 window
anticipates SealMaster's present claims, the court will
only discuss that window.
8 ATW is an acronym for "Awning Type
Window."
The ATW 1000 window is an aluminum framed
window that pivots open from the bottom. In the
mock-up, a stud wall with an opening for a window was
first covered with sheathing. The window was then
installed into the opening as is done in typical new frame
construction -- by nailing or screwing through the nailing
flange, through the sheathing, and into the studs.
Mr. Silverman testifies that the mock-up of the
awning window is installed exactly the way the ATW
Page 6
1000 was designed to be installed, and in the [**11] way
that the ATW 1000 was installed in homes through the
Eastern United States in the 1970s [see id., p.14, P43].
Mr. Silverman testifies further that, "the frame extrusions
leave a continuous J-rail channel around the window
opening so that when siding was placed over the
sheathing the ends of the siding were covered." [See id.].
In support of his position, Mr. Silverman points to
Silver Line's old catalogues and engineering drawings,
dated prior to August 10, 1987,
9
regarding the ATW
1000. For example, one of Silver Line's brochures from
the 1970s shows the ATW 1000 [see id., Ex. B]. Mr.
Silverman also relies on documentation reflecting prices
and sizes for the ATW 1000 [see id., pp.00153-00162].
Additionally, Mr. Silverman relies on a color brochure
for the ATW 1000 which lists awning windows "with or
without integral fin trim." [See id., Ex. C]. Mr. Silverman
then testifies that, "the windows with the 'fin trim' were
those that incorporated a J-rail." [See id., p.16, P 48]. Mr.
Silverman relies further on drawings in the catalogues
which show the integral J-rail feature in a general view
[see id., Ex. C, p.2].
9 Again, this is the earliest possible date on
which SealMaster filed a patent application.
[**12] An even more detailed depiction is set forth
in Silver Line's engineering drawings. [*791] Mr.
Silverman testifies that he located the engineering
drawings of the ATW 1000, each of which is almost 30
years old [see id., p.17, P51]. Set forth below is an
enlargement of a portion of an engineering drawing dated
December 7, 1971, for the jamb of an ATW 1000:
According to Mr. Silverman, the above extrusion has
a "integral J-rail, comprising a nailing flange (the long
vertical line on the right), a projecting portion (the
horizontal line at the bottom), and a return portion (the
short vertical line on the left), thus creating a slot for the
insertion of siding." [See id., p.18, P 53].
Mr. Silverman's declaration next sets forth the ATW
1000 header J-rail as follows:
[*792] The following drawing represents the ATW
1000 sill J-rail:
Mr. Silverman then testifies as follows regarding the
above engineering drawings:
These engineering drawings show that
the jamb, sill, and header extrusions for a
Series 1000 Awning Window, which was
engineered in 1971 and manufactured and
sold in the [**13] eastern United States
throughout the 1970s and early 1980s,
contained a J-rail for the insertion of
siding. Importantly, as shown in each
Page 7
extrusion, the J-rail had a flange, a
projecting portion and a return portion,
which were respectively an integral part of
the jamb, an integral part of the header,
and an integral part of the sill extrusion,
thus making an integral J-rail.
[See id., p.20, P56 (emphasis in original)].
Mr. Silverman next testifies that actual windows
incorporating the J-rail were sold by Silver Line prior to
August 10, 1986
10
[see id., p.21, P57]. Mr. Silverman
specifically testifies that he contacted both distributors to
whom Silver Line sold windows and home owners who
had Silver Line's windows installed in their homes prior
to August 10, 1986 [see id., pp.21-22, PP58-61]. One of
the homeowners provides some of the most significant
testimony in this regard. Sara Gellerstein testifies that she
purchased her home on June 2, 1971, in the Township of
Berkeley, New Jersey, and that the windows and siding
of her home are original and have not been replaced [see
Doc. 14]. The corroborating declaration of James J. Bitz,
a product engineer [**14] for Silver Line, confirms that
Ms. Gellerstein's "awning" window is an ATW 1000
window and that it incorporates the "integral J-rail into
which the siding is fit." [See Doc. 13, p.3, P7].
10 The court assumes that Mr. Silverman meant
1987 as opposed to 1986 since August 10, 1987,
is the date of the earliest possible patent
application by SealMaster. Either way, the court's
analysis is the same.
The most compelling testimony in support of this
prong of defendants' motion is the detailed analysis by
Mr. Silverman regarding each and every element of
Claim 1 of the '574 patent and Claims 1 and 5 of the '010
patent,
11
and how every limitation [*793] of these
claims, which are alleged to read on Silver Line's current
commercial window, reads directly on the prior art. Mr.
Silverman's analysis is set forth in the claim chart
attached to defendants' original brief [see Doc. 19, Ex. A]
12 and is further illustrated by the pictures (accompanied
by similar analysis) attached to defendants' reply brief
[see [**15] Doc. 23, Ex. A].
11 Thus, Mr. Silverman has analyzed each
element of SealMaster's independent claims.
12 Again, the court is not considering that
portion of Mr. Silverman's claim chart which
pertains to the Series 6100 picture window.
C.
In response to this proof, SealMaster does not
dispute the fact that these ATW 1000 windows were sold
prior to August 10, 1987. Nor does SealMaster dispute
the fact that these ATW 1000 windows were sold many
years prior to the date of SealMaster's earliest patent
applications regarding the '574 patent and the '010 patent
SealMaster does, however, vigorously dispute defendants'
contention that these ATW 1000 windows incorporate
integral J-rails. In support of its position, SealMaster
relies on the declaration of Kendall Sayers and Timothy
Jones. Mr. Sayers testifies generally that the ATW 1000
windows do not incorporate an integral J-rail [see Doc.
20, attachment].
Mr. Jones' testimony contributes considerable detail
supporting SealMaster's position regarding this [**16]
window. Mr. Jones testifies from the vantage point of one
who has been employed in the window industry for more
than 20 years, employed by SealMaster, Inc., from 1986
to 1992 and employed by SealMaster Industries, Inc., as
general manager from 1992 to the present [see Doc. 20,
attachment, p.1-2].
13
Mr. Jones testifies that
SealMaster's J-rail has the following features: (1) that it
directs water away from the window and permits no
leakage; (2) that it cannot have holes; (3) that the holes
cannot have screws; (4) that the J-rail windows must now
be installed without trim and caulk; and (5) that, in
addition to having flange portions extending radially
around the window opening, the corners of the window
must be covered. Mr. Jones testifies further that he has
examined the mock-up ATW 1000 window, concluding
that the ATW 1000 window does not have an integral
J-rail because of the above differences.
13 Mr. Jones has also been operating his own
business utilizing the name Preservation Windows
in Knoxville, Tennessee, from 1986 to the present
[see Doc. 20, attachment, p.2, P6].
[**17] III.
It is well settled that, [HN2] in interpreting an
asserted claim, the court should look first to the intrinsic
evidence of record, i.e., the patent itself, including the
claims, specifications, and, if in evidence, the prosecution
history. See Markman v. Westview Instruments, Inc., 52
F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed.Cir. 1995)
(en banc), aff'd, 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed.
2d 577 (1996). "Such intrinsic evidence is the most
Page 8
significant source of the legally operative meaning of
disputed claim language." Vitronics Corporation v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996).
As discussed by the court in Vitronics:
In most situations, an analysis of the
intrinsic evidence alone will resolve any
ambiguity in a disputed claim term. In
such circumstances, it is improper to rely
on extrinsic evidence. ... In those cases
where the public record unambiguously
describes the scope of the patented
invention, reliance on any extrinsic
evidence is improper. The claims,
specifications, and file history, rather than
extrinsic evidence, constitute the public
record of the patentee's claim, a record
[*794] on which [**18] the public is
entitled to rely. In other words,
competitors are entitled to review the
public record, apply the established rules
of claim construction, ascertain the scope
of the patentee's claimed invention and,
thus, design around the claimed invention.
Allowing the public record to be altered or
changed by extrinsic evidence introduced
at trial, such as expert testimony, would
make this right meaningless.
Id. at 1583 (citations and parenthetical information
omitted). Furthermore, [HN3] while the court may utilize
extrinsic evidence to understand the patent, the court may
not use it to vary or contradict the terms of the claims.
See Markman, 52 F.3d at 981. See also Corteland Line
Co., Inc. v. Orvis Co., Inc., 203 F.3d 1351, 1356
(Fed.Cir. 2000) ("Although the central focus remains on
the claim language as illuminated by the written
description and the prosecution history, extrinsic
evidence may supply context to understand the claim
language.").
Here, SealMaster is attempting to resolve the instant
dispute by improperly introducing extrinsic evidence
through Mr. Jones' testimony. And it is improper because
there does not appear [**19] to the court to be any
arguable ambiguity in the words of the claims
themselves. SealMaster chose to specifically define the
term J-rail in its claims by means of three distinct
structural components: a flange portion, a projecting
portion, and a return portion. SealMaster, through Mr.
Jones' declaration, now attempts to graft entirely new
limitations onto these claims -- limitations which do not
even appear in the specifications. As previously noted,
Mr. Jones now testifies that the term J-rail directs water
away from the window and permits no liquid; that it
cannot have holes; that the holes cannot have screws; that
the J-rail windows must now be installed without trim
and caulk; and that, in addition to having flange portions
extending radially around the window opening, the
corners of the window must be covered. But this
language is not set forth in the claims of the
patents-in-suit. Mr. Jones is simply attempting to assign
new meaning to the term "J-rail."
Furthermore, some of Mr. Jones' testimony is
actually inconsistent with the claim language. For
example, Mr. Jones testifies that "J-rails cannot include
holes through them into the inside of the window." [See
Doc. 20, [**20] attachment, p.5, P 18]. Yet, Figure 4 of
the patents-in-suit indicate that the J-rail return 46 is
specifically shown to include openings 112 through
which screws 110 are applied for attaching the header
and jamb portions to each other. Likewise, in column 5,
lines 1-5 of the '574 patent, in reference to Figure 2, the
J-rail portion of SealMaster's preferred embodiment
includes a flange member 54 that is attached to the
window with nails or screws 56. Thus, the court agrees
with the defendants that if one were to construe
SealMaster's claims as suggested by Mr. Jones, they
would not even cover SealMaster's own preferred
embodiment. See Modine Manufacturing Company v.
United States International Trade Commission, 75 F.3d
1545, 1551 (Fed.Cir. 1996) ([HN4] "When the preferred
embodiment is described in the specification as the
invention itself, the claims are not necessarily entitled to
a scope broader than that embodiment."). Consequently,
the court agrees with defendants that SealMaster cannot
utilize the declaration of Mr. Jones in order to rewrite its
claims and therefore redefine its J-rail.
IV.
[HN5] Under 35 U.S.C. 102(b), patent claims are
invalid, [**21] among other things, if the subject matter
was in "public use" in the United States for more than a
year before the filing date. This public use bar "serves the
policies of the patent system, [*795] for it encourages
prompt filing of patent applications after inventions have
been completed and publicly used, and sets an outer limit
to the term of exclusivity." Allied Colloids Inc. v.
Page 9
American Cyanamid Company, 64 F.3d 1570, 1574
(Fed.Cir. 1995). The requirements of the public use bar
of 102(b) are two-fold: (1) the completed invention
must be used in public; and (2) the use must not be
primarily experimental in purpose. Id. Here, SealMaster
does not contend that the use of the ATW 1000 window
was experimental nor does SealMaster argue that this
window was not used in public. Rather, SealMaster
primarily contends that the ATW 1000 window did not
have an integral J-rail and it is for that reason that there
was no public use.
[HN6] In discussing the concept of public use, the
law has long been established that:
... it is not necessary that more than one
of the patented articles should be publicly
used. The use of a great number may tend
to strengthen the proof, but [**22] one
well-defined case of such use is just as
effectual to annul the patent as many.
Egbert v. Lippmann, 104 U.S. (14 Otto) 333, 336, 26 L.
Ed. 755 (1881) (citations omitted). See also Electric
Storage Battery Company v. Shimadzu, 307 U.S. 5, 20, 83
L. Ed. 1071, 59 S. Ct. 675 (1939) ("single use" of product
for profit sufficient to invalidate); Minnesota Mining and
Manufacturing Company v. Kent Industries, Inc., 409
F.2d 99, 100 (6th Cir. 1969) ("It is settled law that a
single public use ... is sufficient to invalidate a patent
under 35 U.S.C. 102(b).").
Additionally, "whether the use of an invention is
public or private does not necessarily depend upon the
number of persons to whom its use is known." Egbert,
104 U.S. at 336. The Court in Egbert explained further
that, "if an inventor, having made his device, gives or
sells it to another, to be used by the donee or vendee,
without limitation or restriction, or injunction of secrecy,
and it is so used, such use is public, even though the use
and knowledge of the use may be confined to one
person." Id.
Also [HN7] under 102(b), [**23] a patent claim is
invalid if the subject matter of the claim was "on sale" in
the United States more than a year before the effective
filing date. Like the "public use" bar, the "on sale" bar
"encourages early disclosure and prevents extension of
the statutory patent term." Intel Corporation v. U.S.
International Trade Commission, 946 F.2d 821, 830
(Fed.Cir. 1991) (citation omitted). In order to trigger the
"on sale" bar, no actual sale is necessary -- an offer to sell
is sufficient. See, e.g., King Instrument Corporation v.
Otari Corporation, 767 F.2d 853, 860 (Fed.Cir. 1985).
Consistent with the "public use" bar, a single sale or offer
for sale is enough to trigger the "on sale" bar. Intel
Corporation, 946 F.2d at 830. Furthermore, the "on sale"
bar is not limited to sales by the future patentee, i.e.,
SealMaster; rather, the doctrine applies with equal force
when the invention is placed "on sale" by a third party,
i.e., Silver Line. See J.A. LaPorte, Inc. v. Norfolk
Dredging Company, 787 F.2d 1577, 1581 (Fed.Cir.
1986) (citations omitted).
The law is also well established that [HN8] there is
no requirement that [**24] a sales offer specifically
identify all of the characteristics of an invention offered
for sale or that the parties recognize the significance of all
of these characteristics at the time of the offer. See
Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378,
1383-84 (Fed.Cir. 1999). "If a product that is offered for
sale inherently possesses each of the limitations of the
claims, then the invention is on sale, whether or not the
parties to the transaction recognize that the product
possesses [*796] the claimed characteristics." Abbott
Laboratories v. Geneva Pharmaceuticals, 182 F.3d 1315,
1319 (Fed.Cir. 1999) (citations omitted). It is for that
reason that this court is not concerned that Silver Line did
not use the term "J-rail" in its literature describing the
ATW 1000 window. The critical inquiry is whether the
then so-called fin rail possessed the same characteristics
as did SealMaster's J-rail. And, as previously discussed, it
did.
Finally, [HN9] patent invalidity based on public use
is required to be proved by clear and convincing
evidence. Moleculon Research Corporation v. CBS, Inc.,
793 F.2d 1261, 1266, 229 USPQ 805, 808 (Fed.Cir.
1986), [**25] cert. denied, 479 U.S. 1030, 107 S. Ct.
875, 93 L. Ed. 2d 829 (1987). Similarly, patent invalidity
based on the on sale bar is required to be proved by clear
and convincing evidence. Intel Corporation, 946 F.2d at
830. "Clear and convincing evidence has been described
as evidence which proves in the mind of the trier of fact
an abiding conviction that the truth of [the] factual
contentions are [sic] highly probable." Id. (internal
quotations and citations omitted). "The 'clear and
convincing' standard of proof of facts is an intermediate
standard which lies somewhere between 'beyond a
reasonable doubt' and a 'preponderance of the evidence.'"
Page 10
Buildex Inc. v. Kason Industries, Inc., 849 F.2d 1461,
1463 (Fed.Cir. 1988) (internal quotations and citations
omitted).
Against this legal background, the court concludes
that the defendants have proven, by clear and convincing
evidence, that the ATW 1000 window, which embodies
each element of what SealMaster later claimed in the '574
and the '010 patents (with the exception of Claim 2 of the
'010 patent) was placed "on sale" in the United States by
Silver Line well more than a year before [**26] the
earliest possible filing date of August 10, 1987. In fact,
the proof in this case indicates that the ATW 1000
windows were sold in commercially significant
quantities. Furthermore, once the ATW 1000 windows
were installed, they were in "public use." Again, the real
question in this case is not whether the ATW 1000
window was placed "on sale" or was in "public use." The
more difficult question is whether that window embodies
each element of what SealMaster later claims in its '574
and '010 patents. For the reasons previously enunciated,
the court holds that it does.
The only remaining limitation in any of the claims of
the patents-in-suit which is not included in the earliest
Silver Line product is found in Claim 2 of the '010
patent. In view of the early dates of the ATW 1000
windows, these windows were comprised of metal and
were not constructed of vinyl. Because of this limitation,
the court will not address this claim but will allow
defendants to further brief this issue, most likely asserting
obviousness under 35 U.S.C. 103, in a subsequent
motion for summary judgment as indicated in their brief
[see Doc. 23, p.25].
14
14 The court recognizes that whether Claim 2 of
the '010 patent was anticipated by Silver Line's
early products has no bearing on the separate
question of whether Claim 2 of this patent was
anticipated by SealMaster's own admitted sales
more than a year before its true 1992 effective
filing date. However, because of the complexities
of the issues raised in that prong of defendants'
motion, the court will reserve ruling on that issue,
if necessary, until after SealMaster files its
anticipated motion for summary judgment
regarding Claim 2 of the '010 patent relating to
obviousness under 35 U.S.C. 103.
[**27] Order accordingly.
James H. Jarvis,
UNITED STATES DISTRICT JUDGE
Page 11

Exhibit C

1

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TENNESSEE
NORTHERN DIVISION

J-CHANNEL INDUSTRIES CORPORATION,

Plaintiff,
v.

HOME DEPOT U.S.A., INC. AND
ANDERSEN CORPORATION,

Defendants.

Case No. 3:13-cv-606

PATENT CASE

JURY TRIAL DEMANDED

COMPLAINT
Plaintiff J-Channel Industries Corporation files this Complaint against Home Depot
U.S.A., Inc. and Andersen Corporation for infringement of U.S. Reissue Patent No. 40,041 (the
041 reissue patent).
THE PARTIES
1. J-Channel Industries Corporation (JCI) is a corporation organized and existing
under the laws of Delaware having an address at 900 Walt Whitman Road, Melville, NY 11747.
2. Defendant Home Depot U.S.A., Inc. (Home Depot) is a Delaware corporation
with its principal place of business in Atlanta, Georgia. Home Depot may be served with process
through its registered agent, Corporation Service Company, 2711 Centerville Road, Suite 400,
Wilmington, DE 19808.
3. Defendant Andersen Corporation (Andersen) is a Minnesota corporation with
its principal place of business in Bayport, Minnesota. Andersen may be served with process
through its authorized representative in the State of Minnesota, 100 4
th
Avenue, North Bayport,
Minnesota 55003.
Case 3:13-cv-00606-TAV-CCS Document 1 Filed 10/09/13 Page 1 of 6 PageID #: 1
2

4. Defendants Home Depot and Andersen are referred to collectively herein as
Defendants.
JURISDICTION AND VENUE
5. This is an action for patent infringement under Title 35 of the United States Code.
6. Jurisdiction is proper in this Court pursuant to 28 U.S.C. 1331 (Federal
Question) and 1338(a) (Patents) because this is a civil action for patent infringement arising
under the United States patent statutes, 35 U.S.C. 101 et seq.
7. Venue is proper under 28 U.S.C. 1391(c) and 1400(b) because Defendants
have committed acts of infringement in this district and/or are deemed to reside in this district.
8. This Court has personal jurisdiction over Home Depot and venue is proper in this
district because Home Depot has committed acts of infringement in the State of Tennessee,
including in this district, and has engaged in continuous and systematic activities in the State of
Tennessee, including in this district. Home Depot regularly conducts business in this district and
has retail stores located in this district, including but not limited to eight locations within 25
miles of Knoxville, exemplified by a store location at 4710 Centerline Drive, Knoxville, TN
37917. Additionally, Home Depot has registered with the State of Tennessee to do business in
Tennessee and maintains an agent for service of process in Tennessee. Therefore, Home Depot
has engaged in continuous and systematic activities in this district and has purposefully availed
itself of the privileges of conducting business in this district.
9. This Court has personal jurisdiction over Andersen and venue is proper in this
district because Andersen has committed acts of infringement in the State of Tennessee,
including in this district and has engaged in continuous and systematic activities in the State of
Tennessee, including in this district. For instance, Andersen has, at a minimum, engaged in
3

systematic activities in the State of Tennessee by virtue of its business dealings with Home
Depot. Additionally, on information and belief, Andersen markets and/or sells its window
products throughout the United States and in particular within the State of Tennessee. Therefore,
Andersen has engaged in continuous and systematic activities in this district and has
purposefully availed itself of the privileges of conducting business in this district.
COUNT I
(INFRINGEMENT OF U.S. REISSUE PATENT NO. 40,041)

10. JCI incorporates paragraphs 1 through 9 herein by reference.
11. This cause of action arises under the patent laws of the United States, and in
particular, 35 U.S.C. 271, et seq.
12. The 041 reissue patent is entitled, Window Frame for Manufactured Housing.
JCI is the assignee of the 041 reissue patent with ownership of all substantial rights in the 041
reissue patent, including the right to exclude others and to enforce, sue, and recover damages for
past and future infringement. A true and correct copy of the 041 reissue patent is attached as
Exhibit 1.
13. The 041 reissue patent is valid, enforceable and was duly issued in full
compliance with Title 35 of the United States Code.
(Direct Infringement)
14. Defendants have directly infringed one or more claims of the 041 reissue patent
in this judicial district and/or elsewhere in Tennessee and the United States, including at least
claim 1, without the consent or authorization of JCI, by or through their having made, offered for
sale, and/or used products that infringe the 041 reissue patent. Defendants are thereby liable for
infringement of the 041 reissue patent pursuant to 35 U.S.C. 271.
4

15. More particularly, Defendants have infringed at least claim 1 of the 041 reissue
patent by, among other things, having made, used, offered for sale, sold, and/or imported
windows having an integral J-Channel, including but not limited to the SilverLine by Andersen
3000 Series Double-Hung Window and the American Craftsman by Andersen 70 Double Hung
Fin Vinyl Window (Home Depot Model # 70 DH FIN). Defendants are liable for these direct
infringements of the 041 reissue patent pursuant to 35 U.S.C. 271.
16. In accordance with Fed. R. Civ. P. 11(b)(3), JCI will likely have additional
evidentiary support after a reasonable opportunity for discovery on this issue.
ADDITIONAL ALLEGATIONS PERTAINING TO PATENT INFRINGEMENT
CLAIMS

17. JCI has been damaged as a result of Defendants infringing conduct described
herein. Defendants are, thus, liable to JCI in an amount that adequately compensates JCI for
Defendants infringements, which, by law, cannot be less than a reasonable royalty, together
with interest and costs as fixed by the Court under 35 U.S.C. 284.
JURY DEMAND
JCI hereby requests a trial by jury pursuant to Rule 38 of the Federal Rules of Civil
Procedure.
PRAYER FOR RELIEF
JCI requests that this Court find in its favor and against Defendants, and that this Court
grant JCI the following relief:
a. Enter judgment for JCI on this Complaint;
b. Enter judgment that one or more claims of the 041 reissue patent has been
directly infringed by Defendants;
5

c. Enter judgment that Defendants account for and pay to JCI all damages to and
costs incurred by JCI because of Defendants infringing activities and other
conduct complained of herein;
d. Enter judgment that Defendants account for and pay to JCI a reasonable royalty
because of Defendants past infringing activities and other conduct complained of
herein;
e. Award JCI pre-judgment and post-judgment interest on the damages caused by
Defendants infringing activities and other conduct complained of herein; and
f. Award JCI such other and further relief as the Court may deem just and proper
under the circumstances.
6

DATED: October 9, 2013 Respectfully submitted,

/s/ Van R. Irion
Van R. Irion
LAW OFFICE OF VAN R. IRION, PLLC
9040 Executive Park Drive, Suite 200
Knoxville, TN 37923
P. 865.622.9674
F. 865.622.9674
van@irionlaw.com

Timothy E. Grochocinski
Aaron W. Purser
Joseph P. Oldaker
INNOVALAW, P.C.
1900 Ravinia Place
Orland Park, Illinois 60462
P. 708.675.1975
F. 708.675.1786
teg@innovalaw.com
apurser@innovalaw.com
joldaker@innovalaw.com

COUNSEL FOR PLAINTIFF
J-CHANNEL INDUSTRIES
CORPORATION


Silver Line Building Products v. J-Channel Industries

Uploaded by

Document Information

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Silver Line Building Products v. J-Channel Industries

Uploaded by

Copyright:

Available Formats

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF NEW YORK

You might also like