FREEDMAN & ASSOCIATES1
V.
B & B AWARDS, INC.
In May 2013, Freedman & Associates brought suit against B & B Awards, Inc. B & B
Awards, Inc. creates and sells trophies, plaques, medals and other award mementos. Freedman
& Associates accused B & B Awards, Inc. of infringing a Freedman patent for a glass trophy, and
Freedman & Associates also accused B & B Awards, Inc. of infringing its distinctiveness and trade
image (the characteristics of its trophies) under Lanham Act § 43(a), 15 U.S.C. 1125(a) (1982),
and violating the Minnesota Deceptive Trade Practices Act (“MDTPA”), Minn. Stat. § 325D.44.
Infringement may be found only if “every limitation set forth in a claim [is] found in an
accused product or process exactly or by a substantial equivalent.” Johnston v. IVAC Corp., 885
F.2d 1574, 1577, 12 USPQ2d 1382, 1384 (Fed. Cir. 1989). Where all claim limitations are present
in the accused device exactly, the claims “read on” the accused device and literal infringement is
made out. Even where there is no literal infringement, infringement may still be found under
the doctrine of equivalents if the limitation or limitations not literally present are thereby
equivalents. Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 795-96 (Fed. Cir. 1990).
1
Note: Although the citations in this document are genuine, the facts in this case were
fabricated.
1
B & B Awards, Inc. challenges the judgment of infringement by proclaiming that the jury
could not have found from the evidence that the accused trophies contain either exactly or
equivalently every limitation of the claim. See Johnston v. IVAC Corp. (infringement may be
found only if the accused product contains every limitation either exactly or by a substantial
equivalent).
Furthermore, B & B Awards, Inc. proclaims that even if the jury could determine every
limitation in the accused trophies is present, either exact or by a substantial equivalent, the
judgment would be erroneous as a matter of law because there can be no infringement if the
asserted scope of equivalency would encompass the prior art. See Wilson Sporting Goods Co. v.
David Geoffrey & Assoc., 904 F.2d 677, 683, 14 USPQ2d 1942, 1947-48 (Fed. Cir. 1990).
2