CAFC: Claim construction is appropriate even where term has a plain and ordinary meaning

federal-circuit-cafc-11-17-2010bClare v. Chrysler Grp. LLC (Fed. Cir. Mar. 31, 2016) (Before Moore, Wallach, and Prost, CJ.) (Opinion for the court, Moore, J.). Click Here for a copy of the opinion.

Clare sued Chrysler for infringement of two patents on hidden storage boxes for pick-up trucks. The claimed boxes were incorporated into the side panels of the pick-up’s bed, and accessible from a lid over the wheel wells. Clare alleged that Chrysler’s “RamBox” storage system, sold as an option with Dodge Ram pick-up trucks, infringed Clare’s patents. After finding that most of the asserted claims were invalid for lack of written description, the remaining claims contained a limitation requiring that the truck have “an external appearance” of either a “conventional pickup truck” or “a pickup without the built-in storage.” The district court construed these terms to mean that “the hinged portion” of the storage box lid “is constructed such that the storage box is not obvious from the outward appearance of the pickup.” Using that construction, the district court granted summary judgment of non-infringement, because the RamBox  system included a metallic lock plainly visible in the center of the box, has clearly visible seams, and the top rail of the box is stamped with “RAMBOX” in large lettering. Clare appealed, challenging the district court’s construction of the external appearance limitations, and grant of summary judgment of non-infringement.

First, Clare argued that the limitations do not need a construction because the meaning is plain to a lay person. The Court disagreed, holding that even where a term has a plain and ordinary meaning, claim construction is appropriate where there is a dispute over the scope of the terms. Here, Clare argued that a storage box with a fluorescent orange external panel on a white pickup truck, and labeled “STORAGE” would meet the limitations, so long as the inside of the storage box was not visible from the outside. Chrysler argued that the external appearance limitations should take into account the external hinged panel used to access the storage box. In view of this dispute, the district court correctly resolved it construing the claim.

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Second, Clare argued that the district court erred by giving claim limitations with different wording the same construction. One patent required a pickup truck to have “substantially” the same external appearance as a conventional pickup truck, while another patent did not contain the word “substantially.” The Court rejected this argument, reasoning that claim differentiation applies with lesser force between patents, than between claims of the same patent. Further, applying it here would require that the claim without the word “substantially” apply only to pickups that appear identical to un-modified pickups, which the Specification does not contemplate.

Third, Clare argued that the construction improperly imported a theft-deterrence limitation into the claims. The Court rejected this argument, reasoning that the district court’s construction focused purely on the external appearance, and not any theft-deterrence motive or purpose in arriving at its construction.

Fourth, Clare argued that the construction conflicts with the patentee’s express definition of the limitations in claim construction. The Court again rejected this argument. During prosecution, the patentee made statements suggesting that the “appearance” referred to in the specification contemplated allowing some externally visible components, such as hinges, latches, and vertical cuts. The Court found that these statements did not expand the scope of the claims.

For these reasons, the district court’s claim construction was affirmed.

Clare attempted to challenge the grant of summary judgment of non-infringement, by alleging various disputes of material fact. Clare argued that the RamBox was not obvious to an external observer because the hinged panel could be concealing an electronic panel or fuel tank. The Court rejected this argument, as the details of what the box concealed are not relevant to the “external appearance” limitations. Clare also argued that the hinged panel is not obvious because it is not visible from some angles, perspectives and distances. The Court rejected this argument as well, since the district court’s construction only required that the panels not be obvious to a casual observer, not from all angles, perspectives, and distances. Further, the district court relied on various admissions by Clare’s own experts in granting summary judgment, including express statements that the bed modifications are visible and apparent to a casual observer. Accordingly, the Court affirmed the district court’s grant of summary judgment of non-infringement.

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The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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