Clare v. Chrysler Grp. LLC

• Decision Date: 31 March 2016
• Docket Number: No. 2015–1199.,2015–1199.
• Citation: 819 F.3d 1323
• Parties: Scott CLARE, Neil Long, Innovative Truck Storage, Inc., Plaintiffs–Appellants v. CHRYSLER GROUP LLC, Defendant–Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

819 F.3d 1323

Scott CLARE, Neil Long, Innovative Truck Storage, Inc., Plaintiffs–Appellants

v.CHRYSLER GROUP LLC, Defendant–Appellee.

No. 2015–1199.

United States Court of Appeals, Federal Circuit.

March 31, 2016.

Jonathan Tad Suder, Friedman, Suder & Cooke, Fort Worth, TX, argued for plaintiffs-appellants. Also represented by Jaye Quadrozzi, Rodger D. Young, Young & Associates, Farmington Hills, MI.

Frank C. Cimino, Jr., Venable LLP, Washington, DC, argued for defendant-appellee. Also represented by Jonathan L. Falkler, Leslie A. Lee, Megan S. Woodworth.

Before PROST, Chief Judge, MOOREand WALLACH, Circuit Judges.

MOORE, Circuit Judge.

Scott Clare, Neil Long, and Innovative Truck Storage, Inc. (collectively, Clare), accused Chrysler Group LLC of infringing claims of U.S. Patent Nos. 6,499,795and 7,104,583by importing, making, using, selling, and offering to sell Dodge Ram pickup trucks equipped with the Dodge RamBox Cargo Maintenance System. We affirm the district court's grant of summary judgment of non-infringement.

BACKGROUND

The ′795 and ′583 patentsare directed to a hidden storage compartment in the side of the bed of a pickup truck. The specifications of the patents, which are identical in relevant part, describe conventional methods for altering the bed of a pickup truck to add storage space, but these methods "alter the bed's external appearance" to give the pickup truck the "appearance of a utility bed" with visible storage panels, handles, and locks. ′795 patentcol. 1 ll. 20–40. The resulting modifications make the pickup truck storage "an attraction for theft." Id.

The ′795 and ′583 patentsimprove on the prior art by adding storage to the bed of a pickup truck "without altering the external appearance of the bed and without significant reduction in the carrying capacity" of the bed. Id. col. 1 ll. 41–44. In order to add storage space without significantly reducing storage capacity, the storage area is placed in the side of the bed "adjacent [to] the wheel well area, and along the length of the bed." Id. col. 1 ll. 45–50. The external side panel of the truck is used to access the storage area. Id. The only visible modifications to the external side panel are two vertical lines where the side panel is cut. Id. col. 4 ll. 41–46. The hinge is placed out-of-sight on the inside of the side panel, and the latch and lock are placed out-of-sight on the interior side of the bed. Id. col. 4 ll. 46–49, col. 5 ll. 7–9. After the modifications are made, "one would not readily recognize the modification to the bed, and therefore those with intent to steal tools, etc. would not recognize the hidden storage arrangement." Id. col. 4 ll. 49–52.

At issue on appeal are claim limitations characterized by the district court and the parties as the "external appearance limitations." See, e.g., id. col. 8 ll. 39–41 ("the hinged portion is constructed such that the truck has an external appearance of a conventional pickup truck"); ′583 patentcol. 6. ll. 6–8 ("the bed being constructed such that the pickup has substantially the external appearance of a pickup without the built-in storage"). The district court gave these limitations the same construction, as "the hinged portion is constructed such that the storage box is not obvious from the outward appearance of the pickup." Clare v. Chrysler Grp., LLC, No. 13–11225, 2014 WL 2514563, at *11 (E.D.Mich. June 4, 2014).

Chrysler moved for summary judgment of non-infringement of the claims containing the external appearance limitations: claims 21 and 46 of the ′ 795 patent, and claims 33, 34, 37, 41, 43, 44, 46–48, 53, 56, and 57 of the ′583 patent.¹ The district court granted Chrysler's motion, holding that no reasonable juror could find that the RamBox, with its numerous and obvious visible distinctions of the external hinged panel, is not obvious from the outward appearance of the pickup truck. Clare v. Chrysler Grp. LLC, No. 13–11225, 2014 WL 6886292, at *4 (E.D.Mich. Dec.4, 2014)("The metallic lock of the RamBox is plainly visible. It is positioned in an open portion at the center of the RamBox storage lid and the metallic color of the lock contrasts with the surrounding color of the pickup's side panel. The seams created between the storage lid and the side panel are also visible. They are located in an outward-facing area above waist height. Finally, the top rail of the RamBox is stamped 'RAMBOX' in large lettering."). The district court also held that no reasonable jury could find that the RamBox satisfied the external appearance limitations under the doctrine of equivalents.²

Clare appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

DISCUSSION

Determining literal infringement is a two-step process: the "proper construction of the asserted claim and a determination whether the claim as properly construed reads on the accused product or method." Georgia–Pac. Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1330 (Fed.Cir.1999). "[W]hen the district court reviews only evidence intrinsic to the patent (the patent claims and specification[ ], along with the patent's prosecution history), the judge's determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo." Teva Pharm. USA Inc. v. Sandoz, Inc., ––– U.S. ––––, 135 S.Ct. 831, 841, –––L.Ed.2d –––– (2015)(italics omitted). Because the only claim construction evidence at issue on appeal and presented to the district court is intrinsic, our review is de novo. See Pacing Techs., LLC v. Garmin Int'l, Inc., 778 F.3d 1021, 1023 (Fed.Cir.2015).

We review the grant of summary judgment of non-infringement under the law of the relevant regional circuit. The Sixth Circuit reviews grants of summary judgment de novo. Moore v. Holbrook, 2 F.3d 697, 698 (6th Cir.1993). Summary judgment is appropriate if "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). "The evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in [its] favor." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

I. Claim Construction

The district court construed the external appearance limitations to mean "the hinged portion is constructed such that the storage box is not obvious from the outward appearance of the pickup." Clare, 2014 WL 2514563, at *11. Clare argues that the district court erred in construing the limitations and erred in giving the different limitations the same construction. Clare asserts that the district court's construction improperly removes the "conventional pickup truck" frame-of-reference from the claims, improperly imports the theft-deterrent purpose of the invention into the claims, and conflicts with the patentee's express definition of the limitations in the prosecution history. Clare asks that we vacate the district court's construction, and hold that the external appearance limitations do not need a construction because the limitations are readily apparent to a lay person. We conclude that the district court properly construed these limitations.

The external appearance limitations appear in asserted dependent claims 21 and 46 of the ′795 patent, and in independent claims 1, 22, and 45 of the ′ 583 patent, from which the asserted claims of that patent depend. Claim 46 of the ′795 patentand claim 1 of the ′583 patentare representative of the asserted claims for the purpose of the disputes on appeal. Claim 46 of the ′795 patentrequires, in relevant part,

A pickup truck having: a cab; a bed with two side panels connected to the cab and mounted on a frame ... the improvement comprising: a storage compartment mounted within the bed and adjacent to one of the wheel wells; and at least a portion of one of the side panels is hinged to provide access to at least a portion of the storage compartment wherein the side panels terminate adjacent to the frame ... wherein the hinged portion is constructed such that the truck has an external appearance of a conventional pickup truck.

′795 patentcol. 8 ll. 10–20, col. 8 ll. 39–41 (emphasis added). Claim 1 the ′583 patentrequires, in relevant part,

A pickup truck comprising ... a bed; the bed comprising: two opposed side panels which are contoured and generally in line with the contoured sides of the forward area of the pickup truck ... a hinged panel providing access to the storage compartment, the bed being constructed such that the pickup has substantially the external appearance of a pickup without the built-in storage.

′583 patentcol. 5 l. 55–col. 6 l. 8 (emphasis added).

The language of the claims determines what the patentee regards as the invention and defines what the patentee is entitled to exclude. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005)(en banc). Both sets of claims require that the inventive modifications to a conventional pickup truck are not obvious from the outward appearance of the pickup truck. Claim 46 of the ′ 795 patent, for example, requires that the side panel of the bed be modified with a hinged portion that provides access to a storage compartment, in a way that does not alter the external appearance of the truck. Similarly, claim 1 of the ′583 patentrequires that the bed of the pickup truck, which comprises a hinged panel that provides access to the storage compartment, be modified in a way that does not substantially alter the external appearance of the truck.

The specifications likewise support this construction of the external appearance limitations. See ′795 patent, Abstract ("A pickup truck conversion ... involves a storage/utility system in any fleet side pickup truck bed without substantially altering the bed's external appearance.... Since the storage system does not substantially alter the truck's external appearance, it reduces the attraction for theft."). Adding external storage compartments to a pickup truck was not a new idea at...