Terlep v. Brinkmann Corp.

• Decision Date: 16 August 2005
• Docket Number: No. 04-1337.,04-1337.
• Citation: 418 F.3d 1379
• Parties: Stephen K. TERLEP, Plaintiff-Appellant, v. The BRINKMANN CORP., Wal-Mart Stores, Inc., and Home Depot U.S.A., Inc., Defendant-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1379

418 F.3d 1379

Stephen K. TERLEP, Plaintiff-Appellant, v. The BRINKMANN CORP., Wal-Mart Stores, Inc., and Home Depot U.S.A., Inc., Defendant-Appellees.

No. 04-1337.

United States Court of Appeals, Federal Circuit.

August 16, 2005.

Nathan Price Chaney, Nolan Henry, PLLC, of Fayetteville, Arkansas, argued for plaintiff-appellant. With him on the brief were Mark Murphey Henry and James Aubrey Fussell.

Gary A. Clark, Sheppard, Mullin, Richter & Hampton LLP, of Los Angeles, California, argued for defendants-appellees. On the brief was Hermann Ivester, Mitchell, Williams, Selig, Gates & Woodyard, P.L.L.C., of Little Rock, Arkansas.

Before BRYSON, GAJARSA, and LINN, Circuit Judges.

LINN, Circuit Judge.

Stephen K. Terlep ("Terlep") appeals from the decision of the United States District Court for the Western District of Arkansas ("district court") granting the motion of The Brinkmann Corp., Wal-Mart Stores, Inc., and Home Depot, U.S.A., Inc. (collectively, "Brinkmann") for summary judgment of non-infringement of U.S. Patent No. 5,594,433 ("the '433 patent"). Terlep v. Brinkmann Corp., No. 02-CV-5127 (W.D.Ark. March 29, 2004) ("Order I"). Because the district court correctly construed the claim term "clear" and properly granted Brinkmann's motion for summary judgment of non-infringement, we affirm.

I. BACKGROUND

The '433 patent relates to omni-directional light emitting diode ("LED") lamps. LEDs are a desirable substitute for traditional incandescent lamps because of their increased lifetime, higher resistance to shock and vibration, and lower cost of production. However, in contrast to an incandescent lamp, which emits light omni-directionally, the light from an LED is emitted in a forward cone of less than 90 degrees. The '433 patent is directed to the production of omni-directional light by reflecting the cone of light from an LED off a semi-spherical convex reflector.

Independent claim 1 recites, with the terms at issue underlined:

1. An omni-directional LED lamp useful for traffic control and warning devices that reflects light in a 360 degree circumferential direction without having to rotate any components, comprising:

a first LED;

a first semi-spherical reflector having a continuous convex reflective surface, the first semi-spherical reflector mounted above the first LED, wherein light from the first LED is reflected substantially in a 360 degree circumference rendering the first LED omni-directional; and a first clear plastic tubular holder for tightly holding the first semi-spherical reflector oriented directly above the first LED in a stationary non rotating position, wherein the first semi-spherical reflector reflects light in a 360 degree circumferential direction.

'433 patent, col. 6, ll. 13-28.

Claim 4 depends from claim 1 and recites that the "first semi-spherical reflector includes: a mirror finish deposited on a plastic shape." Id. at col. 6, ll. 57-59.

On November 28, 1997, Terlep filed suit against Brinkmann, alleging that Brinkmann's products infringed claims 1 and 4 of the '433 patent literally and under the doctrine of equivalents. The accused products are solar-powered lamps for pathway lighting. The lamps were sold through retailers Wal-Mart and Home Depot. These lamps use an LED and a convex reflector that is less than a full half sphere. Further, because they are used for pathway lighting, the relative orientation between the reflector and the LED when the product is in use is such that the reflector is located below the LED. Finally, the Brinkmann lights use a ribbed holder to align and position the reflector in front of the LED. Brinkmann denied infringement and filed a counterclaim alleging invalidity. The district court construed a number of disputed terms and, based on the claim construction, granted Brinkmann's motion for summary judgment of non-infringement and dismissed the claims with prejudice. Order I.

On April 14, 2004, Terlep filed a notice of appeal. Because the district court's initial order did not address Brinkmann's invalidity counterclaim, this court determined that it lacked jurisdiction and dismissed the appeal. Terlep v. Brinkmann Corp., 127 Fed.Appx. 498 (Fed.Cir.2005). Thereafter, following a stipulation by the parties, the district court dismissed Brinkmann's counterclaim without prejudice, leaving no issues unresolved. Terlep v. Brinkmann Corp., No. 02-CV-5127 (W.D.Ark. March 24, 2005) ("Order II").

On March 10, 2005, Terlep filed a new notice of appeal and a motion to reinstate. In an Order entered April 11, 2005, this court recalled the mandate and reinstated the appeal. The appeal is now properly before us, and we have jurisdiction under 28 U.S.C. § 1295(a)(1).

II. ANALYSIS

A. Standard of Review

"We review a district court's grant of summary judgment de novo." See Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, 1315 (Fed.Cir.1998). Summary judgment is appropriate only when there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c). "In determining whether there is a genuine issue of material fact, the evidence must be viewed in the light most favorable to the party opposing the motion, with doubts resolved in favor of the opponent." Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1307 (Fed.Cir.1998). If there are no material facts in dispute precluding summary judgment, "our task is to determine whether the judgment granted is correct as a matter of law." Marathon Oil Co. v. United States, 177 F.3d 1331, 1337 (Fed.Cir.1999).

A determination of infringement requires a two-step analysis. "First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process." Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed.Cir.1993). Claim construction is an issue of law, see Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), that we review de novo, see Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed.Cir.1998) (en banc). Infringement, whether literal or under the doctrine of equivalents, is a question of fact. See Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed.Cir.1998).

B. Discussion

Terlep argues that the district court erred in granting summary judgment by concluding that the preamble of claim 1 of the '433 patent was a limitation, and that Brinkmann did not meet the "above" and "clear" limitations of claim 1. Brinkman responds that the district court correctly construed these limitations and, further, that the district court's judgment should be affirmed on the additional grounds that the limitations "semi-spherical," "directly," "plastic," and "tubular" have not been met. Because we conclude that the district court correctly construed the "clear" limitation of claim 1, and because summary judgment of non-infringement was proper on that basis, we do not consider Terlep's other arguments or Brinkman's additional grounds for affirmance.

1. Claim Construction

"The construction of claims is simply a way of elaborating the normally terse claim language in order to understand and explain, but not to change, the scope of the claims." Embrex, Inc., v. Serv. Eng'g Corp., 216 F.3d 1343, 1347 (Fed.Cir.2000) (internal quotations and citation omitted). Interpreting the asserted claims entails a review of the intrinsic evidence, which consists of the claim language, the written description, and the prosecution history. See id.; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996).

"[T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005) (en banc) (internal quotations omitted). "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id. at 1317. Extrinsic evidence such as dictionaries also "may be considered if the court deems it helpful in determining the true meaning of the language used in the patent claims," id. at 1318 (internal quotations omitted), provided the court "attach[es] the appropriate weight ... to those sources in light of the statutes and policies that inform patent law," id. at 1324.

The district court construed the term "clear" of independent claim 1 to mean "transparent" or "having the property of transmitting light without appreciable scattering so that bodies lying beyond are seen clearly." Order I at 7. Terlep challenges the district court's interpretation arguing that the term should be construed to also cover translucent holders. Terlep contends that the intrinsic record requires only that the word "clear" be construed to permit the passage of light. Brinkmann responds that the district court's construction is correctly informed by the written description, which states that the purpose of the holder is to maximize light output, and that any other interpretation would be inconsistent with the '433 patent. Brinkmann adds that the "translucent" argument was not made to the district court and, thus, was waived.

Claim 1 recites an omni-directional LED lamp that has three elements: an LED; a semi-spherical reflector; and a clear plastic tubular holder. The claim sets forth the positional relation between these elements such that the light emitted from the LED is rendered omni-directional after reflecting off the semi-spherical reflector. See '433 patent, col. 6, ll. 26-27. The reflected light passes through the holder, which holds the semi-spherical reflector. See id....