Docket No. 2015-1199
PROST, MOORE, WALLACH
March 31, 2016
Brief Summary: DC claim construction (e.g., (“the non-obvious appearance of the storage box is required of the claimed truck whether or not it deters theft”) and grant of SJ of non-infringement affirmed.
Summary: Clare appealed DC grant of SJ of non-infringement of US 6,499,795 and 7,104,583 relating to hidden pickup truck storage comparments to Chrysler. The DC determined different limitations in each patent to mean “the hinged portion is constructed such that the storage box is not obvious from the outward appearance of the pickup.” The DC concluded Chrysler’s RamBox did not infringe because, e.g., “[t]he metallic lock…is plainly visible”, “[t]he seams created between the storage lid and the side panel are also visible”, and “the top rail of the RamBox is stamped”. The FC panel’s review of the claim construction was de novo since all the evidence was intrinsic (Teva, US 2015; Pacing Techs., FC 2015). Clare argued the DC erred in giving both limitations the same construction and that these did not “need  construction because the limitations are readily apparent to a lay person.” The FC found the DC did not err, concluding that “[b]oth sets of claims require that the inventive modifications to a conventional pickup truck are not obvious from the outward appearance” and “[t]he specifications support [the DC’s] construction” (e.g., “The ‘need [that] has been filled’ by the invention is for external storage that is not obviously apparent as storage so that it does not attract theft.”) And the FC panel disagreed the words “‘external’ and ‘appearance’ are readily apparent to a lay person” since the parties disputed the meanings (O2 Micro, FC 2008). Clare also argued the use of the terms in each patent required separate construction but the FC disagreed (“the ordinary meaning of ‘substantially’ has often been recognized to mean ‘largely but not wholly that which is specified’” (Aventis Pharm., FC 2013); “Differentiating between the two sets of claim limitations would also result in the ‘795 claims excluding the specification’s description of the invention and the preferred embodiment.” Vitronics, FC 1996; also noting “the doctrine of claim differentiation is not as strong across related patents as it would be if the different claim limitations appeared in the same patent”). Clare also argued the DC improperly “import[ed] the patent’s purpose-the deterrence of theft-into the claims” (E-Pass Techs., FC 2003) but the FC panel again disagreed (“the non-obvious appearance of the storage box is required of the claimed truck whether or not it deters theft”). The FC also disagreed with Clare that the DC’s “construction conflicts with the patentee’s expressd definition in the prosecution history” because “the specifications do not contemplate visible hinges or latches” and “the patentee’s recitation of visible hinges and latches in the prosecution history cannot expand the scope of the specifications (Biogen, FC 2003). The FC panel also rejected Clare’s arguments regarding the non-infringement finding were “based on an incorrect understanding of the [DC’s] claim construction”, and further found no error with the DC conclusion of no infringement (based in part on photographs).