Clare v. Chrysler Group LLC , 819 F.3d 1323 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
SCOTT CLARE, NEIL LONG, INNOVATIVE TRUCK
STORAGE, INC.,
Plaintiffs-Appellants
v.
CHRYSLER GROUP LLC,
Defendant-Appellee
______________________
2015-1199
______________________
Appeal from the United States District Court for the
Eastern District of Michigan in No. 2:13-cv-11225-NGE-
DRG, Judge Nancy G. Edmunds.
______________________
Decided: 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.
______________________
2 CLARE v. CHRYSLER GROUP LLC
Before PROST, Chief Judge, MOORE and 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. 6,499,795 and
7,104,583 by 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 patents are directed to a hidden
storage compartment in the side of the bed of a pickup
truck. The specifications of the patents, which are identi-
cal 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
patent col. 1 ll. 20–40. The resulting modifications make
the pickup truck storage “an attraction for theft.” Id.
The ’795 and ’583 patents improve 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
CLARE v. CHRYSLER GROUP LLC 3
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 modifica-
tion to the bed, and therefore those with intent to steal
tools, etc. would not recognize the hidden storage ar-
rangement.” 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
patent col. 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 ap-
pearance 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
1 The district court granted Chrysler’s motion for
summary judgment of invalidity on the remaining assert-
ed claims, holding that those claims failed the written
description requirement of 35 U.S.C. § 112. The invali-
dated claims are not on appeal.
4 CLARE v. CHRYSLER GROUP LLC
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 be-
tween 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 pro-
cess: 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 specifica-
tion[], along with the patent’s prosecution history), the
judge’s determination will amount solely to a determina-
tion 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 (2015) (italics omit-
ted). Because the only claim construction evidence at
issue on appeal and presented to the district court is
2 On appeal, Clare does not dispute the district
court’s findings on the doctrine of equivalents. Clare only
asks that we remand the doctrine of equivalents issue to
the district court if we find it was based on a flawed claim
construction of the external appearance limitations.
CLARE v. CHRYSLER GROUP LLC 5
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 (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 constru-
ing 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 dis-
trict 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 assert-
ed 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
6 CLARE v. CHRYSLER GROUP LLC
46 of the ’795 patent and claim 1 of the ’583 patent are
representative of the asserted claims for the purpose of
the disputes on appeal. Claim 46 of the ’795 patent
requires, 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 adja-
cent to one of the wheel wells; and at least a por-
tion of one of the side panels is hinged to provide
access to at least a portion of the storage com-
partment wherein the side panels terminate adja-
cent to the frame . . . wherein the hinged portion is
constructed such that the truck has an external
appearance of a conventional pickup truck.
’795 patent col. 8 ll. 10–20, col. 8 ll. 39–41 (emphasis
added). Claim 1 the ’583 patent requires, in relevant
part,
A pickup truck comprising . . . a bed; the bed com-
prising: two opposed side panels which are con-
toured and generally in line with the contoured
sides of the forward area of the pickup truck . . . a
hinged panel providing access to the storage com-
partment, the bed being constructed such that the
pickup has substantially the external appearance
of a pickup without the built-in storage.
’583 patent col. 5 l. 55–col. 6 l. 8 (emphasis added).
The language of the claims determines what the pa-
tentee 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 out-
ward appearance of the pickup truck. Claim 46 of the
’795 patent, for example, requires that the side panel of
CLARE v. CHRYSLER GROUP LLC 7
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 patent requires that the bed of the
pickup truck, which comprises a hinged panel that pro-
vides access to the storage compartment, be modified in a
way that does not substantially alter the external appear-
ance of the truck.
The specifications likewise support this construction
of the external appearance limitations. See ’795 patent,
Abstract (“A pickup truck conversion . . . involves a stor-
age/utility system in any fleet side pickup truck bed
without substantially altering the bed’s external appear-
ance. . . . Since the storage system does not substantially
alter the truck’s external appearance, it reduces the
attraction for theft.”). Adding external storage compart-
ments to a pickup truck was not a new idea at the time of
the invention, as the specifications reference two such
pre-existing systems. Id. col. 1 ll. 18–30. The “need [that]
has been filled” by the invention is for external storage
that is not obviously apparent as storage so that it does
attract theft. Id. col. 1 ll. 31–33 (“While these prior stor-
age/utility arrangements have been satisfactory for their
intended purpose, such are an attraction for theft . . . .”),
col. 1 ll. 34–39 (“Thus, there has been a need for a stor-
age/utility system for pickup truck beds which does not
alter the bed’s external appearance . . . thereby reducing
the tool theft problem”), col. 1 ll. 41–45 (“This need has
been filled by the present invention which involves the
conversion of a conventional pickup truck bed into a
storage/utility bed without altering the external appear-
ance of the bed . . . .”), col. 1 ll. 50–54 (“Thus, the pickup
can be used for pleasure or work without the appearance
of its storage/utility capability, and can be parked in areas
where theft would likely occur from conventional tool
boxes or utility.”), col. 2 ll. 5–8 (“Another object of the
invention is to reduce theft potential from a storage/utility
8 CLARE v. CHRYSLER GROUP LLC
bed of pickup trucks, etc. by providing hidden storage
utility areas in the bed without altering the external
appearance of the bed.”).
The specifications describe how the invention accom-
plishes the “conversion of a conventional pickup truck bed
to a storage/utility bed without altering the external
appearance of the bed” to “reduce[] the theft potential
from storage/utility beds by eliminating the appearance of
such beds.” Id. col. 3 l. 66–col. 4 l. 6. The storage is added
to a conventional pickup truck by cutting the external
side panel of the truck bed vertically in two places, cut-
ting along the upper length on the inner surface of the
side panel, and disconnecting the lower length from the
frame. Id. col. 4 ll. 24–34. The side panel is then reat-
tached to the truck bed by attaching an internal hinge to
the side panel along the upper length, installing an inter-
nal latch along the lower length, and painting the cut
areas and the internal area to correspond to the color of
the bed. Id. col. 4 ll. 34–41. “Upon completion of the
conversion, from a side view, the only difference between
the converted bed and a nonconverted bed are two vertical
lines or small spaces, one just back of the front of the bed
and one just forward of the taillight section of the bed,
where the side panel is cut, as illustrated in FIG. 1.” Id.
col. 4 ll. 41–46.
The specifications contain a primary embodiment, 3 il-
lustrated by the figures in the patent, that closely tracks
3 The specifications also provide an example where
the side panel is cut “along a desired lower portion . . . to
eliminate the need for raising the entire side panel.” ’795
patent col. 5 ll. 44–50. This horizontal cut, marked as
number 34 in figure 1, appears as an extension of the
horizontal line in the cab of the truck and is therefore
consistent with the specifications’ requirement that the
CLARE v. CHRYSLER GROUP LLC 9
the description of the invention. Figures 1 and 2 are
reproduced below.
modifications do not “alter[] the external appearance of
the bed.” Id. col. 1 ll. 41–45
10 CLARE v. CHRYSLER GROUP LLC
Referring to figure 1, which is described as a “conven-
tionally appearing pickup truck,” the specifications state
that the pickup truck “has been modified in accordance
with the present invention, with the only indication of
such modification being the cuts, small spaces, or lines 20
and 21 in the side panels 15, as shown in FIG. 1, with the
side panel being closed.” ’795 patent col. 4 ll. 53–64. The
other features of the storage area are not visible: the
portion of the storage areas, marked with numbers 22 and
23 in figure 2, above and to the side of the rear wheels
does “not extend to the top or upper surface” of the bed;
the latch mechanism and key lock, marked with numbers
25 and 26 in figure 2, are “mounted in the rear of each of
the boxes,” which are hidden in a back portion of the truck
bed as shown in figure 2; and the hinges are located on
the interior of the storage compartment, as shown in
figure 3, such that they are “not visible from the exterior.”
Id. col. 4 l. 66–col. 5 l. 9, col. 5 ll. 23–25. Accordingly, the
CLARE v. CHRYSLER GROUP LLC 11
district court’s construction of the external appearance
limitations is well-supported by the intrinsic record.
Clare first argues that the district court should not
have construed the external appearance limitations
because the words “external” and “appearance” are readi-
ly apparent to a layperson. We disagree. Although those
words may be readily apparent to a lay person there
existed a fundamental dispute regarding the scope of
those limitations. See O2 Micro Int’l, Ltd. v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008)
(“A determination that a claim term ‘needs no construc-
tion’ or has the ‘plain and ordinary meaning’ may be
inadequate when a term has more than one ‘ordinary’
meaning or when reliance on a term’s ‘ordinary’ meaning
does not resolve the parties’ dispute.”). Clare argued to
the district court that the scope of the external appear-
ance limitations should focus on the visibility of the
internal storage box structure, not the external hinged
panel. According to Clare, even a fluorescent orange
external panel on a white pickup truck stamped with
large black letters saying STORAGE would meet the
limitations so long as the inside of the storage box itself
could not be seen from the outside of the pickup truck.
Chrysler, on the other hand, argued that the scope of the
external appearance limitations should take into account
the external hinged panel used to access the storage area.
The district court correctly resolved this dispute by con-
struing the external appearance limitations as directed to
the outward appearance of the pickup truck, which takes
into account the outward-appearing hinged panel.
Clare next argues that the external appearance limi-
tations contain two distinct sets of limitations that should
be construed separately; the ’795 claims require that the
inventive pickup truck “has an external appearance of a
conventional pickup truck” and the ’583 claims require
that the inventive pickup truck “has substantially the
external appearance of a pickup without the built-in
12 CLARE v. CHRYSLER GROUP LLC
storage.” Clare does not propose an alternative construc-
tion for either set of limitations, but the ordinary meaning
of “substantially” has often been recognized to mean
“largely but not wholly that which is specified.” See, e.g.,
Aventis Pharm. Inc. v. Amino Chems. Ltd., 715 F.3d 1363,
1377 (Fed. Cir. 2013). Although 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, applying the doctrine here indicates that the
’795 claims at issue require the inventive pickup truck to
appear identical to a conventional pickup truck. Such a
construction, however, is problematic because the ’795
specification is clear that the inventive pickup truck is not
identical to a conventional pickup truck—vertical cut
lines are visible from an external appearance. ’795 patent
col. 4 ll. 41–46 (“Upon completion of the conversion, from
a side view, the only difference between the converted bed
and a nonconverted bed are two vertical lines or small
spaces, one just back of the front of the bed and one just
forward of the taillight section of the bed, where the side
panel is cut, as illustrated in FIG. 1.”), col. 4 ll. 59–64
(“[T]he bed 12 of FIGS. 1 and 2 has been modified in
accordance with the present invention, with the only
indication of such modification being the cuts, small
spaces, or lines 20 and 21 in the side panels 15, as shown
in FIG. 1, with the side panel being closed.”), col. 5 ll. 33–
37 (“While the invention has been described with respect
to a pickup bed, it can be readily incorporated into trailer
or full-sized truck beds having side panels without de-
tracting from the appearance of the side panels, except for
the two vertical cuts therein.”). Although the specification
describes these vertical cut lines as being visible, the
specification also states that these visible cut lines do not
alter the appearance of the conventional pickup truck. Id.
col. 1 ll. 13–17 (“The present invention relates to . . . a
storage/utility conversion . . . in a conventional pickup bed
without altering the external appearance of the bed.”)
(emphasis added), col. 1 ll. 41–45 (“This need has been
CLARE v. CHRYSLER GROUP LLC 13
filled by the present invention which involves the conver-
sion of a conventional pickup truck bed into a stor-
age/utility bed without altering the external appearance of
the bed . . . .”) (emphasis added), col. 2 ll. 5–8 (“Another
object of the invention is to reduce theft potential from a
storage/utility bed of pickup trucks, etc. by providing
hidden storage utility areas in the bed without altering
the external appearance of the bed.”) (emphasis added),
col. 2 ll. 44–52 (“[T]he storage system is formed by a pair
of vertical cuts in the overall side panel of the bed adja-
cent ends of the overall side panel, and is constructed
such that when the side panel is lowered the storage box
is hidden and the appearance of the bed is not altered.”)
(emphasis added), col. 5 ll. 26–31 (“It has thus been
shown that the present invention provides a hidden
storage/utility arrangement that can be initially built into
a pickup truck bed, or a conventional bed can be convert-
ed to include the storage/utility arrangement without
altering the external appearance of the bed.”) (emphasis
added). In view of the specification, there is no way to
read the ’795 claims at issue as requiring the inventive
pickup truck to appear identical to a conventional pickup
truck. The specifications expressly and repeatedly state
that the vertical cut lines which are undisputedly visible
nonetheless do not alter the external appearance of the
truck. Thus, the district court did not err in concluding
that the external appearance limitations are all properly
construed as requiring a storage box that is not obvious
from the outward appearance. 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. See Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.
1996) (holding that an interpretation that excludes a
preferred embodiment “is rarely, if ever, correct”). We
therefore agree with the district court that the limitations
without the “substantially” modifier do not require that
the inventive pickup truck appear identical to a conven-
14 CLARE v. CHRYSLER GROUP LLC
tional pickup truck, and that a person of ordinary skill in
the art would understand that the two sets of limitations
have the same meaning.
Turning to the district court’s construction of the ex-
ternal appearance limitations, Clare argues that the
construction improperly imports the patent’s purpose—
the deterrence of theft—into the claims. See E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir.
2003) (“The court’s task is not to limit claim language to
exclude particular devices because they do not serve a
perceived ‘purpose’ of the invention. Rather, the district
court’s function is to interpret claims according to their
plain language unless the patentee has chosen to be his
own lexicographer in the specification or has clearly
disclaimed coverage during prosecution.”). The district
court did not import any theft-deterrent requirement into
the claims. Instead, the district court properly deter-
mined that the claimed “external appearance” of the
inventive truck must not have an obvious storage box.
The specifications teach that the inventor’s purpose for
making the storage box not obviously apparent was to
deter theft, but the non-obvious appearance of the storage
box is required of the claimed truck whether or not it
deters theft.
Finally, Clare argues that the district court’s con-
struction conflicts with the patentee’s express definition
in the prosecution history. Specifically, during the prose-
cution of the application that became the ’795 patent, the
examiner rejected a number of claims with the “external
appearance” limitation as indefinite. According to the
examiner, these claims require that the inventive pickup
truck “has an external appearance of a conventional
pickup truck,” but the cut lines make the inventive pickup
truck visibly distinct from a conventional pickup truck.
J.A. 4573–74. In response, the patentee defined “appear-
ance” as an “outward aspect,” based on Webster’s Colle-
giate Dictionary, Tenth Edition, and argued that the
CLARE v. CHRYSLER GROUP LLC 15
examiner erred in determining that “appearance” requires
a “visibly indistinct look.” J.A. 4606–07. The patentee
then stated that “the ordinary interpretation of the [ex-
ternal appearance limitations is] that the outward aspects
of the inventive pickup truck are like the outward aspects
of a pickup truck that does not have a storage box.” J.A.
4606. The patentee went on to cite excerpts from the
specification in support of his assertion that “the word
‘appearance’ as used in the specification contemplates
some visible distinctions such as, for example, hinges,
latches, vertical cuts, etc.” J.A. 4607. The examiner, in
the Notice of Allowance, allowed the claims because the
patentee’s remarks concerning the external appearance
limitations are “deemed to define” over the indefiniteness
rejection. J.A. 4644. Clare concludes that the patentee in
the prosecution history defined the external appearance
limitations to include outwardly visible hinges and latch-
es.
We disagree with Clare’s conclusion for two reasons.
First, the specifications do not contemplate visible hinges
or latches. The excerpts from the specifications cited by
the patentee, which are reflected in the ’795 patent col-
umn 1 lines 41–54, column 2 lines 46–52, column 3 lines
34–41, and column 5 lines 33–37, repeatedly emphasize
that the external appearance of the truck is not altered
except for two vertical cuts. The specific excerpts quoted
by the patentee do mention hinges and laches, but the
specifications as a whole make clear that the hinges and
laches are not visible from the outside of the truck. See
’795 patent col. 4 ll. 46–49 (“The hinge for each side panel
is located on an inner area of the side panel so as not to be
exposed to one viewing the bed from an external side
position.”), col. 5 ll. 23–25 (“The hinges 30 are located on
the interior of the bed 12 and thus not visible from the
exterior.”), Figure 2 (showing the latch mechanism 25
mounted in the rear of the internal storage boxes, which
are not visible from the exterior). Second, the patentee’s
16 CLARE v. CHRYSLER GROUP LLC
recitation of visible hinges and laches in the prosecution
history cannot expand the scope of the specifications,
particularly where the patentee incorrectly characterizes
the specifications, which do not contemplate any visible
features more obvious than vertical cuts. Biogen, Inc. v.
Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003)
(“Representations during prosecution cannot enlarge the
content of the specification . . . .”). In light of the specifi-
cations, we interpret the patentee’s statements in the
prosecution history as arguing that the claims are not so
narrow to require “visibly indistinct” modifications. This
is consistent with the district court’s construction of the
external appearance limitations.
We have considered all of Clare’s remaining argu-
ments and find them without merit.
II. Summary Judgment of Non-Infringement
In view of the district court’s construction of the ex-
ternal appearance limitations, the district court deter-
mined that no reasonable juror could find that the
accused trucks met the external appearance limitations.
In making this determination, the district court relied on
deposition admissions by Clare’s expert, Dr. Akin, who
testified multiple times that the hinged panel of the
RamBox’s storage compartment, the lock, the two vertical
and one horizontal cut lines, and the bed modifications
are visible and apparent to a casual observer. The district
court also relied on deposition admissions by Clare’s two
fact witnesses, who testified that the external door to the
RamBox’s storage compartment was obvious.
Clare argues that there are genuine factual disputes
that prevent a finding of non-infringement at the sum-
mary judgment phase. The evidence pointed to by Clare,
however, is based on an incorrect understanding of the
district court’s claim construction. For example, Dr. Akin
in his expert report states that the internal storage box in
the modified Dodge Ram is not obvious because a casual
CLARE v. CHRYSLER GROUP LLC 17
observer would not know that a storage box is below the
hinged panel; the hinged panel could be concealing an
electronic panel or a fuel tank. Dr. Akin’s statement
misunderstands the district court’s claim construction in
two ways. First, a storage box is a separate element of
the claim that must be met in order for the accused truck
to infringe. If the accused truck has an electronic panel or
fuel tank instead of a storage box, then the accused truck
does not infringe the storage box limitation, regardless of
the external appearance of the truck. Second, the exter-
nal appearance limitations as construed require that the
storage box, including the portion of the storage box on
the side panel of the truck that opens up to expose the
storage area, is not obvious from the outward appearance
of the truck. If the panel is obvious from the outward
appearance of the pickup truck, then the external appear-
ance limitations are not met.
In his expert report, Dr. Akin also states that the
hinged panel is not obvious because it is not visible from
some angles, perspectives, and distances. The district
court’s claim construction, however, does not require that
the hinged panel be obvious from every angle, perspective,
and distance, and such a requirement would be nonsensi-
cal in the context of the specifications. Clare is correct
that the construction does not specify which angles,
perspectives, or distances are contemplated, but the
specifications make clear that the external appearance of
the truck is viewed by a casual observer looking at the
modified side panel. See, e.g., ’795 patent col. 4 ll. 41–46
(“Upon completion of the conversion, from a side view, the
only difference between the converted bed and a noncon-
verted bed are two vertical lines or small spaces, one just
back of the front of the bed and one just forward of the
taillight section of the bed, where the side panel is cut, as
illustrated in FIG. 1.”), col. 4 ll. 49–52 (“Thus, one would
not readily recognize the modification to the bed, and
18 CLARE v. CHRYSLER GROUP LLC
therefore those with intent to steal tools, etc. would not
recognize the hidden storage arrangement.”).
Clare also points to portions of Dr. Akin’s expert re-
port that discuss his opinions as to why the external panel
of the RamBox is not obvious: the panel has matching
contours, matching paint colors, matching texture, incon-
spicuous cut lines that follow the body lines of the bed,
and vertical lines that are placed at an angle to match
nearby structures while maintaining a flush fit between
the panel and the side of the bed. Taking Dr. Akin’s
opinions as true for the purpose of summary judgment, we
find no disputed issue of material fact to preclude sum-
mary judgment. The RamBox panel can have all the
features enumerated by Dr. Akin in his expert report, and
still be visible and apparent to a casual observer as Dr.
Akin testified in his deposition, such that the panel is
obvious from an outward appearance.
The evidence in front of the district court contained
many pictures of the accused products from relevant
viewpoints. Two such pictures are shown below. See J.A.
2932, 3404. Reviewing the evidence de novo and drawing
all reasonable inferences in Clare’s favor, we agree with
the district court that no reasonable juror could find that
the hinged portion of the RamBox’s storage compartment
was not obvious from the outward appearance of the
accused trucks.
CLARE v. CHRYSLER GROUP LLC 19
CONCLUSION
The district court correctly construed the external ap-
pearance limitations and granted summary judgment of
non-infringement. The decision of the district court is
therefore
AFFIRMED
COSTS
Costs to Chrysler.