Adrain v. Superchips, Inc.

218 F. App'x 982
CourtCourt of Appeals for the Federal Circuit
DecidedJanuary 25, 2007
DocketNo. 2006-1376
StatusPublished

This text of 218 F. App'x 982 (Adrain v. Superchips, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Adrain v. Superchips, Inc., 218 F. App'x 982 (Fed. Cir. 2007).

Opinions

MICHEL, Chief Judge.

John B. Adrain appeals from a judgment of the United States District Court for the Southern District of Texas in favor of Su-perchips, Inc. and various other defendants (collectively “Superchips”) in his suit alleging infringement of United States Patent No. 5,523,948 (“the '948 patent”). Adrain v. Superchips, Inc., No. H-04-4117, 2006 WL 734423 (S.D.Tx. March 14, 2006). The district court correctly construed claims 1 and 5 to require the device to remain installed in a vehicle, such that the accused products do not infringe. With respect to claim 19, we hold that claim 19 was anticipated by United States Patent No. 5,278,759 (“Berra”). We therefore affirm.

I. BACKGROUND

The '948 patent was the subject of a prior appeal before this court. See Adrain v. Hypertech, Inc., 70 Fed.Appx. 557 (Fed.Cir.2003) (“Hypertech ”). Asserted claims 1, 5 and 19 were reproduced in that opinion, id. at 558-59, and will not be repeated here.1

Briefly, the '948 patent is directed to an apparatus and method for modifying an engine control module (“ECM”) in an automobile. An ECM is an onboard computer that controls a variety of engine functions. ECMs can be customized to enhance engine performance or reconfigured so the engine operates differently than originally intended by the vehicle manufacturer. [984]*984For example, as described in the specification, an ECM can be reprogrammed so an engine designed to burn gasoline or diesel will also run on alternative fuels. See '948 patent, col.l 1.60-eol.2 1.3, eol.6 11.14-38.

On October 22, 2004, Mr. Adrain filed suit in the United States District Court for the Southern District of Texas against Su-perchips. After the parties filed their claim construction briefs, a court-appointed special master filed his recommendations on December 16, 2005; various objections were filed. A Markman hearing was held on February 8, 2006. The district court subsequently issued an order (1) construing the disputed claims; (2) granting summary judgment of non-infringement as to claims 1 and 5; and (3) granting summary judgment of invalidity as to claim 19. Adrain v. Superchips, Inc., 2006 WL 734423, 2006 U.S. Dist. LEXIS 25212 (S.D.Tx. March 14, 2006).

Judgment was entered accordingly, and a timely appeal followed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

II. DISCUSSION

A.

Mr. Adrain first argues that summary judgment of non-infringement with respect to the apparatus claims was improperly granted because the court erred in its claim construction. We review a district court’s claim construction without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-56 (Fed.Cir.1998) (en banc). In construing disputed claim terms, we determine the customary meaning as understood by a person of ordinary skill in the art according to the methodology described in Phillips v. AWH Corp., 415 F.3d 1303, 1312-19 (Fed.Cir.2005) (en banc).

Although multiple claim terms were disputed, Mr. Adrain only seeks appellate review of one of them. Specifically, he contends that the district court erred in construing the preamble phrase “[a]n improvement in a vehicle” in claim 1 to require that the module remain part of the vehicle once attached. Adrain, at *4, 2006 U.S. Dist. LEXIS 25212 at *11-12. We reject this argument.

The prosecution history of an earlier patent in the same family “applies with equal force to subsequently issued patents that contain the same claim limitation.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed.Cir.1999). Here, the '948 patent is a continuation-in-part of United States Patent No. 5,446,655, which is a continuation of United States Patent No. 5,293,317, which is itself a continuation of United States Patent No. 5,200,900 (“the '900 patent”).

Most relevant to this appeal, the district court pointed to the prosecution history of the '900 patent. Although the original claims of that application referred to “an improvement in an apparatus,” they were amended to read “an improvement in a vehicle.” The examiner had cited United States Patent No. 4,502,324 (“Marino”) as prior art, but the patentee argued that claim 1, as amended, was not anticipated because “Marino is not an improvement in a vehicle, but a stationary piece of shop equipment.” Indeed, this court has previously observed that this statement “suggests that the phrase ‘an improvement in a vehicle,’ which was carried through to claim 1 in the '948 patent, may require the invention to be incorporated within or retrofitted to the vehicle.” Hypertech, 70 Fed.Appx. at 561. Because the argument was not raised in that appeal, however, the panel declined to address it. Id. Now that the issue is squarely before us, we do not hesitate to affirm the district court’s construction of “an improvement in a vehicle” to mean “a module that becomes part of a [985]*985vehicle and is intended to remain part of the vehicle during use.”2

Based on this interpretation, the district court granted summary judgment of non-infringement as to claims 1 and 5. We review this decision de novo, reapplying the same standard used by the district court. See, e.g., Cook Biotech, Inc. v. Acell, Inc., 460 F.3d 1365, 1372 (Fed.Cir. 2006). Summary judgment is appropriate when “there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c).

The accused products are handheld devices used to reprogram ECMs; after-wards, these devices are disconnected from the vehicle. To survive a summary judgment motion, the non-movant “must set forth specific facts showing that there is a genuine issue for trial.” Fed.R.Civ.P. 56(e); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). As Mr. Adrain presented nothing to rebut Superchips’ evidence that the accused products do not remain part of the vehicles that they reprogram, the district court did not err in granting summary judgment of non-infringement with respect to the apparatus claims.

B.

With respect to the method claim, Mr. Adrain argues that the district court erred in granting summary judgment of invalidity. The “selectively controlling” clause3

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Related

Anderson v. Liberty Lobby, Inc.
477 U.S. 242 (Supreme Court, 1986)
Cook Biotech Inc. v. ACell, Inc.
460 F.3d 1365 (Federal Circuit, 2006)
Elkay Manufacturing Co. v. Ebco Manufacturing Co.
192 F.3d 973 (Federal Circuit, 1999)
Adrain v. Hypertech, Inc.
70 F. App'x 557 (Federal Circuit, 2003)

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