The opinion of the court was delivered by: HART
Plaintiffs William Bradshaw and Robert Shepherd are the inventors of the "Cool Wheeler," a portable cooler on wheels. They also own the patent for this invention, United States Patent No. 4,873,841 (the "'841 patent"), which describes the invention as follows:
A portable cooler comprising a cooling compartment having a pair of wheels coupled thereto at one end thereof and having a handle positioned on and coupled to one side of the cooling compartment opposite said wheels for pulling the portable cooler. The handle is angularly adjustable about an axle when the cooler is being pulled and is secured to the cooler when not in use. A pair of lifting handles are positioned on opposite sides of the cooler for lifting the cooler to and from a vehicle.
Drawing sheets 1 and 2 set forth in the '841 patent are as follows:
Presently pending is defendant's motion for summary judgment. Defendant contends that its products do not infringe plaintiffs' invention because its products do not use the same type of handle as plaintiffs' invention, which defendant contends is the only aspect of the invention that is distinctive from prior art. To the extent the claims in plaintiffs' patent were to be construed more broadly or the doctrine of equivalents applied, defendant contends that the patent is invalid in light of prior art. Defendant also contends that the trademark claim is subject to dismissal on summary judgment because plaintiffs' trademark, although registered with the state, has not been used for the actual sale of any products and therefore is not protected under Illinois law. Alternatively, it is contended that Cool Wheeler is a descriptive term that has not developed a secondary meaning.
On a motion for summary judgment, the entire record is considered with all reasonable inferences drawn in favor of the nonmovants and all factual disputes resolved in favor of the nonmovants. Lane Bryant, Inc. v. United States, 35 F.3d 1570, 1574 (Fed. Cir. 1994); Oxman v. WLS-TV, 846 F.2d 448, 452 (7th Cir. 1988); Jakubiec v. Cities Service Co., 844 F.2d 470, 471 (7th Cir. 1988). The burden of establishing a lack of any genuine issue of material fact rests on the movant. Glaverbel Societe Anonyme v. Northlake Marketing & Supply, Inc., 45 F.3d 1550, 1560-61 (Fed. Cir. 1995); Jakubiec, 844 F.2d at 473. The nonmovants, however, must make a showing sufficient to establish any essential element for which they will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986). The movant need not provide affidavits or deposition testimony showing the nonexistence of such essential elements. Id. at 324. Also, it is not sufficient to show evidence of purportedly disputed facts if those facts are not plausible in light of the entire record. See Paragon Podiatry Laboratory, Inc. v. KLM Laboratories, Inc., 984 F.2d 1182, 1191 (Fed. Cir. 1993); Covalt v. Carey Canada, Inc., 950 F.2d 481, 485 (7th Cir. 1991); Collins v. Associated Pathologists, Ltd., 844 F.2d 473, 476-77 (7th Cir.), cert. denied, 488 U.S. 852, 102 L. Ed. 2d 110, 109 S. Ct. 137 (1988); TRW Financial Systems, Inc. v. Unisys Corp., 835 F. Supp. 994, 1002 (E.D. Mich. 1993). As the Seventh Circuit has summarized:
The moving party bears the initial burden of directing the district court to the determinative issues and the available evidence that pertains to each. "[A] party seeking summary judgment always bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of 'the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any' which it believes demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 323, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986); id. at 325 ("the burden on the moving party may be discharged by 'showing'--that is, pointing out to the district court--that there is an absence of evidence to support the nonmoving party's case"). Then, with respect to issues that the non-moving party will bear the burden of proving at trial, the non-moving party must come forward with affidavits, depositions, answers to interrogatories or admissions and designate specific facts which establish that there is a genuine issue for trial. Id. at 324. The non-moving party cannot rest on the pleadings alone, but must designate specific facts in affidavits, depositions, answers to interrogatories or admissions that establish that there is a genuine triable issue. Id. The non-moving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 89 L. Ed. 2d 538, 106 S. Ct. 1348 (1986). "The mere existence of a scintilla of evidence in support of the [non-moving party's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [non-moving party]." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986).
Selan v. Kiley, 969 F.2d 560, 564 (7th Cir. 1992). See also Glaverbel, 45 F.3d at 1560-61 & n.3.
"Infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir.) (en banc), cert. granted, 132 L. Ed. 2d 921, 116 S. Ct. 40 (1995). The Federal Circuit has recently clarified that the construction of claims is a question of law for the court, not a jury question. Id. at 976-79. Although the Supreme Court has granted certiorari and apparently will consider that issue, the decision in Markman remains binding unless the Supreme Court should rule otherwise. Ritter v. Smith, 811 F.2d 1398, 1404-05 (11th Cir.), cert. denied, 483 U.S. 1010, 97 L. Ed. 2d 747, 107 S. Ct. 3242 (1987); United States ex rel. Daneff v. Henderson, 501 F.2d 1180, 1181 (2d Cir. 1974). See also United States v. Weber, 668 F.2d 552, 566 (1st Cir. 1981), cert. denied, 457 U.S. 1105, 73 L. Ed. 2d 1313, 102 S. Ct. 2904 (1982).
Construing a patent is similar to construing a contract or statute, but not precisely the same as either. See Markman, 52 F.3d at 978, 986-87. A patent application must include a specification, which is "a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make or use it." 35 U.S.C. § 112, 1st para. The specification is to include "one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." Id. § 112, 2d para. It is the claims that are subject to infringement, not the specification. SRI International v. Matsushita Electric Corp. of America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc); Katz v. AIWA America, Inc., 818 F. Supp. 730, 739 (D.N.J. 1993).
"To ascertain the meaning of claims, we consider three sources: The claims, the specification, and the prosecution history." Markman, 52 F.3d at 979 (quoting Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561 (Fed. Cir. 1991)). Here, the prosecution record has not been presented, so it need not be considered. Cf. Markman, 52 F.3d at 980 ("the court should also consider the patent's prosecution history, if it is in evidence"). Drawings are part of the specification that may be considered in understanding the meaning of a claim. Omark Industries, Inc. v. Textron, Inc., 688 F.2d 1242, 1249 (9th Cir. 1982); Transco Products Inc. v. Performance Contracting, Inc., 813 F. Supp. 613, 618 (N.D. Ill. 1993). At the court's discretion, extrinsic evidence may be considered to aid in understanding the patent, but not for the purpose of varying or contradicting terms of the claims. See Markman, 52 F.3d at 980-81. Extrinsic evidence that may be considered includes inventor and expert testimony, dictionaries, and learned treatises. Id. at 980. A court is not obliged to consider expert testimony and is not bound by an expert's characterization; an expert may explain terms that might not be understandable or show how those in the field might have understood the patent. See id. at 981. Also, the prior art is often, but not always, pertinent to the construction of the claims. See Rawlplug Co. v. Illinois Tool Works, Inc., 11 F.3d 1036, 1041 (Fed. Cir. 1993); Kearns v. Chrysler Corp., 32 F.3d 1541, 1547 (Fed. Cir. 1994), cert. denied, 131 L. Ed. 2d 244, 115 S. Ct. 1392, 115 S. Ct. 1393 (1995).
The parties agree that only the three independent claims of the '841 patent need be considered, Claims 1, 6, and 11. Claim 1 is:
1. A portable cooler comprising:
[a] a cooling compartment;
[c] a pair of wheels, one of which is coupled to each end of the axle;
[d] a wheel nut coupled to the end of axle securing said ...