No. 01 C 7019 Page 3

the posts which permits a portion of the fastener shank to emerge for engagement by the
driver. Therefore, plaintiff contends, defendant’s strip literally infringes.

The issue is claim construction, a matter of law, but one that arises in the context of
asummary judgment motion, in which we have tu draw all inferences in favor of the patentee.
Plaintiffs claim constructions are somewhat expansive (although we do note that the posts
do apparently, function to position the fastener and defendant’s “recess” does permit the
driver to engage the fastener, matters more relevant tu the doctrine of equivalents than to
literal infringement), but we cannot determine them as so implausible that we must reject
them for purposes of summary judgment. We think claim construction is more properly left
to a Markman hearing, which will result in a determination of claim construction based not
only on the present record but upon a review, among other things, of the prior art. Defendant
suggests at one point that the prior art would invalidate the patent if we construed the claim
as broadly as plaintiff contends, But that is not presently before us, For now, we conclude
that plaintiff's claim construction is not clearly negated by the claim language. We leave to
another day the determination of what the proper construction may be. In those

circumstances it is unnecessary to address the doctrine of equivalents contentions.’

JAME

Senior Judge, U. S. District Court
Qu )_, 2002.

> The court thanks the parties for their very helpful presentations, which were of great assistance
with respect to both the facts and the law,



Mae Order Farm (0697)

“

United States District Court, Northern District of Minois

Name of Assigned Judge Sitting Judge if Other
or Magistrate Judge James B. Moran than Assigned Judge
CASE NUMBER 01 C7019 DATE 8/27/2002
CASE Mlinois Too] Works, Inc. Vs. Powers Fasteners, Inc.
TITLE
[in the following bus (a) indicate the party filing the motion, ¢.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.]
Memorandum Opinion and Order
DOCKET ENTRY:
qd) QO Filed motion of { use listing in “Motion” box above.}
(2) o Brief in support of motion due
(3) o Answer brief to motion due . Reply to answer brief due.
(4) oO Ruling/Hearing on set for at
(5) oO Status hearing(held/continued to] [set for/re-set for] on set for at
(6) Oo Pretrial conference[held/continued to] [sct for/re-set for] on set for at .
(7) o Trial[set for/re-set for] on_ ___at
(8) Oo [Bench/Jury trial] [Hearing] held/continued to at
(9) Qo This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
OFRCP4(m) OLocal Rule 41.1 OFRCP41(a)(1) [ FRCP41(a)(2).

da ff [Other docket entry] | Enter Memorandum Opinion and Order. Defendant moves for summary

judgment of non-infringement. That motion is denied, without prejudice to its later renewal, Status

hearing set for September 17, 2002 at 9:15am.
ay ff [For further detail see order attached to the original minute order.]

No notices required.

Notices mailed by judge’s staff,

Notified counsel by telephone,

| Docketing to mail notices

Mail AO 450 form,

Copy to judge/magistrate judge.

courtroom
depuly's
initials

WAH

No notices required, advised in open court

number of notices

Date/tinte received in’
central Clerk’s Office

AUG 28 2007

date docketed

dockets Heputy initia:

mailing Uvputy initials



IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
ILLINOIS TOOL WORKS INC., ) serenity
Plaintiff, } are A
Vs } No, 01 C 7019 aa % 8 7002
POWERS FASTENERS, INC., }
Defendant. } ke ie.

MEMORANDUM OPINION AND ORDER

Plaintiff sues for infringement of Patent 5,069,340 (‘340 patent), Defendant moves for
summary judgment of noninfringement. That motion is denied, without prejudice to its later
renewal,

The subject matter of the ‘340 patent is a strip of collated fasteners for a fastener-
driver tool. The strip feeds through a “nail gun” which serially drives the fasteners encased
in the strip into whatever materials are being joined. The claim upon which plaintiff
primarily relies is claim 9. It reads as follows:

9, A strip of collated fasteners, the strip comprising a plurality of
fasteners and a carrier molded from a polymeric materia), each fastener haying
an elongate shank with a pointed end and a head and being designed to be
forcibly driven through a workpiece, into a substrate, the carrier comprising
a separate sleeve associated with each fastener, a representative sleeve
including a Jower, annular portion and an upper portion integral with the
annular portion, the representative sleeve gripping the shank of the associated
fastener with the lower, annular portion nearer to the pointed end of the shank
of the associated fastener and with the upper portion nearer to the head of the
associated fastener, the upper portion having at least one outwardly opening,
curved, concave recess having an open window, from which a portion of the
shank of the associated fastener emerges, the carrier comprising frangible
bridges between adjacent ones of the sleeve of the carrier.

Defendant contends that it does not literally infringe nor is it liable pursuant to the

BY



Na. 01 C 7019 Page 2

doctrine of equivalents because its device, the Trak-It strip, differs from the invention claimed
in claim 9 in four respects, It does not include an upper sleeve portion. Trak-It’s upper
portion does not grip the fastener. The accused device does not contain a concave (semi-
circular) recess. And that device does not have an “open window” from which a portion of

the fastener shank emerges, The accused device has a lower sleeve that grips the fastener,

The upper portion, however, consists of two posts that do not enclose the fastener and do not
grip it. Because there is no upper tubular sleeve, there is no concave surface, as the posts
arise straight from a chamfered surface,’ and there is no recess providing an open window
to the fastener. In short, defendant contends that it has adequately designed around the claim
and that it therefore does not literally infringe. And liability under the doctrine of
equivalents is precluded by the “all elements rule.”

In contrast, plaintiff argues that the upper portion of the accused device is a “sleeve”
because it is an encasement into which the fastener fits and it is integra] with the lower
portion, which is a tubular sleeve even by defendant’s standards, The upper portion need not
grip the fastener if any portion of the sleeve does so (and plaintiff argues that the
specifications and the preferred embodiment disclose that the upper portion does not grip the
fastener in the described device), and the lower portion does grip the fastener. Moreover, the
“nail gan” compresses the posts during operation, thus causing them to grip the fastener (a
matter more germane to Count II), According to plaintiff, the chamfered surface, as it relates

to the posts, provides a concave recess (although not a curved recess in the present version)

because it provides an indentation which arches inward,’ having an open window between

! That surface was originally curved,

2 The recess also serves, we are told, to facilitate the breakaway function of claim 1 and related
claims, but plaintiff dues not contend that defendant infringes claims 1 through 8.