## United States Court of Appeals for the Federal Circuit

04-1337

STEPHEN K. TERLEP, Plaintiff-Appellant,

v.
THE BRINKMANN CORP., WAL-MART STORES, INC., and HOME DEPOT U.S.A., INC., Defendants-Appellees.

Nathan Price Chaney , Nolan Henry, PLLC, of Faye tteville, Arkansas, argued for plaintiff-appellant. With him on the brief were Mark Murphey Henry and James Aubrey Fussell

. Gary A. Clark , Sheppard, Mullin, Richter & Hampton LLP, of Los Angeles, California, argued for defendants-appellees. On the brief was Hermann Ivester , Mitchell, Williams, Selig, Gates & Woodyard, P.L.L.C., of Little Rock, Arkansas.

. Appealed from: United States District Cour t for the Western District of Arkansas Judge Harry F. Barnes

## United States Court of Appeals for the Federal Circuit

04-1337 STEPHEN K. TERLEP, Plaintiff-Appellant, v. THE BRINKMANN CORP., WAL-MART STORES, INC., and HOME DEPOT U.S.A., INC., Defendant-Appellees.

__________________________ DECIDED: August 16, 2005

__________________________ Before BRYSON, GAJARSA, and LINN, Circuit Judges

. LINN, Circuit Judge

. Stephen K. Terlep (“Terlep”) appeals from t he decision of the United States District Court for the Western District of Ark ansas (“district court”) granting the motion of The Brinkmann Corp., Wal-Mart Stores, Inc., and Home Depot, U.S.A., Inc. (collectively, “Brinkmann”) for summary judgment of non-in fringement of U.S. Patent No. 5,594,433 (“the ’433 patent”). Terlep v. Brinkmann Corp. , No. 02-CV-5127 (W.D. Ark. Mar. 29, 2004) (“ Order I ”). Because the district court corre ctly construed the claim term “clear” and properly granted Brinkmann’s motion for summary judgment of non-infringement, we affirm.I. BACKGROUND The ’433 patent relates to omni-directi onal light emitting diode (“LED”) lamps. LEDs are a desirable substitute for tradi tional incandescent lamps because of their increased lifetime, higher resistance to s hock and vibration, and lower cost of production. However, in c ontrast to an incandescent lamp, which emits light omnidirectionally, the light from an LED is emitt ed in a forward cone of less than 90 degrees. The ’433 patent is directed to the production of omni-directional light by reflecting the cone of light from an LED off a semi-spherical convex reflector. Independent claim 1 recites, with the terms at issue underlined:
1. An omni-directional LED lamp useful for traffic control and warning devices that reflects light in a 360 degree circumferential direction wit hout having to rotate any components, comprising: a first LED; a first semi-spherical reflector having a continuous convex reflective surface, the first semi-spherical reflector mounted above the first LED, wherein li ght from the first LED is reflected substantially in a 360 degree circumference rendering the first LED omni-directional; and a first clear plastic tubular holder for tightly holding the first semi-spherical reflector oriented directly above the first LED in a stationary non rotating posit ion, wherein the first semispherical reflector reflects light in a 360 degree circumferential direction. ’433 patent, col. 6, ll. 13-28. Claim 4 depends from claim 1 and recites t hat the “first semi-spherical reflector includes: a mirror finish deposited on a plastic shape.” Id. at col. 6, ll. 57-59.

04-1337 2On November 28, 1997, Terlep filed su it against Brinkmann, alleging that Brinkmann’s products infringed claims 1 and 4 of the ’433 patent lit erally and under the doctrine of equivalents. The accused pr oducts are solar-powered lamps for pathway lighting. The lamps were sold through re tailers Wal-Mart and Home Depot. These lamps use an LED and a convex reflector that is less than a full half sphere. Further, because they are used for pathway lighting, the relative orientation between the reflector and the LED when the product is in us e is such that the reflector is located below the LED. Finally, the Brinkmann light s use a ribbed holder to align and position the reflector in front of the LED. Brinkmann denied infringement and filed a counterclaim alleging invalidity. The distri ct court construed a number of disputed terms and, based on the claim construction, granted Brinkmann’s motion for summary judgment of non-infringem ent and dismissed the claims with prejudice. Order I

. On April 14, 2004, Terlep f iled a notice of appeal. Because the district court’s initial order did not address Brinkmann’s invalidity countercl aim, this court determined that it lacked jurisdicti on and dismissed the appeal. Terlep v. Brinkmann Corp. , 127 Fed. Appx. 498 (Fed. Cir. Mar. 2, 2005). Thereafter, following a stipulation by the parties, the district court dismissed Brin kmann’s counterclaim without prejudice, leaving no issues unresolved. Terlep v. Brinkmann Corp. , No. 02-CV-5127 (W.D. Ark. Mar. 24, 2005) (“ Order II ”). On March 10, 2005, Terlep f iled a new notice of appeal and a motion to reinstate. In an Order entered April 11, 2005, this c ourt recalled the mandate and reinstated the appeal. The appeal is now properly before us, and we have jurisdiction under 28 U.S.C. § 1295(a)(1).

04-1337 3II. ANALYSIS A. Standard of Review “We review a district court’ s grant of summary judgment de novo .” See Ethicon Endo-Surgery, Inc. v. Unit ed States Surgical Corp. , 149 F.3d 1309, 1315 (Fed. Cir. 1998). Summary judgment is appropriate only when there are no genuine issues of material fact and the moving party is entit led to judgment as a matter of law. See Fed. R. Civ. P. 56(c). “In determining whether t here is a genuine issue of material fact, the evidence must be viewed in the light most fa vorable to the party opposing the motion, with doubts resolved in favor of the opponent.” Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc. , 145 F.3d 1303, 1307 (Fed. Cir. 1998). If there are no material facts in dispute precluding summary judgmen t, “our task is to determine whether the judgment granted is correct as a matter of law.” Marathon Oil Co. v. United States , 177 F.3d 1331, 1337 (Fed. Cir. 1999). A determination of infringement requires a two-step analysis. “First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process.” Carroll Touch, Inc. v. Electro Mech. Sys., Inc. , 15 F.3d 1573, 1576 (Fed. Cir. 1993). Claim construction is an issue of law, see Markman v. Westview Instruments, Inc. , 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd , 517 U.S. 370 (1996), that we review de

novo , see Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). Infringement, whether lit eral or under the doctrine of equivalents, is a question of fact. See Bai v. L & L Wings, Inc. , 160 F.3d 1350, 1353 (Fed. Cir. 1998).

04-1337 4B. Discussion Terlep argues that the district court erred in granting summary judgment by concluding that the preamble of claim 1 of the ’433 patent was a limitation, and that Brinkmann did not meet the “ above” and “clear” limitations of claim 1. Brinkman responds that the district court correctly cons trued these limitations a nd, further, that the district court’s judgment should be affirmed on the additional grounds t hat the limitations “semi-spherical,” “directly,” “plastic,” and “tubular” have not been met. Because we conclude that the district cour t correctly construed the “clear” limitation of claim 1, and because summary judgment of non-infringement was proper on that basis, we do not consider Terlep’s other arguments or Brin kman’s additional grounds for affirmance. 1. Claim Construction “The construction of claims is simply a way of elaborating the normally terse claim language in order to understand and explai n, but not to change, the scope of the claims.” Embrex , Inc., v. Serv. Eng’g Corp. , 216 F.3d 1343, 1347 (Fed. Cir. 2000) (internal quotations and citation omitted). Interpreting the asserted claims entails a review of the intrinsic evi dence, which consists of the claim language, the written description, and the pros ecution history. See id. ; Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996). “[T]he specification is always highly relev ant to the claim construction analysis. Usually, it is dispositive; it is the singl e best guide to the meaning of a disputed term.” Phillips v. AWH Corp. , No. 03-1269, 03-1286, 2005 U.S. App. LEXIS 13954, at *29 (Fed. Cir. Jul. 12, 2005) (en banc) (internal quotations omi tted). “[T]he prosecution history can often inform t he meaning of the claim language by demonstrating how the

04-1337 5inventor understood the inventi on and whether the inventor lim ited the invention in the course of prosecution, ma king the claim scope narrower than it would otherwise be.” Id. at *36-37. Extrinsic evidence such as dict ionaries also “may be considered if the court deems it helpful in determi ning the true meaning of the language used in the patent claims,” id. at *39 (internal quotations omitted) , provided the court “attach[es] the appropriate weight

. . . to those sources in li ght of the statutes a nd policies that inform patent law,” id. at *58. The district court construed the term “clear” of independent claim 1 to mean “transparent” or “having the property of tr ansmitting light without appreciable scattering so that bodies lying beyond are seen clearly.” Order I at 7. Terlep challenges the district court’s interpretation arguing that the term should be construed to also cover translucent holders. Terlep cont ends that the intrinsic record requires only that the word “clear” be construed to permit the passage of li ght. Brinkmann responds that the district court’s construction is correctly informed by t he written description, wh ich states that the purpose of the holder is to maximize light output, and that any other interpretation would be inconsistent with the ’433 patent. Brin kmann adds that the “t ranslucent” argument was not made to the district court and, thus, was waived. Claim 1 recites an omni-directional LED lamp that has three elements: an LED; a semi-spherical reflector; and a clear plastic tubular holder. The claim sets forth the positional relation between these elements such that the light emitted from the LED is rendered omni-directional after reflecting off the semi-spherical reflector. See ’433 patent, col. 6, ll. 26-27. T he reflected light passes through the holder, which holds the

04-1337 6semi-spherical reflector. See id. at ll. 24-28. The text of claim 1 and the other claims provide little guidance on the meaning of the term “clear.” The written description discloses a pref erred embodiment in which the LED is surrounded by “tubular canopies” or holders that are made of “clear and pliable plastic material.” Id. at col. 3, ll. 58-59. Another embodiment describes a colored lens cover that is made “from clear colored plastic.” Id. at col. 5, l. 1. While these passages are not particularly helpful in di scerning the meaning of the term “clear,” other portions of the written description provide greater guidance. The Background and Prior Art sections state that various techniques for applying diffusion directly to the LED surfaces had been attempted in the past and were unsucce ssful in rendering the light emitted from the LED omni-directional. Id. at col. 1, ll. 37-45. The Summary of the Invention section describes the invention as an omni-d irectional LED lamp that does not use a diffusion lens over the LEDs. Id. at col. 2, ll. 5-7. Imp licit in these passages is the distinction between lenses or holders that diffuse or scatter light and those that transmit light without obstruction. The written description is thus c onsistent with and supports the district court’s construction of the te rm “clear” to refer to holders that are “transparent or [have] the pr operty of transmitting light wit hout appreciable scattering so that bodies lying beyond are seen clearly.” Order I at 7. Terlep argues that the written description al so is consistent with a “translucent” holder because it refers to an embodiment in which “the lens cover

. . . can include a phosphorescent coating which glows when the LE D . . . is on so as to diffuse light evenly over a wide viewing angle and amplify visibility.” See ‘433 patent, col. 5, ll. 54- 57. However, the text quoted by Terlep rela tes to the embodiment of Figures 4A-4C,

04-1337 7which does not include a “clear plastic tubular holder” as recited in claim 1, at issue in this case. Because the “lens cover” described supra is not the same structure as the “clear plastic tubular holder,” compare id. , Figures 4A-4C & col. 5, ll. 54-57, with id. , Figure 2A & col. 3, ll. 57-65, Terlep’s argument is misplac ed. Moreover, there is nothing in the description of the phosphorescent coat ing embodiment to warr ant construction of the term “clear” as it relates to the “clear plastic tubular holder” of claim 1 to include translucent holders. The prosecution history furt her supports the district court’s construction. On August 9, 1995, the applicati on that issued as the ’433 patent was filed. In a February 7, 1996 Office Action, the Ex aminer, inter alia , rejected claim 1 under 35 U.S.C. § 103(a) as being unpatentable over U.S. Pa tent No. 5,469,157 to Carpenter et al. in view of U.S. Patent No. 1,198,734 to Ludescher . In a May 6, 1996 Response (“ Response ”), Terlep amended claim 1 to add, inter alia , “a clear plastic tubular holder.” Response at 1. Terlep distinguished the claimed in vention from the prio r art stating that the prior art disclosed rotating LEDs and LE Ds having a top “flattened and

. . . side surface(s) . . . sandblasted or otherwise r oughened to diffuse the light output,” whereas the “subject invention did not use any ‘flattened’ tops and/or ‘sandblasted or roughened’ sides.” Response at 5. Because the “clear plas tic tubular holder” limitation helped distinguish the prior art from the claimed invention, the prosec ution history supports construing the term “clear” to exclude plasti c holders that are trans lucent or otherwise diffuse the light emitted from the LED. See Seachange Int’l, Inc. v. C-Cor Inc. , No. 04- 1375, 04-1498, 2005 WL 1523382, at *8 (Fed. Cir. June 29, 2005) (“Where an applicant argues that a claim possesses a feature that the prior art does not possess in order to

04-1337 8overcome a prior art rejection, the ar gument may serve to narrow the scope of otherwise broad claim language.”). In construing the claims, the parties hav e cited several dictionaries. District courts are authorized “to rely on extrinsic ev idence, which consists of all evidence external to the patent and prosec ution history, including . . . dictionaries” as one of many claim construction tools. Phillips , 2005 U.S. App. L EXIS 13954, at *37 (internal citations omitted). The dictionary defines “clear” as “giving free passage to light or to the sight: easily seen through: not cloudy, turbid, or opaque.” Webster’s Third Int’l Dictionary 419 (1993). This definition lists “transparent” and “translucent” as synonyms. The definition also sets forth an express distinction bet ween transparent and translucent: “transparent stresses complete absence of obstruction to vision” and “translucent applies to that which permits passage of light but bars clear and complete vision.” Id. The distinction between these synonyms cannot be ignored. See Int’l Rectifier Corp. v. IXYS Corp. , 361 F.3d 1363, 1374 (2004) (holding t hat it was improper for the district court to adopt a definition that was attributed to a synonym of the disputed term while disregarding the distinction set forth in the us age note). Moreover, the distin ction mirrors the distinction reflected in the written description and pr osecution history between the unobstructed passage of light of the holder of the patented invention and the prior art structures that diffuse light. Here, the district court “a ttached appropriate weight” to the dictionary definitions in the context of the intrinsic ev idence in reaching its co nstruction of the claim term “clear.” Phillips , 2005 U.S. App. LEXIS 13954, at *58. Finally, Terlep argues that to define “clea r” so as to exclude “translucent” is to import a functional limitation into the claim. Terlep asserts that “clear plastic tubular

04-1337 9holder” is merely a structural limitation and t hat the district cour t erred in importing a functional limitation into a structural term. However, Terlep fails to recognize that the construction properly adopted by the district court merely assigned meaning to the claim term “clear” and did not impermissibly import a functional limitation. Merck & Co. v. Teva Pharms. USA, Inc. , 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”). We conclude that the district court co rrectly construed the term “clear” to mean “transparent or having the pr operty of transmitting light wit hout appreciable scattering so that bodies lying beyond are seen clearly,” and that nothing in the claims or the written description warranted giving the term “clea r” an expansive meaning that would cover “translucent” holders. Because Terlep’s “t ranslucent” argument is without merit, we need not consider Brinkmann’s additi onal argument of waiver. 2. Infringement “[F]or a court to find infr ingement, the plaintiff must show the presence of every element or its substantial equiva lent in the accused device.” Wolverine World Wide, Inc. v. Nike, Inc. , 38 F.3d 1192, 1199 (Fed. Cir. 1994); see also Warner-Jenkinson Co. v. Hilton Davis Chem. Co. , 520 U.S. 17, 40 (1997) (noting that becau se each limitation contained in a patent claim is material to defining the scope of t he patented invention, a doctrine of equivalents analysis must be applied to individual claim limitations, not to the invention as a whole). “Application of t he rule precluding use of the doctrine of equivalents to recapture claim scope surrendered during patent acquisition is a question of law.” KCJ Corp. v. Kinetics Concepts, Inc. , 223 F.3d 1351, 1359 (Fed. Cir. 2000).

04-1337 10Claim 1 recites a “clear plas tic tubular holder.” The district court concluded that there was no genuine issue of material fact that none of the accu sed products had a transparent holder. Order I at 10. Terlep ar gues that some of the Brinkmann products have a clear plastic cover. However, Terl ep does not dispute the fact that, although some of Brinkmann’s products have a tr ansparent cover, none of them have a transparent holder . Terlep also does not contest that the Brinkmann products are ribbed and that the ribbed holders scatter the light shining from inside to prevent bodies inside the holder from being seen clearly. Id. Thus, Terlep has failed to provide any basis for us to conclude that the district court erred in determining that there was no genuine issue of material fact that the accu sed devices do not meet the “clear plastic tubular holder” limitation of claim 1. Be cause claim 4 depends from claim 1 and also possesses this limitation, it too is not literally infringed. Terlep also challenges the district cour t’s grant of summary judgment of noninfringement under the doctrine of equivalents. Specifica lly, Terlep argues that the district court erred in foreclos ing its assertion of the doctrin e of equivalents by reason of prosecution history estoppel. It asserts this argument despite its acknowledgement that the “clear plastic tubular holder” limitat ion was added during prosecution to help overcome the prior art. Terlep claims t hat this amendment does not bar it from asserting equivalents under the doctrine announced in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. , 535 U.S. 722, 733 (2002) . Under Festo , a narrowing amendment made to satisfy a requirement of the Patent Act may give rise to an estoppel. Id. at 736 . Such a narrowing amendment creates a presumption that the patentee surrendered the territory between the or iginal claims and the amended claims.

04-1337 11Id. at 741 . The patentee may rebut that presumption by showing that the alleged equivalent was unforeseeable at the time the am endment was made, th at the alleged equivalent was tangential to the purpose of that amendm ent, or that there was some other reason suggesting that the patentee could not reas onably be expected to have described the insubstantial substitute in question. Id. at 740-41

. Terlep argues that its amendment of claim 1 to include the limitation “clear plastic tubular holder” does not estop it from asserting infringem ent under the doctrine of equivalents because the equivalent in question was tangential to the purpose of the amendment. The primary consideration in determining when an amendment bears only a tangential relation to the equivalent in question is “whether the reason for the amendment is peripheral, or not directly relevant, to the alleged equivalent.” Insituform Techs., Inc. v. Cat Constr., Inc. , 385 F.3d 1360, 1370 (Fed. Cir. 2004) (citing Festo Corp. v. Sheketsu Kinzoku Kogyo Kabushiki Co., Ltd. , 344 F.3d 1359, 1365 (Fed. Cir. 2003) ( en banc )). Terlep asserts that the prosecution history s hows that the addition of the term “clear” was merely to describe the pl astic used for the claimed “plastic holder,” and thus the addition of that term is not dire ctly relevant to the accused equivalent. However, as discussed supra , Terlep amended claim 1 and argued patentability based on the diffusion characteristics of prior art LED devices and the absence of diffusion in the clear plastic tubular holder of the claimed invention. Thus, it cannot be said that the reason for adding “clear” was tangential to t he accused equivalents, which are holders that are ribbed and diffuse light. See Festo , 344 F.3d at 1369 (noti ng that “the inquiry into whether a patentee can rebut the Festo presumption under the ‘tangantial’ criterion focuses on the patentee’s objec tively apparent reason for the narrowing amendment”).

04-1337 12Thus, Terlep has failed to rebut the Festo presumption, and we a ffirm the district court's grant of summary judgment of non-infringement under the doc trine of equivalents as a matter of law. III. CONCLUSION For the foregoing reasons, we affirm the di strict court’s construction of the term “clear.” We also affirm t he district court’s grant of Brinkmann’s motion of summary judgment of non-infringement. AFFIRMED

04-1337 13