Opinion
No. 01 C 7019
August 27, 2002
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 or collated fasteners, the strip comprising a plurality of fasteners and a carrier molded from a polymeric material, each fastener having 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 lower, 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 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 (semicircular) 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."
That surface was originally curved.
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 integral 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 gun" 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 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 recess also serves, we are told, to facilitate the breakaway function of claim 1 and related claims, but plaintiff does not contend that defendant infringes claims 1 through 8.
The issue is claim construction, a matter of law, but one that arises in the context of a summary judgment motion, in which we have to draw all inferences in favor of the patentee. Plaintiff's 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 to 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.
The court thanks the parties for their very helpful presentations, which were of great assistance with respect to both the facts and the law.