The opinion of the court was delivered by: Sweet, District Judge.
Claims 5, 6, 18-20 and 28 require, inter alia, display racks
with "transparent" front members. Transparent materials are used,
according to Display, for construction of the claimed display
racks so as "not [to] interfere with viewing of the leading
article in the channel." Claim 18 is illustrative and provides in
For securing the article display rack onto an underlying
support shelf, the '176 Patent discloses upwardly extending
bottom opening recesses located on the bottoms of the channel
sidewalls, for telescopically receiving the upper rod of the
front wall of the support shelf. Claims 14-16, 21-26 and 28
require either recesses or means for "telescopic receipt therein"
of the front or back wall of the support tray. For example, Claim
21 provides in relevant part:
As disclosed in the drawings and specification of the '176
patent, the phrase "telescopic receipt" requires that the rod of
support rack be within the recess of the sidewall.
To secure two or more channels in a side-by-side manner to form
a multi-channel display rack, the '176 patent discloses what it
terms a "key-and-keyhole releasable locking system." Claims 27
and 28 both require the "key-and-key hole limitation." Claim 27
27. A key-and-keyhole releasable locking system for a
pair of adjacent display rack channels, comprising:
(A) a generally flat lateral projection in the
nature of a key disposed on one sidewall of one
pair of adjacent display rack channels, and having
(i) an inner portion substantially flat on both the
top and bottom surfaces thereof,
(ii) a middle portion substantially flat on one of
said surfaces and defining a transverse flange
extending normal to the substantially flat surface
(iii) an outer portion substantially flat on the
other said surfaces and defining a transverse
flange extending normal to the substantially flat
surface thereof, and
(B) a through-hole in the nature of a keyway
disposed on an adjacent sidewall on the other of
the pair of adjacent display rack channels, and
(i) a substantially planar inner portion defining a
portion of a keyhole in the plane of said adjacent
(ii) a substantially planar outer portion defining
the remaining portion of a keyhole in a plane
parallel to said adjacent sidewall plane;
said through-hole defining a large passageway
enabling passage of said key, and a restricted
passageway communicating with said large passageway
and enabling passage of said key only via said large
passageway; whereby, when said key is fully inserted
into said restricted passageway, said transverse
flange of said outer portion of said keyhole, and
said transverse flange of said central portion of
said key bears on an inner surface of said outer
portion of said keyhole.
B. The '176 Patent Prosecution History
After the filing of the patent application Serial No.
08/694,310, but before its issuance, in an Office Action dated
December 13, 1996, the PTO rejected Claims 1-4, 7-9, 11-15, 17,
21-22, and 24 of the application under 35 U.S.C. § 102(b) as
being anticipated by United States Patent No. 4,228,903 (the
"Eckert Patent"). In a response dated December 30, 1996, Display
amended Claim 1 to cover only display racks for supporting and
displaying "upright and elongate" articles. In support of the
allowability of the amended claims, Display stated:
Eckert discloses a gravity feed can dispenser for
beverage coolers where the cans are disposed
horizontally on their circumferential sides, rather
than (vertically) upstanding on their longitudinal
ends. Contrary to this teaching of Echert [sic],
Claim 1 clearly requires that the display rack
support and display "upright and elongate articles"
and that the aperture formed by the various parts
thereof must allow viewing of a substantial portion
of "an upright lead article in said channel."
In describing the purported novelty of this "aperture formed by
the various parts thereof," Display stated that "it is clear that
[in Eckert] no aperture whatsoever is formed `by the bottom of
said front member, the top of said track, and the front of said
In a Notice of Allowability dated February 26, 1997, the PTO
the cited prior art of record, alone or in
combination, does not disclose a display rack having
the bottom of a front member, the top of the front of
a track and the front of the sidewalls defining an
aperture through which a substantial portion of an
upright lead article in the channel may be viewed.
Nor is there shown a display with telescopic receipt
of at least one of the front wall and back walls of
C. Alleged Infringement by Flum
Display accuses Flum of infringing the '176 Patent with its
GLOBE GLIDE display rack.
Plaintiffs product was originally designed for exclusive use by
the Coca Cola Company ("Coke"), and Flum's product was prepared
for exclusive use by the Pepsi-Cola Company ("Pepsi"). Display
contends that in 1997, Pepsi, having seen Display's display rack,
suggested to Flum that it wanted a new rack for its refrigerated
display case and specifically referred Flum to Display's "Coca
Cola" rack. Display avers that Donald Miller, Jr., the Flum Vice
President of Sales and Product Manager for developing Flum's
GLOBE GLIDE, "even specifically discussed the Flum `multiple stop
feature' being `like' the [Display] rack." Thus, Display contends
it is not surprising that "the resulting GLOBE GLIDE display rack
is an infringing copy of the patented Display Technologies rack."
Flum denies Display's accusation that the COOL GLIDE IV infringes
the '176 Patent.
Legal Standard for Summary Judgment
The motion for summary judgment is "an integral part" of the
Federal Rules of Civil Procedure and facilitates the overall
purpose of the Rules, namely, "to secure the just, speedy and
inexpensive determination of every action." Celotex Corp. v.
Catrett, 477 U.S. 317, 327, 106 S.Ct. 2548, 91 L.Ed.2d 265
(1986). A motion for summary judgment may be granted only when
there is no issue of material fact remaining for trial and the
moving party is entitled to judgment as a matter of law. See
Rule 56(c), Fed.R.Civ.P.; Silver v. City Univ., 947 F.2d 1021,
1022 (2d Cir. 1991). If, when "[v]iewing the evidence produced in
the light most favorable to the nonmovant . . . a rational trier
could not find for the nonmovant, then there is no genuine issue
of material fact and entry of summary judgment is appropriate."
Binder v. Long Island Lighting Co., 933 F.2d 187, 191 (2d Cir.
1991). If, on the other hand, a reasonable finder of fact could
return a verdict for the nonmoving party, there is a genuine
factual dispute and summary judgment should not be granted. See
Zeevi v. Union Bank of Switzerland, 1992 WL 8347, *4 (S.D.N Y
Jan.14, 1992). "[T]he trial court's task at the summary judgment
stage of litigation is carefully limited to discerning whether
there are any genuine issues of material fact to be tried, not to
deciding them." Gallo v. Prudential Residential Servs., Ltd.,
22 F.3d 1219 (2d Cir. 1994).
"Summary judgment is as appropriate in a patent case as in any
other. Where no genuine issue of material fact remains and the
movant is entitled to judgment as a matter of law, the court
should utilize the salutary procedure of Fed.R.Civ.P. 56 to avoid
unnecessary expense to the parties and wasteful utilization of
the jury process and judicial resources." Barmag Barmer
Maschinenfabrik v. Murata Machinery Ltd., 731 F.2d 831, 835
(Fed.Cir. 1984); see also SRI Int'l v. Matsushita Elec. Corp.,
775 F.2d 1107, 1116 (Fed.Cir. 1985) (en banc). However, under
35 U.S.C. § 282, a patent is presumptively valid, and thus the
party moving for summary judgment must demonstrate by clear and
convincing evidence that the patent is invalid. See, e.g.,
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1375 (Fed.Cir. 1986).
I. Claim 1 of the '176 Patent is Invalid
Flum has moved for partial summary judgment and asserts that
Claim 1 of the '176 Patent is invalid because the claimed subject
matter is anticipated by and/or obvious in view of various prior
Section 102(a) provides that a patent is invalid if "the
invention was known or used by others in this country, or
patented or described in a printed publication
in this or a foreign country, before the invention thereof by the
applicant for patent." 35 U.S.C. § 102(a). From this provision
comes the doctrine of anticipation: "That which would literally
infringe if later in time anticipates if earlier than the date of
invention." Evans Medical Ltd. v. American Cyanamid Co.,
11 F. Supp.2d 338, 365 (S.D.N.Y. 1998) (quoting Lewmar Marine, Inc.
v. Barient, Inc., 827 F.2d 744, 747 (Fed.Cir. 1987)).
A party asserting that a patent claim is anticipated under
35 U.S.C. § 102 must demonstrate, among other things, identity of
invention. To anticipate a claim, a prior art reference must
disclose every feature of the claimed invention either explicitly
or inherently, see Hazani v. United States Int'l Trade Comm'n,
126 F.3d 1473, 1477 (Fed.Cir. 1997); Glaxo Inc. v. Novopharm,
Ltd., 52 F.3d 1043, 1047 (Fed.Cir. 1995). Anticipation is a
question of fact, and thus summary judgment is appropriate where
"[t]here is no genuine issue of material fact that each element
of the [challenged] claims is found in a single prior art
reference." Meyers v. Asics Corp., 865 F. Supp. 177, 179
(S.D.N.Y. 1994); see also Lockwood v. American Airlines, Inc.,
107 F.3d 1565, 1571-72 (Fed.Cir. 1997).
In addition to the novelty requirement of Section 102, a patent
is required to be non-obvious pursuant to 35 U.S.C. § 103 which
provides in pertinent part:
(a) A patent may not be obtained though the invention
is not identically disclosed or described as set
forth in section 102 of this title, if the
differences between the subject matter sought to be
patented and the prior art are such that the subject
matter as a whole would have been obvious at the time
the invention was made to a person having ordinary
skill in the art to which said subject matter
Obviousness is a question of law based upon the underlying facts
of four general categories: (1) the scope and content of the
prior art; (2) the differences between the prior art and the
claimed invention; (3) the level of ordinary skill at the time
the invention was made; and (4) any objective considerations that
may be present. See Graham v. John Deere Co.,
86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Continental Can Company
USA, Inc. v. Monsanto Co.,
, 1270 (Fed. Cir. 1991).
Where the legal conclusion of obviousness is disputed, but the
underlying facts are not, there is no issue of fact requiring a
trial and summary judgment is appropriate. See Newell Cos. v.
Kenney Mfg. Co., 864 F.2d 757, 763 (Fed.Cir. 1988). In addition,
summary judgment of invalidity based on obviousness may be
granted to invalidate patent claims when the subject matter of
the invention and the prior art are so readily understandable as
to eliminate any genuine issue of fact. See Union Carbide Corp.
v. American Can Co., 724 F.2d 1567, 1573 (Fed.Cir. 1984).
Preliminary to a determination of anticipation and/or
obviousness is construction of the claims to determine their
meaning, which is a matter of law for the court. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 771 (Fed.Cir. 1983).
C. Claim Construction
Courts have the "power and obligation to construe as a matter
of law the meaning and language used in patent claims." Markman
v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir. 1995)
(en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d
577 (1996). It is well settled that, in interpreting an asserted
claim, the court should look first to the intrinsic evidence of
record, i.e., the patent itself, including the claims, the
specification and, if in evidence, the prosecution history. See
Markman, 52 F.3d at 979.
1. The Allen Patent
Flum contends that the Allen United States Patent No. 2,572,090
(the "Allen Patent"), entitled "Refrigerator Rack Bottle Guide,"
issued October 23, 1951, several decades before the '176 Patent,
disclosed the aperture element and every other element of Claim
1, even though the Allen Patent was not cited or considered by
the PTO in its examination of the application for the '176
Patent. The 1951 Allen Patent discloses a display rack for
upright bottles. Figure 1 of the Allen Patent specifically
discloses a rectangular aperture defined by the by the bottom of
the front rail member, the top of the support track's front to
rear rods, and the front of the sidewalls. (Col. 2, lines 8-47).
In addition, Allen teaches that the front rail member, which is
affixed to the front of the sidewall guide members and fixes the
height of the aperture, is "spaced above" the basal structure or
track. (Col. 2, lines 52-53). As seen in Figure 1 of the Allen
patent, an aperture allowing viewing of the lead article in the
channel is disclosed.
The most effective way to demonstrate the anticipation by Allen
of Claim 1 is to examine each element of Claim 1 and compare
these to the Allen Patent. See Meyers, 865 F. Supp. at 180. Such
examination reveals that the Allen Patent discloses a display
rack that embodies each and every element of Claim 1 of the '176
Patent. The Allen Patent contemplates a "display rack for
supporting and displaying upright elongate articles, comprising"
"a plurality of elongate channels." Similarly, the Allen Patent
teaches that "each channel has a pair of laterally spaced
upstanding sidewalls;" the "substantially planar" track;*fn6
the "front member;" and the "securing means" all as recited from
Claim 1 of the '176 Patent.*fn7 Significantly, the Allen Patent
discloses an aperture through which an upright portion of a lead
article in the channel may be viewed.*fn8
Plaintiff asserts that the aperture disclosed in the Allen
Patent does not anticipate Claim 1 under 35 U.S.C. § 102. In
support of this contention, Display proffers Plaintiff's Exhibit
H in which it colors in red the sidewalls of the Allen device
pictured in Figure 1 for the proposition that "the sidewalls
conceal a significant portion of the lower quadrant of the
bottle." This assertion fails based on the language of the '176
Patent. Column 6, lines 15-19 only require that "where the front
member is not transparent, but assuming that any secondary or
auxiliary front wall is either transparent or not present, the
aperture typically presents substantially a full quadrant of the
lead article A' for view." Figure 1 is a side view of a single
embodiment of the device claimed in the Allen Patent. However,
the disclosure of the Allen Patent is not limited to the view of
the embodiment shown in Figure 1. If a frontal view of Figure 1
is considered, the aperture claimed in the '176 Patent is
disclosed since the sidewalls would not be visible and the lower
quadrant would be viewed. See Ultradent Prods., Inc. v.
Life-Like Cosmetics, Inc., 127 F.3d 1065, 1068 (Fed.Cir. 1997)
("The district court thus erred by construing the scope of the
Rosenthal [prior art] disclosure as limited to the preferred
Thus, each of the elements of Claim 1 were fully anticipated by
the Allen Patent in 1951. Therefore, Claim 1 is invalid under
35 U.S.C. § 102.*fn9
2. The Vineyard Patent
Display's attempt to obtain claims covering a front member
without the requirement that it be attached to at least one of
the sidewalls were rejected by the PTO. In Display's initial
application to the PTO, it sought claims not limited to a front
member secured to at least one of two sidewalls. Claim 1 of the
application stated in pertinent part:
The PTO rejected Claim 1 of the pending application as
anticipated by the Eckert Patent. In particular, the PTO Examiner
noted that Eckert disclosed "a front member disposed forward of
the track. . . ." (See PTO Action dated December 13, 1996).
Prior to the allowance of the '176 Patent, the PTO Examiner
specifically required, and Display agreed, to the amendment of
pending Claims 1, 18, and 28 to incorporate the phrase "secured
to at least one of said sidewalls." (See Examiner's Amendment
dated March 3, 1997). "[A] patentee, after relinquishing subject
matter to distinguish a prior art reference asserted by the PTO
during prosecution, cannot during subsequent litigation escape
reliance . . . upon this unambiguous surrender of subject
matter." Spectrum Int'l, Inc. v. Sterilite Corp.,
Flum asserts that the GLOBE GLIDE display rack does not employ
a front member secured to at least one sidewall, but rather is
defined by a pair of upright posts located at the front portion
of each product module. Flum submits that its forward posts are
structurally and functionally distinct from the sidewalls claimed
in the '176 Patent, and urges that it is "clear that those of
ordinary skill in the art of display racks do not consider a post
to be the same as a sidewall." (Defendant's Brief at 14).
In support of its claim, Flum offers the May 25, 1999
deposition testimony of Donald Miller, Jr. ("Miller"), Flum's
Senior Vice President of Sales, in which Miller distinguishes
between a post and a sidewall and explains the reasons that Flum
designed the front posts of the GLOBE GLIDE in a manner "wholly
different from sidewalls." (Defendant's Reply Brief at 2). During
his deposition, Miller described the "opening" between the front
posts and the sidewalls as specifically designed to "allow the
bottle to travel into the first position" since "without a window
. . . the vertical member is too thick [such that] if this
thickness were to continue back, the bottle would not move into
[that] first position." (Miller Depo., p. 82). When asked, "Why
not make the post thinner?", Miller explained that the "post had
to be that thickness in order for the catching mechanism to . . .
grab the graphic label." (Id. p. 83). Flum maintains that it is
"precisely these two design mechanisms, the separation of the
sidewall and the thickness, that distinguish Flum's front posts
from the claimed Display sidewall." (Defendant's Reply Brief at
Despite Flum's commendable efforts to distinguish its front
post from Display's sidewall, it is not clear at this stage that
the distinction is more than one of semantics. As the Supreme
Court has stated, "if two devices do the same work the same way,
and accomplish the same results, they are the same, even though
they differ in name . . ." Graver Tank, 339 U.S. at 608, 70
S.Ct. 854.*fn13 Based on the record presently before the Court,
a reasonable finder of fact could find that the front post
attached to the sidewall in the Flum device effectively functions
as the sidewalls required by the claims of the '176 Patent.
Accordingly, summary judgment is inappropriate as to whether the
GLOBE GLIDE literally infringes Claims 1-20 of the '176 Patent.
Claims 14-16, 21-26 and 28 of the '176 Patent require recesses
or means for "telescopic receipt" of a support tray wall. Flum
asserts that the GLOBE GLIDE display rack does not literally
these claims as the GLOBE GLIDE does not have recesses or means
for telescopic receipt of an underlying support rod. Rather, the
GLOBE GLIDE display rack employs an I-shaped member that abuts
the support shelf front rod by the Flum GLOBE GLIDE display rack.
There is no telescopic receipt of a rod.
In opposing Flum's contention, Display relies solely on
paragraphs 23 and 24 of the Declaration of Richard Jay, patentee
and inventor of the '176 Patent.*fn14 However, where, as here,
an analysis of the intrinsic evidence alone will resolve any
ambiguity in a disputed claim term, it is improper to rely on
extrinsic evidence. See Pall Corp., 66 F.3d at 1216.
Column 7, line 56 to column 8, line 47 of the specification for
the '176 Patent describes the "recesses" at issue as "define[d]"
by "the bottoms of the channel sidewalls," and are pictured and
referenced in Figure 1 of the '176 Patent as, essentially,
recesses cut out of the bottoms of the sidewalls. Further,
"[e]ach of the recesses, is configured and dimensioned to receive
telescopically therein the upper rod of the front wall of the
support shelf." Contrary to Display's assertions, the telescopic
receipt "feature" is neither (1) "to telescope out or extend out
the front bottle in the rack beyond the edge of the shelf"; nor
(2) "the ability to extend the rack out to overhang the
supporting shelf." (See Jay Decl. ¶¶ 22-24). Rather, as the
patent language states, the claimed "vertical telescopic action"
is no more than the "engagement" of the "upper rod" of the
underlying support rack in a "relatively snug" fit or
"telescopically therein" the recess, and the corresponding
ability of the "recesses to receive telescopically therein the
upper rod of the support shelf." (Column 7, line 65 to column 8,
line 8); (see also Figs. 1 & 6 of the '176 Patent).
The description in lines 28-33 of column 8 is particularly
illuminating. This portion reads: "In other words, the vertical
telescopic action between the display rack recesses and at least
one of the support shelf front and back walls, enables the
article-supporting length of the display rack to exceed the
length of the support shelf." As quoted, the "telescopic action"
is "vertical," meaning, as shown in Figure 6 of the '176 Patent,
the display rack recess is on top and the upper rod of the
underlying support shelf moves up into and fits up inside the
bottom of the recess. The "telescopic action" is "between" the
recess and the shelf upper rod, as the rod fits into the recess.
Moreover, the "vertical telescopic action . . . enables the . . .
display rack to exceed the length of the support shelf," and
therefore, the "vertical telescopic action" cannot be the
resulting ability of the rack to exceed the length of the support
shelf, as Display contends. If it were, the language quoted above
in column 8, lines 28-33 would stand for the nonsensical
proposition that the "vertical telescopic action" "enables" the
"vertical telescopic action."
A comparison of the correct construction of the recess claims
with the structure of Flum's GLOBE GLIDE rack reveals that (1)
the GLOBE GLIDE rack uses an I-beam abutment member; (2) the
GLOBE GLIDE rack has no recesses, as that term is defined in the
'176 Patent; and (3) the GLOBE GLIDE rack does not employ
"vertical telescopic action," or "telescopic receipt."
Display asserts that the '176 Patent covers any Flum "multiple
stop function" using "recesses in the bottom of the `Globe
Glide.'" In fact, Display's recess claims neither cover the
ability of a rack to be alternatively positioned in a cooler, nor
all racks having such an ability. All that is covered by the '176
Patent is that which is claimed in it and the reasonable
equivalents thereof. In comparing the Flum GLOBE GLIDE with the
recess claims it appears that the Flum I-beam (1) does not
perform the same function as the claimed recesses because the
I-beam does not create a "snug" fit with a shelf upper rod; and
(2) does not work the same way as the claimed recesses because
the I-beam does not telescopically receive a shelf upper rod to
create such a "snug" fit. While, the Flum I-beam does enable the
rack to be alternatively positioned in a cooler, as this Court
has stated, "equivalence is not established by showing only
accomplishment of the same result." DePaul v. General Instrument
Corp., 771 F. Supp. 642, 645 (S.D.N.Y. 1991).*fn15 Accordingly,
summary judgment for noninfringement of Claims 21-26 is
Display asserts that Flum's motions are "frivolous," and
consequently that it should be awarded attorney's fees. In light
of the above findings, Display's request is denied.
For the reasons stated above, Flum's motion for summary
judgment with respect to invalidity of Claim 1 is granted. Flum's
motion for summary judgment with respect to noninfringement is
granted in part and denied in part.
Settle judgment on notice.
It is so ordered.