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                         NOTE: This disposition is nonprecedential.


  United States Court of Appeals for the Federal Circuit
                                        2006-1376

                                    JOHN B. ADRAIN,

                                                      Plaintiff-Appellant,

                                             v.

                   SUPERCHIPS, INC., DIABLOSPORT LLC,
                 STREET PERFORMANCE ELECTRONICS, INC.,
      CRANE TECHNOLOGIES GROUP, INC. (doing business as Crane Cams),
                      BULLY DOG TECHNOLOGIES LLC,
            BD DIESEL PERFORMANCE (doing business as BD Power),
     COBB TUNING LLC, COMPETITION CAMS, INC., WE TECHNOLOGIES, INC.,
                   SUPERCHIPS CUSTOM TUNING LLC, and
        EDGE PRODUCTS OLDCO, INC. (doing business as Edge Products),

                                                      Defendants-Appellees,

                                            and

                   TTS, INC. (doing business as TTS Power Systems),

                                                      Defendant.


       David E. Warden, Yetter & Warden, L.L.P, of Houston, Texas, argued for plaintiff-
appellant. Of counsel were Eric Paul Chenoweth, and David C. Hricik, Mercer University
School of Law, Macon, Georgia.

       Joe C. Holzer, Andrews Kurth LLP, of Houston, Texas, argued for defendants-
appellees. With him on the brief were Kendall M. Gray, and Douglas W. Rommelmann.

Appealed from: United States District Court for the Southern District of Texas

Judge Keith P. Ellison
                      NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit
                                      2006-1376

                                  JOHN B. ADRAIN,

                                                            Plaintiff-Appellant,

                                           v.

                 SUPERCHIPS, INC., DIABLOSPORT LLC,
               STREET PERFORMANCE ELECTRONICS, INC.,
    CRANE TECHNOLOGIES GROUP, INC. (doing business as Crane Cams),
                    BULLY DOG TECHNOLOGIES LLC,
          BD DIESEL PERFORMANCE (doing business as BD Power),
   COBB TUNING LLC, COMPETITION CAMS, INC., WE TECHNOLOGIES, INC.,
                 SUPERCHIPS CUSTOM TUNING LLC, and
      EDGE PRODUCTS OLDCO, INC. (doing business as Edge Products),

                                                            Defendants-Appellees,

                                          and

                 TTS, INC. (doing business as TTS Power Systems),

                                                            Defendant.

                           __________________________

                            DECIDED: January 25, 2007
                           __________________________

Before MICHEL, Chief Judge, DYK and PROST, Circuit Judges.

Opinion for the court filed by Chief Judge MICHEL. Dissenting opinion filed by Circuit
Judge PROST.

MICHEL, Chief Judge.

      John B. Adrain appeals from a judgment of the United States District Court for

the Southern District of Texas in favor of Superchips, Inc. and various other defendants

(collectively "Superchips") in his suit alleging infringement of United States Patent
No. 5,523,948 ("the '948 patent"). Adrain v. Superchips, Inc., No. H-04-4117 (S.D. Tx.

March 14, 2006). The district court correctly construed claims 1 and 5 to require the

device to remain installed in a vehicle, such that the accused products do not infringe.

With respect to claim 19, we hold that claim 19 was anticipated by United States Patent

No. 5,278,759 ("Berra"). We therefore affirm.

                                   I.     BACKGROUND

       The '948 patent was the subject of a prior appeal before this court. See Adrain v.

Hypertech, Inc., 70 Fed. App'x 557 (Fed. Cir. 2003) ("Hypertech"). Asserted claims 1, 5

and 19 were reproduced in that opinion, id. at 558-59, and will not be repeated here.1

       Briefly, the '948 patent is directed to an apparatus and method for modifying an

engine control module ("ECM") in an automobile. An ECM is an onboard computer that

controls a variety of engine functions. ECMs can be customized to enhance engine

performance or reconfigured so the engine operates differently than originally intended

by the vehicle manufacturer. For example, as described in the specification, an ECM

can be reprogrammed so an engine designed to burn gasoline or diesel will also run on

alternative fuels. See '948 patent, col.1 l.60-col.2 l.3, col.6 ll.14-38.

       On October 22, 2004, Mr. Adrain filed suit in the United States District Court for

the Southern District of Texas against Superchips. After the parties filed their claim

construction briefs, a court-appointed special master filed his recommendations on

December 16, 2005; various objections were filed. A Markman hearing was held on

February 8, 2006. The district court subsequently issued an order (1) construing the

disputed claims; (2) granting summary judgment of non-infringement as to claims 1 and

       1
              Independent claim 1 and dependent claim 5 are apparatus claims, while
claim 19 is a method claim.


2006-1376                                      2
5; and (3) granting summary judgment of invalidity as to claim 19. Adrain v. Superchips,

Inc., 2006 U.S. Dist. LEXIS 25212 (S.D. Tx. March 14, 2006).

       Judgment was entered accordingly, and a timely appeal followed.           We have

jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

                                  II.    DISCUSSION

                                            A.

       Mr. Adrain first argues that summary judgment of non-infringement with respect

to the apparatus claims was improperly granted because the court erred in its claim

construction. We review a district court's claim construction without deference. Cybor

Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-56 (Fed. Cir. 1998) (en banc). In

construing disputed claim terms, we determine the customary meaning as understood

by a person of ordinary skill in the art according to the methodology described in Phillips

v. AWH Corp., 415 F.3d 1303, 1312-19 (Fed. Cir. 2005) (en banc).

       Although multiple claim terms were disputed, Mr. Adrain only seeks appellate

review of one of them.      Specifically, he contends that the district court erred in

construing the preamble phrase "[a]n improvement in a vehicle" in claim 1 to require

that the module remain part of the vehicle once attached. Adrain, 2006 U.S. Dist.

LEXIS 25212 at *11-12. We reject this argument.

       The prosecution history of an earlier patent in the same family "applies with equal

force to subsequently issued patents that contain the same claim limitation." Elkay Mfg.

Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999). Here, the '948 patent is a

continuation-in-part of United States Patent No. 5,446,655, which is a continuation of




2006-1376                                   3
United States Patent No. 5,293,317, which is itself a continuation of United States

Patent No. 5,200,900 ("the '900 patent").

       Most relevant to this appeal, the district court pointed to the prosecution history of

the '900 patent.     Although the original claims of that application referred to "an

improvement in an apparatus," they were amended to read "an improvement in a

vehicle." The examiner had cited United States Patent No. 4,502,324 ("Marino") as

prior art, but the patentee argued that claim 1, as amended, was not anticipated

because "Marino is not an improvement in a vehicle, but a stationary piece of shop

equipment." Indeed, this court has previously observed that this statement "suggests

that the phrase 'an improvement in a vehicle,' which was carried through to claim 1 in

the '948 patent, may require the invention to be incorporated within or retrofitted to the

vehicle." Hypertech, 70 Fed. App'x at 561. Because the argument was not raised in

that appeal, however, the panel declined to address it. Id.         Now that the issue is

squarely before us, we do not hesitate to affirm the district court's construction of "an

improvement in a vehicle" to mean "a module that becomes part of a vehicle and is

intended to remain part of the vehicle during use."2

       Based on this interpretation, the district court granted summary judgment of

non-infringement as to claims 1 and 5. We review this decision de novo, reapplying the

same standard used by the district court. See, e.g., Cook Biotech, Inc. v. Acell, Inc.,

460 F.3d 1365, 1372 (Fed. Cir. 2006). Summary judgment is appropriate when "there is

       2
               Although Mr. Adrain argues that the module need not be "permanently"
attached because the patent expressly contemplates the ability to restore the ECM to its
original configuration, see '948 patent, col.6, ll.8-10, the district court acknowledged that
"the patented invention may, like any other automobile part, be removed after
installation." Adrain, 2006 U.S. Dist. LEXIS 25212 at *12. In other words, the module
can be uninstalled and the ECM returned to its original, unmodified state.


2006-1376                                    4
no genuine issue as to any material fact and that the moving party is entitled to a

judgment as a matter of law." Fed. R. Civ. P. 56(c).

       The accused products are handheld devices used to reprogram ECMs;

afterwards, these devices are disconnected from the vehicle. To survive a summary

judgment motion, the non-movant "must set forth specific facts showing that there is a

genuine issue for trial." Fed. R. Civ. P. 56(e); Anderson v. Liberty Lobby, Inc., 477 U.S.

242, 250 (U.S. 1986). As Mr. Adrain presented nothing to rebut Superchips' evidence

that the accused products do not remain part of the vehicles that they reprogram, the

district court did not err in granting summary judgment of non-infringement with respect

to the apparatus claims.

                                             B.

       With respect to the method claim, Mr. Adrain argues that the district court erred

in granting summary judgment of invalidity.       The "selectively controlling" clause3 of

claim 19 was construed to mean "making a decision to switch control of the engine from

the programmed mode provided in the originally provided memory to the additional

programmed mode provided by the adapter module, with the adapter module remaining

coupled to the bus such that control of the engine can be switched back and forth

between the originally provided programmed mode and the additional programmed

mode." Adrain, 2006 U.S. Dist. LEXIS 25212 at *20. Yet, the court clarified that this

interpretation "does not require that the device permit switching between modes while

the vehicle is in operation." Id. at n.2. In finding claim 19 anticipated by Berra, the court

       3
               Claim 19 recites the following limitation: "selectively controlling said
engine by means of said first computer through at least one additional programmed
mode provided by said adapter module, said additional programmed mode not being
originally included in said originally provided memory."


2006-1376                                    5
rejected Mr. Adrain's argument that Berra did not disclose retaining the vehicle's

originally provided memory during and after reprogramming of the ECM. Id. at *26-27.

       We generally agree with the district court's claim construction. Claim 19 does not

recite the "improvement in a vehicle" limitation of the apparatus claims. As such, the

claimed method does not require that the adapter module remain attached to the

vehicle. Moreover, the language of claim 19 makes no reference to switching back and

forth between the originally provided programmed mode and the additional programmed

mode during vehicle operation. Nor does claim 19 require the further step of storing the

original configuration elsewhere in an additional memory, as Mr. Adrain argues.          It

merely requires that the adapter module provide at least one additional programmed

mode not originally included in the ECM.

       As construed, claim 19 is anticipated by Berra, which discloses a method of

reprogramming an ECM with an off-board controller. We reject Mr. Adrain's argument

that Berra does not disclose retaining or otherwise storing the original program so that it

can be restored later.   The district court correctly interpreted Berra as disclosing a

method wherein the original program code is "preferably erased," see col.4 l.62, (but not

necessarily erased) when the ECM is reprogrammed.           Indeed, as the district court

noted, the "Summary of the Invention" section of the Berra specification states:

       In one form of the present invention, the reprogramming method follows a
       predetermined transfer protocol which assists in preventing the existing
       computer program code stored in the non-volatile memory from being
       improperly erased or re-written.

Col.4 ll.2-29 (emphasis added). By disclosing the ability to preserve the original code,

Berra inherently discloses the ability return to the original code at a later point.

Furthermore, dependent claims 11 and 15 refer to erasure of "at least a portion" or



2006-1376                                   6
"substantially the entire contents" of the existing memory, but the broadest method

claim—i.e., independent claim 10—merely requires storing the new computer program

code. In other words, claim 10 is sufficiently broad to disclose a method wherein the

original program code is left intact alongside the new code.         As such, summary

judgment of invalidity was properly granted.

      Having reached this conclusion, we need not and do not decide whether the

accused products infringe claim 19. We affirm the judgment of the district court.




2006-1376                                   7
                       NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit

                                        2006-1376


                                    JOHN B. ADRAIN,

                                                         Plaintiff-Appellant,

                                             v.


                  SUPERCHIPS, INC., DIABLOSPORT LLC,
                STREET PERFORMANCE ELECTRONICS, INC.,
     CRANE TECHNOLOGIES GROUP, INC. (doing business as Crane Cams),
                     BULLY DOG TECHNOLOGIES LLC,
           BD DIESEL PERFORMANCE (doing business as BD Power),
    COBB TUNING LLC, COMPETITION CAMS, INC., WE TECHNOLOGIES, INC.,
                  SUPERCHIPS CUSTOM TUNING LLC, and
       EDGE PRODUCTS OLDCO, INC. (doing business as Edge Products),

                                                         Defendants-Appellees,

                                            and

                   TTS, INC. (doing business as TTS Power Systems),

                                                         Defendant.

PROST, Circuit Judge, dissenting-in-part.

       Because, in my view, under the proper construction of claim 19, Berra cannot

support the district court’s finding of invalidity, I respectfully dissent from part B of the

opinion. The majority reads claim 19 as having “no reference to switching back and

forth between the originally provided programmed mode and the additional programmed

mode during vehicle operation.” While lacking a requirement to switch during vehicle

operation, the claim does require “selectively controlling” the engine. As the district
court properly recognized, “selectively controlling” indicates the ability to switch back

and forth between multiple programmed modes.

       Giving appropriate meaning to “selectively,” Berra fails to anticipate claim 19. As

the majority discusses, Berra may allow two programs to exist simultaneously in the on-

board controller, and therefore allows the possibility of returning to the original program

in the future. To properly anticipate claim 19, however, Berra must disclose the means

by which to return to the original program, not just leave open a possibility. Contrary to

the majority, I do not believe Berra discloses the ability to return to that program.

Accordingly, I would reverse the district court’s finding of invalidity based on Berra.

       Appellees additionally assert anticipation of claim 19 based on the Microburst

device. The district court did not address the Microburst device, and the record on

appeal provides insufficient basis to support a grant of summary judgment at this time. I

would therefore remand to the district court to evaluate anticipation based on the

Microburst device.




2006-1376                                    2
