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Arguments During Prosecution About Prior Art, Without Relation to Invention, Does Not Invoke Doctrine of Prosecution Disclaimer

July 30, 2012

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Last Month at the Federal Circuit - August 2012

Judges: Rader (author), Prost, Moore

[Appealed from: C.D. Cal., Judge Zouhary]

In Grober v. Mako Products, Inc., Nos. 10-1519, -1527 (Fed. Cir. July 30, 2012), the Federal Circuit vacated the district court’s construction of the claim term “payload platform,” vacated the grant of SJ of noninfringement, and remanded for further proceedings. Further, the Court dismissed a motion for sanctions and attorneys’ fees in light of the vacated grant of SJ. In addition, the Court affirmed the district court’s personal jurisdiction determination.

Appellant David Grober invented a platform that stabilizes a camera for filming motion pictures from moving vehicles and obtained U.S. Patent No. 6,611,662 (“the ’662 patent”). Grober and Voice International, Inc. (collectively “Grober”) sued Mako Products, Inc.; Air Sea Land Productions, Inc.; CineVideoTech, Inc.; Spectrum Effects, Inc.; Blue Sky Aerials, Inc.; Jordan Klein, Sr.; Jordan Klein, Jr.; and Oppenheimer Cine Rental, LLC (collectively “Mako”), alleging that their manufacture, sale, and lease of a movie stabilization device, known as the MakoHead, infringed the ’662 patent. The Kleins—Jordan Klein, Sr. and Jordan Klein, Jr.—are the only shareholders of defendant, Mako Products, Inc., which is a Florida corporation with its only place of business in Florida. Oppenheimer Cine Rental, LLC (“Oppenheimer”) is a rental company of movie and television industry products, including the MakoHead, and is located in Washington. The district court dismissed the Kleins and Oppenheimer for lack of personal jurisdiction.

Shortly after the complaint was filed, Mako commenced an inter partes reexamination of the ’662 patent before the PTO. During reexamination, the patentee made several statements regarding the placement of prior art sensors in relation to the element identified by the patent examiner as the “payload platform” in the prior art.

Before the Markman hearing, the parties proposed competing constructions of the term “payload platform.” Mako limited the term to a “horizontal surface or plate” upon which the device is mounted or affixed. Grober, on the other hand, included the three-dimensional “supporting structure” of the “horizontal surface or plate.”

Based in part on the statements made during reexamination, the district court construed the claim term “payload platform” to mean “the horizontal plate, piece of surface upon which the device (e.g., a camera) is directly mounted upon or affixed to.” Based on its claim construction, the district court then sua sponte concluded that the MakoHead did not infringe the ’662 patent and granted SJ of noninfringement. The district court also denied Mako’s requests for attorneys’ fees and costs.

On appeal, the Federal Circuit first addressed the construction of the term “payload platform.” The Court concluded that the district court improperly narrowed the term “payload platform,” based on statements the patentee made during reexamination only about the prior art and not his invention. In reaching this conclusion, the Court reiterated that a claim’s scope may be narrowed under the doctrine of prosecution disclaimer when the patentee makes a “clear and unmistakable disavowal of scope during prosecution.” Slip op. at 8 (quoting Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374-75 (Fed. Cir. 2008)). The Court specifically noted that the district court erroneously inferred that the patentee’s reference to the reexamination requestors’ arguments in effect adopted those arguments as his definition of his invention. Id. at 9-10. Thus, the Court found that these ambiguous statements regarding the prior art do not disavow or even clearly describe the structure of the claimed “payload platform” as it relates to the invention. Accordingly, the Federal Circuit construed “payload platform” to mean “a three-dimensional structure upon which the payload (e.g., a camera) is directly mounted or affixed to.” Based on the Court’s amended claim construction, the Court concluded that the district court erred in finding that the MakoHead did not infringe the ’662 patent.

The Court stated that the district court’s power to enter SJ does not permit it to bypass performing a complete patent infringement analysis. Here, the Court explained, the district court failed to perform the full two-step analysis required for patent infringement because the adopted claim construction did not entirely dispose of the case. Indeed, several claims did not include the construed term. Moreover, the Court noted that the district court did not place the accused device alongside each asserted claim for a complete comparison. The Court therefore vacated the district court’s grant of SJ of noninfringement.

Turning to personal jurisdiction, the Federal Circuit concluded that the district court properly dismissed the Kleins and Oppenheimer for lack of personal jurisdiction. Because the Kleins are the sole shareholders of Mako Products, Inc., the Court concluded that the Kleins are buffered by the fiduciary shield doctrine because their official duties were their only contact with California. Further, the Court affirmed the district court’s finding of no general or specific jurisdiction over Oppenheimer. In particular, the Court agreed with the district court that Oppenheimer had very limited contacts with California. Also, Grober failed to show that Oppenheimer had sufficient contacts with California to warrant specific jurisdiction, when it could not establish any activity directed with the state of California except for a nationally distributed advertisement in a magazine based in California.

Finally, the Court dismissed Mako’s motion under Fed. R. Civ. P. 11 and 35 U.S.C. § 285 seeking attorneys’ fees and litigation costs. In light of the Court’s decision to vacate the grant of SJ, the
cross-appeal was dismissed as moot.

Summary authored by Benjamin H. Huh, Esq.