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Statements During Reexamination Can Be Considered During Claim Construction

January 27, 2012

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Last Month at the Federal Circuit - February 2012

Judges: Newman, Prost (author), O'Malley

[Appealed from: N.D. Ill., Judge Zagel]

In Krippelz v. Ford Motor Co., No. 11-1103 (Fed. Cir. Jan. 27, 2012), the Federal Circuit reversed the district court’s failure to grant JMOL that the patent-in-suit was anticipated by the prior art after a jury verdict of no invalidity, vacated the district court’s grant of SJ of infringement and finding of willfulness, and remanded the case for entry of judgment of nonliability for Ford Motor Company (“Ford”).

Jacob Krippelz, Sr. obtained U.S. Patent No. 5,017,903 (“the ’903 patent”), titled “Emergency Light,” for a vehicle-mounted lamp. The ’903 patent describes a lamp attached to the side view mirror of a vehicle that directs light downward to reflect off water, dust, or other airborne particles so as to be visible to other drivers, but not interfere with the vision of the vehicle’s driver or that of other drivers. Krippelz offered a license to Ford, but Ford declined.

Ford later began offering a “puddle light” on several of its vehicles. Ford’s puddle light was a lamp attached to the vehicle’s side view mirror that shone light generally downward. The lens diffused light in such a way as to illuminate the vehicle’s side. Krippelz subsequently sued Ford, accusing the puddle light of infringing claim 2 of the ’903 patent. Krippelz also requested reexamination of the ’903 patent and submitted all of the references identified by Ford in the litigation. The reexamination confirmed the validity of the ’903 patent over the submitted prior art.

Krippelz moved for SJ of infringement, which the district court granted. During a subsequent trial on validity and damages, Ford argued that claim 2 was anticipated by, or at least obvious in view of, a French patent (“DuBois”). Krippelz argued that DuBois failed to teach two limitations of the claim:
(1) a “conical beam of light” and (2) a lamp located “adjacent” to the vehicle window. The jury found claim 2 valid over DuBois and awarded Krippelz $23 million in damages. Following a bench trial on willfulness, the district court awarded an additional $32.7 million in prejudgment interest and enhanced damages.

Ford moved for JMOL on invalidity. The district court denied Ford’s JMOL, finding that a reasonable jury could have credited Krippelz’s evidence and found that DuBois failed to teach a “conical beam of light” and/or a lamp “adjacent to the window.” Ford appealed.

The Federal Circuit rejected the two grounds cited by the district court, finding each unsupported by the evidence. With respect to the first ground, the Federal Circuit concluded that a reasonable jury could not have found that DuBois fails to teach a “conical beam of light.” The Federal Circuit, however, found that the district court did not err in construing a “conical beam of light” to incorporate limitations as to the shape of the lamp’s reflector and the positioning of the light bulb filament at or near the focal point of the optical reflector, even though the specification and initial prosecution history were “bereft of such discussion.” Slip op. at 9. The Court noted that “[a] patentee’s statements during reexamination can be considered during claim construction, in keeping with the doctrine of prosecution disclaimer.” Id. (citing Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1336 (Fed. Cir. 2011)). Thus, the Court determined that, as a result of Krippelz’s statements during reexamination, Krippelz disclaimed lamps lacking these limitations, and the limitations properly became part of the construed claims.

Although the district court correctly construed the claim, the Federal Circuit found that a reasonable jury could not find that DuBois lacked the required disclosure because DuBois expressly taught that its lamp could include a bulb at the focus of a reflector and also include a screen to prevent the light rays from striking the eyes of a driver or pedestrian in front of or behind the vehicle. Further, the Court found that the evidence cited by the district court to overcome DuBois’ disclosures was legally insufficient to support a judgment for Krippelz.

First, although Ford did not appeal the admissibility of Krippelz’s expert’s testimony based on the scale of the drawings in DuBois, the Court reiterated that it “has repeatedly cautioned against overreliance on drawings that are neither expressly to scale nor linked to quantitative values in the specification.” Id. at 13. The Federal Circuit, however, could not find Krippelz’s expert’s testimony insufficient because Ford did not appeal the district court’s admissibility ruling. Nevertheless, the Federal Circuit concluded that it was reversible error for the district court to hold the jury’s verdict sustainable on this testimony because the figure relied on by Krippelz’s expert depicted only one embodiment of the DuBois invention, and DuBois expressly stated that other embodiments, including a headlight, could use lamps in addition to the one disclosed in its figures. Thus, the Court determined that “there is no question that DuBois’[ ] disclosure of a ‘headlight’ teaches the required ‘beam of light.’” Id. at 14.

Second, the Federal Circuit disagreed, as a matter of law, with Krippelz’s expert’s testimony that DuBois did not anticipate because the beam of light was not necessarily “conical,” as required by the claims. The Court found, however, that while DuBois discussed illuminating the area within a rectangle on the pavement next to the car, it does not require that such illumination be only with nonconical light beams. Thus, Krippelz’s expert’s statements “that the ‘conical’ limitation was unmet were therefore too conclusory to sustain the jury’s verdict.” Id. at 15.

Finally, the Federal Circuit rejected the district court’s reliance on Krippelz’s expert’s testimony that a conical beam of light “probably wouldn’t be a very effective way to accomplish the purpose of DuBois” and the district court’s finding that, based on such evidence, the jury could have found that DuBois “actually teaches away from using a beam.” Id. (citations omitted). First, “teaching away is not relevant to an anticipation analysis; it is only a component of an obviousness analysis.” Id. Second, “[w]hen all elements of the device are shown in a single prior art reference, as here, the question of ‘teaching away’ does not arise.” Id. Thus, the Federal Circuit held that the district court committed clear error in denying JMOL based on DuBois’ putative failure to disclose the required “conical beam of light.” Id.

The Federal Circuit also rejected the district court’s second basis for denying Ford’s motion for JMOL, finding that DuBois disclosed a lamp “adjacent to the window.” Although the district court had credited Krippelz’s expert’s testimony, based on the patent figures, that while the device might be adjacent, “it certainly is not clearly adjacent to a side window,” the Federal Circuit remarked that “the conclusory testimony of an expert witness . . . cannot create an issue of fact if none otherwise exists.” Id. at 16 (citation omitted). Since there was no question that a person of ordinary skill would understand the figures to show mounting the lamp adjacent to the side window, the district court erred by denying Ford’s JMOL of invalidity.

Accordingly, the Federal Circuit reversed the district court’s denial of JMOL of invalidity, finding claim 2 of the ’903 patent invalid as anticipated by DuBois, vacated the district court’s SJ of infringement and willfulness analysis, and remanded for entry of judgment of nonliability for Ford.

Summary authored by Elizabeth A. Laughton, Esq.