“Gnarly” Holding of Noninfringement on Surfboard Patent
September 12, 2001
Last Month at the Federal Circuit - October 2001
Judges: Clevenger (author), Newman, and Dyk
In Fin Control Systems Pty, Ltd. v. OAM, Inc., No. 00-1516 (Fed. Cir. Sept. 12, 2001), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded a district court’s decision granting of SJ of noninfringement.
Fin Control Systems Pty, Ltd. (“FCS”) sued OAM, Inc. (“OAM”) in the Central District of California, alleging contributory infringement and inducement of infringement of U.S. Patent No. 5,464,359 (“the ‘359 patent”). The ‘359 patent is directed to a system for providing detachable fins to the bottom of a surfboard.
The invention includes plugs (fixing elements) recessed in the board. Each plug receives a mating tab (fixing member or formation) extending from the base of the fin. In a preferred form, two plugs are provided for each fin, and each fin has two mating tabs to engage with those two plugs. The specification further states that the tabs may be fixed within the plug recesses by means that laterally engage the mating tabs of the fins, such as by one or more screws.
The only claim at issue recites a surf craft including a body with a fixing element embedded therein and a fin attached to the surf craft. The fixing element has a fixing cavity therein. The fin has a pair of lateral surfaces, an end surface, and a fixing formation extending from its end surface. The fixing formation is engaged with the fixing cavity by releasable means laterally engaging the formation, where the releasable means applies lateral force to the formation. The force is generated by means of a screw, which is located in a passage extending from an outer surface of the fixing element to a side wall of the fixing cavity that is inserted into the fixing element from an outer end of the fixing element.
FCS alleged that OAM infringed the ‘359 patent by marketing a removable fin-attachment system. The accused system differed from the embodiments disclosed in the ‘359 patent by, first, having a single fixing element per fin and, second, including two crossshaped tabs at the bottom of each fin, where the tabs are engaged by a grub screw at the front surface of one of the tabs.
In the district court, the parties had filed crossmotions for SJ regarding infringement. After a claim construction hearing, the district court had issued an order construing the asserted claims and granting SJ in favor of OAM. The district court had determined that “laterally” means “from the side” and that “lateral force” excludes “front force” or “rear force.” Thus, the district court had concluded that OAM did not literally infringe because the grub screw on OAM’s accused system engaged the fixing formation from the front. The district court also had ruled that there could be no infringement under the DOE because to apply the claim against the accused product would read the “laterally engaging,” “applying lateral force,” and “to a side wall of said cavity” limitations out of the claim.
On appeal, to determine whether the district court’s grant of SJ was proper, the dispositive issue concerned the proper meaning of “lateral” and “side” in the context of the “fixing formation” and the corresponding “fixing cavity” limitations. The Federal Circuit rejected FCS’s proposed broad interpretation of “lateral” to mean “any surface which is not a top or bottom surface.”
The Federal Circuit concluded that since the claim recites a “fin having a pair of lateral surfaces and an end surface,” the “lateral surfaces” are those “on the side of the median vertical plane.” It further concluded that use of the terms “laterally engaging” and “lateral forces” in the prosecution history and in the prior art of record are consistent with the district court’s interpretation.
Having affirmed the district court’s interpretation of the disputed terms, the Federal Circuit also affirmed the district court’s finding of no literal infringement because the accused system includes a screw that engages with the front of the tab or “fixing formation” on the surfboard fin. Thus, the accused system does not meet the “lateral” or “side” limitations. The Federal Circuit also argued that applying the DOE to find infringement would improperly read the limitations of “lateral” and “side” out of the claim.