The Specification and Prosecution History Limit Invention to Device with Full Vest
April 06, 2007
Last Month at the Federal Circuit - May 2007
Judges: Newman (author), Clevenger, Dyk
[Appealed from: W.D. Mo., Judge Dorr]
In Bass Pro Trademarks, L.L.C. v. Cabela’s, Inc., No. 06-1276 (Fed. Cir. Apr. 6, 2007), the Federal Circuit vacated the district court’s contempt order and accompanying sanctions against Cabela’s, Inc. (“Cabela’s”).
Bass Pro Trademarks, L.L.C. (“Bass Pro”) is the owner of U.S. Patent No. 5,620,227 (“the ’227 patent”), directed to “[a] combination vest and pivotable seat member,” wherein said vest and seat member are comprised of various elements. In April 2003, Bass Pro accused Cabela’s of infringing the ’227 patent based on Cabela’s “Stadium Seat Turkey Vest” device. Cabela’s and Bass Pro entered into a settlement agreement embodied in a Consent Judgment. In the Consent Judgment, Cabela’s admitted to infringing the ’227 patent and agreed to be permanently enjoined from future infringement. On October 3, 2003, the district court entered the Consent Judgment, which encompassed the settlement agreement and the final judgment.
Approximately two years later, Cabela’s began to sell a device called the “EZ Chair Combo.” Cabela’s described the device as a folding seat held by backpack-type straps. Bass Pro, on the other hand, contended that the device is a folding seat attached to the back of a garment. Neither party disputed that the EZ Chair Combo has a pivotable seat with support consisting of adjustable straps and a fabric panel at the wearer’s back. Bass Pro moved for contempt based on violation of the Consent Judgment. During the contempt hearing, the district court construed the claims of the ’227 patent as not limited to a traditional vest and explained that claim 1 only requires “said vest comprising a fabric to be worn on an upper torso of a user, said vest comprising at least a dorsal member and shoulder support means.” Slip op. at 7. The district court found that the EZ Chair Combo literally infringed claim 1 and granted the contempt motion. Cabela’s appealed.
On appeal, the Federal Circuit held that the district court incorrectly construed the claim and that Cabela’s did not infringe the ’227 patent. The Court rejected Bass Pro’s argument that use of a full vest is only a preferred embodiment and that, when construed, the actual scope of the claims encompasses a broader array of garments. Rather, the Court agreed with Cabela’s position that the term “vest” is a substantive claim limitation and not simply a word in the preamble.
In reviewing the prosecution history, the Federal Circuit noted that the term “vest” was not originally included as a claim limitation. Original claim 1 recited: “A garment having a seat member, said garment comprising of a fabric to be worn on an upper torso of a user, said garment comprising at least a dorsal member and shoulder support means, . . . .” Id. at 8. The “vest” limitation was added to replace“a garment having a seat member” with “a combination vest and pivotable seat member” in response to a rejection. In making the amendment, Bass Pro stated that the cited prior art “has ‘no vest or other type garment to which it attaches.’” Id. Additionally, in response to another rejection, Bass Pro stressed that the invention had a “unique combination of vest and pivotable seat member . . . .” Id. Thus, the Federal Circuit concluded that Bass Pro’s argument that the vest “adds nothing” to the claims and that the claims encompass other garments worn on the upper body is contrary to the prosecution history.
In holding for Cabela’s, the Federal Circuit stated that “[c]laims are construed to implement the invention described in the specification and prosecution history, within the confines of the prior art. It is clear that this patentee procured the patent based on the ‘unique combination of vest and pivotable seat member’ stressed in the prosecution history, where the applicant placed these limitations in the claims.” Id. at 8-9 (citations omitted). The Court concluded that with the correct claim construction, the vest is a material element of the claim. As a result, the Federal Circuit vacated the contempt order, along with the accompanying sanctions.