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Prosecution History Estoppel Bars Patentee from Relying on DOE

April 10, 2009
Bianco, Krista E.

Decision icon Decision

Last Month at the Federal Circuit - May 2009

Judges: Rader, Friedman, Linn (author)

[Appealed from: D. Kan., Judge Murguia]

In Felix v. American Honda Motor Co., No. 08-1367 (Fed. Cir. Apr. 10, 2009), the Federal Circuit affirmed the district court’s grant of SJ of no literal infringement and no infringement under the DOE, holding that the doctrine of prosecution history estoppel precluded a finding of infringement by equivalents.

Mark D. Felix owns U.S. Patent No. 6,155,625 (“the ’625 patent”), which relates to a built-in storage compartment for a pickup truck bed. Felix brought suit against American Honda Finance Corporation, American Honda Motor Company, Inc., Honda of America Manufacturing, Inc., Honda of Canada, Inc., Honda R & D Americas, Inc., and Honda Trading America Corporation (collectively “Honda”), alleging that the In-Bed Trunk of Honda’s Ridgeline truck infringed claim 6 of the ’625 patent. The district court granted SJ of no literal infringement, finding that Honda’s In-Bed Trunk did not contain the asserted claim limitation of a gasket mounted to the flange. The district court also granted SJ of no infringement under the DOE, finding prosecution history estoppel prevented Felix from asserting infringement of the gasket limitation under the DOE. Felix appealed the district court’s claim construction and grants of SJ.

First, the Federal Court rejected Felix’s arguments that the district court incorrectly construed the claim terms “mounted” and “engaging.” Felix argued that “mounted” should be construed to mean “positioned” instead of the district court’s construction of “securely affixed or fastened to.” In support of this argument, Felix cited the consistent use of the words “mounted” or “mounting” in the claims, the specification’s discussion of welding as a nonlimiting example of “mounting,” dictionary definitions of “mounted,” and the use of the preposition “on” in the phrase “weathertight gasket mounted on said flange.” The Court held that nothing in the claims or specification requires or suggests that “mounted” means simply “positioned,” noting that if the claimed structures were merely positioned, the law of gravity would cause the structures to fall off. Moreover, both of the examples of the types of mounting discussed in the specification are examples of securely affixing or fastening two structures together. Next, the Court found that some of the dictionary definitions cited by Felix were at best highly misleading and bordered on a misrepresentation to the Court since, by omitting part of the definition in his quotations without indicating so, Felix had distorted the meaning of the cited definition. Finding that the accurately quoted definitions supported the district court’s construction, the Court adopted the district court’s construction.

Next, the Court reviewed the district court’s construction of the claim term “engaging” to mean “coming together and interlocking.” Felix argued for a broader construction of “contacting or bringing together,” based on a dictionary definition that the Court again found misleading and drawings in the ‘625 patent showing the gasket merely coming into contact with the lid. The Court held that nothing in the drawings was inconsistent with the gasket “interlocking” the lid when the lid is closed. Although the Court rejected all of Felix’s arguments, the Court concluded that the district court erred by construing “engaging” to require “interlocking” because the specification made clear that the gasket engaged the lid by forming a seal. Because the Court found no basis for the district court’s additional limitation that “engaging” means “interlocking” in the specification or prosecution history, the Court modified the district court’s construction of “engaging” to mean “coming together to form a seal.” However, the Court found that the error was harmless because it did not affect the district court’s determinations of either literal infringement or infringement under the DOE.

Based on its claim construction, the Court next reviewed the district court’s grant of SJ. Felix argued that the gasket of the In-Bed Trunk is affixed to the flange when the lid is closed, meeting the claim limitation requiring the gasket to be “mounted” on the flange when the lid is “in its closed position.” Analyzing the claim language, the Court held that the gasket must be “mounted on said flange” whether or not the lid is “in its closed position.” Finding that the gasket of Honda’s In-Bed Trunk was not securely affixed or fastened to the flange, the Court affirmed the grant of SJ of no literal infringement.

Finally, the Court rejected Felix’s argument that he rebutted the presumption of prosecution history estoppel by showing that the narrowing amendment made during prosecution giving rise to the estoppel was tangential. The Court first considered whether the amendment adding the gasket limitation gave rise to a presumption of surrender. During prosecution, in response to an obviousness rejection, Felix canceled an independent claim without replacing it with any claim reciting the same subject matter and rewrote a dependent claim containing both a channel limitation and a gasket limitation into independent form. The amendment did not overcome the examiner’s rejection, and the rewritten claim was again rejected. In a second amendment, Felix canceled the rewritten claim containing the channel and gasket limitations without replacing it and rewrote another dependent claim incorporating all of the canceled limitations plus an additional limitation. The newly rewritten claim was allowed and subsequently issued as the asserted claim. Even though the first narrowing amendment did not succeed and a further amendment was required to place the claim in allowable form, the Court held that the presumption of prosecution history estoppel still attached since it is the patentee’s response to a rejection that gives rise to prosecution history estoppel, not the examiner’s ultimate allowance of a claim. In addition, the Court found it immaterial that the cancellation and amendment were to different claims than those which resulted in the asserted claim.

Turning to the scope of the presumptive surrender, the Court held that equivalents were therefore presumptively not available as to any of the limitations added in Felix’s first amendment. Noting that it was immaterial that Felix chose to add both the channel and gasket limitations rather than just the channel limitation Felix argued was necessary, the Court held that Felix was presumptively barred from relying on the DOE to prove that Honda’s In-Bed Trunk meets the gasket limitation.

Next, the Court considered Felix’s argument that he has rebutted the presumption of prosecution history estoppel as to the gasket limitation because the narrowing amendment was tangential. The Court rejected Felix’s argument that the first amendment was made because the applicant thought the prior art lacked a channel, not because of the presence or position of a gasket. The Court then held that it was not objectively apparent from this argument that the channel was the only reason for canceling the original independent claim and rewriting the dependent claim in independent form. The Court explained that if Felix had intended only to add a channel and not add a gasket, he could easily have simply amended the independent claim to add that limitation. The Court affirmed the district court’s SJ of no infringement under the DOE.

Summary authored by Krista E. Bianco, Esq.