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A Patentee Is Held to What He Declares During the Prosecution of the Patent

September 06, 2007

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Last Month at the Federal Circuit - October 2007

Judges: Newman (author), Schall, Bryson

[Appealed from: D. Utah, Senior Judge Jenkins]

In Gillespie v. Dywidag Systems International, USA, No. 06-1382 (Fed. Cir. Sept. 6, 2007), the Federal Circuit modified the district court’s claim construction of Harvey D. Gillespie’s U.S. Patent Nos. 5,230,589 (“the ’589 patent”) and 5,259,703 (“the ’703 patent”), concluded that literal infringement could not be found under the modified construction, and reversed the district court’s judgment of infringement.

Gillespie sued Dywidag Systems International, USA (“Dywidag”) for infringement of the ’589 and ’703 patents. The ’589 and ’703 patents are directed to a mine roof bolt. It is known to install such bolts in bore holes of a mine roof to reinforce and support the rock formation above a mine roof. The bolt of the ’589 and ’703 patents is made of steel cable with various structural components. Specifically, it includes a multistrand steel cable and a head formed by a two-piece tapered plug positioned around the stranded steel cable at one end and an internally tapered collar having a drive head with a hexagonal or other shape slipped over the tapered plug.

Dywidag conceded that its accused device met all of the claim limitations of the ’589 and ’703 patents except for the limitation that recited a “drive collar . . . having an outer surface defining a drive head.” The specifications of Gillespie’s patents described the drive collar as a “square head or any other shaped head that accepts a mine roof bolt driver mechanism.” In the Dywidag structure, instead of a drive collar that surrounds the tapered plug, the Dywidag cable bolt is rotated by way of a key socket recessed in the end of the bolt head. Dywidag argued that Gillespie’s claims defined a bolt having a “drive collar . . . having an outer surface defining a drive head that accepts a driving mechanism,” whereas the Dywidag structure for turning the bolt was located on the inner surface, not the outer surface, of the bolt head or collar. The district court rejected Dywidag’s argument and ruled that the term “outer surface” in the claims did not mean the exterior surface of the drive head, but meant outer “relative to the frusto-conical ‘inner’ surface portion thereof.” Slip op. at 6. Given this construction, the district court ruled that the square hole at the end of Dywidag’s bolt cylinder was at an “outer surface defining a drive head that accepts a driving mechanism.” Id. The parties stipulated to literal infringement, given the court’s claim construction, and Dywidag appealed.

On appeal, the Federal Circuit held that it did not agree that “a person of ordinary mechanical skill would read the specification, the drawings, and the claims to construe ‘outer surface’ of the drive collar to include a collar whose interior, not exterior, accepts the drive tool.” Id. at 9. It reasoned that the specification and drawings described and illustrated a drive collar whose inner (interior) surface engages the tapered plug and whose outer (exterior) surface accepts the drive tool. The Court thus concluded that the surface must be outer with respect to the collar.

The Court observed that “[t]his is the meaning that Gillespie used when he argued during prosecution that [a particular] reference [“Spies”] was distinguished by its smooth outer surface, as contrasted with Gillespie’s angular outer surface.” Id. In this argument, noted the Court, Gillespie “clearly used ‘outer’ to refer to the outside surface of the bolt head, and pointed out that the cylindrical outside surface of the Spies bolt head rendered it incapable of being driven by a mine roof bolting machine.” Id. In so finding, the Court rejected Gillespie’s argument that this distinction was not material to the grant of his patent because the examiner did not mention it in the reasons for allowance, noting that Gillespie nonetheless argued this distinction.

The Court concluded that Gillespie’s specification and argument were directed to an exterior surface of the drive collar, shaped to accept the drive tool. It noted that “[t]his [was] the meaning that Gillespie used when he argued the difference from Spies.” Id. at 10. It added that “[a] cylindrical outer surface that is not adapted to be grasped by a drive tool characterizes the Spies and the Dywidag bolt heads.” Id. The Court explained that “[s]uch [a] construction was negated during prosecution” and that a “patentee is held to what he declares during the prosecution of his patent.” Id. Given its construction, the Court held that the district court’s judgment of literal infringement could not stand. Accordingly, it reversed the district court.