Doctrine of Equivalents Cannot Capture Disclaimed Structure
November 02, 2001
Last Month at the Federal Circuit - December 2001
Judges: Archer (author), Gajarsa, and Linn
In J & M Corp. v. Harley-Davidson, Inc., No. 00- 1295 (Fed. Cir. Nov. 2, 2001), the Federal Circuit affirmed a grant of SJ that certain motorcycle helmet accessories manufactured and distributed by Harley- Davidson, Inc. and Radio Sound, Inc. (collectively “Harley-Davidson”) did not infringe U.S. Patent No. Re. 34,525 (“the ‘525 patent”).
John and Melinda Lazzeroni obtained the ‘525 patent and assigned it to J & M Corporation (“J & M”) as an exclusive licensee. The ‘525 patent is directed to helmet accessories for mounting a microphone and an electrical plug on a motorcycle helmet to form an audio system that allows motorcyclists to communicate while riding. During reissue, applicants had attempted to and claims to encompass an accessory where the microphone mount and electrical plug mount were clamped to the helmet by a single pair of jaws. The Examiner rejected these claims because they were not supported by the specification and introduced new matter. Applicants canceled the rejected claims and proposed new claims that recited “gripping means” for attaching the microphone mount and electrical plug mount to the motorcycle helmet. After further amendments, the reissue was granted.
Harley-Davidson had purchased J & M’s helmet accessories since approximately late 1987. These accessories had separate microphone boom mounts and electrical plug mounts that attached to the helmet by separate clamps. In the summer of 1989, however, Harley-Davidson approached Radio Sound about manufacturing accessories for resale by Harley-Davidson. In 1997, Radio Sound and Harley-Davidson began to manufacture and sell helmet accessories having an integrated mount for the microphone and the electrical plug using a single clamp.
Thereafter, J & M brought suit against Harley- Davidson, alleging infringement of certain claims of the ‘525 patent. J & M moved for preliminary injunction, which the district court denied, finding that J & M had failed to establish a substantial likelihood of success on the infringement issue. In doing so, the district court had construed the claims to require accessories having separate mounts for the microphone and the electrical plug, each mount having its own clamp. The Federal Circuit affirmed that decision in 1999.
After returning to the district court, Harley- Davidson moved for SJ of noninfringement. The infringement issue turned on the question of equivalents under both 35 U.S.C. § 112, ¶ 6, and the DOE, with the district court finding no infringement.
On appeal, J & M asserted that the district court had erred because at least a material issue of fact existed as to whether the accused single-mount devices infringe by equivalents. As to the means-plus-function claims (the gripping means), the Federal Circuit agreed that the corresponding structure in the specification is a two-clamp structure, one for the microphone mount and one for the electrical plug mount. According to the Federal Circuit, both the prosecution history and the specification of the ‘525 patent limit the scope of the gripping means to preclude coverage of the singleclamp accessory. During prosecution, J & M had explicitly sought coverage of a single-clamp embodiment, but was rejected for lack of support. J & M acquiesced to the rejection, canceled its claims, and substituted new claims in means-plus-function format. Therefore, the scope of the claims cannot now include a single-clamp embodiment, the Court ruled. Moreover, the Court concluded, the specification establishes that the single-clamp structure cannot be an equivalent of the dual clamp because the specification describes a single-clamp structure as a flaw of prior art accessories. This, the Court concluded, amounts to a disclaimer of the accused structure. The Court concluded that this same prosecution history also estops J & M from asserting coverage under the DOE.
As to the non-means-plus-function claims, the Federal Circuit concluded that J & M’s assertions of infringement under the DOE cannot be supported because structure expressly disclaimed in a specification cannot be considered an equivalent under the DOE.