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Estoppel applies to all added limitations in claims, including when present in unamended claims

April 15, 2009
Post by Blog Staff

In a decision Friday, the Federal Circuit affirmed a district court's grant of summary of no literal infringement and that prosecution history estoppel barred application of the doctrine of equivalents. During prosecution of the patent, a total of three limitations from two different dependent claims were added to the asserted claim in separate amendments, although only two of the limitations were addressed by the applicant and examiner. The district court held the third element was not literally present in the accused product, and, based on the amendment, could not be present under the doctrine of equivalents.

The Federal Circuit agreed. The court held it was immaterial that the first amendment (with the "extra" limitation at issue) did not result in allowance; the estoppel applied to each of the added limitations. Importantly, the court also observed that this presumption of estoppel applied to all claims of the patent containing the limitation, whether or not they were amended:

Thus, in this case, the cancellation of original independent claim 1 coupled with the rewriting of original dependent claim 7 as independent claim 14 gave rise to a presumption of surrender applicable to all limitations, found in any of the claims of the '625 patent, that correspond to the limitations of claim 7.

The court also held that even though the third limitation was not specifically argued, its addition was not tangential to the rationale underlying the amendment, thereby preventing application of prosecution history estoppel. Specifically, the amendment stated one of the two limitations was not present in the prior art, but added the limitation was not present "in combination with the other structure" of the claims. This additional language brought the additional limitation into the argument, making it not tangential. Further, the court held the absence of explanation why the additional limitation was added meant it could not be tangential, because whether an amendment is tangential must be determined from the prosecution record. Accordingly, the court affirmed the district court's grant of summary judgment of noninfringement.

Mark Felix is the owner and inventor of a patent relating to a waterproof storage system for pickup trucks. The claimed storage system is shown in Figure 1 of the patent below:

Figure 1

The gasket (18), flange (16), and lid (22) are the relevant structures to the appeal, and are depicted in more detail in Figure 4 of the patent below:

Figure 4

The only asserted claim was claim 6, which requires (relevant limitation emphasized):

6. In combination with a vehicle including a vehicle bed, the improvement of a storage system which includes:
a) an opening formed in the vehicle bed and including an opening rim;
b) a compartment with an interior;
c) said compartment being mounted on said bed with said compartment interior accessible through said opening;
d) a lid assembly including lid mounting means for mounting said lid in covering relation with respect to said opening;
e) a channel formed at the rim of said bed opening and including an inner flange;
f) a weathertight gasket mounted on said flange and engaging said lid in its closed position; and
g) a plurality of drain holes formed in said channel.

There were two amendments during prosecution that led to claim 6. The examiner first rejected an independent claim having limitations a-d and a dependent claim adding limitations e-f, but indicated a second dependent claim adding limitation g would be allowable if rewritten in independent form. In response, Felix added limitations e-f from the dependent claim. In the next action, the Examiner rejected the amended claim with limitations a-f, but again noted the dependent claim also requiring limitation g would be allowable if rewritten into dependent form. Felix did this, and the rewritten claim issued as claim 6.

Felix sued Honda, asserting its Ridgeline pickup with the in-bed trunk infringed claim 6. Honda contended there was no infringement because its gasket was not mounted on the flange, but was instead mounted on the lid. Accordingly, Honda moved for summary judgment of no literal infringement. In a separate motion for summary judgment, Honda asserted there was no infringement under the doctrine of equivalents because prosecution history estoppel precluded its application as to the gasket limitation. After resolving some claim construction issues, the district court granted both motions. Felix appealed.

The Federal Circuit affirmed. After resolving claim construciton issues, the court addressed the question of literal infringement. The court affirmed the district court's determination of no literal infringement, as the Ridgeline's gasket was not mounted on the flange, but was instead mounted on the lid. Based on the district court's construction of "mounted" (securely affixed or fastened to), which the Federal Circuit affirmed, there was no issue of fact regarding literal infringement.

The Federal Circuit likewise affirmed on infringement under the doctrine of equivalents. The question here hinged on whether prosecution history estoppel prevented Felix from relying on the doctrine of equivalents based on the amendments made during prosecution. Although the parties did not dispute that, under Festo, the presumption of surrender of equivalents applied, given the claim at issue was narrowed during prosecution. Notwithstanding this, the court still addressed whether the presumption applied. Of note, the court held:

The fact that the first amendment did not succeed and that a further amendment was required to place the claim in allowable form, however, is of no consequence as to the estoppel. It is the patentee’s response to a rejection—not the examiner’s ultimate allowance of a claim—that gives rise to prosecution history estoppel. . . . We therefore hold that the presumption of prosecution history estoppel attaches when a patentee cancels an independent claim and rewrites a dependent claim in independent form for reasons related to patentability, even if the amendment alone does not succeed in placing the claim in condition for allowance.

The Federal Circuit went on to address the fact that the original independent claim was not amended, but instead was added as a new claim with the applicable limitations. This was insignificant to the application of estoppel, according to the court, which took the opportunity to further expand the application of prosecution history estoppel (emphases added):

Thus, in this case, the cancellation of original independent claim 1 coupled with the rewriting of original dependent claim 7 as independent claim 14 gave rise to a presumption of surrender applicable to all limitations, found in any of the claims of the '625 patent, that correspond to the limitations of claim 7.

As a result, prosecution history estoppel would apply to even original claims if they contain the limitations from an amended claim.

The court then addressed whether the limitation at issue regarding the location of the gasket was tangential to the reason for the amendment. The court agreed with the district court that it was not tangential for two reasons. First, in the argument filed with the amendment, Felix noted the prior art did not show the channel "in combination with the other structure of Claims 1 and 7." The court reasoned the reference to the "other structure" implicated the gasket, making it not tangential to the reason for the amendment. Second, the court observed the prosecution record was silent as to why the gasket limitation was added to the claim at all:

If Felix had intended only to add a channel and not add a gasket, he could easily have simply amended original claim 1 to add limitation (e) and not limitation (f). Thus, Felix has identified no explanation in the prosecution history for the addition of the gasket limitation, and Felix therefore cannot meet his burden to show that the rationale for adding the gasket limitation was tangential to the presence and position of a gasket.

Based on this, the Federal Circuit affirmed the district court's grant of summary judgment of noninfingement.

To read the full decision in Felix v. Am. Honda Motor Co., click here.

[disclosure: MVS represented Felix at the Federal Circuit.]


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