Harvey D. Gillespie v. Dywidag Systems International (CAFC 2006-1382)

Dywidag conceded meeting all claim limitations except a "drive collar . . . having an outer surface defining a drive head."

Dywidag points out that Gillespie's claims define 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 is located on the inner surface, not the outer surface, of the bolt head or collar. Dywidag states that during prosecution Gillespie argued this construction in order to distinguish a cited reference. Applying that construction, Dywidag states that there can not be literal infringement because the Dywidag bolt does not have a collar with an outer surface defining a drive head. The district court did not accept Dywidag's position.

To overcome an obviousness rejection, Gillespie mentioned that a cited prior art reference drive collar did not have an outer surface that could be gripped to rotate the bolt. In court, Gillespie dismissed the significance of that argument because the reasons for allowance didn't mention it; there were other reasons that the prior art reference did not anticipate.

During prosecution Gillespie distinguished his invention from a cited reference, U.S. Patent No. 4,798,501 (the Spies patent), that shows a bolt-like rock anchor having a head with a recess in the end whereby a tool can rotate the bolt. When the examiner rejected Gillespie's application on the ground of obviousness in view of Spies, Gillespie argued that the collar at the end of the Spies bolt was cylindrical on the outside and was impractical for engagement by a mine roof bolting machine.

However, Gillespie stresses that his claims should not be limited in a way that excludes the Spies structure, because the Reasons for Allowance did not depend on how the drive collar is rotated.

But the reasons for allowance are not the basis for prosecution estoppel: the applicant's statements are.

The patentee is held to what he declares during the prosecution of his patent. North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1345-46 (Fed. Cir. 2005). See also Springs Window Fashions L.P. v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003) ("The public notice function of a patent and its prosecution history requires that a patentee be held to what he declares during the prosecution of his patent.")

With the claim construction narrowed, "the judgment of literal infringement cannot stand."

Both parties had bet the farm on winning claim construction on appeal.

The parties stipulated to literal infringement if this claim construction were sustained on appeal. Gillespie agreed to dismissal of his claim for infringement under the doctrine of equivalents, Dywidag agreed to dismissal of its counts of patent invalidity, and final judgment was entered.