Mark D. Felix v. Honda (CAFC 2008-1367) precedential

Claim construction case law synopsis -

Claim construction is an issue of law, Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), that we review de novo, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). We determine the ordinary and customary meaning of undefined claim terms as understood by a person of ordinary skill in the art at the time of the invention, using the methodology in Phillips v. AWH Corp., 415 F.3d 1303, 1312-19 (Fed. Cir. 2005) (en banc). "[T]he court looks to those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean. Those sources include the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Id. at 1314 (internal quotation marks and citations omitted).

The disputed terms were "mounted" and "engaging." Both got mundane construction. Mounted meant "securely affixed or fastened to." Engaging was defined as "coming together and interlocking."

Felix wanted something broader: mounted meaning "to relate the relative position of one item with another," and engaging as "to bring together," a broad interpretation of the general dictionary definition, "because the meaning of the term is not discussed in the claims, specification, or prosecution history."

Although we reject all of Felix's arguments, we nevertheless conclude that the district court erred by construing "engaging" to require "interlocking."

Because we find no basis for such additional limitation in the specification or prosecution history, we modify the district court's construction of "engaging" as used in claim 6 of the '625 patent to mean "coming together to form a seal." Even though the district court erred in including "interlocking" in its claim construction, the error is harmless as it does not affect the district court's determinations of either literal infringement or infringement under the doctrine of equivalents.

The way Honda had configured its pickup trunk didn't correspond to Felix's system. Owing to prosecution estoppel, doctrine of equivalents was precluded. Felix had claim amendments that went to these terms.

"The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 733 (2002). "However, prosecution history estoppel may bar the patentee from asserting equivalents if the scope of the claims has been narrowed by amendment during prosecution." Honeywell Int'l, Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1139 (Fed. Cir. 2004) (en banc). Amendment-based prosecution history estoppel "arises when an amendment is made to secure the patent and the amendment narrows the patent's scope." Festo, 535 U.S. at 736. "A patentee's decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim." Id. at 740. But the patentee may rebut this presumption by "demonstrat[ing] that the alleged equivalent would have been unforeseeable at the time of the narrowing amendment, that the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question, or that there was 'some other reason' suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 344 F.3d 1359, 1368 (Fed. Cir. 2003) (en banc) (quoting Festo, 535 U.S. at 741).

Felix twice amended his claim.

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. See Festo, 535 U.S. at 727 ("When the patentee responds to the rejection by narrowing his claims, this prosecution history estops him from later arguing that the subject matter covered by the original, broader claim was nothing more than an equivalent." (emphasis added)); id. at 734 ("[A patentee's] decision to forgo an appeal and submit an amended claim is taken as a concession that the invention as patented does not reach as far as the original claim." (emphasis added)); id. at 740 ("A patentee's decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim." (emphasis added)); Deering Precision Instruments, L.L.C. v. Vector Distribution Sys., Inc., 347 F.3d 1314, 1325 (Fed. Cir. 2003) ("Deering's addition of [a rewritten independent claim], coupled with the clear surrender of the broader subject matter of the deleted original independent claim presumptively bars Deering from arguing infringement under the doctrine of equivalents."). 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.

Prosecution estoppel isn't on a per claim basis; instead, it applies to the subject matter of the claim.

The presumption of surrender "applies to all claims containing the [added] [l]imitation, regardless of whether the claim was, or was not, amended during prosecution." Deering, 346 F.3d at 1326. See also Honeywell, 370 F.3d at 1142 ("[T]he fact that the scope of the rewritten claim has remained unchanged will not preclude the application of prosecution history estoppel if, by canceling the original independent claim and rewriting the dependent claims into independent form, the scope of subject matter claimed in the independent claim has been narrowed to secure the patent."); Builders Concrete, Inc. v. Bremerton Concrete Prods. Co., 757 F.2d 255, 260 (Fed. Cir. 1985) ("[T]he prosecution history of all claims is not insulated from review in connection with determining the fair scope of [the asserted claim]. To hold otherwise would be to exalt form over substance and distort the logic of this jurisprudence, which serves as an effective and useful guide to the understanding of patent claims. The fact that the [the limitation in question] was not itself amended during prosecution does not mean that it can be extended by the doctrine of equivalents to cover the precise subject matter that was relinquished in order to obtain allowance of [another claim].").

Then there's presumptive surrender - all added limitations lose the power to capture equivalence.

We next turn to the scope of the presumptive surrender. "[W]hen a claim is rewritten from dependent into independent form and the original independent claim is cancelled . . . the surrendered subject matter is defined by the cancellation of independent claims that do not include a particular limitation and the rewriting into independent form of dependent claims that do include that limitation. Equivalents are presumptively not available with respect to that added limitation." Honeywell, 370 F.3d at 1144. Equivalents are therefore presumptively not available as to any of the subject matter added in Felix's first amendment. It is immaterial that Felix chose to add both the channel and the gasket limitations, rather than just one. The resulting estoppel attaches to each added limitation. See Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1218 (Fed. Cir. 2008) ("It is not relevant to the determination of the scope of the surrender that the applicant did not need to amend the claims [as they were amended] in order to overcome the prior art."); Regents of Univ. of Cal. v. Dakocytomation Cal., Inc., 517 F.3d 1364, 1381 (Fed. Cir. 2008) ("The fact that narrowing the claim . . . may not have been necessary to distinguish over the prior art does not change the analysis."); see also id. ("[I]t frequently happens that patentees surrender more through amendment than may have been absolutely necessary to avoid particular prior art. In such cases, we have held the patentees to the scope of what they ultimately claim, and we have not allowed them to assert that claims should be interpreted as if they had surrendered only what they had to." (quoting Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1361-62 (Fed. Cir. 2005))). Felix is therefore presumptively barred from relying on the doctrine of equivalents to prove that Honda's In-Bed Trunk meets the gasket limitation--one of the two limitations added by amendment.

A presumption of prosecution history estoppel may be overcome if the "the narrowing amendment bore no more than a tangential relation to the equivalent in question."

Felix argues that he has rebutted the presumption of prosecution history estoppel as to the gasket limitation, because "the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question." Festo, 344 F.3d at 1368. "[T]he patentee bears the burden of showing that a narrowing amendment did not surrender a particular equivalent . . . ." Id. "[A]n amendment made to avoid prior art that contains the equivalent in question is not tangential; it is central to allowance of the claim. . . . [T]he inquiry into whether a patentee can rebut the Festo presumption under the 'tangential' criterion focuses on the patentee's objectively apparent reason for the narrowing amendment[, which must be] discernible from the prosecution history record . . . ." Id. at 1369.

Felix lost because his argument was not "objectively apparent."

For the foregoing reasons, we adopt the district court's construction of "mounted" as "securely affixed or fastened to," and we construe "engaging" as "coming together to form a seal." Applying these constructions, we affirm the district court's summary judgment of no literal infringement. Because we conclude that Felix is barred by the doctrine of prosecution history estoppel from relying on the doctrine of equivalents to prove that the accused In-Bed Trunk meets the gasket limitation, we also affirm the district court's summary judgment of no infringement by equivalents.

Affirmed.