Felix v. American Honda Motor Company, Inc.

Court of Appeals for the Federal Circuit

decided on 2009-04-10 00:00:00

panel: Rader, Friedman, Linn,

Overview

In Felix v. American Honda Motor Company (08-1367), the Court of Appeals for the Federal Circuit affirmed a district court's grant of summary judgment of no literal infringement and no infringement under the doctrine of equivalents. The court agreed with the district court's handling of a controlling claim construction issue, concluding that the term "mounted" means "securely affixed or fastened to." The court rejected, however, a construction of a peripheral claim term, noting that the district court had improperly applied an "interlocking" limitation to the claim term "engaging." Citing a single clause in the specification ("sealingly engaging"), the court then engrafted its own limitation onto the term, concluding that "engaging" means "coming together to form a seal." The court agreed with the district court that the patentee was barred by prosecution history estoppel as to a critical claim limitation because the applicant had rewritten a dependent claim containing the limitation into independent form and cancelled the original, broader claim that lacked the limitation. The court rejected the patentee's argument that the presumption of surrender was rebutted under the "tangential" prong of Festo because it wasn't objectively apparent that the allegedly tangential rationale for making the amendment was the only reason for canceling the original, broad claim.

Keywords

claim construction - The court agreed with a district court's construction of the term "mounted" to mean "securely affixed or fastened to." The court explicitly and broadly rejected the argument that the term could merely mean that one element is "positioned" relative to another.

claim construction - The court rejected a district court's construction of the term "engaging" to require an "interlocking" limitation, substituting its own construction of the term as "coming together to form a seal." The court included the "seal" limitation because the specification included a single clause describing the "engaging" as "sealingly engaging."

prosecution history estoppel - Rewriting a dependent claim in independent form to include all limitations of the base claim, coupled with cancellation of the base claim, creates a presumption of surrender as to the limitations of the original dependent claim.

prosecution history estoppel - 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 (e.g., if further amendments are made).

prosecution history estoppel - Court rejected an argument that the presumption of surrender was rebutted under the "tangential" requirement of Festo because arguments made during prosecution did not make it "objectively apparent" that another claim element, unrelated to the element that was the subject of the equivalents argument, was the only reason for cancelling a broader original claim.

Detailed review

[1] CLAIM CONSTRUCTION - "MOUNTED" - IS A MEANING THAT LACKS AN ATTACHMENT POSSIBLE?

The court agreed with the district court's construction of the term "mounted" as meaning "securely affixed or fastened to." Conducting its Phillips-guided de novo review, the court noted that both the claims and the specification support this meaning of the term because both

"repeatedly use[] 'mounted' to describe structures that must be securely affixed or fastened together, else they would fall apart by operation of gravity."

The court explored the requirement for an attachment between the items described by the "mounted" limitation, going so far as to, in dicta, wonder if a broad meaning of the term - one which only requires relative positioning and lacks an attachment component - is possible:

"It is difficult to imagine how—consistent with the law of gravity—any structure could be 'mounted' on the underside of any other structure if 'mounted' merely meant 'positioned.'"

In light of Felix, a drafter that intends to use the term "mounted" in a manner that lacks an attachment component, i.e., in a manner that only requires relative positioning of the items described by the 'mounted' limitation, should carefully indicate such meaning in the body of the patent specification.

[2] CLAIM CONSTRUCTION - "ENGAGING" REQUIRES FORMATION OF A SEAL BECAUSE OF SINGLE "CLAUSE" IN THE SPECIFICATION

The court explicitly rejected the district court's construction of the term "engaging" to mean "coming together and interlocking." The inclusion of the "interlocking" limitation was improper, the court reasoned, because neither the specification nor the prosecution history suggested that "engaging" required some degree of constraint or holding by the items described by the limitation.

Conducting its de novo construction of the term, the court then engrafted its own limitation onto "engaging," concluding that the term means "coming together to form a seal." The court pointed to the specification as support for this narrow construction, noting that

"The specification includes a single clause directed to the relationship between the lid and the gasket when the lid is closed: 'a closed position (FIG. 2) with the gasket 18 sealingly engaging the lid 22 adjacent to its edges 22a-d on the lid lower surface 22.' The specification's use of the phrase "sealingly engaging" makes clear that the way that the gasket engages the lid is by forming a seal. This, of course, is the normal function of a gasket."

(citation to patent omitted; emphasis in original)

[3] CLAIM CONSTRUCTION - "REPEATED USE" AND "SINGLE MENTION" AS SUPPORT FOR NARROW INTERPRETATIONS, "VARYING USE" AS THE KEY TO BROAD CONSTRUCTION

Felix is interesting because it shows how, in a single opinion, the court can apply different usages of claim terms in a specification to support narrow constructions of the terms.

In construing the term "mounted," the court noted the "repeated use" of the term to describe structural relationships consistent with the narrow construction. Then, in construing the term "engaging," the court pointed to a single clause - the only clause - in the specification that refers to the term and concluded that it "makes clear" that the term requires "forming a seal."

While the necessity of a "seal" limitation may or may not be clear from that single mention of the term "engaging," it is clear that both a single mention and a repeated use of a claim term in a narrow manner can support a narrow construction of the term. A varying use of a term - one which describes the term in broad, intermediate and narrow manners - appears to be a key to supporting an argument for a broad construction of a claim term.

[4] PROSECUTION HISTORY ESTOPPEL - COURT ACKNOWLEDGES OPEN QUESTION OF WHETHER PRESUMPTION OF SURRENDER ATTACHES AS TO AN ELEMENT IN AN INTERVENING DEPENDENT CLAIM WHEN ANOTHER DEPENDENT CLAIM IS REWRITTEN IN INDEPENDENT FORM TO INCLUDE THE BASE CLAIM AND THE INTERVENING DEPENDENT CLAIM

Prosecution history estoppel created a presumption of surrender here as to the gasket limitation because the applicant had rewritten the dependent claim that included the gasket limitation in independent form, while canceling the original independent claim that did not include the limitation.

The applicant had another option, though. The Examiner had indicated that another dependent claim - one that depended from the claim the applicant rewrote in independent form - would have been allowable if rewritten in independent form. In his first response, the applicant didn't take this recommended action, instead choosing to take an "intermediate step" and pursue broader coverage by rewriting the intervening claim in independent form.

The court explicitly acknowledged that an open question exists as to the prosecution history estoppel effect on the limitation of the intervening claim had the applicant elected to rewrite the originally allowed claim and canceled the base and intervening claim. In a footnote, the court explained:

"We leave open the question of whether the presumption of surrender would have attached as to the gasket limitation if, in response to the first office action, Felix had cancelled both claim 1 and claim 7, and had rewritten claim 8 in independent form, instead of attempting to secure the broader coverage of rewritten claim 7 as an intermediate step."