Honda’s Pick-Up Truck Trunk Bed Does Not Infringe, Federal Circuit Rules

Holding:

In this dispute over pick-up truck bed patent, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s summary judgments of no literal infringement and no infringement under the doctrine of equivalents. The U.S. District Court entered summary judgment of no literal infringement, concluding that defendant-appellee Honda’s In-Bed Trunk could not satisfy the gasket limitation. The district court reached that conclusion because the gasket of In-Bed Trunk was mounted on the lid, not the flange as claimed in the patent of plaintiff-appellant Mark D. Felix. On appeal, the Federal Circuit affirmed for the reason that that the gasket of defendants-appellees’ In-Bed Trunk is not securely affixed or fastened to the flange. Citing court precedent, the Federal Circuit further held 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. Here, 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 patent-at-issue, that correspond to the limitations of claim 7. Felix was 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.

Detailed Summary:

In this patent infringement case,  Felix brought suit against American Honda Finance Corp.  (d.b.a. Honda Financial Services), American Honda Motor Company, Inc., Honda of America Manufacturing, Inc., Honda of Canada, Inc. (d.b.a. Honda of Canada Manufacturing), Honda R & D Americas, Inc., and Honda Trading America Corp. (collectively, “Honda”), alleging that the In-Bed Trunk of Honda’s Ridgeline truck infringed claim 6 of Felix’s U.S. Patent No. 6,155,625 (the “’625 patent”).

Following claim construction, the district court granted Honda’s motions of summary judgment of no literal infringement, Opinion, pp. 1-2, citing Felix v. Am. Honda Motor Co., No. 05-2525-CM (D. Kan. Oct. 19, 2007) (“Literal Infringement Op.”), and no infringement under the doctrine of equivalents. Id., citing Felix v. Am. Honda Motor Co., No. 05-2525-CM (D. Kan. Apr. 9, 2007) (“Equivalents Op.”).

Felix is the sole named inventor and owner of the ’625 patent. The ’625 patent describes an arrangement in which a pickup truck is provided with what would be considered the trunk of a conventional car. Specifically, the patent relates to “a built-in storage compartment for a pickup truck bed.” Id., p. 2, citing ’625 patent col.1 ll.7-8. The storage compartment is mounted below the truck bed, and can be accessed through an opening in the bed.

The district court entered summary judgment of no literal infringement, concluding that Honda’s accused In-Bed Trunk could not satisfy the gasket limitation. The district court reached that conclusion because the gasket of the In-Bed Trunk was mounted on the lid, not the flange as claimed in the patent. Id., p. 17, citing Literal Infringement Op. at 5.

On appeal, the Federal Circuit affirmed the district court’s summary judgment of no literal infringement.  The Federal Circuit reasoned that the gasket of defendants-appellees’ In-Bed Trunk is not securely affixed or fastened to the flange (as is apparent when the lid of the In-Bed Trunk is open).

On Honda’s second motion for summary judgment, the district court held that Felix was precluded under the doctrine of prosecution history estoppel from arguing that the In-Bed Trunk infringed the gasket limitation by equivalents. Id., p. 18, citing Equivalents Op. at 7.

“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.” Id., p. 19, citing 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.” Id., citing Honeywell Int’l, Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1139 (Fed. Cir. 2004) (en banc).

Here, the Federal Circuit considered the amendment that gave rise to a presumption of surrender of claim scope encompassing the equivalent at issue. The Federal Circuit noted that the limitation at issue here is the gasket limitation. That limitation was not contained in original independent claim 1, but was present in dependent claim 7. In Felix’s first amendment on September 10, 1999, he cancelled original claim 1 and rewrote original dependent claim 7 in independent form as claim 14 to contain all of the limitations of claims 1 and 7. J.A. 490-91. It was this first amendment that had the effect of adding the channel and gasket limitations of dependent claim 7 to the broader claim that was cancelled.

Thus, the Federal Circuit found that Felix’s decision in the first amendment to cancel original claim 1 and to rewrite original claim 7 in independent form as claim 14 gave rise to a presumption of surrender.

In this regard, the Federal Circuit explained 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. “(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.” Id. , p. 22, citing Honeywell, 370 F.3d at 1142.

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. 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.

Felix further argued 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.” Id., p. 23, citing Festo, 344 F.3d at 1368.

The Federal Circuit rejected Felix’s argument for two reasons. First, the cited language in Felix’s argument to the examiner expressly refers not only to the “channel of Claim 7” but also to the “other structure” of the claims. The Federal Circuit therefore concluded that it is not “objectively apparent” from this argument that the channel was the only reason for cancelling original claim 1 and rewriting dependent claim 7 in independent form, as Felix argues. Second, the cited language does not explain the entire amendment.  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, the Federal Circuit added.

On the basis of the foregoing, the Federal Circuit affirmed the district court’s judgment of no literal infringement and no infringement by equivalents.

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