Holder for Car Camera Does Not Infringe Patent for Removable Book Holder

Ottah v. Fiat Chrysler No. 2017-1842, 2018 (Fed. Cir. Mar. 7, 2018) (Before Newman, Hughes, and Stoll, J.) (Opinion for the court, Newman, J.)

Chikezie Ottah (“Ottah”) appeals the lower court’s grant of summary judgment of non-infringement and dismissal of the complaint with prejudice. Ottah’s patent concerns a removable book holder assembly for use by a person in a protective or mobile structure. Disputed claim 1 includes the phrase, “a book holder for removable attachment.” Ottah alleged that several auto manufacturers infringed the patent by using and making a camera holder for use in their vehicles.

A review of summary judgment for non-infringement requires analyzing both claim construction, which is reviewed without deference, and infringement, which is reviewed to determine whether a genuine issue of material fact exists.

The Federal Circuit found no error in construing claim 1 as requiring a removable attachment. The claim is clear on its face, and nothing in the specification suggests a different and non-ordinary meaning. The accused camera holders did not have a “removable” assembly, because tools were required, and did not literally infringe the claim. Ottah’s doctrine of equivalence argument, that a limited use of tools in “fixed amounts” was sufficiently “removable,” was unpersuasive. The prosecution history contradicted that position and emphasized the removable structure as a feature that overcame the prior art. Consequently, the Federal Circuit affirmed the lower court’s grant of summary judgment.

Ottah was a pro se plaintiff. The Federal Circuit consequently considered the dismissal of the complaint under “less stringent standards than formal pleadings drafted by lawyers.” Nonetheless, pro se complaints must state a plausible claim for relief. Ottah narrowly claimed book holders, limited the scope of examination to book holders during prosecution, and discussed equivalents in the specification that were not claimed. The Federal Circuit affirmed the lower court’s dismissal with prejudice because a book holder cannot plausibly be construed to include or be equivalent to a camera holder, given the specification and prosecution history.

The clear ordinary meaning of a claim term will prevail over a proposed meaning contradicted by the prosecution history. A proposed non-literal equivalent that contradicts the claim language and the prosecution cannot establish infringement. Positions clearly contradicted by the record do not establish genuine issues of material fact for reversing a summary judgment of non-infringement. Likewise, a complaint that fails to state a plausible claim, as by alleging apples (book holders) encompass oranges (cameras) is properly dismissed with prejudice, despite leeway given to pro se plaintiffs.



The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 1 Comment comments.

  1. Josh Malone March 18, 2018 2:50 pm

    Yet if the phone holder came first, the claim would have assuredly been construed to cover it in an obviousness challenge.

    This ruling is correct, but it was not unreasonable for the inventor to expect the rules of claim construction to be uniformly applied regardless of party or status. Any PTAB attorney would have proffered this exact construction in an IPR on behalf of the infringer if it scooped in prior art. And the PTAB would have endorsed it.

    But the rules are not consistent. The claim will be construed broadly when it benefits the infringer and will be construed narrowly when it benefits the infringer. Heads the infringer wins, tails the inventor loses.