CHIKEZIE OTTAH, Plaintiff-Appellant v. FIAT CHRYSLER, et al., Defendants-Appellees
2017-1842
Decided: March 7, 2018
Plaintiff Chikezie Ottah (“Ottah”) appealed from the district court’s grant of motions to dismiss and motions for summary judgment of non-infringement to several defendant automobile companies concerning Patent No. 7,152,840 (“Patent”). The Patent describes the invention as “a removable book holder assembly for use by a person in a protective or mobile structure such as a car seat, wheelchair, walker, or stroller.” The defendants manufactured vehicles using stands to mount back up cameras in their vehicles.
The only claim contained in the Patent, claim 1, required, inter alia, a “book holder for removable attachment.” The specification describes the claimed book holder and removable attachment and concludes by noting that the book holder may be used to hold items other than books (such as A/V equipment, PDAs or mobile phones). Although the specifications note that the claims are intended to encompass numerous embodiments, the only one described in the claim and illustrated is as a book holder.
The Court had previously construed the terms of the Patent in Ottah v. VeriFone Sys., Inc., 524 F. App’x 627, 629 (Fed. Cir. 2013) (“VeriFone“). In VeriFone, the Court ruled that several claim limitations require that the claimed book holder has a “removable” mounting and that mounts that are only removable with tools do not literally infringe the Patent. VeriFone held that claim 1 “is clear on its face” and that “nothing in the specification suggests that the claim language should be interpreted in a way at variance with its ordinary meaning.”
Ottah filed a pro se complaint alleging infringement of the Patent. In his spartan complaint, he alleged: “I invented a mobile camera,” and “[t]he defendant BMW et al are manufacturing using/making the product. Using and selling it. Whereby infringing on the patent.”
Several defendants successfully moved for summary judgment, arguing that their camera holders did not meet the “removable” limitation, because their camera holders could only be removed with tools. The district court rejected Ottah’s argument under the doctrine of equivalents, holding that the VeriFone claim construction foreclosed that argument. Other defendants successfully moved to dismiss the complaint, arguing that the Patent was limited to a book holder and that a camera holder could not infringe it.
As to the summary judgment defendants, the Federal Circuit relied on its prior claim construction in VeriFone to conclude that “[t]he issue was finally decided and is not subject to collateral review.” The Federal Circuit further noted that “[n]o error has been shown in this claim construction, and no reason for departing from the rules of collateral estoppel or stare decisis as to this claim term.” Because the accused cameras utilize fixed mounts requiring tools for removal, the were outside the literal scope of claim 1.
The Federal Circuit noted that VeriFone held that prosecution history estoppel prevented claim 1 from including mounts requiring tools for removal. Claim 1 was only allowed based on Ottah’s argument during prosecution that it was based on the removable structure of the mount. This reliance on removability was what caused claim 1 to be allowed over prior art. The Federal Circuit stated that “[s]ubject matter surrendered to acquire the patent cannot be recaptured by the doctrine of equivalents.”
As to the defendants who obtained dismissals of the complaint, the Federal Circuit first noted that although pro se complaints should be liberally construed and held to less stringent standards, they must nevertheless meet minimal standards to avoid dismissal under Rule 12(b)(6). These defendants argued that the Patent’s claims did not mention, let alone include, camera holders, as opposed to book holders. Ottah relied upon general statements from the specification that the book holder can hold items other than books, to argue that cameras should be deemed the equivalent of books.
The Federal Circuit rejected Ottah’s argument, noting that claim 1 of the Patent is expressly limited to books: “The record suggests that the limitation of claim 1 to books served to limit the scope of examination to prior art book holders, as reflected in the prosecution history.” The court further held that “[t]he district court correctly found that the ‘book holder’ cannot plausibly be construed to include or be the equivalent of a camera holder, in view of the specification and the prosecution history.” Additionally, the court pointed out that the accused camera holders were not removable without tools and lacked other characteristics required by claim 1 (including a “telescoping arrangement” and a “front surface adapted for supporting a book”).
Read more: Federal Bar member attorneys may access the full case summary by Barnwell Whaley attorney John Fletcher in the April issue of Federal Circuit Case Digest.
Additionally, you may read the full opinion here.
Image: Google patents – note not all of the patent drawings are included in this illustration.
John Fletcher is Special Counsel with Barnwell Whaley law firm in the firm’s Charleston, SC office. An accomplished litigator and certified mediator, John Fletcher has worked on some of Barnwell Whaley’s most complex and challenging cases, in such varied areas of the law as antitrust, intellectual property and professional malpractice.
