Published 03/08/2018 by
On March 7, 2018, the Court of Appeals for the Federal Circuit (“Federal Circuit”) has decided Ottah v. Fiat Chrysler. Chikezie Ottah owns U.S. Patent No. 7,152,840 (“’840 Patent”), entitled “Book Holder,” which describes “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.” While it is expressed in the claims that the apparatus is intended for use with books, the specification notes that the apparatus can be utilized to hold other objects, such as “audio/video equipment, PDAs, or mobile phones, cameras, computers, musical instruments, toys, puzzles and games.” Ottah stated to have invented a mobile camera and averred that several automobile companies infringed on the ‘840 Patent in the manufacturing and selling of their camera holders. In regards to U.S. Patent No. 7,152,840, the New York District Court granted summary judgment of non-infringement to the accused automobile companies after it was established that the patent explicitly protects a book holder, and furthermore, the accused camera holders could not be removed without tools as the book holder apparatus patent requires. Plaintiff Chikezie Ottah appealed the district court’s decision, and the case was brought before the Federal Circuit.
Ottah argued that “fixed mounts” were excluded from the claim’s scope as constructed by the district court. However, the Federal Circuit found it very clear that the ‘840 Patent explicitly addresses a “removeable mounting.” Upon appeal of the district court’s claim construction, the Federal Court held that “mounts that cannot be removed without tools do not literally infringe claim 1, and that claim 1 ‘is clear on its face.’” Therefore, the accused camera holders are beyond the scope of claim 1, which emphasizes the removability of the apparatus. During its prosecution history, the ‘840 Patent forfeited “fixed mounts” and focused on removability to work towards allowability, and “subject matter surrendered to acquire the patent cannot be recaptured by the doctrine of equivalents.”
Moreover, the District Court found that while Ottah declares infringement on the apparatus given its potential use as a camera holder, there is no indication of the ‘840 Patent referring to a camera holder other than the mentioning in its specification (“that the book holder can hold items other than books”). The claim’s limitation to book holders was applied to overcome prior art during prosecution history, and thus, there is no equivalency of books and cameras, as indicated in the specification.
For the above reasons, the Federal Circuit affirmed the district court’s decision.
Claim 1 of the ‘840 Patent requires removability without the use of tools and is limited to a book holder. While the specification states that the device can be used for objects other than books, this alone is not enough to justify the equivalency of cameras and books, and thus extend the scope of the patent claims beyond literal meaning. Additionally, subject matter lost during patent prosecution cannot be addressed by the doctrine of equivalents. The Federal Circuit therefore affirms the district court’s decision in granting summary judgment of non-infringement to the automobile companies. As expressed through this decision, it is important to understand the true scope of your claims during patent prosecution in order to properly assert your patent protection later on. While narrowing claims might be necessary during prosecution, one must always carefully consider what protection is lost and how the loss may affect the patent’s strength.
Full Ottah v. Fiat Chrysler can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1842.Opinion.3-6-2018.1.PDF
Marin11/18/2015 6:11:11 PM
PTAB Decisions Give Examples of Patent Eligible Subject Matter
Marin11/18/2015 6:15:40 PM
Covered Business Method Claims Are Not Required to Particularly Target Financial Industry
Marin11/18/2015 7:31:35 PM
When Is a Thesis Prior Art?
Marin11/19/2015 2:13:05 PM
An Innovator’s Dilemma: Design or Utility Patent?
Marin1/28/2016 9:10:56 PM
How Unpredictability Can Affect Obviousness Challenges
Marin1/28/2016 9:15:16 PM
The Patent Trial and Appeal Board Designates Two Decisions as Precedential
M. Cionca and I. Kim2/4/2016 5:55:16 PM
Software Inventions Are Still Patentable!
Marin Cionca2/16/2016 6:34:53 PM
In IPRs, patentees have to show that substitute patent claims are patentable
I. Kim PhD2/26/2016 8:47:51 PM
The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.
Iris Kim, PhD3/25/2016 8:34:14 PM
Challenging a Claim’s Validity with Different Standards of Claim Construction
Marin Cionca5/17/2016 8:57:23 PM
Patent Claims Rejection Based on Inherency
Iris Kim, PhD6/1/2016 7:04:50 PM
The Patent Trial and Appeal Board Designates Five More Decisions as Precedential
Marin Cionca9/6/2016 9:26:12 PM
Patent Case Law: New Example of Software as Patentable Subject Matter
Marin Cionca9/15/2016 9:47:39 PM
Patent Law Alert: Federal Circuit Opens Door for More Software Patents
Marin Cionca2/21/2017 12:30:52 AM
Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable
Marin Cionca4/25/2017 9:48:49 PM
Monetization of Patents: How to Make Money with Patents
CIONCA - Staff6/15/2017 5:32:14 PM
Patent Law: Challenging the Patent Claim Definiteness Requirement
CIONCA - Staff6/28/2017 8:26:07 PM
Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution
CIONCA - Staff8/9/2017 5:39:58 PM
Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable
CIONCA Staff8/20/2017 3:16:11 PM
CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued
staff9/15/2017 9:33:30 PM
staff9/27/2017 5:00:12 PM
Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience
staff9/27/2017 5:12:07 PM
CIONCA - Patent and Trademark Law Attorney
Staff9/28/2017 7:27:22 PM
Staff11/3/2017 4:20:04 PM
An Introduction to Provisional Patent Applications
11/10/2017 6:47:44 PM
An Introduction to Design Patent Applications
11/17/2017 1:24:20 PM
An Introduction to Patent Searches
12/1/2017 8:01:27 PM
An Introduction to Patent Cooperation Treaty Applications
12/26/2017 6:04:25 PM
CIONCA Sets Foot in San Francisco
1/2/2018 7:47:09 PM
The Lanham Act: Disparagement Provision Violates the First Amendment
CIONCA Team1/17/2018 8:12:06 PM
A Fork in the Road: Production or Protection?
CIONCA Team2/16/2018 4:07:48 PM
Fashion and Intellectual Property
3/8/2018 1:25:46 PM
Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance
3/20/2018 12:50:05 PM
Andrei Iancu - New Director of the USPTO
CIONCA Staff4/13/2018 9:10:04 PM
It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision
CIONCA Staff4/20/2018 5:25:25 PM
USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.
5/4/2018 7:37:51 PM
The Hague System for Protection of International Designs
CIONCA IP5/17/2018 9:54:58 PM
Marin Cionca Presents at OCIPLA May 2018 Luncheon
7/3/2018 7:44:33 PM
Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation
Marin Cionca7/31/2018 6:50:05 PM
My patent expired? Can I still sue for patent infringement?
Staff8/16/2018 4:24:01 PM
Correcting or Changing a Patent After Issue Through the Central Reexamination Unit
Staff8/31/2018 7:26:58 PM
Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout
CIONCA Team Member9/17/2018 4:33:20 PM
Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.
Marin Cionca10/1/2018 7:42:12 PM
Can I Register a Color as a Trademark or Service Mark?
CIONCA Team Member10/16/2018 6:50:31 PM
A Double-Edged Sword: Benefit of Priority or Longer Patent Term
CIONCA Team Member11/19/2018 1:07:51 PM
The Appeals Process
Marin Cionca12/8/2018 8:35:06 PM
IP Assets - Procurement, Enforcement, Monetization
CIONCA Team Member12/18/2018 6:12:48 PM
Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname
CIONCA Team Member1/4/2019 4:12:21 PM
In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement
Marin Cionca1/23/2019 9:45:30 PM
Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent
CIONCA Team Member2/5/2019 7:22:27 PM
TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLC
CIONCA Team Member2/19/2019 7:12:46 PM
Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional Claims
Marin Cionca3/1/2019 9:36:50 PM
USPTO Director Andrei Iancu Visits Orange County!
CIONCA Team Member3/21/2019 3:49:43 PM
Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.
CIONCA Team Member4/3/2019 7:25:37 PM
The Patent Trial and Appeal Board (PTAB) Designates Three Decisions Precedential
Marin Cionca4/17/2019 3:48:33 PM
What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?
CIONCA Team Member5/7/2019 7:13:41 PM
The Federal Circuit Defines a Technological Invention
CIONCA Team Member5/20/2019 8:25:57 PM
PTAB Designates Cases as Precedential
Marin Cionca6/11/2019 8:43:17 PM
Can I Successfully License My Invention?
CIONCA Team Member6/27/2019 7:41:52 PM
Obviousness in a Single Prior Art Instance: Game and Technology Co., LTD., v. Activision Blizzard INC., Riot Games, INC.
CIONCA Team Member7/5/2019 2:22:42 PM
In re: Global IP Holdings LLC: Broadening Claims Through Reissue Applications
CIONCA Team Member8/5/2019 2:29:33 PM
Is Speculation Enough Evidence for an Appeal?: General Electric Company v. United Technologies Corporation
CIONCA Team Member8/19/2019 7:46:17 PM
In re Yarnell Ice Cream, LLC: Trademark Descriptiveness and Acquired Distinction
CIONCA Team Member9/4/2019 7:20:46 PM
Guangdong Alison Hi-Tech Co. v. International Trade Commission: Objective Boundaries
Marin Cionca9/27/2019 9:32:48 PM
Can an Online Patent Attorney File My Patent?
CIONCA IP10/7/2019 5:44:50 PM
A Decision in Henny Penny Corporation v. Frymaster LLC
CIONCA IP10/16/2019 1:28:13 PM
To Use or Not to Use: The Statutory Period of Trademark Nonuse Prior to Presumed Abandonment
11/15/2019 8:15:11 PM
Liqwd, Inc. v. L’Oreal USA, Inc.: Objective Indicia and Copying
Marin Cionca12/9/2019 8:07:20 PM
A “glove” approach to patent claim construction
CIONCA IP 12/31/2019 4:29:41 PM
The Chamberlain Group, INC. v. One World Technologies, INC.
CIONCA IP 1/9/2020 4:43:58 PM
The Bigger Picture: TTAB’s Decision in In re James Haden, M.D., P.A.
CIONCA IP 1/15/2020 4:47:19 PM
FOX Factory, Inc. v. SRAM, LLC: Presumption of Nexus
Marin Cionca2/9/2020 7:46:10 PM
Analogous Prior Art or Not? A critical patent obviousness question
CIONCA IP3/10/2020 7:45:30 PM
Koninklijke Philips N.V. v. Google LLC, Microsoft Corporation, Microsoft Mobile Inc.
CIONCA IP3/16/2020 8:43:10 PM
GS CleanTech Corporation v. Adkins Energy, LLC: Inequitable Conduct
CIONCA IP4/13/2020 9:33:36 PM
Two of a Kind: TTAB on Shannon DeVivo v. Celeste Ortiz
Marin Cionca4/15/2020 4:41:43 PM
The Day After COVID-19 Pandemic – Hope or Fear?
CIONCA IP 5/19/2020 7:36:30 PM
Uber Technologies, Inc. v. X One, Inc.: “Obvious to Try” Rationale
CIONCA IP Team7/14/2020 7:51:31 PM
CIONCA IP Launches New Online Trademark Website
CIONCA IP Team7/20/2020 7:40:21 PM
Fitbit Inc. v. Valencell Inc.: Joint Parties in IPR Proceeding
CIONCA IP Team8/11/2020 11:56:24 AM
Adidas AG v. Nike INC.
CIONCA IP Team8/31/2020 12:09:17 PM
Blackbird Tech LLC, DBA Blackbird Technologies, v. Fitbit, Inc., Wahoo Fitness LLC: Obviousness
CIONCA IP Team9/3/2020 4:30:41 PM
D2 Holdings v. House of Cards
CIONCA IP Team9/15/2020 5:11:49 PM
Comparing Apples to Apples: TTAB on In re Horizon Group USA, Inc.
CIONCA IP Team (SE)9/16/2020 4:21:45 PM
CIONCA IP Launches New Online Patent Website
Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899
About CIONCA® IP Law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.
We’d love to hear from you…we just need a little info
about your plans to take over the world!
P.S…Feel free to call us! (800)985-9198
Thank you for your message. We will respond within 24-72 hours. Thank you.