Introduction

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.

Decision

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.  

Conclusion

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