Tough Meets Classy….And Doesn’t Infringe

Posted on | May 23, 2008 | No Comments

2008-1367 Felix v. American Honda
D/KS 05-cv-2525

Plaintiff Mark Felix appeals from Judge Carlos Murguia’s orders granting Honda summary judgment of non-infringement. 

Felix sued Honda on 6,155,625 alleging that the Honda Ridgeline’s In-Bed Trunk® system infringed claim 6.  Claim 6 states (key term highlighted by PATracer):

6. In combination with a vehicle including a vehicle bed, the improvement of a storage system which includes:

a) an opening formed in the vehicle bed and including an opening rim;

b) a compartment with an interior;

c) said compartment being mounted on said bed with said compartment interior accessible through said opening;

d) a lid assembly including lid mounting means for mounting said lid in covering relation with respect to said opening;

e) a channel formed at the rim of said bed opening and including an inner flange;

f) a weathertight gasket mounted on said flange and engaging said lid in its closed position; and

g) a plurality of drain holes formed in said channel.

Literal Infringement:  The court provided several figures comparing an embodiment from the ’625 and the Honda, with the lid in the open position on the right left, closed left right.  The gasket is 18, flange is 16, and channel is 12.  For the Honda, 1, 2 and 3 are channels. 

Essentially the difference is that the Honda has the gasket mounted on the lid whereas limitation (f) claims the gasket on bed.  The court rejected Felix’s claim that (f) was met when the lid was closed, noting primarily that the term "mounted" meant "securely affixed or fastened to."  The Honda gasket is not securely affixed or fastened to the flange (bed).

Doctrine of Equivalents:  The court’s second order found Honda did not infringe by equivalents because of amendment-based estoppel.  Claim 6 was filed as claim 1 and did not specify any weathertight gasket.  Filed claim 7 depended on filed claim 1and did claim a gasket on the lid.  The examiner rejected both claims, and Felix amended by combining claims 1 and 7 (which then looked like issued claim 6(a)-(f)).  The examiner again rejected as obvious, but indicated he would allow the claim if combined with filed claim 8 (adding the (g) limitation).

The parties agreed that this was a narrowing amendment under Festo, but Felix argued the "tangential relation exception" that the reason for the amendment was unrelated to the accused equivalent.  The court acknowledged that the examiner never mentioned the gasket location (lid versus bed), but found nothing in the record to suggest that the examiner would have allowed the claim without this limitation. 

Documents: Summary Judgment opinions on Doctrine of Equivalents and on Literal Infringement.

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