This is a patent infringement case. Mark D. Felix (“Felix”) brought suit against American Honda Finance Corporation (d/b/a Honda Financial Services), American Honda Motor Company, Inc., Honda of America Manufacturing, Inc., Honda of Canada, Inc. (d/b/a Honda of Canada Manufacturing), Honda R & D Americas, Inc., and Honda Trading America Corporation (collectively, “Honda”), alleging that the In-Bed Trunk of Honda’s Ridgeline truck infringed claim 6 of Felix’s U.S. Patent No. 6,155,625 (the “'625 patent”). Following claim construction, the district court granted Honda’s motions for summary judgment of no literal infringement,
Felix v. Am. Honda Motor Co.,
No. 05-2525-CM,
I. BACKGROUND
Felix is the sole named inventor and owner of the '625 patent. Literal Infringement Op. at 1. The '625 patent describes an arrangement in which a pickup truck is provided with what would be considered the trunk of a conventional car. Specifically, the patent relates to “a built-in storage compartment for a pickup truck bed.” '625 patent col. 1 11. 7-8. The storage compartment is mounted below the truck bed, and can be accessed through an opening in the bed, as illustrated in figure 1:
Id. fig.l. The “lid assembly” that covers the compartment “includes a lid hingedly mounted on the bed for movement between an open position providing access to an interior of the compartment and a closed position closing the vehicle bed opening.” Id. col. 1 ll. 49-52.
Of particular relevance to this case and as depicted in figure 4 below, a “gasket 18 is mounted on the inner flange 16 for weather sealing the storage system 2.” Id. col. 3 ll. 11-12. The relationship between the gasket, hinges, and lid is described as follows:
The hinges 28 mount the lid 22 in proximity to its front edge 22 a and accommodate movement of the lid 22 between a closed position (FIG.2) with the gasket 18 sealingly engaging the lid 22 adjacent to its edges 22 a-d on the lid lower surface 22/and an open position (FIGS. 1, 3 and 4) providing access to the compartment interior 26 through the truck bed floor opening 10.
Id. col. 3 ll. 22-28.
Id. fig.4.
Claim 6 of the '625 patent recites:
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 dosed position; and
g) a plurality of drain holes formed in said channel.
Id. col. 4 1.61-col. 6 1.3 (emphasis added).
Claim 6 was the result of a series of amendments during prosecution. The '625 patent issued from U.S. Patent Application No. 08/951,246, filed October 16,1997. See '625 patent [21], [22], The original application contained twelve claims, three of which are relevant to this appeal:
1. A storage system for a vehicle including a vehicle bed, which includes:
a) an opening formed in the vehicle bed and including an opening rim;
b) a compartment with an interior;
c) mounting means for mounting said compartment on said bed with said compartment interior accessible through said opening; and
d) a lid assembly including lid mounting means for mounting said lid in covering relation with respect to said opening.
7. The storage system according to Claim 1, which includes:
a) a channel formed at the rim of said bed opening and including an inner lip; and
b) a weathertight gasket mounted on said lip and engaging said lid in its closed position.
8. The storage system according to claim 7, which includes:
a) a plurality of drain holes formed in said channel.
J.A. 448, 450. Original claim 1 included the substance of limitations (a), (b), (c), and (d) of issued claim 6. Original claim 7 added the substance of what became limitations (e) (the “channel”) and (f) (the “gasket”) of issued claim 6, and original claim 8 added the substance of what became limitation (g) (the “drain holes”) of issued claim (6).
On June 9, 1999, the United States Patent and Trademark Office (“Patent Office”) mailed a first office action. Id. at 478. In it, the examiner rejected original claims 1 and 7 as obvious under 35 U.S.C. § 103. 1 Id. at 481, 483. Specifically, the examiner rejected original claim 1 as obvious in light of U.S. Patent No. 5,363,890 (“Cooper '890”) in view of U.S. Patent No. 4,733,898 (“Williams”). Id. The examiner rejected original claim 7 as obvious in light of Cooper '890 in view of Williams and U.S. Patent No. 2,671,935 (“Flues”), which disclosed “a channel, a[n] inner lip and a weathertight gasket mounted on the inner lip.” J.A. 483 (citations to reference characters omitted). The examiner concluded, however, that original claim 8 would be allowable if rewritten in independent form. Id. at 484. The relevant aspects of the original application and first office action can therefore be summarized as follows:
Limitations of Issued Claim 6 Disposition
Original Claim 1 Obvious (Cooper '890/Williams) (a), (b), (e), (d)
Original Claim 7 Obvious (Cooper '890/Williams/Flues) (a), (b), (c), (d), (e), (f)
Original Claim 8 Allowable if rewritten (a), (b), (c), (d), (e), (f), (g)
On September 10, 1999, Felix submitted an amendment in response to the first office action. Id. at 489. In it, Felix canceled original claim 1 and did not replace it with any claim reciting the same subject matter. Id. at 490. Felix also cancelled original claim 7, rewriting it in independent form as new claim 14:
14. (Claim 7 rewritten in independent form) A storage system for a vehicle including a vehicle bed, 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; and
f) a weathertight gasket mounted on said flange and engaging said lid in its closed position.
Id. at 491. Felix requested that the examiner reconsider her rejection of original claim 7 (now claim 14), and argued that:
[T]he cited references do not show the channel of Claim 7, which is formed at the rim of the bed opening, in combination with the other structure of Claims 1 and 7. Thus, new, infinite [sic: independent] Claim 14 is allowable over the prior references of record, taken singularly or in combination.
Id. at 494. Correspondingly, Felix amended original claim 8 so that it depended from amended claim 14, rather than from the now canceled original claim 7. Id. at 490.
On October 21, 1999, the Patent Office mailed a second office action. Id. at 499. In it, the examiner rejected claim 14 as obvious in light of Cooper '890 in view of U.S. Patent No. 5,172,519 (“Cooper '519”). The examiner indicated again that amended claim 8 would be allowable if rewritten in independent form. 2 The relevant aspects of Felix’s first amendment and the second office action can therefore be summarized as follows:
Limitations of Issued Claim 6 Disposition
Original Claim 1 (a), (b), (c), (d) Cancelled
Original Claim 7 (a), (b), (c), (d), (e), (f) Rewritten as Claim 14
Claim 14 (a), (b), (c), (d), (e), (f) Obvious (Cooper '890/Cooper '519)
Amended Claim 8 (a), (b), (e), (d), (e), (f), (g) Allowable if rewritten
On January 21, 2000, Felix submitted a second amendment. J.A. 505. In it, he cancelled claim 14 and did not replace it with any claim reciting the same subject matter. Id. He also cancelled amended claim 8 and rewrote it in independent form as new claim 16:
16. (Claim 8 rewritten in independent form) 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.
Id. at 508-09. The examiner allowed claim 16, and it issued as claim 6. Id. at 435, 513. The relevant aspects of Felix’s second amendment and third office action can be summarized as follows:
Limitations of Issued Claim 6 Disposition
Claim 14 (a), (b), (c), (d), (e), (f) Cancelled
Amended Claim 8 (a), (b), (c), (d), (e), (f), (g) Rewritten as Claim 16
Claim 16 (a), (b), (c), (d), (e), (f), (g) Allowed as Claim 6
[[Image here]]
See Id. at 2. 3
During a
Markman
hearing, the district court construed the claim term “mounted”
Addressing the doctrine of equivalents, the district court first noted that the parties agreed that the presumption of prosecution history estoppel applied to the gasket limitation. Equivalents Op. at 5. The district court rejected Felix’s argument that the amendment adding the gasket limitation was tangential to patentability, and it therefore concluded that Felix was estopped from asserting infringement of the gasket limitation by equivalents. Id. at 7. The district court therefore granted Honda’s motion for summary judgment of no infringement under the doctrine of equivalents, and it entered final judgment in Honda’s favor. Id. at 8.
Felix timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
II. DISCUSSION
A. Claim Construction
Claim construction is an issue of law,
Markman v. Westview Instruments, Inc.,
1. “mounted”
The district court construed “mounted” to mean “securely affixed or fastened to.” Literal Infringement Op. at 2. Felix argues that “mounted” has the broader meaning of simply “positioned.” Felix offers four arguments in support of this broader construction, each of which we reject.
First, Felix argues that the claims consistently use the term “mounted” or “mounting” “to relate the relative position of one item with another,” rather than to denote affixing or fastening. Appellant’s Br. at 21. Felix cites various examples from the claim language, including “a proximate end pivotally mounted in said compartment interior,” “a pair of hinges each mounted on said vehicle bed,” “a catch mounted on said compartment back wall,” “a latch mounted on said lid lower surface,” and “a knob mounted on said cable proximate end.”
Id.
at 21 (quoting '625 patent col. 4 11. 7-9, 11, 16, 18, 23-24). Felix is correct that, “[bjecause claim
Second, Felix argues that the specification does not provide “a specific method of mounting one item on or to another,” but merely provides one non-limiting example — “welding.” Appellant’s Br. at 21-22. To the contrary, like the claims, the specification repeatedly uses “mounted” to describe structures that must be securely affixed or fastened together, else they would fall apart by operation of gravity. See, e.g., '625 patent col. 3 11. 28-29 (“catch ... mounted on the compartment back wall”); id. col. 3 11. 30-31 (“latch ... mounted on the lid lower surface”); id. col. 3 11. 33-34 (“actuator cable ... mounted on the lid lower surface); id. col. 3 11. 39-40 (“prop rod ... with a proximate end ... mounted on the compartment front wall”); id. col. 3 11. 44-45 (“retainer ... mounted on the compartment back wall”). Moreover, both of the examples of types of mounting discussed in the specification are examples of securely affixing or fastening two structures together. See id. col. 3 11. 15-16 (“A compartment ... is mounted {e.g., welded) on the truck bed floor ...” (emphasis added).); id col. 3 11. 32-35 (“[A]n actuator cable [is] mounted on the lid lower surface ... by mounting clips .... ” (emphasis added)) The specification therefore consistently uses “mounted” to mean “securely affixed or fastened to.”
Third, Felix relies on a dictionary to argue that “mount” means simply “position.” Preliminarily, we note that “it is improper to read [a claim] term to encompass a broader definition simply because it may be found in a dictionary, treatise, or other extrinsic source.”
Nystrom v. TREX Co.,
Finally, Felix argues that the preposition “on” in the phrase “weathertight gasket mounted on said flange,” '625 patent col. 6 1.1 (emphasis added), suggests that “mounted” is meant to refer only to location of the gasket relative to the flange, rather than the relationship between the gasket and the flange. According to Felix, if the limitation had been intended to indicate a connection between the gasket and the flange, it would have recited “mounted to ” rather than “mounted on.” We reject this argument. The preposition “on” can be used to indicate attachment. See, e.g., Oxford English Dictionary (2008) (including definition of “on” as “[attached to (a chain, lead, etc.), esp. by way of restraint”). Moreover, the specification of the '625 patent consistently uses the phrase “mounted on” — not “mounted to”— in each instance discussed above, in which the specification describes structures that must be securely affixed or fastened together, else they would fall apart. See '625 patent col. 3 1.28 (“mounted on”); Id. col. 3 1.31 (same); id. col. 3 1.34 (same); id. col. 3 1.40 (same); id. col. 3 1.44 (same); see also id. col. 3 II. 15-16 (“A compartment ... is mounted (e.g., welded) on the truck bed floor----“ (emphasis added)); id. col. 3 11. 32-35 (“[A]n actuator cable [is] mounted on the lid lower surface ... by mounting clips ____“ (emphasis added)). Thus, we are not persuaded that the preposition “on” transforms “mounted” into “positioned.”
We therefore conclude that the district court’s construction of “mounted” was correct. As used in claim 6 of the '625 patent, “mounted” means “securely affixed or fastened to.”
2. “engaging”
The district court construed “engaging” to mean “coming together and interlocking.” Literal Infringement Op. at 2. Felix argues for a broader construction of “contacting or bringing together.” Appellant’s Br. at 23. In support of this broader construction, Felix offers two arguments.
First, Felix argues that the dictionary definition of “engaging” should control, because the meaning of the term is not discussed in the claims, specification, or prosecution history. Felix then argues that “the dictionary defines ‘engage’ as ‘to bring together’ “ — citing page 612 of the Joint Appendix.
Id.
at 24. This statement is false and misleading in several respects. First, there is no definition of “engage” on page 612 of the Joint Appendix; that page includes a dictionary definition of “mount.” The only dictionary definitions of “engage” appear several pages later. Second, the only dictionary definition of “engage” anywhere in the Joint
Second, Felix argues that the district court’s construction excludes every embodiment of the invention of the '625 patent, because the drawings of the patent show the gasket merely coming into contact with the lid. This argument is without merit. The gasket limitation requires the gasket to engage the lid when the lid is “in its closed position.” '625 patent col. 6 1.2. Of the drawings, only figure 2 shows the lid in its closed position, and figure 2 does not depict the gasket at all. Id fig.2. The remaining figures all show the lid in its open position. There is nothing in those figures that is inconsistent with the gasket “interlocking” the lid when the lid is closed.
Although we reject all of Felix’s arguments, we nevertheless conclude that the district court erred by construing “engaging” to require “interlocking.” The specification includes a single clause directed to the relationship between the lid and the gasket when the lid is closed: “a closed position (FIG.2) with the gasket 18 sealingly engaging the lid 22 adjacent to its edges 22 a-d on the lid lower surface 22.” Id col. 3 11. 24-26 (emphasis added). The specification’s use of the phrase “sealingly engaging” makes clear that the way that the gasket engages the lid is by forming a seal. This, of course, is the normal function of a gasket. See, e.g., Means Illustrated Construction Dictionary 275 (3d ed.2000) (defining “gasket” as “[a]ny of a variety of seals made from resilient materials and placed between two joining parts (as between a door and its frame, an oil filter and its seat, pipe threads and their fitting, etc.) to prevent the leakage of air, water, gas, or fluid”); Don Goodsell, Dictionary of Automotive Engineering 97 (2d ed.1995) (defining “gasket” as a “static seal used to contain pressure and prevent leakage ... ”). In contrast to “sealing,” “interlocking” suggests that some part of the gasket must be constrained or in some manner held by some part of the lid, beyond simply being sealed to the lid. Like the specification, the prosecution history of the '625 patent nowhere suggests that “engaging” means “interlocking.” Because we find no basis for such additional limitation in the specification or prosecution history, we modify the district court’s construction of “engaging” as used in claim 6 of the '625 patent to mean “coming together to form a seal.” Even though the district court erred in including “interlocking” in its claim construction, the error is harmless as it does not affect the district court’s determinations of either literal infringement or infringement under the doctrine of equivalents.
B. Literal Infringement
The district court entered summary judgment of no literal infringement, concluding that Honda’s accused In-Bed Trunk could not satisfy the gasket limitation. The district court reached that conclusion because the gasket of the In-Bed Trunk was mounted on the lid, not the
As the illustrations depicted above make clear, the gasket of the accused In-Bed Trunk is not securely affixed or fastened to the flange of the channel of the storage compartment. Instead, the gasket of the accused In-Bed Trunk is affixed to the lid. The In-Bed Trunk therefore does not include “a weathertight gasket mounted on [a] flange” as required by the gasket limitation. Honda was therefore entitled to summary judgment of no literal infringement.
Felix argues that the gasket of the In-Bed Trunk is affixed to the flange when the lid is closed, and that the claim only requires the gasket to be “mounted” on the flange when the lid is “in its closed position.” But this argument misreads the claim language. The limitation recites “a weathertight gasket mounted on said flange and engaging said lid in its closed position.” '625 patent col. 6 11. 1-2. The limitation recites two characteristics of the weathertight gasket: the gasket is both “mounted on said flange” and “engaging said lid in its closed position.” The antecedent of “it” in the phrase “in its closed position” can only be the noun “lid.” It would make no sense for either the “gasket” or the “flange” to be “in its closed position.” Therefore, the “in its closed position” language concerns the “engaging” aspect of the limitation, not the “mounted” aspect. The gasket must be “mounted on said flange” — meaning securely affixed or fastened to the flange— whether or not the lid its “in its closed position.” Because the gasket of the In-Bed Trunk is not securely affixed or fastened to the flange (as is apparent when the lid of the In-Bed Trunk is open), the In-Bed Trunk does not literally infringe. We therefore affirm the district court’s summary judgment of no literal infringement.
C. Doctrine of Equivalents
On Honda’s second motion for summary judgment, the district court held that Felix was precluded under the doctrine of prosecution history estoppel from arguing that the In-Bed Trunk infringed the gasket limitation by equivalents.
Equivalents Op.
at 7. Felix argues that he rebutted the presumption of prosecution history estoppel by showing that the amendment giving rise to the estoppel was tangential to the equivalent in question— namely, a gasket mounted on the lid, rather than the flange of the channel. Our review is
de novo. See Net MoneyIN,
“The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes.”
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,
1. Presumption of Surrender
We first consider which amendment — if any — gave rise to a presumption of surrender of claim scope encompassing the equivalent at it issue. The limitation at issue here is the gasket limitation. That limitation was not contained in original independent claim 1, but was present in dependent claim 7. In Felix’s first amendment on September 10, 1999, he cancelled original claim 1 and rewrote original dependent claim 7 in independent form as claim 14 to contain all of the limitations of claims 1 and 7. J.A. 490-91. It was this first amendment that had the effect of adding the channel and gasket limitations of dependent claim 7 to the broader claim that was cancelled. “[T]he rewriting of dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel.”
Honeywell,
The interesting wrinkle in this case is that even after Felix cancelled original independent claim 1 and rewrote original dependent claim 7 in independent form, the examiner still did not allow the rewritten dependent claim. In other words, even though Felix amended the claim and thereby narrowed its scope in an effort to secure allowance, that effort did not succeed.
5
It was only after claim 8 was rewritten in independent form to include the limitations of claims 1, 7,
and
8 that the claim was allowed. The fact that the first amendment did not succeed and that a further amendment was required to place the claim in allowable form, however, is of no consequence as to the estoppel. It is the patentee’s response to a rejection—
It is also immaterial in this case that the cancellation and amendment were to application claims 1, 7, and 14— rather than to application claims 8 and 16, which resulted in the asserted claim. The presumption of surrender “applies to all claims containing the [added] [limitation, regardless of whether the claim was, or was not, amended during prosecution.”
Deering,
We next turn to the scope of the presumptive surrender. “[W]hen a claim is rewritten from dependent into independent form and the original independent claim is cancelled ... the surrendered subject matter is defined by the cancellation of independent claims that do not include a particular limitation and the rewriting into independent form of dependent claims that do include that limitation. Equivalents are presumptively not avail
2. Tangentiality
Felix argues that he has rebutted the presumption of prosecution history estoppel as to the gasket limitation, because “the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question.”
Festo,
Felix argues that the first amendment “was made because the applicant thought the prior art lacked a channel,” not because of the presence or position of a gasket. Appellant’s Br. at 34. Felix relies on the language in his argument to the examiner that “the cited references do not show the channel of Claim 7, which is formed at the rim of the bed opening, in combination with the other structure of Claims 1 and 7.” J.A. 494. We reject Felix’s argument for two reasons. First, the cited language in Felix’s argument to the examiner expressly refers not only to the “channel of Claim 7” but also to the “other structure” of the claims. It is therefore not “objectively apparent” from this argument that the channel was the only reason for cancelling original claim 1 and rewriting dependent claim 7 in independent form, as Felix argues. Second, the cited language does not explain the entire amendment. If Felix had intended only to add a channel and not add a gasket, he could easily have simply amended original claim 1 to add limitation (e) and not limitation (f). Thus, Felix has identified no explanation in the prosecution history for the addition of the gasket limitation, and Felix therefore cannot meet his burden to show that the rationale for adding the gasket limitation was tangential to the presence and position of a gasket.
III. CONCLUSION
For the foregoing reasons, we adopt the district court’s construction of “mounted” as “securely affixed or fastened to,” and we construe “engaging” as “coming together to form a seal.” Applying these constructions, we affirm the district court’s summary judgment of no literal infringement. Because we conclude that Felix is barred by the doctrine of prosecution history estoppel from relying on the doctrine of equivalents to prove that the accused In-Bed Trunk meets the gasket limitation, we also affirm the district court’s summary judgment of no infringement by equivalents.
AFFIRMED
Notes
. The examiner also rejected claim 7 as indefinite as a result of its recitation of "[a]n inner lip.” J.A. 480. Felix corrected this indefiniteness by amending "inner lip” to "inner flange.” J.A. 493.
. The examiner also rejected amended claim 8 under 35 U.S.C. § 112, ¶ 2, because of an inconsistency in the language used in the preamble as a result of the earlier amendment, but indicated that it would be allowable if rewritten to cure this deficiency. J.A. 501, 504.
. The parties and the district court treated the illustration shown above as representative of the accused In-Bed Trunk.
See Literal Infringement Op.
at 2. The only actual engineering diagram of the In-Bed Trunk that illustrates the relative position of the lid, gaskets, and flanges shows the lid in a closed position, though the general configuration of the lid, gaskets, and flanges appears to be the same as the configuration in the illustration.
See
Mem. in Support of Mot. for Summ. J., Ex. 10,
Felix v. Am. Honda Motor Co.,
No. 05-2525-CM,
. We leave open the question of whether the presumption of surrender would have attached as to the gasket limitation if, in response to the first office action, Felix had cancelled both claim 1 and claim 7, and had rewritten claim 8 in independent form, instead of attempting to secure the broader coverage of rewritten claim 7 as an intermediate step.
. It is immaterial that the obviousness rejection following this amendment was based on different references (Cooper '890 in view of Cooper '519) than the original obviousness rejection (Cooper '890 in view of Williams Flues).
. Because we conclude that the district court properly granted summary judgment of no infringement under the doctrine of equivalents as a result of prosecution history estoppel, we do not address Honda’s alternative argument that the "all limitations” rule would preclude a finding of infringement.