IP Law Daily Auto companies’ camera holders did not infringe patent for removable book holder
Wednesday, March 7, 2018

Auto companies’ camera holders did not infringe patent for removable book holder

By Thomas Long, J.D.

Automobile companies did not infringe a patent for a removable book holder by manufacturing and selling camera holders for use in their vehicles, the U.S. Court of Appeals for the Federal Circuit has decided. Some of the defendants established that their camera holders were mounted in such a way that tools were required to remove them; therefore, they were not "removable" as required by the asserted patent claim. Other defendants were entitled to dismissal of the infringement counts against them because the patent-in-suit did not claim a camera holder (Ottah v. Fiat Chrysler, March 7, 2018, Newman, P.).

Patent-in-suit. The patent-in-suit was U.S. Patent No. 7,152,840 ("the ’840 patent"), titled "Book Holder." The patent stated that the invention was "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 book holder was described as "having an adjustable, releasable clipping means and a support arm configured for … adjustment of the book supporting surface of the book holder to hold a book in a readable position in front of the user." The specification explained that the book holder could be used to hold items other than books, such as audio/video equipment, mobile phones, cameras, computers, and toys. However, the only embodiment that was described and illustrated was for use as a book holder.

Infringement allegations. The patent owner filed suit against several auto companies, asserting that camera holders they made and sold with their vehicles infringed the ’840 patent. Some defendants—General Motors LLC; Mazda Motor Corporation; Nissan Motors Company Limited; Fuji Heavy Industries; Daimler AG; and Toyota Motor Corporation (collectively, the "MTD Defendants")—moved to dismiss, arguing that the ’840 patent was explicit to a book holder, and the patent owner could not plausibly allege infringement by a camera holder. Other defendants—Fiat Chrysler; Ford Motor Company; Hyundai Motor America; Jaguar Land Rover North America; and Kia Motor America (collectively, the "MSJ Defendants")—moved for summary judgment of noninfringement, contending that their camera holders did not meet the "removable attachment" limitation of claim 1, because the camera holders on their vehicles could not be removed without tools. The district court granted the MTD Defendants’ motion to dismiss with prejudice, characterizing the patent owner’s arguments as "legally implausible" because the ’840 patent did not claim a camera holder. The district court also granted the MSJ Defendants’ motion for summary judgment of noninfringement, observing that the Federal Circuit had previously ruled on the scope of the ’840 patent’s claim and held that the claim required that any infringing device must be capable of being "removed without tools." The MSJ Defendants had submitted uncontroverted evidence that their accused cameras were mounted in such a way that tools were necessary to remove them. In addition, the district court found that MSJ Defendants submitted uncontroverted evidence that their accused cameras did not meet two other limitations of the ’840 patent, which required that the holder have telescoping arm and be adjustable in certain ways. The patent owner appealed.

Summary judgment of noninfringement. The Federal Circuit reviewed the grant of summary judgment of noninfringement de novo. The patent owner argued that the district court erred in construing the claim to exclude "fixed mounts" from its scope. The court rejected the argument, noting that it had previously reviewed claim construction of the ’840 patent and ruled that several claim limitations required that the book holder have a "removable mounting." The court saw no reason to depart from the rules of collateral estoppel or stare decisis with respect to this claim term. Additionally, it was shown that the MSJ Defendants’ accused cameras utilized fixed mounts that required tools for removal. As such, the accused devices were outside the literal scope of the asserted patent claim, the court said. The Federal Circuit also had previously determined that prosecution history estoppel prevented the claim from encompassing, under the doctrine of equivalents, "fixed mounts" that required tools for removal. Therefore, the district court did not err in granting summary judgment of noninfringement.

Dismissal with prejudice. The court noted that the patent owner was a pro se plaintiff, and pro se complaints were to be liberally construed. However, even a pro se plaintiff must meet minimal pleading standards to avoid dismissal. The district court found that the ’840 patent contained no claim that could be plausibly construed to cover a mobile camera device, a mounted camera, or any kind of camera. The patent’s single claim did not mention a camera or recite typical functions or components of a camera. The fact that the patented book holder could be used to hold a camera did not make it the equivalent of a mobile camera, the district court determined. The patent owner’s only support for his argument that the district court erred consisted of the general statements in the specification that the book holder could hold items other than books. However, the Federal Circuit noted, the claim was explicitly limited to books, and the record suggested that the limitation of the claim to books served to limit the scope of the USPTO’s examination to prior art book holders. Therefore, the record negated the argument that cameras and books should be treated as equivalents. In addition, the accused camera structures were not alleged to have the claimed "telescoping arrangement" or to possess a "front surface adapted for supporting a book," as required by the patent’s only claim. Accordingly, the Federal Circuit concluded that the accusation of infringement lacked plausibility, and the district court correctly dismissed the complaint with prejudice.

The case is No. 2017-1842.

Attorneys: Chikezie Ottah, pro se. Frank C. Cimino, Jr. (Venable LLP) for Fiat Chrysler. Peter Thomas Ewald (Oliff PLC) for Toyota. Reginald J. Hill (Jenner & Block LLP) for Nissan Motors Co Ltd. Jun-Suk Park (Arnold & Porter Kaye Scholer LLP) for Hyundai Motor America. Jason R. Mudd (Erise IP, P.A.) for Ford Motor Company. Matthew J. Moore (Lathan & Watkins LLP) for Jaguar Land Rover North America. Mark Michael Supko (Crowell & Moring, LLP) for General Motors LLC. Daniel Grunfeld (Morgan, Lewis & Bockius LLP) for Kia Motors America, Inc.

Companies: Fiat Chrysler; Toyota; Nissan Motors Co. Ltd.; Hyundai Motor America; Ford Motor Company; Jaguar Land Rover North America; General Motors LLC; Kia Motors America, Inc.

MainStory: TopStory Patent FedCirNews

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