PATENT CASE OF THE WEEK

Ottah v. Fiat Chrysler, Appeal No. 2017-1842 (March 7, 2018)

In Ottah v. Fiat Chrysler, the Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement as to certain defendants, and affirmed its Rule 12(b)(6) dismissal with prejudice as to others.  Ottah’s U.S. Patent No. 7,152,840, titled “Book Holder,” claimed a removable mechanism for holding books, and the specification indicated that it was useful for car seats, wheelchairs, walkers, or strollers, and for holding other book-shaped items.  Ottah claimed his patent was infringed by accused fixed back-up cameras installed on various vehicles.

In affirming summary judgment, the unanimous panel relied on a previous Federal Circuit decision interpreting the same patent’s single claim, which had found that any infringing device must be capable of being removed without tools.  In so doing, the panel explicated the stare decisis and collateral estoppel effects of the previous panel’s ruling, describing it as “finally decided and [] not subject to collateral review” absent exceptional circumstances.  This stands in contrast to the Federal Circuit’s decision last week in Knowles Electronics v. Cirrus Logic (see our write-up here), holding that a previous Federal Circuit claim construction, on appeal from ITC, had no preclusive effect on PTAB’s determination of the broadest reasonable interpretation of the same patent.  Judge Newman, who wrote the Ottah opinion, dissented in Knowles as to that holding.

The Ottah court also affirmed the district court’s Rule 12(b)(6) dismissal with respect to other defendants, which dismissal turned in part on the district court’s determination that the ’840 patent claim could not plausibly be construed to cover a camera.  This also stands in contrast to a decision issued last week, Nalco Company v. Chem-Mod, in which the court indicated that disputes regarding claim construction are not properly resolved on a motion to dismiss.  (See our write-up here.)   In Ottah, the Federal Circuit agreed that, notwithstanding the disclosure of “cameras” in the specification, the intrinsic record suggested that the single patent claim had been limited to “books” to limit the scope of examination to prior art book holders, thus precluding any doctrine of equivalents argument that may cover cameras.

The Ottah court noted that its decision was further supported by the complaint’s failure to allege that either of two other limitations were practiced by the accused devices.

Opinion can be found here.