You Can’t Clasp That: Judge Schofield Finds No Infringement Under Doctrine of Equivalents Due To Prosecution History Estoppel
On July 16, 2020, United States District Court Judge Lorna G. Schofield granted summary judgment of non-infringement for Defendant Verizon Services Corp (“Verizon”). Pro se plaintiff Chikezie Ottah (“Ottah”) sued Verizon for patent infringement, alleging that Verizon’s Jotto Desk Universal Laptop Mount (“the Accused Product”) infringed U.S. Patent No. 7,152,840 (“the ’840 patent”).
The ’840 patent is generally directed to a removable book holder for use in a protective or mobile structure such as a car seat, wheelchair, or walker. The specification teaches that the prior art “does not accommodate easy and quick attaching of the book support onto a structure for mobile use.” The claimed invention purportedly solved this problem by providing a “holder that is quickly and easily clipped to a mobile vehicle such as a wheelchair or stroller for holding the book in a reading position.”
The Court noted that the Accused Product is “affixed by installing a metal square base to a vehicle floor through tools and ‘self-tapping tech screws.’” As such, the Court found that no reasonable jury could find that the Accused Product literally infringed the ’840 patent. However, Plaintiff argued that infringement can still be found under the doctrine of equivalents. Specifically, Plaintiff argued that the term “clasp” in claim 1 can be construed in a way that covers the Accused Product. However, the Court noted that “clasp” is not to be viewed in isolation but within the claim as a whole, which provides additional detail: a “clasp spaced from the book support platform wherein the book holder is removably attached.” Thus, because the Accused Product “is designed to be permanently affixed to a vehicle floor through the use of screws” it cannot be an equivalent. The court further noted that “[e]ven if the clasp limitation of the ’840 patent were considered ‘equivalent’ to the permanent attachment mechanism of the Accused Product, the doctrine of prosecution history estoppel bars Plaintiff from establishing this equivalence.” The Court found that arguments made during prosecution of the ’840 patent distinguished the claims over the prior art and focused on the quick and easy clipping and removal of the book holder on the mobile vehicle. “Plaintiff cannot now argue that the attachment mechanism of the Accused Product is equivalent to the clasps described in his ’840 patent. Instead, only a product that is removable through clasps and without tools may infringe the ’840 patent.” The Court ruled that to find equivalence in this case would allow Ottah to recapture the subject matter he surrendered during prosecution as a condition of receiving the patent.
The case is Ottah v. Verizon Services Corp., No. 19-cv-8552 (LGS) (S.D.N.Y. July 16, 2020)