Before Newman, Hughes, and Stoll. Appeal from U.S. District Court for the Southern District of New York.
Summary: General disclosures in the specification and statements that describe the embodiments as non-limiting do not broaden claims that were narrowly drafted and prosecuted.
Ottah, a pro se litigant, owns a patent on a removable book holder for use in cars and in other locations. Ottah alleged that the back-up cameras included in the defendants’ cars infringed his patent. The district court granted summary judgment of non-infringement to one group of defendants (“MSJ defendants”) and dismissed the complaint for failure to state a claim as to a second group of defendants (“MTD defendants”).
In a previous case, the Federal Circuit held that the lone claim of Ottah’s patent excluded fixed mounts and that prosecution history estoppel prevents the claim from encompassing such fixed mounts. The Federal Circuit found no error in the previous claim construction and no reason to depart from the rules or collateral estoppel or sta re decisis. Because the MSJ defendants had shown that their cameras use fixed mounts, the district court’s grant of summary judgment of non-infringement was affirmed.
In affirming the motion to dismiss, the Federal Circuit agreed with the district court that the claim of Ottah’s patent cannot plausibly be construed to include or be the equivalent of a camera. Although the specification includes a statement that a book platform “may also be used to support such items as audio/video equipment, PDAs, or mobile phones, cameras” and some boilerplate statements that the invention is not necessarily limited to the described embodiments, the Federal Circuit found that these general statements are insufficient to show that the claim is not explicitly limited to book holders. Accordingly, the Federal Circuit affirmed the district court’s dismissal of the complaint.