Tuesday, July 24, 2018

Sears prevails in "bionic wrench" case

In Loggerhead v. Sears, 2018 U.S. Dist. LEXIS 121457 (decided 20 July 2018), Sears won on summary judgment in a procedurally unusual case.

Some text from the case:

Nothing in the prosecution history casts doubt on the meaning of LoggerHead's attempts to distinguish its proposed claims from the prior art. The company's disclaimer was not a mere "isolated assertion," as it now suggests. Unlike the patentee in Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1343 (Fed. Cir. 2009), who "never repeated the allegedly disclaiming statements and instead offered alternative reasons to overcome the . . . prior art," LoggerHead repeated its disclaiming statements to the patent examiner two years later, with only minor changes in wording.11 Nor would a competitor reading the prosecution history doubt the meaning or significance of LoggerHead's disclaiming statements merely because the company also presented other arguments in response to the patent examiner's rejections. Under well-established Federal Circuit law, "an applicant's argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well." Saffran v. Johnson & Johnson, 712 F.3d 549, 559 (Fed. Cir. 2013) (quoting Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007)). See also Southwall Techs., 54 F.3d at 1583 ("Clear assertions made during prosecution in support of patentability, whether or not actually required to secure allowance of the claim, may . . . create an estoppel."). Even if this were not the law, a competitor reading the prosecution history in this case would note that the patent examiner did cite Buchanan's lack of an arm portion as a reason for allowing LoggerHead's claims. (See PSAMF ¶ 36.)

Finally, LoggerHead suggests that Judge Darrah's conclusion that prosecution history estoppel did not apply at the claim-construction stage necessarily precludes this court from reaching the opposite conclusion now. According to LoggerHead, this court's disagreement with Judge Darrah would prove that LoggerHead's statements are susceptible to multiple meanings—and thus are not clear and unmistakable. But Judge Darrah does not appear to have considered the language from the prosecution history that this court finds to be clear and unmistakable. Rather, the only language he discussed was LoggerHead's statement pointing out that the examiner failed to identify Buchanan's arm portion. See LoggerHead, 2015 U.S. Dist. LEXIS 114144, 2015 WL 5118063, at *4. Nor did Judge Darrah consider, as this court does now, whether LoggerHead disclaimed a gripping element without any arm portion at all. Rather, he considered whether LoggerHead disclaimed a "nonprojecting" arm portion. Id. His conclusion—that LoggerHead's statement about the examiner's failure to identify Buchanan's arm portion did not clearly and unmistakably disclaim a gripping element with a "nonprojecting" arm portion (whatever that may be)—is not necessarily inconsistent with this court's conclusion that LoggerHead did clearly and unmistakably disclaim a gripping element without any arm portion at all.

A competitor would reasonably conclude from the prosecution history of the '470 patent that LoggerHead clearly and unmistakably disclaimed gripping elements without arm portions. LoggerHead is estopped from reclaiming that subject matter under the doctrine of equivalents.

From the Chicago Tribune:

Apex had designed the Craftsman wrench to avoid infringing on the LoggerHead patent, said Mark Sernel, an attorney for Apex and Sears.

A federal judge who took over the case after the prior judge died last year agreed with Sears and Apex and ordered a new trial. Both sides asked the court to reconsider and decide the case without a new trial.

U.S. District Judge Rebecca Pallmeyer sided Friday with Sears and Apex “because no reasonable jury could conclude” that the Craftsman wrench infringed on LoggerHead’s patents, she wrote in a court order.

“Sears is pleased with the court’s decision and looks forward to putting this case behind us,” spokesman Howard Riefs said in an email.

LoggerHead’s attorney could not be reached immediately Tuesday for comment.

link: http://www.chicagotribune.com/business/ct-biz-sears-bionic-wrench-patent-lawsuit-20180724-story.html


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