IP Law Daily, PATENT—SDNY: VeriFone’s Fixed Mounts for Electronic Displays in Taxis Did Not Infringe Patent, (Oct 15, 2012)

By Peter Reap, J.D., LLM

VeriFone Systems, Inc.’s fixed mounts for electronic displays in New York City taxicabs did not infringe Chikezie Ottah’s rights in United States Patent No. 7,152,840 (“the '840 Patent”) covering a removable “book holder,” the federal district court in New York City has determined (Ottah v. Verifone Systems, Inc., October 10, 2012, Berman, R.). In addition, the court declined to exercise supplemental jurisdiction over Ottah’s Australian patent claim because all of Ottah’s U.S. patent claims over which it had original jurisdiction were dismissed.

No Literal Infringement

The '840 Patent’s sole claim consists of commonly understood words, such as “a book holder,” “for removable attachment,” “a clasp,” and “an arm.” The VeriFone mounts do not contain (at least) several of the limitations in the '840 Patent claim, the court held.

Those limitations not contained in the '840 patent included: “[a] book holder for removable attachment”; “[a] plurality of clamps disposed on the front surface to engage and retain the book”; “[a] clasp spaced from the book support platform wherein the book holder is removably attached”; “[a] telescoping arrangement axially adjusting the spaced relation between the book support platform and the clasp”; and “[a] pivotal connection on the book support platform pivotally adjusting the front surface with respect to the arm.”

VeriFone’s mounts were anything but removable, the court explained. They were “riveted in place to the taxi’s partition or seat” to discourage tampering and stealing of electronic displays, and were unlike Ottah’s book holder which was “easily and removably attached.”

No Infringement Under the Doctrine of Equivalents

Prosecution history estoppel barred Ottah’s claim of infringement under the doctrine of equivalents. The doctrine of prosecution history estoppel limited the doctrine of equivalents when an applicant made a narrowing amendment for purposes of patentability, or clearly and unmistakably surrendered subject matter by arguments made to an examiner. In other words, under prosecution history estoppel a patentee was unable to reclaim through the doctrine of equivalents what was surrendered or disclaimed in order to obtain the patent.

On January 21, 2005, the USPTO rejected Ottah’s initial patent application because, among other reasons, his claim was not different from prior art. By Preliminary Amendment, filed July 25, 2005, Ottah narrowed the scope of his claim and argued that “the use of adjustable, resilient clip arms on the clasp for clasping the book holder to the movable vehicle providing quick removal and attachment without tools…is not obvious in light of the prior art.” Thus, Ottah focused specifically on removable, not on fixed (i.e., riveted) installation.

Because Ottah previously argued that the defining characteristic of his book holder was its “quick removal and attachment without tools,” he could not now claim that the permanent rivet attachments of the VeriFone mounts were “equivalent” to the limitations described in the '840 Patent, the court ruled.

The case is No. 11 Civ. 6187 (RMB).

Chikezie Ottah pro se. Cosmin Maier (Wilmer, Cutler, Hale & Dorr, LLP) for Verifone Systems, Inc.

Cases: Patent NewYorkNews