Victory in the Federal Circuit

April 10, 2009 (Washington, DC) – Affirming the decision of the US District Court for the District of Kansas, the US Court of Appeals for the Federal Circuit has awarded Steptoe & Johnson LLP client, American Honda Motor Company, Inc. a huge victory in a patent dispute involving the Honda Ridgeline truck.  

In 2000, Mark Felix was issued US Patent Number 6,155,625 (‘625 patent), titled “Vehicle storage system,” which covers a type of trunk installed in the beds of pickup trucks. The suit alleged that the trunk in Honda's Ridgeline pickup trucks infringed upon the Kansas inventor’s patent. Honda filed two motions for summary judgment. One argued that based on a proper interpretation of the ‘625 patent, there was no literal infringement.  The other argued that statements made by Felix during the prosecution of his patent precluded a finding of infringement by equivalents.

Steptoe attorneys argued poignantly, that the Ridgeline trunk has a sealing gasket mounted on the lid of the trunk, which differs from claim six of the '625 patent, which claims that the gasket is mounted on the truck bed.  The district court granted both motions and the plaintiff appealed to the Federal Circuit.

The Federal Circuit concurred with the rulings of the district court in both summary judgments. The decision was heavily influenced by the Federal Circuit’s interpretation of the meaning of the words “mounted” and “engaging.” Steptoe’s attorneys argued that the patent called for the gasket to be mounted on the bed of the truck, while Felix countered that the word “mounted” simply meant positioned.

This is a significant victory for Honda, a client of Steptoe’s Intellectual Property practice.  In the opinion Judge Richard Linn wrote, "we agree with the district court that prosecution history estoppel bars Felix from relying on the doctrine of equivalents to show that Honda’s in-bed trunk meets the gasket limitation."

Championing this effort was Steptoe partner John Caracappa, who argued the case. Partner Charles Schill and associate Gretchen Miller joined him in preparing the brief. Additional assistance was also provided by partners Chuck Cole and Will Pecau, associates Rachel Hofstatter and Tiffany Miller, and paralegal specialist Connie Shepherd.