• Federal Circuit Finds Infringement Could Not Be Decided as a Matter of Law
  • January 17, 2006
  • Law Firm: Duane Morris LLP - Philadelphia Office
  • Dorel Juvenile Group, Inc. v. Graco Children's Products, Inc., No. 05-1026

    In a November 7, 2005 opinion, the Federal Circuit vacated a grant of summary judgment of non-infringement by the United States District Court for the Southern District of Indiana. The Federal Circuit found that the question of whether the accused child's car seat infringed the asserted claims of U.S. Patent No. 6,550,862 ("the '862 patent") and 6,612,649 ("the '649 patent") could not be decided as a matter of law, but rather was a question of fact for a jury to determine, not the judge.

    The plaintiff Dorel Juvenile Group, Inc. is the exclusive licensee of the '862 patent and its continuation, the '649 patent, both directed to a child's car seat assembly having a retractable cup holder. Defendant Graco Children's Products, Inc. ("Graco") conceded that its car seat embodied all of the elements of the asserted claim of the '862 and '649 patents, except for a certain element related to the seat and base assembly. Specifically, Graco argued that its accused car seat, which consisted of a base and a seat firmly held together by screws, did not have a base "removably attached" (claim 1 of the '649 patent) or "removably secured" (claim 1 of the '862 patent) to the seat.

    The District Court interpreted these terms according to their ordinary meaning and concluded that they require the seat and base to be "detached or unsecured on some occasion during the lifetime of the product." In providing this construction, the District Court refused to read into the terms a requirement of "ease of separation" since the claim language did not require such a limitation. The District Court further opined that these claim terms required that the claimed "seat" be construed such that when it is removed, the "seat" remains functional and undamaged. Applying this claim construction, the District Court found no literal infringement because the two parts of the accused Graco car seat "were found to be an integrated unit," lacking a seat and base as separate, stand-alone structures."

    On appeal, the Federal Circuit agreed with the lower court's claim construction, but not its finding of infringement. In affirming the District Court's claim construction and finding that "ease of separation" was not a requirement, the Federal Circuit demonstrated the extent to which the drawings in a patent specification can be found to provide teachings to one skilled in the art. Based on the presence of the word "COLA" next to the retractable cup holder in one of the drawings, the Federal Circuit stated:

    Given the configuration of the cup holder and the seat's base, spilled cola would surely invade the bottom portion, where it could attract bees, hornets and other unwelcome insects. The occasional need to unscrew the top portion from the bottom portion to clean away spilled cola, or other matter that could find its way from the cup holder into the bottom portion, comports with the district court's holding that the seat and base merely be capable of separation.

    However, the Federal Circuit did disagree with the lower court's conclusion that the accused Graco car seat could not infringe as a matter of law because it "lacks a seat separate from a base and, at most, includes a base that is integral to the seat." The Federal Circuit found that the accused Graco car seat could be disassembled into top and bottom structures by an ordinary or one-way screwdriver, such that they are "removably attached" and "removably secured." However, the Federal Circuit found that whether the top and bottom structures of the Graco car seat were the claimed "seat" and "base" of the asserted patents such that the top structure could still function as a "seat" upon being removed was a question of fact that could not be determined on summary judgment. Because the lower court invaded the province of the finder of fact, here a jury requested by Dorel, the Federal Circuit vacated the summary judgment of non-infringement and remanded the case to the District Court.

    For the full opinion, see: http://fedcir.gov/opinions/05-1026.pdf