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Kenu, Inc. v. Belkin International, Inc.

United States District Court, N.D. California

May 31, 2018

KENU, INC., Plaintiff,
v.
BELKIN INTERNATIONAL, INC., Defendant.

          ORDER RE SUMMARY JUDGMENT, RE: DKT. NOS. 73, 80

          JAMES DONATO United States District Judge

         This patent infringement case involves claims for adjustable mounts that allow consumers to attach cell phones to the dashboard air vents in cars. Plaintiff Kenu, Inc., makes a product called the “AIRFRAME” and owns the two patents that are at issue in this case: United States Patent No. 9, 080, 714 (the '714 patent) for an “Adjustable Portable Device Holder, ” and United States Design Patent No. D690, 707 (the 'D707 patent) for a “Dashboard Vent Mount for an Electronic Device.” Defendant Belkin International, Inc., makes a competing mount called the “Vent Mount.” Kenu's three remaining claims against Belkin are for (1) infringement of the '714 patent, (2) infringement of the 'D707 patent, and (3) unfair competition under California's Unfair Competition Law, California Business and Professions Code § 17200. See Dkt. No. 141; Dkt. No. 68 (Case No. 14-4327).

         This order resolves Kenu's and Belkin's cross-motions for summary judgment. Dkt. Nos. 73, 80. Only Kenu's infringement claim for the 'D707 patent will proceed to trial.

         DISCUSSION

         I. THE '714 PATENT

         Kenu's infringement claim for the '714 patent is under the doctrine of equivalents. See Dkt. No. 80 at 5-6; Dkt. No. 81, Ex. 1, Ex. C at 3-4; Dkt. No. 96-25 at 7 (noting that the '714 patent claims “an adjustable clamping element comprising, inter alia, ‘springs inserted one each over each rod and held in place by a screw affixed to an end of the respective rod, '” whereas “Belkin's Vent Mount incorporates an equivalent rack and pinion mechanism with torsion spring, ” and so if “the doctrine of equivalent applies, [then] Belkin's Vent Mount infringes the asserted claims of the '714 patent”). Kenu does not claim that Belkin literally infringed the '714 patent.

         Belkin's main point on summary judgment is that Kenu is estopped by steps it took to narrow its claim while prosecuting the '714 patent. Prosecution history estoppel is a recognized limitation on the doctrine of equivalents whereby certain narrowing amendments made during patent prosecution later act as a bar to the application of the doctrine of equivalents to the elements that were added by the amendment. Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 30-34 (1997). The Federal Circuit has made it clear that this is a question of law for the Court to answer, Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 344 F.3d 1359, 1367-68 (Fed. Cir. 2003), and the prosecution history record submitted by the parties shows, under the analytical steps set out in Festo, that estoppel applies here.

         The reasons for this conclusion are straightforward. As an initial matter, the undisputed facts show that an amendment was filed with the Patent and Trademark Office (“PTO”) that narrowed the literal scope of a claim in the patent application. Festo, 344 F.3d at 1366. Specifically, after receiving a non-final rejection, Dkt. No. 81, Ex. 3, Kenu requested reconsideration “and allowance of the claims in view of the following, ” which included these claim amendments:

9. (Currently amended) The adjustable portable device holder as recited in claim 1, wherein the adjustable clamping element comprises two stainless steel rods, an expandable arm and a main body8, wherein gripping material is at least one material selected from the group consisting of: rubber, polymeric material, plastic, metal, alloy and composite material.
10. (Currently amended) The adjustable portable device holder as recited in claim 9, further comprising stainless steel springs inserted one each over each rod and held in place by a stainless steel screw affixed to an end of the respective rod8, wherein the gripping surface is textured.

Dkt. No. 81, Ex. 4 at KENU000516, KENU000526. After a final rejection, Dkt. No. 81, Ex. 5, Kenu submitted a “request for after final consideration” with the same language for claims 9 and 10. Dkt. No. 81, Ex. 6 at KENU000738, KENU000676.

         Later, in an examiner-initiated telephonic interview, Kenu and the examiner “agreed to incorporate dependent claims 9-10 into claim 1 (and remove the recitation of ‘stainless steel') to make claims 1-8 and 11-16 allowable.” Dkt. No. 81, Ex. 9. So after amendments were filed with the PTO, the scope of claim 1 specified that the adjustable clamping element for the mount had to be comprised of “two rods, an expandable arm, a main body, and springs inserted one each over each rod and held in place by a screw affixed to an end of the respective rod.” Dkt. No. 81, Ex. 10 (“Notice of Allowance”) at KENU000751.

         All of this amply demonstrates that claim 1 was narrowed by amendment. The second question is “whether the reason for that amendment was a substantial one relating to patentability.” Festo, 344 F.3d at 1366-67. “When the prosecution history record reveals no reason for the narrowing amendment, Warner-Jenkinson presumes that the patentee had a substantial reason relating to patentability . . . .” Id. “If the patentee successfully establishes that the amendment was not for a reason of patentability, then prosecution history estoppel does not apply.” Id.

         Every indication from the patent prosecution history record here is that the amendment was made for a substantial reason relating to patentability. Kenu proposed the amendments on two separate occasions expressly for “allowance of the claims in view of” them. Dkt. No. 81, Ex. 4 at KENU000516; id., Ex. 6 at KENU000738. Kenu tries to sidestep this fact by noting that the examiner checked the box titled “Others, ” for “Issues Discussed” in his Examiner-Initiated Interview Summary, but that is of no moment. The same summary states that “[a]pplicant and examiner agreed to incorporate dependent claims 9-10 into claim 1 . . . to make claims 1-8 . . . allowable.” Dkt. No. 81, Ex. 9 at ...


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