Wig Grip Patent Dispute: Federal Appeals Court Upholds Decision that No Infringement Occurred
In a recent decision, the Federal Circuit Court of Appeals affirmed a district court's summary judgment of non-infringement in the case of NG LLC v. CreatedHair Designs, LLC. The case revolved around the proper construction of a key claim term and the application of prosecution history estoppel.
At the heart of the dispute was U.S. Patent Nos. 10,945,477 and 10,881,159, both owned by NG and concerning a wig grip apparatus comprising a mesh element. Claim 1 of these patents specifies that the mesh element includes a forward periphery and the wig grip apparatus terminates at the forward periphery.
During patent prosecution, NG agreed to change the limitation of the patent to state "the wig grip apparatus terminates at the forward periphery" to overcome a rejection and prior art. This amendment was made to avoid § 112 rejection and priority issues, as reflected in the prosecution history and affirmed by the Federal Circuit.
The U.S. District Court for the Central District of California construed "the wig grip apparatus terminates at the forward periphery" to mean "the forward periphery of the mesh element is the most forward portion of the wig grip apparatus." Support for this construction appears in the specification, which discusses the mesh element's forward periphery in relation to the securement members.
Under this construction, NG conceded there was no literal infringement and argued for infringement under the doctrine of equivalents. However, the Federal Circuit held that prosecution history estoppel barred NG's doctrine of equivalents argument because the narrowing limitation was added to overcome the examiner's rejections of prior art.
NG contended it could rebut the presumption that estoppel applies because the amendment was only "tangentially related" to the equivalent it was attempting to capture. However, the Federal Circuit concluded that this prosecution history exchange precluded NG from recapturing what was previously surrendered.
The Federal Circuit Court of Appeals was not persuaded by NG's argument and noted that the statement about the mesh section extension to the forward edge being a distinguishing feature "undermines NG's contention." The court determined that other parts of the wig grip apparatus (including the two securement members) cannot extend beyond the forward periphery of the mesh element.
The Federal Circuit's decision suggests that narrowing amendments made during prosecution can limit a patent holder's ability to argue for infringement under the doctrine of equivalents. The case highlights the importance of carefully considering the implications of amendments made during patent prosecution.
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