Federal Circuit Affirms Non-Infringement Finding in Wig Grip Patent Case

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday affirmed a district court’s summary judgment of non-infringement in NG LLC v. CreatedHair Designs, LLC in a case which centered on the proper construction of a key claim term and the application of prosecution history estoppel.

U.S. Patent No. 10,945,477 and U.S. Patent No. 10,881,159 are owned by NG and concern a wig grip apparatus comprising a mesh element. Claim 1 specifies that “‘the mesh element includes a forward periphery’ and ‘the wig grip apparatus terminates at the forward periphery.”

Central to the dispute was the construction of “the wig grip apparatus terminates at the forward periphery.” The U.S. District Court for the Central District of California construed this ordinary term to be defined as “the forward periphery of the mesh element is the most forward portion of the wig grip apparatus.”

NG challenged the district court’s construction of the term as it reads a limitation into the term. The term should be given “its plain and ordinary meaning, with ‘terminates at’ being understood to convey that the wig grip apparatus comes to an end,” but allows for the apparatus to end at other points as well, said the decision. Under NG’s proposed construction, different portions of the apparatus could “extend beyond the forward periphery of the mesh portion.”

The Federal Circuit rejected NG’s argument, finding that “the entire wig grip apparatus of claim 1 terminates at the forward periphery of the mesh element because the wig grip encompasses the mesh element, and the wig grip terminates at the forward periphery of the mesh element.” The court determined that the “other parts of the wig grip apparatus (including the two securement members) cannot extend beyond it.”

Support for this construction appears in the specification by discussing the mesh element’s forward periphery in relation to the securement members, said the CAFC. The specification states that “[T]he securement members 108 and 114 may each include a forward edge 126” and “the forward periphery 132 may preferably be in alignment with the forward edges 126.”

Consistency with the prosecution history also supported the district court’s construction, as the relevant limitation was not part of the original claims, which were rejected. During prosecution, NG addressed “‘the extension of the middle mesh section of the instant invention to the forward edge of the wig grip apparatus as a distinguishing feature’ from the prior art.”

Initially, NG submitted amendments adding language that “the wig grip apparatus lacks non-transparency beyond the forward periphery.” After the examiner suggested changing the unclear language, NG “agreed to change the limitation to state ‘the wig grip apparatus terminates at the forward periphery’ to overcome the § 112 rejection and to overcome the prior art of record.”

Under the district court’s claim construction, NG conceded there was no literal infringement and argued for infringement under the doctrine of equivalents. The Federal Circuit held that prosecution history estoppel barred this 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. The Federal Circuit was not persuaded, noting that the NG’s statement that the mesh section extension to the forward edge was a distinguishing feature “undermines NG’s contention.”

The Federal Circuit concluded that this prosecution history exchange precluded NG from recapturing what was previously surrendered. The court agreed with the district court’s application of prosecution history estoppel to NG’s doctrine of equivalents argument and the district court’s judgment was therefore affirmed.

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