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This dispute of patent infringement, unjust enrichment, and attorney fees before the U.S Court of Appeals, Federal Circuit, on appeal from the U.S. District court for the District of South Dakota. Cases of Interest >  IP >  Patent >  Claim Interpretation

Waner v. Ford Motor Company

Waner v. Ford Motor Company

Waner v. Ford Motor Co., 331 F.3d 851 (Fed. Cir. 2003).

Decided June 4, 2003


This dispute of patent infringement, unjust enrichment, and attorney fees comes before the U.S Court of Appeals, Federal Circuit, on appeal from the U.S. District court for the District of South Dakota. The lower court had granted summary judgment in favor of Ford on the unjust enrichment claim and Waner’s request for attorney fees, and on jury verdict found for Waner on the infringement claim. Both parties appealed the lower court’s decision.

Claim construction, a question of law to be reviewed de novo, is central to the issue in determining infringement in this case. More specifically, the parties differ on their respective interpretations of the word “flange.” To settle this dispute the Court must first determine ordinary and customary meaning of the word that would be used by a person having ordinary skilled in the art.

Waner holds Patent No. 5,613,710 for the invention of a fender liner to be used in dually pickup trucks. The purpose of this invention was to prevent “star cracks” in the paint on the outer surface of the epoxy-fiberglass fenders cashed by small rocks that are picked up by the truck’s tires and are then forcefully ejected into the underside of the fender. The fender liner previously used by Ford, on its F-350 dually trucks, only protected the front and back of the fenders. However, Waner’s invention not only protects the front and back, but also protects the top of the fender by the use of a metal liner.

Waner then sold examples of his invention to local Ford dealers, who showed great interest in the product, and then filed for a patent and sent a sample of the design to Ford (a sample which they requested). Waner had a contact within Ford, Karlen, who was suppose to present Waner’s invention to a group of engineers at an upcoming meeting. However, Karlen deceived Waner about the fact that the meeting had taken place while he contended it did not. Some time later Ford installed over 45,000 pairs of top liners on the 1997 F-350 dually trucks. However, unlike Waner’s metal liners Ford’s liners were simply sheets of flat plastic prior to installation. Upon discovering this Waner filed suit against sued Ford for “usurpment of an idea”/unjust enrichment and infringement of his patent. Each being unhappy with separate parts of the lower court’s decision both parties appealed.

The Appellate Court stated that the pertainate section of the claim states “said fender liner comprising an elongated flat panel formed of sheet material with an inboard side flange, said flat panel running substantially the length and the breadth of the flat top and suited to be installed inside the fender along the flat top…” The Court begins its claim construction analysis, which is a legal finding, by determining the ordinary and customary meaning, if any, which would be attributed to the disputed term by those skilled in the art. The Court mentions that dictionary definitions are useful in this process.

In this case, the term “flange” is not defined in the patent, or other intrinsic records, and is the source of the dispute. The court adopts the following definition from Webster's New Twentieth Century Dictionary: “Flange - 1. a raised or projecting edge, rib, or rim for strength, as in a T-rail; for guidance, as on a rail to keep wheels in place; for connection with some other object, as in some pipes…” For the purposes of the present case the Court construes the meaning of the term “flange” as used in the Waner patent to simply mean a raised or projecting edge.

Further claim construction dispute arises from whether the flange must exist prior to installation of the liner into the fender. The Court finds that the claim language of Waner’s patent makes it clear that with his invention the flange must exist prior to installation. It notes that the claim limitation requires “said flat panel” be “suited to be installed inside the fender.” It determined that “said flat panel” was the flange in question and not the top panel of the liner as Waner claims. Therefore, the Court finds that the flange must exist prior to the installation of the liner in to the fender.

The Court determined that when using proper claim construction, in order for Ford's fender liner to infringe upon Waner’s patent, an inboard side flange must be present on it prior to installation in fender. However, the Court found that Ford's fender liner is only a single planar sheet of plastic prior to installation. Therefore, it does not even have the elongated flat panel with an inboard side flange that the Warner patent claims. In light of this finding the Court reverses the district court's denial of Ford’s request for JMOL, and finds that, as a matter of law, Ford's fender liner does not infringe on Waner’s patent.

Also, Waner contended, on appeal, that he was entitled to compensation under South Dakota law for Ford's alleged usurpment of his idea prior to the issuance of a patent. This is the basis for his unjust enrichment claim. The Court found that under South Dakota law a party that copies invention after it had been made available to public before the patent issued could not be held liable for unjust enrichment. Secrecy is the key issue for this claim, and without it state law cannot create a collateral set of rights to act as an adjunct or expansion to patent rights. However, the court agreed with the lower court’s finding that “once Waner sold the fender liners on the market, his invention was published and in the public domain.” The Court held that absent secrecy, state law cannot create a collateral set of rights available as an adjunct or expansion to patent rights. Since the invention was made public prior to the issuance of the patent no protectable property interest could be applied in this case that would allow Waner to recover from Ford on the basis of unjust enrichment. Therefore, since there is no dispute that Waner's fender liner was available to the public, the Court found that the district court's granting of partial summary judgment on Waner's unjust enrichment claim in favor of Ford was proper.

The Court also reviews whether the present case could be considered exceptional under 35 U.S.C. § 285, in order to determine whether the district court’s decision to deny Waner request for attorney fees was proper. In order for attorney fees to be available under 35 U.S.C. § 285 “(1) the case must be exceptional, (2) the district court may exercise its discretion, (3) the fees must be reasonable, and (4) the fees may be awarded only to the prevailing party.” Therefore, for this claim to apply a “prevailing party may prove the existence of an exceptional case by showing: inequitable conduct before the PTO; litigation misconduct; vexatious, unjustified, and otherwise bad faith litigation; a frivolous suit or willful infringement.” Also, “litigation misconduct and unprofessional behavior are relevant to the award of attorney fees, and may suffice, by themselves, to make a case exceptional.” However, since the court has determined that Ford’s liner does not infringe on Waner’s patent Waner is no longer the prevailing party in the suit. Therefore, under 35 U.S.C. § 285 he is not entitled to attorney fees. Accordingly the Court upholds the lower court’s decision to deny Waner’s motion for attorney fees.

Thus, the Court affirmed the district court's grant of partial summary judgment in favor of Ford on Waner's unjust enrichment claim, reversed its award of attorney fees to Waner, and reversed its denial of Ford's JMOL motion of noninfringement.


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