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Ford Wins Reversal of $56 Million Patent Infringement
The American Lawyer
Ford Motor Company and its attorneys at Sidley Austin and Winston & Strawn scored a huge victory on Friday as a unanimous three-judge panel of the United States Court of Appeals for the Federal Circuit threw out a $56 million patent infringement verdict against the car giant over lighted side-view mirrors.
In its 17-page opinion, the Federal Circuit panel found that a 1991 patent for a lighted side-view mirror held by inventor Jacob Krippelz, Sr., was invalid and obvious from prior art. Krippelz claimed that he offered Ford a license to use his invention and never heard back. Then in 1997 Ford introduced lighted side-mirrors on its Explorer and other models. Krippelz sued Ford a year later, but did not sue any other automakers.
Ford's lead attorney on the appeal, Constantine Trela, Jr., of Sidley Austin, told us that it would be very difficult to contest the decision. "Rehearings with the entire Federal Circuit are rarely granted," Trela said. "In this case, it was very fact-specific and the court did not announce any new principles of law. That's not normally the sort of thing that's appropriate for rehearing by the Federal Circuit or eventual review by the Supreme Court." Krippelz's attorney, Mark Ferguson of Bartlit Beck Herman Palenchar & Scott, did not respond to a request for comment.
Krippelz's patent, which was successfully reexamined in 2002, was for a fixed mirror adjacent to the window that directed a conical beam of light downward, making it visible from in front and behind the car. He prevailed in Chicago federal district court in 2008, winning a $23 million jury verdict against Ford that was increased to $56 million by Judge James Zagel after a finding of willful infringement. Ford then moved for judgment as a matter of law regarding the invalidity of Krippelz's patent, but Zagel denied the motion. Krippelz died shortly before the district court's final judgment, and his heirs continued to litigate the case.
Circuit judge Sharon Prost, in a decision joined by judges Pauline Newman and Kathleen O'Malley, found that Krippelz's patent had been anticipated by prior art, namely a French patent from 1953 (referred to as "the DuBois patent") that covered a "system of lamps and optical devices" for illuminating the pavement next to a car. Krippelz had argued that the DuBois device wasn’t prior art since it illuminated objects differently and wasn't adjacent to the side window.
The Federal Circuit panel disagreed. According to the opinion, Krippelz's statements during the re-examination of his patent were key, as he limited his claim to "the shape of the reflector and the positioning of the light source relative to it." The panel also found that even though the DuBois patent did not include a side-view mirror, such an application was clearly obvious.
Ford counsel Trela told us that he was very pleased by the decision. "We felt very good about our arguments concerning infringement and invalidity," said Trela. "The court focused on invalidity, which makes sense when you look at the prior art. It's almost impossible to tell any difference."
This article originally appeared on The Am Law Litigation Daily.