United States: The Ordinary Meaning Of "Connected To" Encompasses Indirect Linkages

In Douglas Dynamics, LLC v. Buyers Products Co., Nos. 11-1291, 12-1046, -1057, -1087, -1088 (Fed. Cir. May 21, 2013), the Federal Circuit reversed the SJ of noninfringement of U.S. Patent No. Re. 35,700 ("the '700 patent"), reversed the denial of a permanent injunction against continued infringement of U.S. Patent No. 6,944,978 ("the '978 patent"), instructed the district court to enter a permanent injunction, and vacated and remanded the award of an ongoing royalty for both U.S. Patent No. 5,353,530 ("the '530 patent") and the '978 patent.  

Douglas Dynamics, LLC ("Douglas") owns the '700 patent, directed to a snowplow assembly that is mountable on a vehicle and removed as a single unit, and the '978 and '530 patents, directed to components of the '700 patent.  Douglas filed suit against Buyers Products Co. ("Buyers"), alleging Buyers' snowplows infringe the '700 patent.  Claims 1 and 38 of the '700 patent contain essentially parallel claim language, which recite, among other things, "a lift frame supported by [an] A-frame." Because Buyer's snowplow assemblies have the lift frame supporting the A-frame—the opposite of the claimed configuration in claims 1 and 38—the district court granted SJ of noninfringement.

Claim 45 of the '700 patent, however, does not require that the lift frame (also referred to as a "support frame") be supported by the A-frame.  Claim 45 recites "a mounting frame . . . located generally behind the bumper, a snowplow blade assembly including an A-frame and a snowplow blade fixed to the A-frame, a support frame connected to the A-frame, and wherein the A-frame and the support frame are connected to the mounting frame for pivotable movement . . . . "  Slip op. at 5.  The district court construed this limitation of claim 45 to require that the A-frame and the support frame each be directly connected to the mounting frame.  In Buyers' accused products, the A-frame is not connected directly to the mounting frame, but instead connects to the support frame, which in turn connects to the mounting frame.  The district court reasoned that simply reciting a connection between the support frame and the mounting frame would necessarily imply an indirect connection between the A-frame and the mounting frame.

"Simply because a patentee manages to maintain a profit in the face of infringing competition does not automatically rebut a case for irreparable injury.  Irreparable injury encompasses different types of losses that are often difficult to quantify, including lost sales and erosion in reputation and brand distinction."  Slip op. at 10-11.

On appeal, the Court held that "[t]he district court erred by reading claim 45 narrowly to encompass only those connections between the A-frame and the mounting frame specifically described in the specification."  Id. at 8.  Holding that the district court's construction would exclude a preferred embodiment of the invention, the Court found that an included figure "depicts the lift frame connected to the mounting frame not 'directly,' but via an intermediate removable hitch arm."  Id.  The Court further reasoned that claim 45 recites "functional requirements for the connection between the mounting frame and the A-frame/support frame unit," which could be met by connecting either the A-frame or the support frame, or both, to the mounting frame in the appropriate manner.  Id. at 9.  Accordingly, the Court reversed the grant of SJ of noninfringement of claim 45 of the '700 patent and directed the district court to enter SJ of infringement in favor of Douglas. 

Turning to the '530 and '978 patents, on appeal, Buyers conceded validity and infringement, but contended the district court properly denied a permanent injunction based on a three-pronged argument: (1) Buyers does not "directly compete" with Douglas because "persons willing to pay for a Douglas snowplow were unlikely to purchase a Buyers snowplow as a substitute"; (2) Douglas's market share increased about 1% a year after Buyers introduced its infringing snowplows, thus no harm was suffered; and (3) the public interest is better served having a new competitor selling cheaper snowplow assemblies.  Id. at 9-13.  Holding "profit in the face of infringing competition does not automatically rebut a case for irreparable injury," the Court concluded that Buyers does compete with Douglas.  Id. at 10.  The Court further noted, "The district court also made a clear error of judgment in its analysis of Douglas's reputation loss," because "Douglas's reputation would be damaged if its dealers and distributors believed it did not enforce its intellectual property rights."  Id. at 11-12.  Noting that a "new 'competitor' will often find it easier to avoid the costs and risks of research and development and just 'compete' by infringement," the Court added, "the public has a greater interest in acquiring new technology through the protections provided by the Patent Act than it has in buying 'cheaper knock-offs.'"  Id. at 13-14.  Accordingly, the Court reversed the district court's denial of a permanent injunction against continued infringement of the '978 patent, the '530 patent having expired while the present case was on appeal.

Finally, addressing the reasonable royalty rate, the Court held that "the district court clearly erred by ensuring the ongoing royalty rate it awarded would 'leave some room for profit' by Buyers at its current prices," because "the court abused its discretion by applying the infamous 25% rule of thumb" (referring to the holding in Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1317 (Fed. Cir. 2011)).  Id. at 14.  The Court held that the district court "clearly erred by limiting the ongoing royalty rate based on Buyers's profit margins," because an infringer's net profit margin is not the ceiling by which a reasonable royalty is capped, and the infringer can raise the selling price to accommodate a higher royalty rate.  Id.  Accordingly, the Court vacated and remanded the award of an ongoing royalty for the '530 and '978 patents.

Dissenting, Judge Mayer would have affirmed the district court's denial of a permanent injunction and holding of noninfringement of claim 45 of the '700 patent.  In his view, Douglas failed to meet the prerequisites for injunctive relief set forth in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006), and he noted there was not "any reliable evidence establishing that money damages were inadequate to redress Douglas' injury."  Mayer Dissent at 4.  Judge Mayer also agreed with the district court's analysis of claim 45 of the '700 patent, rejecting the interpretation that "the A-frame and the mounting frame are 'connected' to each other because they are both attached to a third part."  Id. at 7.
Noting that "the specification discloses only direct connections between the A-frame and the mounting frame," Judge Mayer believed that the inventors used the word "connected" when they wished to describe two parts that were directly attached to each other.  Id.

Judges: Rader (author), Newman, Mayer (dissenting)
[Appealed from W.D. Wis., Judge Conley]

This article previously appeared in Last Month at the Federal Circuit, June 2013

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
12 Nov 2018, Speaking Engagement, Amsterdam, Netherlands

Finnegan partner Anthony Tridico will lead Forum Institute for Management’s course comparing patent law in the United States and Europe.

13 Nov 2018, Conference, Washington, DC, United States

Finnegan is an Event sponsor of the PTAB Bar Association Thought Leader Summit. The program will take place at the Westin Hotel in Alexandria, Virginia.

13 Nov 2018, Conference, California, United States

Finnegan is a Lunch sponsor of the fifth annual Corporate IP Strategy Conference, hosted by Unified Patents.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions