Homework 7: Mar 30 Karch

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Lemelson v. General Mills, Inc.

968 F.2d 1202
June 30, 1992
Rehearing Denied Aug. 11, 1992.
Suggestion for Rehearing In Banc
Declined Sept. 11, 1992.

Patent infringement suit was filed against toy company alleging that its “Hot Wheels” toy car track infringed plaintiff's toy track. The United States District Court for the Northern District of Illinois, Charles P. Kocoras, J., entered judgment on jury verdict in favor of plaintiff and denied defendant's motion for judgment notwithstanding verdict or for new trial. Defendant appealed. The Court of Appeals, Plager, Circuit Judge, held that Mattel's “Hot Wheels” toy car track could not be found to meet all limitations contained in allegedly infringed patent either literally or by equivalents absent sufficient evidence that track was distinguishable from prior art.


The claimed invention involved in this case relates to a flexible track upon which toy cars run. Mattel's ‘Hot Wheels,’ the first major commercialization of such a toy, became one of the most commercially successful toys in history.

emelson's original patent application for a “Toy Track” was filed in the U.S. Patent and Trademark Office (PTO) on May 14, 1967, with one independent claim and eight dependent claims. That original independent claim, reproduced below, consisted of what would later become the first five of the seven clauses in claim 3 of the reissue patent

[f] said guide means include a pair of spaced apart runner portions for defining the pathway of a vehicle moving over said track,

[g] said spaced apart runner portions include upwardly extending rails for guiding the wheels of a vehicle.

At one point Lemelson told Mattel that he was considering legal action for patent infringement. He also told Mattel that he was “extremely busy” in other patent litigations and in his business activities “relating to patent licensing,” but that he would “eventually” get around to suing Mattel.


The evidence at trial demonstrated that the Hot Wheels track is basically the same as Gardiol, but without the internal support. Hot Wheels uses external attachments, as does Lemelson, to define the shape of the track for any particular configuration. However, there is no evidence of any other significant difference between Hot Wheels and Gardiol. Both have an upper surface for supporting a movable object. Both are capable of undergoing three-dimensional deformation. Both have longitudinal sides which limit the lateral movement of the movable object. The evidence at bar pointed to nothing in the Hot Wheels track which is not found in Gardiol. Gardiol differs only in having an extra element-the internal core for structural support.

In arguing at trial that the claims of his patent ‘read on’ the accused device, Lemelson failed to demonstrate that the Hot Wheels track included each claim limitation or its equivalent. The testimony on the point contributed nothing of substance to the language of the claims, e.g., Lemelson testified that clause [f] “adds something to the earlier phrases of the claim and that is that the guide means includes a pair of spaced apart runner portions for defining the pathway of a vehicle moving over the track,” and that clause [g] “adds some language to the preceding phrases of the claim by saying that the ‘spaced apart runner portions include upwardly extending rails.’ ”

But there is no substantive evidence to distinguish Hot Wheels from Gardiol; Lemelson identified no elements in the Hot Wheels track that correspond to limitations [f] and [g]. Absent sufficient evidence in the record to support the conclusion that Hot Wheels is distinguishable from Gardiol, it follows that Hot Wheels could not be found to meet all of the limitations contained in the Lemelson patent, either literally or by equivalents.

We therefore conclude that no reasonable jury could read reissue claim 3 both to be valid in view of Gardiol AND infringed by Hot Wheels. When properly placed in the context of the prosecution history and the demonstrated meaning of the several clauses of the claim, these are inherently inconsistent conclusions. To the extent the jury so concluded, there was error, and the trial court should have granted the motion for JNOV as to the finding of infringement.

Each party is to bear its own costs.