United States Court of Appeals 

for the Federal Circuit

__________________________ 

RADIO SYSTEMS CORPORATION

AND INNOTEK, INC., 

Plaintiffs-Appellees, 

v.

TOM LALOR AND

BUMPER BOY, INC., 

Defendants-Appellants.

__________________________ 

2012-1233

__________________________ 

Appeal from the United States District Court for the 

Western District of Washington in No. 10-CV-0828, Judge 

Robert S. Lasnik. 

___________________________ 

Decided: March 6, 2013

___________________________ 

R. BRADFORD BRITTIAN, Merchant & Gould, P.C., of 

Alcoa, Tennessee, argued for plaintiffs-appellees. With 

him on the brief was JOHN T. WINEMILLER. Of counsel 

was MATTHEW J. STARK. 

PHILIP P. MANN, Mann Law Group, of Seattle, 

Washington, argued for defendants-appellants. With him 

on the brief was JOHN WHITAKER, Whitaker Law Group, of 

Seattle, Washington. 
RADIO SYSTEMS CORP v. LALOR 2

__________________________ 

Before NEWMAN, MOORE, and REYNA, Circuit Judges. 

Opinion for the court filed by Circuit Judge Moore. 

Opinion concurring-in-part and dissenting-in-part filed by 

Circuit Judge NEWMAN. 

MOORE, Circuit Judge. 

In this declaratory judgment action, Tom Lalor and 

Bumper Boy, Inc. (collectively, Bumper Boy) appeal from 

the district court’s grant of summary judgment that Radio 

Systems and Innotek (collectively, Radio Systems) do not 

infringe two related Bumper Boy patents. See Radio 

Systems Corp. v. Lalor, No. C10-828RSL, 2012 WL 

254026 (W.D. Wash. Jan. 26, 2012) (Summary Judgment 

Order). For the reasons set forth below, we affirm-inpart, reverse-in-part, and remand for proceedings 

consistent with this opinion. 

BACKGROUND

This case involves two of Bumper Boy’s patents on 

improvements to electronic animal collars, U.S. Patent 

Nos. 6,830,014 and 7,267,082. The ’082 patent is a continuation-in-part of the ’014 patent. Although the ’082 

patent contains some new matter, there is no dispute that 

the asserted claims from the ’082 patent are supported by 

the ’014 patent specification. Both patents generally 

disclose and claim a collar (pictured below) having a 

contoured collar housing (12), front surface (14), back 

surface (15), outside surface (16), and inside surface (18). 

The patents additionally disclose that the inventive collar 

includes one or more “high point surfaces” (C, D and E) 

that extend the inside surface of the collar above the base 

of electrodes 24 toward the animal “to relieve and distribute the load caused by collar tension around the animal’s 

RADIO SYSTEMS CORP v. LALOR 4

and ’082 patents and demanding that Radio Systems take 

a license or stop manufacturing the collars and destroy all 

sales inventory. In May 2010, Radio Systems filed this 

action seeking declarations of noninfringement and 

invalidity and Bumper Boy counterclaimed for infringement. Bumper Boy accused several products based on 

four basic collar designs (UltraSmart, GS-011, FieldPro, 

and SD-1825) of infringing ’014 patent claims 1, 4, 5, 7, 

16, 17, and 18 and ’082 patent claims 1, 3, 4, 6, 15, and 17. 

Claim 1 of the ’014 patent is representative of the claims 

at issue:

An animal collar designed for attachment to an 

animal comprising:

a collar housing having an inside surface directed toward the animal during use; and

at least one electrode intersecting said inside 

surface at an electrode base and extending toward the animal during use;

said inside surface having at least one high 

point surface extending above said electrode 

base and toward the animal during use. 

’014 patent claim 1 (emphases added). The district court

construed “inside surface” as “the portion of the collar 

housing facing inwards towards the animal” and “electrode base” as “the portion of the electrode where it intersects the inside surface of the collar housing.” See

Summary Judgment Order, 2012 WL 254026, at *5. 

Following claim construction, Radio Systems moved for 

summary judgment of noninfringement and invalidity. 

The district court denied summary judgment of invalidity 

but granted summary judgment of noninfringement. It 

concluded that the accused GS-011, FieldPro, and SD1825 collars did not infringe any of the asserted claims as 

construed and that equitable estoppel barred Bumper Boy 
5 RADIO SYSTEMS CORP v. LALOR

from accusing the UltraSmart collar of infringing either 

patent. 

Bumper Boy appeals, arguing that the court’s equitable estoppel analysis is erroneous and that its constructions of “electrode base” and “inside surface” and 

application of those constructions to the accused products 

are erroneous. We have jurisdiction under 28 U.S.C. § 

1295(a)(1).

DISCUSSION

A. 

Claim construction is a matter of law, which we review de novo. ICU Med., Inc. v. Alaris Med. Sys. Inc., 558 

F.3d 1368, 1374 (Fed. Cir. 2009). We review summary 

judgment decisions under regional circuit law. Lexion 

Med., LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1358 

(Fed. Cir. 2011). In the Ninth Circuit, summary judgment decisions are reviewed de novo. Greater Yellowstone 

Coalition v. Lewis, 628 F.3d 1143, 1148 (9th Cir. 2010). 

Summary judgment is appropriate if “the movant shows 

that there is no genuine dispute as to any material fact 

and the movant is entitled to judgment as a matter of 

law.” Fed. R. Civ. P. 56(a). 

At issue in this case are the constructions of two claim 

terms: “electrode base” and “inside surface.” Claim 1 

recites a collar having “at least one electrode intersecting 

said inside surface at an electrode base and extending 

toward the animal during use” and “said inside surface

having at least one high point surface extending above 

said electrode base and toward the animal during use.” 

’014 patent claim 1 (emphasis added). In the figures 

below, the patents illustrate electrode 24 that intersects

inside surface 18 at electrode base 26. The figures illustrate a high point surface C—a raised portion of inside 


RADIO SYSTEMS CORP v. LALOR 8

We agree with Radio Systems that the district court 

correctly construed “electrode base” and “inside surface.” 

The claim language recites an “inside surface directed 

toward the animal during use” and an “electrode intersecting said inside surface at an electrode base and extending toward the animal during use.” ’014 patent claim 

1. The ’014 patent specification explains that the inventive collar includes “a collar housing having an inside 

surface directed toward the animal during use” and 

“electrodes or sensors that extend from or through an 

inside surface of the collar housing into the skin of the 

animal during use.” ’014 patent col. 2 ll. 30-31. The ’014 

patent further discloses that a collar’s electrodes may 

extend from a raised inside surface. ’014 patent col. 4 ll. 

3-29, figs. 1 & 2. The district court’s constructions of 

“electrode base” and “inside surface” are thus fully supported by both the claim language and the specification. 

We also agree with Radio Systems that the district 

court correctly applied its constructions to the accused 

GS-011, FieldPro, and SD-1825 collars. In these products, 

the electrode tips have threaded posts that screw into 

receptacles that form part of the inside surface of the 

collar housing. The district court correctly concluded that 

the electrode bases in these products are at the points X

(depicted above), where the electrodes intersect with the 

inside surface of the collar housing. As a result, these 

three products do not have a high point surface extending 

the inside surface of the collar housing past the line 

created by the electrode bases (points X) and thus do not 

infringe. We agree with the district court that no genuine 

issue of material fact exists regarding the location of the 

electrode bases in the accused GS-011, FieldPro, and SD1825 products and that these products do not have the 

required high point surface. Accordingly, we affirm the 

district court’s judgment of noninfringement for these 

three products. 
9 RADIO SYSTEMS CORP v. LALOR

B. 

Although we review summary judgment decisions de 

novo, the applicability of equitable estoppel is “committed 

to the sound discretion of the trial judge.” A.C. Aukerman 

Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1028 (Fed. 

Cir. 1992) (en banc). A district court’s decision to apply 

the equitable estoppel doctrine is “reviewed by this court 

under the abuse of discretion standard.” Id. Three elements are required for equitable estoppel to bar a patentee’s suit: (1) the patentee, through misleading conduct (or 

silence), leads the alleged infringer to reasonably infer 

that the patentee does not intend to enforce its patent 

against the alleged infringer; (2) the alleged infringer 

relies on that conduct; and (3) the alleged infringer will be 

materially prejudiced if the patentee is allowed to proceed 

with its claim. Id. 

For the fourth accused collar design, the UltraSmart 

collar, the district court based its grant of summary 

judgment of noninfringement as to both the ’014 and ’082 

patents on the doctrine of equitable estoppel. Summary 

Judgment Order, 2012 WL 254026, at *7-10. Indeed, 

Radio Systems did not argue noninfringement of the 

UltraSmart collar except under equitable estoppel. The 

district court found that Bumper Boy unquestionably 

misled Innotek through its 2005 demand letter and subsequent silence for over four and a half years. The court 

also found that Innotek relied on this silence by significantly expanding its product line and by being acquired 

by Radio Systems. The court found that Innotek’s investment in new products constituted economic prejudice. 

The court concluded that equitable estoppel applied to 

Bumper Boy’s allegations against Innotek. The court 

further reasoned that equitable estoppel also barred 

Bumper Boy’s allegations against Radio Systems because 
RADIO SYSTEMS CORP v. LALOR 10

it (1) wholly owns Innotek, (2) is headed by the same 

individual as Innotek, (3) purchased Innotek to incorporate its designs and products into its own product lines, 

and (4) exerts substantial control over Innotek. 

In granting summary judgment of noninfringement, 

the district court found that Bumper Boy was equitably 

estopped from alleging that the Radio Systems UltraSmart collar infringed the ’014 and ’082 patents. 

Summary Judgment Order, 2012 WL 254026, at *6; Radio 

Systems Corp. v. Lalor, No. C10-828RSL, 2012 WL 

555092, at *2-3 (W.D. Wash. Feb. 21, 2012) (denying 

Radio Systems’ motion for reconsideration). 

Bumper Boy argues that equitable estoppel does not 

bar its claims against Radio Systems because Radio 

Systems neither knew about Bumper Boy’s demand letter 

to Innotek nor relied on Bumper Boy’s silence after 

Innotek responded. Bumper Boy argues that the district 

court’s extension of equitable estoppel to Radio Systems 

was erroneously based on assignor estoppel cases. Bumper Boy argues that assignor estoppel is fundamentally 

different from equitable estoppel because equitable estoppel requires proof of detrimental reliance while assignor 

estoppel does not. Bumper Boy argues that equitable 

estoppel can apply, if at all, only to Innotek because Radio 

Systems is a different legal entity and must independently show detrimental reliance. Alternatively, Bumper Boy

argues that even if equitable estoppel does apply to the 

’014 patent, it cannot apply to the ’082 patent because 

Bumper Boy “never accused either Innotek or Radio 

Systems of infringing the ’082 patent prior to November 

2009.” 

Radio Systems argues that the district court correctly 

concluded that Radio Systems stands in the shoes of 

Innotek as its successor-in-interest and is thus entitled to 

the benefit of equitable estoppel. Radio Systems argues 
11 RADIO SYSTEMS CORP v. LALOR

that the district court did not abuse its discretion in 

applying equitable estoppel to the ’082 patent because the 

district court properly treated the two related patents as 

one for purposes of equitable estoppel. 

As to the ’014 patent, we hold that the district court 

did not abuse its discretion in concluding that equitable 

estoppel barred Bumper Boy’s infringement claims on the 

UltraSmart collar against Innotek. With respect to 

Innotek, all three elements of equitable estoppel are 

present and Bumper Boy does not contest the district 

court’s factual findings. We also hold that the district 

court did not abuse its discretion in concluding that 

equitable estoppel barred Bumper Boy’s infringement 

claims against Radio Systems, Innotek’s successor-ininterest. Our precedent confirms that equitable estoppel 

applies to successors-in-interest where privity has been 

established. See Jamesbury Corp. v. Litton Indus. Prods., 

Inc., 839 F.2d 1544, 1555 (Fed. Cir. 1988), overruled on 

other grounds by Aukerman, 960 F.2d at 1042 (“The 

district court properly held Litton liable for the knowledge 

of [predecessor-in-interest] Contromatics. . . . Litton is 

entitled to rely on the lack of communication to Contromatics, as well as to itself, following the letter.”). The 

district court’s privity findings are not challenged on 

appeal. Accordingly, we hold that the district court did 

not abuse its discretion in concluding that equitable 

estoppel applied to Bumper Boy’s ’014 patent infringement allegations on the UltraSmart collar against both 

Innotek and its successor-in-interest, Radio Systems. 

We conclude, however, that the district court abused 

its discretion in extending equitable estoppel to the ’082 

patent. The first notice of infringement to Radio Systems 

regarding the ’082 patent was in Bumper Boy’s November 

2009 demand letter. Regardless of whether the ’082 

patent claims are supported by the subject matter in the 
RADIO SYSTEMS CORP v. LALOR 12

’014 patent—and therefore entitled to claim priority to its 

filing date—the patents contain claims of different scope. 

Quite simply, the ’082 patent claims could not have been 

asserted against Innotek or Radio Systems until those 

claims issued. See 35 U.S.C. § 281 (“A patentee shall 

have remedy by civil action for infringement of his patent.”); GAF Building Materials Corp. v. Elk Corp. of 

Dallas, 90 F.3d 479, 482 (Fed. Cir. 1996) (holding that no 

case or controversy exists unless patent has issued prior 

to filing suit). As a result, the elements of equitable 

estoppel are not present with respect to the ’082 patent. 

There is simply no misleading conduct or silence by 

Bumper Boy to indicate that it did not intend to enforce 

the ’082 patent against Radio Systems. Not surprisingly, 

there is also no evidence that Radio Systems actually 

relied on such misleading conduct or silence. As to the 

’082 patent, we conclude that the district court abused its 

discretion by granting summary judgment of noninfringement for the UltraSmart collar on the basis of 

equitable estoppel. We therefore reverse the district 

court’s judgment in this respect and remand for proceedings consistent with this opinion. 

C. 

Radio Systems argued in its responsive appellate brief 

that invalidity is an alternative ground for affirming the 

district court’s judgment. Appellees’ Resp. Br. 29-36. 

Bumper Boy, in its reply brief, moved to strike this argument because such an affirmance would enlarge the scope 

of the district court’s judgment. Appellants’ Reply Br. 19-

21. Bumper Boy contends that Radio Systems was required by legal precedent and the rules of this court to 

raise invalidity in a cross appeal. 

We agree with Bumper Boy. The Supreme Court has 

long recognized that “[a]bsent a cross appeal, an appellee . 

. . may not attack the decree with a view either to enlarg-
13 RADIO SYSTEMS CORP v. LALOR

ing his own rights thereunder or of lessening the rights of 

his adversary.” El Paso Nat. Gas Co. v. Neztsosie, 526 

U.S. 473, 479 (1999) (internal quotation marks and citation omitted). We have held that a judgment of invalidity 

is broader than a judgment of noninfringement. “[A]

determination of infringement applies only to a specific 

accused product or process, whereas invalidity operates as 

a complete defense to infringement for any product, 

forever.” Typeright Keyboard Corp. v. Microsoft Corp., 

374 F.3d 1151, 1157 (Fed. Cir. 2004) (internal quotation 

marks and citation omitted). Thus, invalidity cannot be 

an alternative ground for affirming a judgment of noninfringment absent a cross-appeal. See id. at 1157 n.4 (“In 

that situation [where the appellee urges invalidity as a 

ground on which to support a judgment of noninfringement] a cross appeal is necessary since a judgment of 

invalidity is broader than a judgment of noninfringement.” (citation omitted)). 

While we acknowledge the inefficiency that may result from requiring cross-appeals in situations where the 

scope of a judgment would be enlarged, we are cabined by 

our jurisdiction and may not reach issues that are not 

properly before us. On remand, Radio Systems may 

pursue its invalidity defense in further proceedings, and, 

should there be additional rulings on invalidity by the 

district court, Radio Systems may pursue a proper appeal 

at that time. Because Radio Systems did not properly file 

a cross-appeal on the invalidity issue in this appeal, 

Bumper Boy’s motion to strike Radio System’ alternative 

grounds for affirmance is granted. 

CONCLUSION

We affirm the district court in all but one respect. 

The district court correctly granted summary judgment of 

noninfringement on the GS-011, FieldPro, and SD-1825 
RADIO SYSTEMS CORP v. LALOR 14

collar designs based on its claim constructions. Accordingly, we affirm the judgment in this respect. We conclude that the district court did not abuse its discretion in 

granting summary judgment that the UltraSmart collar 

does not infringe the ’014 patent based on equitable 

estoppel. We also hold, however, that the district court 

abused its discretion in relying on equitable estoppel for 

the ’082 patent. Accordingly, for the ’014 patent, we 

affirm the district court’s judgment of noninfringement. 

For the ’082 patent, we reverse the judgment of noninfringement and remand for proceedings consistent with 

this opinion. We have considered the remaining arguments on appeal and conclude that they lack merit. 

AFFIRMED-IN-PART, REVERSED-IN-PART, AND 

REMANDED.

COSTS

No Costs.
United States Court of Appeals 

for the Federal Circuit ______________________ 

RADIO SYSTEMS CORPORATION

AND INNOTEK, INC.,

Plaintiffs-Appellees, 

v.

TOM LALOR AND 

BUMPER BOY, INC., 

Defendants-Appellants. 

______________________ 

2012-1233

______________________ 

Appealed from the United States District Court for 

the Western District of Washington in No. 10-CV-0828, 

Judge Robert S. Lasnik.

______________________ 

NEWMAN, Circuit Judge, concurring in part, dissenting in 

part.

I agree with the ruling that the district court correctly 

construed the claim terms “electrode base” and “inside 

surface,” and I agree with the resultant affirmance of the 

district court’s judgment of non-infringement of the ’014 

patent as to Radio Systems’ accused GS-011, FieldPro, 

and SD-1825 models. As to the UltraSmart collar, the 

only issue decided by the panel majority is whether equitable estoppel applies; the district court did not decide 

infringement as to this model. I agree that equitable 

estoppel arose on the five years of silence after Bumper 
2 RADIO SYSTEMS CORP v. LALOR

Boy’s accusation of infringement of the ’014 patent in 

February 2005. However, I would also apply estoppel to 

the ’082 patent. And, unlike the panel majority, I would 

reach the issue of validity, which was decided by the 

district court and asserted by Radio Systems as an alternative ground for affirming the judgment in its favor.

I 

I would affirm the district court’s ruling that estoppel 

applies not only to the ’014 patent but also to the continuation-in-part ’082 patent. The subject matter of the ’082 

claims in suit is disclosed and described in the ’014 patent, and these claims do not draw on any new matter. 

The new matter added in the ’082 patent relates to a 

stretchable insert in the collar, a feature absent from all 

of the ’082 claims in suit. The force of equitable estoppel 

cannot be escaped by including previously disclosed but 

unclaimed subject matter in a continuation-in-part patent.

The district court did not abuse its discretion in finding that equitable estoppel applies to the ’082 as well as 

the ’014 patent. From my colleagues’ contrary ruling, I 

respectfully dissent.

II

The panel majority does not reach the district court’s 

holding that the two patents in suit are valid, holding 

that validity was not appealed. Radio Systems argues 

invalidity as an alternative ground of affirmance of the 

district court’s judgment of no liability. The panel majority rules that invalidity cannot be reviewed on this appeal, 

although it was decided by the district court. Radio 

Systems fully briefed invalidity on appeal. Bumper Boy 

had an opportunity to respond, but chose not to discuss 

validity. 

Radio Systems prevailed in the district court; the 

court entered judgment “in favor of plaintiffs [Radio 
 RADIO SYSTEMS CORP v. LALOR 3

Systems] and against defendants [Bumper Boy].” Radio 

Sys. Corp. v. Lalor, No. 10-cv-0828 (W.D. Wash. Jan. 26, 

2012), ECF No. 111 (“Judgment”). Thus Radio Systems 

was not required to file a cross-appeal, for as prevailing 

party it had no right of appeal. See Datascope Corp. v. 

SMEC, Inc., 879 F.2d 820, 822 n.1 (Fed. Cir. 1989) (filing

of “‘cross-appeal’ for the ‘sole purpose of preserving [the]

right to offer arguments in support of the judgment’ is 

improper.”).

My colleagues hold that because no cross-appeal was 

filed, invalidity cannot be raised by Radio Systems in 

defense of the judgment in its favor. That is incorrect. 

The prevailing party need not file a cross-appeal in order 

to defend a judgment in its favor on any ground that is 

supported by the record. Jaffke v. Dunham, 352 U.S. 280, 

281 (1957) (“A successful party in the District Court may 

sustain its judgment on any ground that finds support in 

the record.”); Glaxo Group Ltd. v. TorPharm, Inc., 153 

F.3d 1366, 1371 (Fed. Cir. 1998) (“[A]n appellate court 

may affirm a judgment of a district court on any ground 

the law and the record will support so long as that ground 

would not expand the relief granted.”); Datascope, 879 

F.2d at 822 n.1 (“Appellees always have the right to 

assert alternative grounds for affirming the judgment 

that are supported by the record.”); Bio-Rad Labs., Inc. v. 

Nicolet Instrument Corp., 807 F.2d 964, 969 (Fed. Cir. 

1986) (“[A] court of appeals may affirm the judgment of a 

district court on any ground, including grounds not relied 

upon by the district court.”). Since validity was not 

considered on the appeal to this court, it may be considered in the remand proceeding.