       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

               COBALT BOATS, LLC,
                 Plaintiff-Appellee

                           v.

           BRUNSWICK CORPORATION,
               Defendant-Appellant
              ______________________

                      2018-1376
                ______________________

   Appeal from the United States District Court for the
Eastern District of Virginia in No. 2:15-cv-00021-HCM-
LRL, Senior Judge Henry C. Morgan, Jr.
                 ______________________

                 Decided: May 31, 2019
                ______________________

   BRADLEY SCOTT EIDSON, Stinson LLP, St. Louis, MO,
argued for plaintiff-appellee. Also represented by SAMIR
RAMESH MEHTA; ROBERT A. ANGLE, Troutman Sanders
LLP, Richmond, VA.

   JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington,
DC, argued for defendant-appellant. Also represented by
NATHAN S. MAMMEN; MICHAEL J. ABERNATHY, JASON C.
WHITE, Morgan, Lewis & Bockius LLP, Chicago, IL.
                ______________________
2              COBALT BOATS, LLC v. BRUNSWICK CORPORATION




    Before DYK, REYNA, and WALLACH, Circuit Judges.
DYK, Circuit Judge.
    Cobalt Boats, LLC owns U.S. Patent No. 8,375,880 (the
’880 patent), which relates to a swim step—a small plat-
form attached to the stern of a boat that makes it easier to
get in and out of the water. Brunswick Corporation sells
boats with an optional swim step. Cobalt sued Brunswick
alleging infringement of the ’880 patent. After trial, the
jury found that Brunswick literally infringed claim 4 and
that it infringed claims 4 and 5 under the doctrine of equiv-
alents. The district court entered judgment in accordance
with the verdict.
    We reverse. Under the correct claim construction, the
undisputed evidence shows no literal infringement of claim
4, and Cobalt cannot establish infringement of claims 4 and
5 under the doctrine of equivalents because of prosecution
history estoppel.
                       BACKGROUND
    The claims of the ’880 patent are directed to a swim
step. The only claims at issue are claim 4, which depends
from claim 1, and claim 5. 1
    Claim 1 recites:
    A retractable step for use with a boat in water com-
    prising:
        a base having a recess;



    1   In Brunswick Corp. v. Cobalt Boats, LLC, 696 F.
App’x 1021 (Fed. Cir. 2017), an appeal from an inter partes
review (“IPR”) proceeding, we affirmed without opinion the
Patent Trial and Appeal Board’s decision that claim 1 was
shown to be unpatentable, but claims 4 and 5 were not.
COBALT BOATS, LLC v. BRUNSWICK CORPORATION                3



        a pair of stationary arms, each of said arms
          coupled with said base;
        a pair of moveable arms, each of said move-
          able arms coupled with one of said sta-
          tionary arms;
        a step having a top side and an underside,
          said step coupled with said moveable
          arms and capable of being rotated 180°
          between a stored position within said re-
          cess, wherein said underside is exposed,
          and a deployed position below the water
          surface, wherein said top side is exposed;
          and
        a spring biased locking mechanism config-
          ured to hold at least one of said moveable
          arms in a stationary position when said
          platform is in said deployed position and
          releasable to accommodate movement of
          said platform to said stored position.
’880 patent, col. 4, ll. 15–32 (emphasis added).
    Claim 4 recites “[t]he retractable step of claim 1,
wherein said step comprises a material characterized in
that it is less dense than water.” Id. col. 4, ll. 36–38.
    Claim 5 recites:
    A deployable swim step for use with a boat in water
    comprising:
        a step having a top side and an underside;
        means for coupling said step with the boat,
         said coupling means configured to permit
         rotation of said step 180° from a stored
         position above the water surface, wherein
         said underside is exposed, and a deployed
4              COBALT BOATS, LLC v. BRUNSWICK CORPORATION




         position below the water surface, wherein
         said top side is exposed; and
        means for locking said coupling means in a
         stationary position when said step is in
         said deployed position, said locking
         means further configured to accommo-
         date movement of said step to said stored
         position.
Id. col. 4, ll. 39–51 (emphasis added).
    On January 23, 2015, Cobalt filed suit against Bruns-
wick in the Eastern District of Virginia for patent infringe-
ment based on Brunswick’s sales of its swim step. After
trial, the jury found that claim 4 was literally infringed,
that both claims 4 and 5 were infringed under the doctrine
of equivalents, and that Brunswick’s infringement was
willful. The jury awarded a per-unit royalty of $2,500, re-
sulting in a damages award of $2,690,000.
    Post-trial, the district court enhanced the damages
award by a factor of 1.5 and awarded damages for post-ver-
dict sales, resulting in a total damages award of
$5,396,250. The court also granted Cobalt’s motion for a
permanent injunction. The court further found that the
case is exceptional and awarded attorneys’ fees to Cobalt.
The court denied Brunswick’s post-trial motions for judg-
ment as a matter of law on liability, damages, and willful-
ness.
    Brunswick timely appealed. We have jurisdiction un-
der 28 U.S.C. § 1295(a)(1) (2012).
                        DISCUSSION
                              I
     We first address Brunswick’s contention that the dis-
trict court erred by not resolving the parties’ dispute re-
garding the scope of the “180 degrees” limitation, and that
COBALT BOATS, LLC v. BRUNSWICK CORPORATION                  5



under the proper construction Brunswick’s products do not
infringe as a matter of law.
                              A
     The central limitations at issue in this appeal are the
“capable of being rotated 180°” limitation of claim 4 and the
“configured to permit rotation of said step 180°” limitation
of claim 5. The parties agree that these limitations have
the same meaning. We therefore treat these as a single
limitation and refer to it as the “180 degrees” limitation.
    “When the parties present a fundamental dispute re-
garding the scope of a claim term, it is the court’s duty to
resolve it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech.
Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). “A determination
that a claim term ‘needs no construction’ or has the ‘plain
and ordinary meaning’ may be inadequate when a term has
more than one ‘ordinary’ meaning or when reliance on a
term’s ‘ordinary’ meaning does not resolve the parties’ dis-
pute.” Id. at 1361. It is not appropriate to leave to the jury
the task of resolving claim construction disputes.
    The parties disputed the construction of the “180 de-
grees” limitation at Markman. Brunswick proposed that
the “180 degrees” limitation be construed to mean “capable
of being rotated at least 180 degrees,” such that a swim
step that can rotate 170 degrees at most would not meet
the limitation, but one that can rotate 240 degrees would.
Cobalt disagreed and proposed the term be given its “plain
and ordinary meaning” or be construed to mean “flipped or
turned over,” and that a step that cannot rotate a full 180
degrees could meet the limitation. The district court
adopted Cobalt’s primary position, holding that the “180
degrees” limitation should be given its “plain and ordinary
meaning” and rejecting Brunswick’s proposed construc-
tion.
    After Markman, the parties continued to dispute the
“plain and ordinary meaning” of the term. Both sides filed
6              COBALT BOATS, LLC v. BRUNSWICK CORPORATION




motions in limine to exclude the opposing expert’s testi-
mony as contrary to the plain and ordinary meaning. Co-
balt moved to exclude Brunswick’s expert’s testimony “that
any rotation over or more than 180°” would meet the limi-
tation. J.A. 593. Conversely, Brunswick moved to exclude
Cobalt’s expert’s testimony that the term could “encompass
a rotation of less than 180° or that the term should be used
‘colloquially’ to mean flipping over.” J.A. 603. Instead of
resolving this dispute as to scope, as it was required to do
under O2 Micro, the district court erroneously determined
that whether the term “has to be interpreted strictly to be
limited to exactly 180 degrees” was an issue that would
“have to be resolved by the finder of fact.” J.A. 676.
     Cobalt concedes that under our cases, Brunswick, hav-
ing raised the claim construction issue at Markman, was
not required to re-raise that claim construction argument
at the charge conference to preserve it for appeal. See O2
Micro, 521 F.3d at 1359 (“When the claim construction is
resolved pre-trial, and the patentee presented the same po-
sition in the Markman proceeding as is now pressed, a fur-
ther objection to the district court’s pre-trial ruling may
indeed have been not only futile but unnecessary.” (citation
omitted)).    However, Cobalt nonetheless argues that
Brunswick waived any challenge to the construction of the
“180 degrees” limitation at the charge conference.
    There was no waiver. Cobalt contends that Brunswick
invited any claim construction error when Brunswick’s
counsel stated at the charge conference that “I think we can
resolve this dispute by saying, ‘No further construction is
needed, plain and ordinary meaning to a person of skill in
the art.’” J.A. 3202–03. In context, it is clear that the “dis-
pute” in question was not the original claim construction
dispute presented at Markman, but rather a dispute about
what additional instruction the court should give the jury
regarding how to apply the “plain and ordinary meaning”
construction. All Brunswick proposed was that the district
court explain to the jury that “when an instruction uses
COBALT BOATS, LLC v. BRUNSWICK CORPORATION                  7



plain and ordinary meaning, that is plain and ordinary
meaning to one of skill in the art.” J.A. 3202. Seeking a
limited modification to the district court’s adopted con-
struction, when the court has already rejected the litigant’s
proposed construction, does not constitute waiver. See In
re Papst Licensing Dig. Camera Patent Litig., 778 F.3d
1255, 1265–66 (Fed. Cir. 2015) (rejecting an argument sim-
ilar to Cobalt’s as “wholly without merit”). Brunswick did
not surrender its earlier claim construction argument. At
the charge conference, Cobalt recognized that “with the tes-
timony that’s being considered by the jury, there seems to
be a dispute now that is more a legal dispute as to the
scope” of the limitation. J.A. 3200. Significantly, in its
post-trial decision, even the district court rejected Cobalt’s
contention that Brunswick waived its claim construction
argument.
                              B
    We next turn to the merits of the claim construction.
We review the ultimate claim construction and interpreta-
tions of intrinsic evidence de novo. Teva Pharms. USA, Inc.
v. Sandoz, Inc., 135 S. Ct. 831, 840–41 (2015). We review
any underlying factual findings for clear error. Id. Here,
the district court concluded in its post-trial decision that
even if it erred in not further construing the “180 degrees”
limitation under O2 Micro, any error was harmless because
it would have ruled in favor of Cobalt’s preferred definition.
    We agree with Brunswick that the “180 degrees” limi-
tation requires that the step be capable of rotating at least
180 degrees, not merely “flipping over” as Cobalt contends.
At oral argument, Cobalt confirmed that it is essentially
requesting a construction of the term “180 degrees” to
mean “about 180 degrees.” See Oral Arg. at 33:49–34:15.
But the claim says “180 degrees,” not “about 180 degrees.”
Where a precise value is included in the claim without a
term such as “about,” we interpret the claim language as
imposing a strict numerical boundary, absent evidence
8              COBALT BOATS, LLC v. BRUNSWICK CORPORATION




that such a construction would be inconsistent with the in-
trinsic evidence. For example, in Jeneric/Pentron, Inc. v.
Dillon Co., 205 F.3d 1377, 1381 (Fed. Cir. 2000), we con-
strued a claim that “recite[d] precise ranges for the weight
of dental compositions” as limited to exactly those ranges.
We concluded that “[w]ithout broadening words that ordi-
nary receive some leeway,” such as “about,” “the precise
weight ranges of claim 1 do not ‘avoid a strict numerical
boundary to the specified parameter.’” Id. (quoting Pall
Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed.
Cir. 1995)). Similarly, in Elekta Instrument S.A. v. O.U.R.
Scientific International, Inc., 214 F.3d 1302 (Fed. Cir.
2000), we held that a claim term reciting radiation sources
and beam channels “only within a zone extending between
latitudes 30°–45°” “only encompasses 30°–45°,” not any-
thing less than 30 degrees. Id. at 1307–08.
    So too here. The claim does not use “about,” which sug-
gests that 180 degrees serves as a precise numerical bound-
ary for the minimum rotation of the step. Nor does the
intrinsic evidence suggest a different construction: as dis-
cussed further below in Section III, the “180 degrees” limi-
tation was added during prosecution to distinguish prior
art swim steps that were only capable of rotating less than
180 degrees. We therefore construe the “180 degrees” lim-
itation to require that the swim step be capable of rotating
at least 180 degrees. That means that a step that can ro-
tate at most 179 degrees would not meet the limitation,
while a step that can rotate 181 degrees would.
    Cobalt argues that it amended the claims during pros-
ecution to add the “180 degrees” limitation simply to re-
quire flipping of the swim step (which could include
rotation by less than 180 degrees), not to require capability
of rotating 180 degrees or more. But other added claim
terms already require flipping. For example, if the 180 de-
grees number were removed from claim 5, the claim would
require “coupling means configured to permit rotation of
said step [] from a stored position above the water surface,
COBALT BOATS, LLC v. BRUNSWICK CORPORATION                  9



wherein said underside is exposed, and a deployed position
below the water surface, wherein said top side is exposed.”
’880 patent, col. 4, ll. 42–47 (emphases added). Rotation
that results in the opposite side of the step being exposed
is flipping. As discussed below in Section III, Cobalt added
these “underside” and “top side” terms at the same time as
the 180 degrees number. That the “underside” and “top
side” terms already require flipping confirms that the “180
degrees” limitation does not merely require flipping, but
rather imposes a precise numerical boundary for the mini-
mum number of degrees that the step must be able to ro-
tate. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1237
(Fed. Cir. 2016) (“Construing a claim term to include fea-
tures . . . already recited in the claims would make those
expressly recited features redundant.”).
    At trial, Cobalt’s expert testified that the “180 degrees”
limitation should not be interpreted as a precise numerical
boundary because manufacturing variances would make it
impossible to achieve such precision. However, the con-
struction we adopt does not require the swim step to rotate
exactly 180 degrees, it requires the swim step to be capable
of rotating at least 180 degrees, which allows for variance
above 180 degrees. There is no suggestion here that it
would be impossible to manufacture a swim step that is ca-
pable of rotating at least 180 degrees.
     We note that the construction we adopt is consistent
with the decision by the Patent Trial and Appeal Board in
the IPR proceeding regarding this patent, which explained
that to meet the “180 degrees” limitation, “a step must be
able to be rotated at least 180 degrees from the stored po-
sition.” Brunswick Corp. v. Cobalt Boats, LLC, No.
IPR2015-01060, Paper 78, at 19 (P.T.A.B. Sept. 28, 2016).
                              II
    We next turn to the issue of literal infringement under
the correct claim construction. The jury found literal in-
fringement of claim 4. We review the jury’s determination
10             COBALT BOATS, LLC v. BRUNSWICK CORPORATION




of infringement for substantial evidence. Omega Patents,
LLC v. CalAmp Corp., 920 F.3d 1337, 1344 (Fed. Cir. 2019).
    Under our construction of the “180 degrees” limitation,
Brunswick’s swim step literally infringes only if it is capa-
ble of rotating at least 180 degrees. It is undisputed that
Brunswick’s accused swim step is not capable of rotating
180 degrees. Uncontroverted testimony at trial established
that the maximum rotation of Brunswick’s swim step is be-
tween 172 and 179 degrees and that the hinges on the swim
step have a “very rigid stop” that prevents any rotation be-
yond that, J.A. 2887. Cobalt’s own expert testified that he
measured the amount of rotation of the accused swim step
and determined that it was “within a couple tenths of a de-
gree of 177.” JA 2441. The district court recognized in its
post-trial opinion that “[t]here was no evidence at trial that
any Brunswick step rotates a literal 180 degrees or far-
ther.” J.A. 10.
   We therefore conclude there was no evidence from
which the jury could find literal infringement of claim 4.
                             III
    Cobalt maintains that even under the construction of
the “180 degrees” limitation that we have adopted, there
was substantial evidence to support the jury’s finding of in-
fringement of claims 4 and 5 under the doctrine of equiva-
lents. “The doctrine of equivalents allows the patentee to
claim those insubstantial alterations that were not cap-
tured in drafting the original patent claim but which could
be created through trivial changes.” Festo Corp. v. Sho-
ketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733
(2002). However, the doctrine of equivalents is limited by
prosecution history estoppel, which “precludes a patentee
from regaining, through litigation, coverage of subject mat-
ter relinquished during prosecution of the application for
the patent.” Id. at 734 (brackets omitted) (quoting Wang
Laboratories, Inc. v. Mitsubishi Elecs. Am., Inc., 103 F.3d
1571, 1577 (Fed. Cir. 1997)). We review issues relating to
COBALT BOATS, LLC v. BRUNSWICK CORPORATION               11



the application of prosecution history estoppel de novo. O2
Micro, 521 F.3d at 1363.
     The patent examiner initially rejected several of Co-
balt’s claims, including claims 1 and 5, as anticipated by
U.S. Patent No. 6,904,863 (“Mardikian”). Mardikian
teaches a swim step that resembles a collapsible ladder,
constructed out of telescoping tubes that allow the ladder
to extend and retract. During storage, the swim step is col-
lapsed and stored in a horizontal position. When deployed,
the ladder is extended and rotated about 90 degrees so that
it extends vertically into the water. To overcome the rejec-
tion, Cobalt amended the claims to add the following lan-
guage:
   1. A retractable step for use with a boat in water
   comprising: . . .
       a step having a top side and an underside,
         said step coupled with said moveable
         arms and moveable capable of being ro-
         tated 180° between a stored position
         within said recess, wherein said under-
         side is exposed, and a deployed position
         below the water surface, wherein said top
         side is exposed; . . .
   5. A deployable swim step for use with a boat in
   water comprising: . . .
       means for coupling said step with the boat,
        said coupling means configured to permit
        movement rotation of said step between
        180° from a stored position above the wa-
        ter surface, wherein said underside is ex-
        posed, and a deployed position below the
        water surface, wherein said top side is ex-
        posed; . . .
J.A. 984.
12             COBALT BOATS, LLC v. BRUNSWICK CORPORATION




    Cobalt does not dispute that because it added the “180
degrees” limitation to avoid prior art during prosecution,
prosecution history estoppel applies to some extent. See
Festo, 535 U.S. at 735 (prosecution history estoppel “ap-
plies to amendments made for a ‘substantial reason related
to patentability,’” including “to avoid the prior art” (quoting
Warner-Jenkinson Co. v. Hilton Davis Chem. Co, 520 U.S.
17, 33 (1997))). However, Cobalt argues that because it
added the limitation to distinguish Mardikian’s step, which
“rotated from horizontal to vertical (e.g., 90°),” “Bruns-
wick’s swim step was not within the scope of surrender.”
Cobalt Response Br. at 49–50. Cobalt essentially argues
that it only surrendered what was needed to distinguish
the prior art.
    We disagree. We have repeatedly held that the scope
of disclaimer is measured by the difference between the
original and the amended claims, not the difference be-
tween the amended claims and the prior art that was
avoided through the amendment. See Festo, 535 U.S. at
740 (scope of the disclaimer is the “territory between the
original claim and the amended claim); Lucent Techs., Inc.
v. Gateway, Inc., 525 F.3d 1200, 1218 (Fed. Cir. 2008) (“It
is not relevant to the determination of the scope of the sur-
render that the applicant did not need to amend the
claims . . . [as they were amended] in order to overcome the
prior art.”). “[I]t frequently happens that patentees sur-
render more through amendment than may have been ab-
solutely necessary to avoid particular prior art. In such
cases, we have held the patentees to the scope of what they
ultimately claim, and we have not allowed them to assert
that claims should be interpreted as if they had surren-
dered only what they had to.” Regents of Univ. of Cal. v.
Dakocytomation Cal., Inc., 517 F.3d 1364, 1381 (Fed. Cir.
2008) (quoting Norian Corp. v. Stryker Corp., 432 F.3d
1356. 1361–62 (Fed. Cir. 2005)). In particular, when claims
are amended to include a specific numeric boundary, we
have held that the patentee cannot later recapture what is
COBALT BOATS, LLC v. BRUNSWICK CORPORATION               13



beyond that boundary through the doctrine of equivalents.
See Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc., 103
F.3d 1571, 1577–78 (Fed. Cir. 1997) (holding that because
the patentee added a limitation during prosecution requir-
ing eight capacitors, it was barred by prosecution history
estoppel “from resorting to the doctrine of equivalents to
extend the patent’s scope to cover nine capacitors”). These
cases squarely foreclose Cobalt’s argument that it only sur-
rendered what was necessary to overcome the prior art.
    As explained above, the proper construction of the
claims as amended requires that the swim step be capable
of rotating at least 180 degrees. The original claim re-
quired no rotation at all. Cobalt therefore disclaimed the
territory between steps that can rotate at least 180 degrees
and steps that cannot rotate at all—in other words, all
swim steps that are not capable of rotating 180 degrees.
Brunswick’s swim step falls within the scope of this surren-
der, since it can only rotate less than 180 degrees.
    Accordingly, Cobalt was barred by prosecution history
estoppel from asserting that Brunswick’s swim step satis-
fied the “180 degrees” limitation of claims 4 and 5 under
the doctrine of equivalents.
                            IV
     Because we reverse the judgment on the issue of liabil-
ity, we need not address Brunswick’s argument that the
judgment should be vacated because venue was improper
in the Eastern District of Virginia. Here, Brunswick rep-
resented at oral argument that if we reverse the judgment
on liability, we need not address its venue objection. See
Oral Arg. at 4:14–22.
     Nor need we address the issue of damages, although we
note that we have substantial reservations about the dis-
trict court’s damages rulings, which permitted Cobalt to
present a damages calculation to the jury that used the
profit of entire boats as its starting point—even though
14             COBALT BOATS, LLC v. BRUNSWICK CORPORATION




Cobalt concedes “that the swim step is not ‘the basis’ of de-
mand” for Brunswick’s boats, Cobalt Response Br. at 52.
See Power Integrations, Inc. v. Fairchild Semiconductor
Int’l, Inc., 904 F.3d 965, 978–79 (Fed. Cir. 2018) (admission
of evidence of entire market value appropriate only when
the patented feature “forms the basis for consumer de-
mand”); Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1549
(Fed. Cir. 1995) (en banc). For the same reason, we also do
not reach Brunswick’s challenges to the district court’s
award of enhanced damages and attorneys’ fees.
                       CONCLUSION
     Because under the proper construction of the “180 de-
grees” limitation there is no evidence of literal infringe-
ment of claim 4, and because Cobalt was barred by
prosecution history estoppel from asserting infringement
of claims 4 and 5 under the doctrine of equivalents, Bruns-
wick was entitled to judgment as a matter of law of no in-
fringement.
                       REVERSED
