CJ Rader discusses vitiation in Deere v. Bush Hog
The outcome in Deere v. Bush Hog :
The United States District Court for the Southern District of Iowa construed the terms of Deere & Co.’s (“Deere”) U.S. Patent No. 6,052,980 (the “’980 Patent”) and granted Bush Hog, LLC’s (“Bush Hog”) and Great Plains Manufacturing, Inc.’s (“Great Plains”) motions for summary judgment of noninfringement. This court affirms the construction of “rotary cutter deck” and the determination that the terms “substantially planar” and “easily washed off” do not render the asserted claims invalid under 35 U.S.C. § 112. Because the district erroneously construed the term “into engagement with” to require direct contact, this court vacates that construc- tion, reverses the grant of summary judgment, and re- mands for further proceedings.
Of the erroneous construction:
The district court erroneously construed the term “into engagement with” to require direct contact between the upper and lower deck walls. At the outset, the claim language itself counsels against this narrow interpreta- tion of the term. “[T]he words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which [it] ap- pears, but in the context of the entire patent, including the specification.” Id. at 1313. While claim terms are understood in light of the specification, a claim construc- tion must not import limitations from the specification into the claims. Id. at 1323.
On the topic of vitiation:
The district court’s treatment of the doctrine of equivalents reveals a common misperception regarding “vitiation” that warrants some discussion. The concept of vitiation derives from the requirement that the doctrine of equivalents must be applied to the claims “on an element- by-element basis,” so that every claimed element of the invention—or its equivalent—is present in the accused product. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997). (...) “Vitiation” is not an exception to the doctrine of equivalents, but instead a legal determination that “the evidence is such that no reasonable jury could determine two elements to be equivalent.” Id. [520 U.S. at 39] The proper inquiry for the court is to apply the doctrine of equivalents, asking whether an asserted equivalent represents an “insubstan- tial difference” from the claimed element, or “whether the substitute element matches the function, way, and result of the claimed element.” Id. at 40. If no reasonable jury could find equivalence, then the court must grant sum- mary judgment of no infringement under the doctrine of equivalents. Id. at 39 n.8. (...)
In this case, the district court construed “contact” to require “direct contact,” and thus found that allowing “no direct contact” would vitiate the court’s construction. Yet, a reasonable jury could find that a small spacer connect- ing the upper and lower deck walls represents an insub- stantial difference from direct contact. See TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1124 (Fed. Cir. 2001) (construing claim term “contact” to require “touching” but remanding question of whether “indirect contact” could be equiva- lent). Thus, the trial court erred by invoking the vitiation exclusion in this context.
Separately
This court will take the opportunity to streamline this case by addressing the additional claim construction arguments raised in this appeal. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1369 (Fed. Cir. 2012); Advanced Software Design Corp. v. Fiserv, Inc., 641 F.3d 1368, 1378 (Fed. Cir. 2011); Riverwood Int’l Corp. v. R. A. Jones & Co., 324 F.3d 1346, 1357 (Fed. Cir. 2003) (addressing appellee’s challenge to claim construction because judgment of invalidity in appellee’s favor was vacated). The district court’s claim constructions have been fully briefed on appeal and may become important on remand.
***Note. The Planet Bingo case appears as
Thus, for example, courts properly refuse to apply the doctrine of equivalents “where the accused device contain[s] the antithesis of the claimed structure.” Planet Bingo, 472 F.3d at 1345. In such a case, application of the doctrine of equivalents would “vitiate” a claim element. Warner-Jenkinson, 520 U.S. at 39 n.8.
apparently without a prior full citation.
The decision in Planet Bingo v. Gametech, 472 F.3d 1338 (CAFC 2006) , was written by CJ Rader. Within the decision:
Asserting infringement under the doctrine of equivalents, Planet Bingo argues that the Rainbow Bingo game incorporates only an insubstantial variation from the claims because the progressive predetermined winning combination appears right after, rather than right before, the first bingo ball is drawn. Equivalents are questions of fact reviewed under the clearly erroneous standard. Insta-Foam Prods., Inc. v. Universal Foam Sys., Inc., 906 F.2d 698, 702 (Fed.Cir.1990). Planet Bingo bears the burden of showing that the accused method may perform substantially the same step, in substantially the same way, with substantially the same result. Toro Co. v. White Cons. Ind., 266 F.3d 1367, 1370 (Fed.Cir.2001). (...) The Supreme Court emphasizes that the doctrine of equivalents must not expand to eliminate a claim element entirely. Warner-Jenkinson v. Hilton Davis Chem. Co., 520 U.S. 17, 29, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). The doctrine does provide additional coverage for the exclusive right to protect a patent holder in the event of an unforeseeable change. Sage Prods., 126 F.3d at 1425 ("However, as between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure . . . . [T]he alternative rule—allowing broad play for the doctrine of equivalents to encompass foreseeable variations, not just of a claim element, but of a patent claim—also leads to higher costs.") (citation omitted). Here, the patents contain a distinct limitation, which was part of the bargain when the patent issued. This court cannot overlook that limitation or expand the doctrine of equivalents beyond its purpose to allow recapture of subject matter excluded by a deliberate and foreseeable claim drafting decision. See Id. Further, the cases Planet Bingo cites in support of a broad interpretation to the doctrine of equivalents, specifically Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309 (Fed.Cir. 1998), and Wright Medical Technology v. Osteonics Corp., 122 F.3d 1440 (Fed.Cir. 1997), do not alter this court's present analysis. I
The United States District Court for the Southern District of Iowa construed the terms of Deere & Co.’s (“Deere”) U.S. Patent No. 6,052,980 (the “’980 Patent”) and granted Bush Hog, LLC’s (“Bush Hog”) and Great Plains Manufacturing, Inc.’s (“Great Plains”) motions for summary judgment of noninfringement. This court affirms the construction of “rotary cutter deck” and the determination that the terms “substantially planar” and “easily washed off” do not render the asserted claims invalid under 35 U.S.C. § 112. Because the district erroneously construed the term “into engagement with” to require direct contact, this court vacates that construc- tion, reverses the grant of summary judgment, and re- mands for further proceedings.
Of the erroneous construction:
The district court erroneously construed the term “into engagement with” to require direct contact between the upper and lower deck walls. At the outset, the claim language itself counsels against this narrow interpreta- tion of the term. “[T]he words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which [it] ap- pears, but in the context of the entire patent, including the specification.” Id. at 1313. While claim terms are understood in light of the specification, a claim construc- tion must not import limitations from the specification into the claims. Id. at 1323.
On the topic of vitiation:
The district court’s treatment of the doctrine of equivalents reveals a common misperception regarding “vitiation” that warrants some discussion. The concept of vitiation derives from the requirement that the doctrine of equivalents must be applied to the claims “on an element- by-element basis,” so that every claimed element of the invention—or its equivalent—is present in the accused product. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997). (...) “Vitiation” is not an exception to the doctrine of equivalents, but instead a legal determination that “the evidence is such that no reasonable jury could determine two elements to be equivalent.” Id. [520 U.S. at 39] The proper inquiry for the court is to apply the doctrine of equivalents, asking whether an asserted equivalent represents an “insubstan- tial difference” from the claimed element, or “whether the substitute element matches the function, way, and result of the claimed element.” Id. at 40. If no reasonable jury could find equivalence, then the court must grant sum- mary judgment of no infringement under the doctrine of equivalents. Id. at 39 n.8. (...)
In this case, the district court construed “contact” to require “direct contact,” and thus found that allowing “no direct contact” would vitiate the court’s construction. Yet, a reasonable jury could find that a small spacer connect- ing the upper and lower deck walls represents an insub- stantial difference from direct contact. See TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1124 (Fed. Cir. 2001) (construing claim term “contact” to require “touching” but remanding question of whether “indirect contact” could be equiva- lent). Thus, the trial court erred by invoking the vitiation exclusion in this context.
Separately
This court will take the opportunity to streamline this case by addressing the additional claim construction arguments raised in this appeal. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1369 (Fed. Cir. 2012); Advanced Software Design Corp. v. Fiserv, Inc., 641 F.3d 1368, 1378 (Fed. Cir. 2011); Riverwood Int’l Corp. v. R. A. Jones & Co., 324 F.3d 1346, 1357 (Fed. Cir. 2003) (addressing appellee’s challenge to claim construction because judgment of invalidity in appellee’s favor was vacated). The district court’s claim constructions have been fully briefed on appeal and may become important on remand.
***Note. The Planet Bingo case appears as
Thus, for example, courts properly refuse to apply the doctrine of equivalents “where the accused device contain[s] the antithesis of the claimed structure.” Planet Bingo, 472 F.3d at 1345. In such a case, application of the doctrine of equivalents would “vitiate” a claim element. Warner-Jenkinson, 520 U.S. at 39 n.8.
apparently without a prior full citation.
The decision in Planet Bingo v. Gametech, 472 F.3d 1338 (CAFC 2006) , was written by CJ Rader. Within the decision:
Asserting infringement under the doctrine of equivalents, Planet Bingo argues that the Rainbow Bingo game incorporates only an insubstantial variation from the claims because the progressive predetermined winning combination appears right after, rather than right before, the first bingo ball is drawn. Equivalents are questions of fact reviewed under the clearly erroneous standard. Insta-Foam Prods., Inc. v. Universal Foam Sys., Inc., 906 F.2d 698, 702 (Fed.Cir.1990). Planet Bingo bears the burden of showing that the accused method may perform substantially the same step, in substantially the same way, with substantially the same result. Toro Co. v. White Cons. Ind., 266 F.3d 1367, 1370 (Fed.Cir.2001). (...) The Supreme Court emphasizes that the doctrine of equivalents must not expand to eliminate a claim element entirely. Warner-Jenkinson v. Hilton Davis Chem. Co., 520 U.S. 17, 29, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). The doctrine does provide additional coverage for the exclusive right to protect a patent holder in the event of an unforeseeable change. Sage Prods., 126 F.3d at 1425 ("However, as between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure . . . . [T]he alternative rule—allowing broad play for the doctrine of equivalents to encompass foreseeable variations, not just of a claim element, but of a patent claim—also leads to higher costs.") (citation omitted). Here, the patents contain a distinct limitation, which was part of the bargain when the patent issued. This court cannot overlook that limitation or expand the doctrine of equivalents beyond its purpose to allow recapture of subject matter excluded by a deliberate and foreseeable claim drafting decision. See Id. Further, the cases Planet Bingo cites in support of a broad interpretation to the doctrine of equivalents, specifically Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309 (Fed.Cir. 1998), and Wright Medical Technology v. Osteonics Corp., 122 F.3d 1440 (Fed.Cir. 1997), do not alter this court's present analysis. I
posted by Lawrence B. Ebert at 6:05 AM
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