Wednesday, February 20, 2013

CAFC does doctrine of equivalents in Brilliant Instruments

Judge Moore wrote the opinion in Brilliant Instruments v. Guidetech which began:

GuideTech, LLC (GuideTech) appeals from the district court’s grant of summary judgment that Brilliant Instruments, Inc. (Brilliant) did not infringe three related GuideTech patents: U.S. Patent Nos. 6,226,231 (’231 patent), 6,091,671 (’671 patent), and 6,181,649 (’649 patent). See Brilliant Instruments, Inc. v. GuideTech, Inc., No. C. 09-5517 SW, 2011 WL 3515904 (N.D. Cal. Aug. 11, 2011) (Summary Judgment Order). Because the court erred in granting summary judgment, we reverse and remand.

Of the doctrine of equivalents:

We agree with GuideTech, however, that the district court erred when it granted summary judgment that Brilliant does not infringe under the doctrine of equiva- lents. To find infringement under the doctrine of equiva- lents, any differences between the claimed invention and the accused product must be insubstantial. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). One way of proving infringement under the doctrine of equivalents is to show, for each claim limita- tion, that the accused product “performs substantially the same function in substantially the same way with sub- stantially the same result as each claim limitation of the patented product.” Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009). This is a question of fact. Id.; Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1313 (Fed. Cir. 2003).

Of vitiation:

The vitiation concept has its clearest application “where the accused device contain[s] the antithesis of the claimed structure.” Planet Bingo, LLC v. Game Tech Int’l, Inc. 472 F.3d 1338, 1345 (Fed. Cir. 2006). This makes sense; two elements likely are not insubstantially different when they are polar opposites. As we explained in Deere, “[c]ourts should be cautious not to shortcut this inquiry by identifying a ‘binary’ choice in which an element is either present or ‘not present.’ Stated otherwise, the vitiation test cannot be satisfied by simply noting that an element is missing from the claimed structure or process because the doctrine of equivalents, by definition, recognizes that an element is missing that must be supplied by the equivalent substi- tute.” Deere, _ F.3d at _, 2012 WL 6013405, at *5. (...)
The concept of vitiation is an acknowledgement that each element in the claim must be present in the accused device either literally or equivalently. And we have applied this con- cept to cases where we have recognized that two alterna- tives exist that are very different from each other and therefore cannot be equivalents for infringement purpos- es. See, e.g., Planet Bingo, 472 F.3d at 1345 (concluding that determining a winning combination after a game starts was not equivalent to determining a winning combination before the game starts); Moore U.S.A., Inc. v. Std. Register Co., 229 F.3d 1091, 1106 (Fed. Cir. 2000) (“[I]t would defy logic to conclude that a minority—the very antithesis of a majority—could be insubstantially different from a claim limitation requiring a majority, and no reasonable juror could find otherwise.”).

Judge Dyk partially dissented:

I agree with the majority with respect to the ’231 pa- tent, and with its holding that there is no literal in- fringement of the ’671 patent and ’649 patent. However, I disagree with the majority that a genuine issue of materi- al fact remains as to infringement of the ’671 and ’649 patents under the doctrine of equivalents.


Similarly, we have recently reiterated that “[r]egardless [of] how the equivalence test is articu- lated, ‘the doctrine of equivalents must be applied to individual limitations of the claim, not to the invention as a whole.’” Mirror Worlds, LLC v. Apple Inc., 692 F.3d 1351, 1357 (Fed. Cir. 2012) (quoting Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997) (emphasis added)). This guidance to consider each claim limitation under the doctrine of equivalents flows from the principles of claim vitiation, which require a determi- nation of whether there is a substantial difference or a difference in kind between each individual claim limita- tion and the accused product. See Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1355 (Fed. Cir. 2010).
While Dr. West purports to follow this guidance, in fact Dr. West’s report is inconsistent with the approach articulated in the cases.


Once Brilliant brought forth expert evidence that its devices were outside the scope of the claim limitations under a doctrine of equivalents analysis, the burden fell on “the nonmoving party [in this case, Guidetech] to set forth specific facts showing that there is a genuine dispute for trial.” Minkin v. Gibbons, P.C., 680 F.3d 1341, 1349 (Fed. Cir. 2012); Shum v. Intel Corp., 633 F.3d 1067, 1076 (Fed. Cir. 2010). This Guidetech did not do. Indeed, given that no evidence exists showing that Brilliant’s accused products met the “with respect to” portion of the relevant limitation under the doctrine of equivalents, Brilliant merely needed to point out, as it did, “that there is an absence of evidence to support [Guidetech’s infringement] case.” Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986).


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