Docket No. 2012-1018
DYK, MOORE, REYNA
February 20, 2013
Brief Summary: DC judgment was reversed regarding both literal and DOE infringement. Vitiation was not found to be a viable theory of non-infringement in this case.
Summary: GuideTech appealed DC grant of summary judgment that Brilliant Instruments did not infringe three of its patents relating to circuits comprising a “signal channel,” a “plurality of measurement circuits defined within said signal channel,” and a “processor circuit” for measuring timing errors in microprocessors. The DC found that GuideTech failed to present sufficient evidence, including expert testimony, that Brilliant’s products have multiple measurement circuits contained within a signal channel. GuideTech argued that the DC erred in concluding there was no genuine issue of material fact regarding literal infringement of one of its patents and the FC panel agreed. Regarding the other two patents, the FC panel agreed that Brilliant’s products did not literally infringe but disagreed that there was no genuine issue of material fact with respect to infringement under the doctrine of equivalents. This determination was based in large part of GuideTech’s expert report detailing its DOE theory under the function-way-result test (Crown Packaging, FC 2009; Anchor Wall Sys. Inc., FC 2003; Graver Tank, US 1950 (any differences between the claimed invention and the accused product must be insubstantial)). Briliant attempted to defend the DOE charge under a claim differentiation theory. But this theory was rejected because “'[v]itiation’ is not an exception to the doctrine of equivalents” (Deere & Co., FC 2012) and “has its clearest application ‘where the accused device contain[s] the antithesis of the claimed structure'” (Planet Bingo, FC 2006) because “two elements likely are not insubstantially different when they are polar opposites” (e.g., “If the claimed and accused elements are recognized by those ofskill in the art to be opposing ways of doing something, they are likely not insubstantially different.”) The FC panel ultimately agreed with GuideTech that there was a no genuine issue of material fact regarding whether the difference between their claims and the accused product (e.g., the location of the claimed capacitor) was insubstantial. Accordingly, the DC judgment was reversed and remanded.