Docket No. 2013-1238
MOORE, CLEVENGER, REYNA
February 19, 2014
Brief Summary: Foreseeability of an equivalent at the time of application does not prevent application of the doctrine of equivalents (which is determined at the time of infringement). Claim vititation is “a legal determination that the evidence is such that no reasonable jury could determine two elements to be equivalent”.
Summary: ARB appealed from DC grant of SJ of non-infringement of its US 5,591,098 relating to an improved automobile locking differential to Ring & Pinion (R&P). Representative claim 1 requires a “differential carrier”, “a locking means” and a “cylinder means formed in said differential carrier….” At the DC, the parties agreed that R&P’s Ziplocker product did not literally meet the “cylinder means” limitation but did include a “equivalent” and “forseeable” cylinder. However, the parties also agreed that the product would infringe if the DC held “that [if] foreseeability of an equivalent at the time of application does not prevent the use of the doctrine of equivalents” (DOE). The DC held that “while foreseeability did not preclude the application of [DOE], a finding of infringement under the [DOE] would vitiate the ‘cylinder means formed in…” limitation”. The FC opinion first explained “[t]here is not, nor has there even been, a foreseeability limitation on the application of the [DOE]…It has long been clear that known interchangeability weighs in favor of finding infringement under the [DOE]” (citing Warner-Jenkinson (US 1997), Graver Tank (US 1950), among others). In making its argument “that a general foreseeability bar to the [DOE] exists”, R&P relied upon Sage Products (FC 1997) which the FC explained was “misplaced” because the claim scope in that case “was limited in a way that plainly and necessarily excluded a structural feature that was the opposite of the one recited in the claim” (citing SciMed Life Sys., FC 2001). Thus, “a finding of infringement under the [DOE] would vitiate a claim limitation based on the facts of that case” (Sage). R&P also unsuccessfully argued “that there is a foreseeability bar to the application of the [DOE] for means-plus-function limitations”, the FC noting “[n]othing in Chiuminatta or in any other case cited by R&P supports its assertion” (Chiuminatta, FC 1998 (difference between equivalence for literal infringement under § 112(f) (evaluated at time of patent issuance) and DOE (evaluated at time of infringement)). The FC concluded that the DC “should have enforced that parties’ joint stipulation by entering the stipulated finding of infringement” (e.g., that R&P infringed) and its reliance on claim vitiation in declining to do so was legal error (“Vitiation is ‘not an exception to the [DOE], but instead a legal determination that the evidence is such that no reasonable jury could determine two elements to be equivalent…The parties’ stipulation precluded the conclusion that the ‘cylinder means formed in…’ limitation is vitiated because it states that the Ziplocker includes an equivalent to that limitation.”) The DC decision was therefore reversed and remanded with instructions to grant SJ of infringement to ARB.