Fresh From the Bench: Recent Patent Cases From the Federal Circuit
Ring & Pinion – Foreseeability of an equivalent at the time of filing is not a bar to a finding of infringement based upon the doctrine of equivalents.
Elcommerce – Expert witness testimony is usually necessary to decide whether there is adequate structure in the patent specification to support means-plus-function claims.
Butamax, Frans Nooren, and Starhome – The Circuit flexes its muscle in de novo claim construction rulings consistent with Ballast Lighting.
Ring & Pinion Service Inc. v ARB Corporation, Fed. Cir. Case 2013-1238 (2/19/2014)
A unanimous panel of the Circuit rejected the argument of an appellant that foreseeability of an equivalent at the time of filing is a bar to a finding of infringement based upon the doctrine of equivalents. In doing so the panel provided a good review of the effect of foreseeability, the difference between equivalence analysis under 112(f) and the doctrine of equivalents, the doctrine of vitiation, and the effect of factual stipulations at trial.
The district court held that foreseeability at the time of filing is not a formally recognized limitation on the doctrine of equivalents. R&P argued, as many accused infringers do, citing Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420 (Fed. Cir. 1997), that the doctrine of equivalents does not apply to equivalents that were foreseeable at the time of filing. The panel ruled that it is clear that known interchangeability weighs in favor of a finding of equivalence. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 36 (1997)
The panel found that R&P's reliance on Sage Products was misplaced because Sage Products held that claim vitiation, not foreseeability, prevented the application of the doctrine of equivalents because its application in that case would have written express limitations out of the claim. Because the scope of the claim in Sage Products was limited in a way that excluded a structural feature that was the opposite of the one recited in the claim, that different structure could not be brought within the scope of equivalents.
It makes no difference as to application of foreseeability in applying the doctrine of equivalents for means-plus-function limitations. There are only two differences between the equivalence determination for literal infringement purposes under 112(f) and the doctrine of equivalents: timing and function. Equivalence under 112(f) is evaluated at the time of issuance, while equivalence under the doctrine of equivalents is evaluated at the time of infringement. Hence, a technology that did not exist at the time of patenting can be found to be an equivalent under the doctrine of equivalents even though it cannot be an equivalent under the literal infringement analysis of 112(f).
The second difference between literal infringement under 112(f) and doctrine of equivalents infringement relates to the function of the element. For literal infringement, the accused structures must perform the identical function, while the doctrine of equivalents covers accused structures that perform substantially the same function in substantially the same way with substantially the same results. This is true whether the accused equivalent was known at the time of patenting or later arising. Where a finding of non-infringement under 112(f) is based solely on the lack of identical function, it does not preclude a finding of equivalence under the doctrine of equivalents.
The panel also held that the district court erred by failing to enforce the parties' stipulation of fact. The parties stipulated to equivalence, which is a question of fact, and agreed that there were no remaining issues of fact. The district court nonetheless held that a finding of infringement under the doctrine of equivalents would vitiate the "cylinder means formed in…" claim limitation. According to the panel, vitiation is not an exception to the doctrine of equivalents, but instead a legal determination that no reasonable jury could determine two elements to be equivalent. The parties' stipulation precludes the conclusion that the "cylinder means formed in…" limitation is vitiated because the stipulation stated that the accused design includes an equivalent to that limitation.
Elcommerce.com, Inc. v. SAP AG and SAP America, Inc., Fed. Cir. Case 2011-1369 (2/24/2014)
In a split decision, the Circuit affirmed a venue transfer, but vacated the district court's rulings on means-plus-function claims because it was necessary to have expert testimony as to whether one with ordinary skill in the art would have understood the functions described, and whether there was adequate disclosure in the specification to support the claims.
Defendant SAP prevailed on its motion to transfer, which was part of Elcommerce's appeal. In an innovative argument, SAP contended that venue was irrelevant where, as here, questions such as claim construction were going to be decided de novo on appeal. Judge Newman, writing for the majority, rejected the argument, noting that it is axiomatic that jurisdiction must be proper in every tribunal, whatever the standard of review. Nonetheless, the panel determined that the transfer was proper.
Method claims in the patent were found by the district court to be not infringed, and that determination was affirmed. However, the interesting discussion related to the system claims, many of which were in means-plus-function format. The district court had granted summary judgment of indefiniteness based on the failure to comply with means-plus-function claiming requirements under 112(6).
SAP argued that there was no structure disclosed in the specification to support several of the functions recited in the claims. Elcommerce argued that the adequacy of the disclosure was not to be evaluated by a judge but had to be the subject of expert witness testimony as to what one with ordinary skill in the art would have understood the functions to be and whether the disclosures in the specification provided adequate structure to support those functions.
While the majority of the panel determined that expert witness testimony may not be necessary in every case, it was necessary here for the court to decide whether SAP had met its burden of proving invalidity. Citing Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008), the court explained that a patent must describe sufficient structure or acts whereby a person of ordinary skill in the field could perform the specified function without undue experimentation. The panel held that it cannot be assumed that, without evidence, a general purpose judge can ascertain the position of persons of skill in the art and conclude that there is insufficient support for the eleven interrelated means-plus-function claim limitations. Instead of evidence, SAP submitted only attorney argument. The majority thus vacated the rulings as to the system claims.
Judge Wallach dissented from the majority's indefiniteness rulings. He cited Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012), where the Circuit affirmed the exclusion of expert testimony from the indefiniteness inquiry when there was a total absence of corresponding structure. As in Noah, the means-plus-function claims are directed to a special-purpose computer, and thus require a corresponding algorithm in the specification. According to Judge Wallach, here, as in Noah, no algorithm was disclosed. Therefore, expert testimony was neither required not permitted, and the district court's holding that the claims are invalid for indefiniteness should have been affirmed.
Butamax Advanced Biofuels LLC v. Gevo, Inc., Fed. Cir. Case 2013-1342 (2/18/2014); Frans Nooren Afdichtingssystemen B.V. v. Stopaq Amcorr Inc., Fed. Cir. Case 2013-1200 (2/21/2014); and Starhome GmbH v. AT&T Mobility LLC , Fed. Cir. Case 2012-1694 (2/24/2014)
In a series of three cases, the Circuit reaffirmed its intention of providing real de novo review for claim construction rulings. Two of the three cases remanded to the district court for further consideration in view of its rulings, thumbing the nose of the statistics the majority stressed in the recent Ballast Lighting opinion that most claim construction decisions in recent years affirm district courts' opinions.
The dispute in Butamax was over the definition of an enzyme known as KARI used to produce isobutanol, a fuel additive. The panel ruled that KARI was not dependent on a particular co-enzyme, disagreeing with the district court that said it was dependent. Based on this ruling the panel vacated the district court's denial of Butamax's motion for summary judgment of infringement, directing the court to reconsider the question using the Circuit's construction. The panel also reversed the lower court's grant of Gevo's motion for summary judgment of invalidity as to some of the claims based on issues of fact as to whether the written description requirement was adequate. Finally, the panel reversed a judgment that the claims were invalid for lack of enablement, apparently due to confusion in the court's judgment.
In Frans Nooren the panel had a host of issues with the district court's handling of claim construction. The opinion demonstrates the dangers district courts face if they construe a long phrase such as the one at issue, without ruling on the meaning of each term used in the phrase. Patent litigators are sometimes forced to combine terms to get down to the ten or so required by some local rules. However, this case shows that parties are almost better conceding the construction of some terms instead of presenting long phrases to the court to construe, and ending up with phrases being construed without each individual term being defined. Based on the need for all of the terms to be construed, and the inadequate explanation of the constructions it did render, the Circuit vacated summary judgment of noninfringement and remanded the case for further construction consistent with the panel's opinion.
In Starhome a unanimous panel affirmed the district court's use of extrinsic evidence to support claim construction. The Circuit determined that the term "gateway" had a well-understood meaning in the art at the time of filing, and plaintiff Starhome's definition was just too different from the way the industry had been using the term. In a departure from many of its claim construction decisions, the panel applauded the use of extrinsic evidence which can often be useful in claim construction, particularly insofar as they help the court to better understand the underlying technology and the way in which one of skill in the art might use the claim terms. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)(en banc) and Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996). The panel rejected Starhome's attempt to use the doctrine of claim differentiation since the pertinent claims differed in scope in several respects. The panel also refused to accept Starhome's attempt to use the prosecution history of a related European application. While noting that statements made to foreign patent offices are sometimes relevant, the panel felt that the European history actually supported defendant's position that the patentee did not intend to depart from the ordinary definition of the terms at issue.
While Starhome affirmed the district court's claim construction, it only did so after an exhaustive review of the claims at issue, the intrinsic and extrinsic evidence, and after considering all of the parties' arguments. This demonstrates once again that unless and until the Supreme Court rules to the contrary in a reversal of Ballast Lighting, the Circuit is going to give full review to every claim construction appeal it hears.