Improper Summary Judgment on Doctrine of Equivalents; Marking Products that Perform Method Claims

Crown Packaging v. Rexam Beverage Can (Fed. Cir. 2009)

On summary judgment, the district court held that Rexam did not infringe Crown’s patent beverage can-top patent. The lower court also found that that Crown did not infringe Rexam’s beverage can “necking” patent. On appeal, the Federal Circuit reversed both rulings.

The Doctrine of Equivalents: Over the past two decades, the doctrine of equivalents been pushed out of the usual infringement discussion. Part of the doctrine’s downgrade is due to restricted application due to prosecution history estoppel (Festo) and tighter doctrine (Warner-Jenkinson). Perhaps equally important in the decline of the DOE has been the rise of claim construction as the primary variable of patent litigation. Rather than arguing for infringement as an equivalent, applicants are instead arguing for broad construction of the claim terms. Finally, patent drafters are – on average – better today than they were twenty years ago and spend more energy on considering how to draft claims that capture literal infringement. In a 2007 paper, Professors Lemley and Allison found something similar – that since the late 1990’s (even before Festo), that “equivalents claims usually failed, most often on summary judgment.” Their paper title – “Demise of the Doctrine of Equivalents” – overstates its case. The DOE is sometimes valuable.

Function-Way-Result Test: There are at least two alternate tests for infringement under the doctrine of equivalents. The function-way-result test considers “on a limitation by limitation basis” whether “the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product.”

Summary Judgment on DOE: Here, the issue was not so much the law of the DOE, but rather the requirement for summary judgment that there be no remaining material issue of fact. Crown’s patent claims an “annular reinforcing bead,” while Rexam’s product uses a reinforcing fold. The lower court found those different enough to avoid infringement under the DOE. On appeal, however, the Federal Circuit reversed – finding at least one unresolved material issue of fact that precluded summary judgment. DOE requires expert testimony to step through the function-way-result test. And, here, the patentee’s expert stepped through each element and his testimony had not been completely indicted or even refuted.

Because Crown provided evidence in support of its position that the annular reinforcing bead of claim 14 of the ‘826 patent had only one function, and because we must resolve any reasonable factual inferences in favor of the nonmoving party, we conclude that there is a material issue of fact regarding the function of the claimed bead. Accordingly, we reverse and remand the district court’s grant of summary judgment of noninfringement.

This decision by Judge Moore is in line with the court’s 2008 Voda case which was affirmed after parsing expert testimony to ensure that the elements had been properly proven. (In Voda, the court used the alternative “insubstantial difference” test.)

Unmarked Sales by Licensee: In a scenario reminiscent of the recent Quanta v. LG case, Rexam licensed its patents to Belvac to make “neckers” used to stretch out the top of the can bodies. Under the license, Belvac was required “to notify its customers that they would require a separate license from Rexam to perform the smooth die necking method” that is claimed in Rexam’s patents. The license did not require Belvac to mark the machines that it sold. And, in fact, Belvac did not mark them with the Rexam patent number. Crown then used the machine to make over one hundred billion cans.

Marking under 35 U.S.C. § 287(a): The district court found that this past infringement was not actionable because Crown was not on notice of the patent. That decision seemingly follows from 35 U.S.C. § 287(a). Under that provision, a patentee who does not properly mark a patented article “is not entitled to damages for infringement prior to actual notice.” (quoting CAFC decision).

Marking of Method Claims: Rexam’s trick here was to assert only method claims. On its face, Section 287 applies to “any patented article,” and Federal Circuit precedent has clearly stated that the marking requirement does not apply when only method claims are asserted. With palpable regret, Judge Moore writes:

“The law is clear that the notice provisions of § 287 do not apply where the patent is directed to a process or method. Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578, 1581 (Fed. Cir. 1983). In Hanson, 718 F.2d 1075 (Fed. Cir. 1983)—we held that 35 U.S.C. § 287(a) did not apply where the patentee only asserted the method claims of a patent which included both method and apparatus claims. Hanson is factually identical to this case, and we are therefore bound by the rule of Hanson.”

Thus the patentee is free to claim damages back six years under Section 286 even without marking or providing actual notice. This decision thus provides an additional reason to include method claims in a patent application. Now, it would be improper to conclude that there is no reason to mark products that perform method claims. In the 1993 American Medical Systems case, the Federal Circuit ruled that marking would be required if “both apparatus and method claims” were asserted and there is a “tangible item to mark.” In this case, the patent claimed both a method and apparatus, but Rexam sued only on the method claims.

18 thoughts on “Improper Summary Judgment on Doctrine of Equivalents; Marking Products that Perform Method Claims

  1. Morgana,you’re being too charitable. I’d expect a 102 rejection with a statement like “the reference teaches a reinforcing bead (fold)” or, if that’s giving the applicant too much of a clue, perhaps something more opaque like “See FIG. 2.” Good luck arguing a fold is not a bead unless “bead” is expressly defined in the spec to exclude a fold because everyone knows that if a bead and a fold both can be used to reinforce a can then a fold IS a bead.

    Alice at the PTO:
    ‘When I make a word do a lot of work like that,’ said Humpty Dumpty, ‘I always pay it extra.’

    ‘Oh!’ said Alice. She was too much puzzled to make any other remark.

  2. Thank you Bob Matthews for explaining in detail, with cites, why this Crown Packaging v. Rexam Beverage decision is so surprisingly inconsistent with what others, including numerous judges, thought the law was.

  3. In American Medical Sys. v. Medical Eng’g Corp., 6 F.3d 1523, 1538-39 (Fed. Cir. 1993), the court state that “to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so.” I find the court’s decision in Crown regarding marking and method claims troubling. It implictly overrules what appears to have been well accepted in the district courts that, in view of Am. Med., only asserting method claims would not save a patentee who failed to mark a product that was made by the claimed process or used to practice the claimed process. E.g., Osteotech, Inc. v. Regeneration Technologies, Inc., 2008 WL 4449564, *6 (D.N.J. Sept. 25, 2008); Merck & Co., Inc. v. MediPlan Health Consulting, Inc., 434 F. Supp. 2d 257, 261-62 (S.D.N.Y. June 14, 2006); Halliburton Serv. v. Smith Intern. Inc. 317 F. Supp. 2d 719 725-26 (E.D. Tex. 2004); Philips Elecs. N. Am. Corp. v. Contec Corp., 312 F. Supp. 2d 649, 651-52 (D. Del. 2004); Mosel Vitelic Corp. v. Micron Technology, Inc., 2000 WL 1728351 *2 (D. Del. Feb. 25, 2000); see also Soverain Software LLC. v. Amazon.com, Inc., 383 F. Supp. 2d 904, 909 (E.D. Tex. 2005) (failure to mark website preclude damages even if only method claims were asserted).

    Interestingly, the Crown court failed to discuss the impact of Devices for Medicine, Inc. v. Boehl, 822 F.2d 1062, 1066 (Fed. Cir. 1987), a case in which it held that the patentee’s failure to mark its product that had no use but to practice the claimed method precluded recovering damages for infringement of the process claims. Also the Crown court did not mention Amsted Indus., Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 185 (Fed. Cir. 1994), where the court instructed in that opinion how unpatented articles used in practicing a claimed method can be marked: Id. (“Amsted argues that had it marked its center plate it would have violated 35 U.S.C. § 292 which prohibits the marking of an unpatented article. This is not persuasive. A marking such as ‘for use under U.S. X,XXX,XXX’ would have sufficed.”)

    Since the patentee in Devices for Medicine had asserted both its apparatus and method claims, the Crown panel would have likely applied the same distinction. But that distinction fails to address a point made in Devices for Medicine where the court stated: “The claimed method is the use of the product. Having sold the product unmarked, DFM could hardly maintain entitlement to damages for its use by a purchaser uninformed that such use would violate DFM’s method patent.” 822 F.2d at 1066.

    While the distinction drawn by Crown court regarding Hanson and American Medical (and equally applicable to Devices for Medicine) is technically accurate, at least procedurally, its seems to me to be substantively unsatisfying. One distinction that may possible have more merit lies in the differences between the claimed process in American Medical and Devices for Medicine and that in Hanson. In American Medical, the court noted that the patentee’s product was a “physical device produced by the claimed method.” In Devices for Medicine, the claimed process was the intended use of the claimed apparatus. In both of these cases, infringement of the process claim depended on the presence of the apparatus. In Hanson, the claimed process concerned a method of making snow. While the sold apparatus, which was allegedly covered by the apparatus claim, could be used to practice the process of making snow, the apparatus was not the outcome of the process, nor was the presence of the apparatus crucial for practicing the claimed process. The snow could be made by means wholly independent of the apparatus, and the process claims did not recite the use of the apparatus as an element of any of the claims. Thus, the claimed process in Hanson was independent of the claimed apparatus. This suggests that where a process can only be infringed by the use or creation of an article sold by the patentee or its licensee, then that article should be marked with the process patent number. If the process can be performed without the patentee’s article, the law might not require marking. Although this seems contrary to the policy stated in American Medical –– “to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so.” Am. Med., supra.

    The facts recited by the court in Crown note that the unmarked patented necking machine could be used in ways that did not practice the claimed processes, (bringing this close to the Hanson facts of being able to practice the snow making process without using the claimed apparatus). But the facts recited in Crown are silent as to whether the claimed processes could be practiced in ways that did not require the use of the patented necking machine. If not, and if “the claimed method is the use of the product,” then perhaps the failure to mark the necking machines should have precluded damages under Devices for Medicine. The opinion did not address this point, and hence we are left to wonder.

    Since the court seems to have a lot on its plate now with the pending 271(f) en banc case, Judge Linn’s call yesterday for an en banc hearing on inequitable conduct, this issue of marking and method claims could get overlooked. But it too seems ripe for greater consideration.

  4. Reply to Stuart: If your question is directed to “equivalents” for doctrine of equivalents, the law is well settled that DOE is determined as of the date of infringement and hence later developed equivalents may fall within DOE.

    In Warner-Jenkinson Co. Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 117 S. Ct. 1040, 137 L. Ed. 2d 146, 41 USPQ2d 1865 (1997), the Supreme Court stated:
    Insofar as the question under the doctrine of equivalents is whether an accused element is equivalent to a claimed element, the proper time for evaluating equivalency—and thus knowledge of interchangeability between elements—is at the time of infringement, not at the time the patent was issued. And rejecting the milder version of petitioner’s argument necessarily rejects the more severe proposition that equivalents must not only be known, but must also be actually disclosed in the patent in order for such equivalents to infringe upon the patent.

    520 US at 37, 117 S. Ct. at 1052-53, 41 USPQ2d at 1874.

    I have a more detailed discussion of this issue and additional case authority in the Annotated Patent Digest at § 13:54 Future Non-contemplated Equivalents are Protected.

  5. WTF. If this were in an Office Action, the Examiner merely would say something like “reinforcing fold” do what “annular reinforcing bead” does therefore it is obvious, routine experimentation, to chose between generally known choises that results in the a reinforcing outcome. Then, they also would find a patent having a fold on the side of a can (most do) and say it’s a “reinforcing” fold and that is is obvious to apply that fold where ever the inventor’s patent application says to apply it. The examiner would then hold both positions through final office action to force a $3,000+ appeal, hoping that the inventor can’t afford it and gives up. That’s how things are handled below the BPAI, but, of course, it is the evil inventors that are not legitimately participating in the patent process so we need to change the law to beat them back onto the farm.

  6. Does this decision–or any other known to folks posting here–hold that an “equivalent” may be a a method, appratus, etc. developed AFTER the FD or issue date of the patent in suit?

  7. I also think this allleged distinction here of the prior controlling CAFC American Medical Systems decision is a logical stretch. After all, the subject patent here also had both apparatus [or product] and method claims, and it is the PATTENT that the marking statute says it wants marking warnings to the public about when the patented product is sold to the public. Was the marking statute intended to be controllable merely by the patent owner’s attorney picking and chosing which claims to sue on?
    Now, after this case, what about just dropping some claims in pending suits to change the outcome?

  8. “WARNING: if the puppet master doesn’t like your post, e.g. if it is dissenting or critical of Mooney, et al. it will be deleted either immediately or after it gets pushed down by new content.”

    WARNING IF YOU MAKE TOO MANY FLAME POSTS YOU MIGHT GET BANNED/BALETED IF YOU KEEP MAKING THEM. THIS IS TRUE ON ALMOST ALL FORUMS.

    flame in moderation kiddies.

    You know what would be funny though, is if he’s just having trouble posting like I was there for awhile. Actually I still do have trouble if I don’t sign in to the typepad name “6” instead of just trying to post normally. It will say that your post was posted by | and then it won’t post, sometimes it just won’t post, and sometimes it will post. Just fyi flamo, you can fix this by making a typepad account and using it. Also, even if you have a typepad account and use it, if your post gets caught by the spamfilter it will simply not post it instead of warning you.

  9. Max, should have said 11:00am, the post I was referring to was :

    “I presume that the Anonymous just above who posed that “flint” question is no patent attorney, nor a trainee patent attorney. What is this blog coming to? Yawn. JAOI, would you care to brief Anonymous? I won’t stand in your way.”

    … and my Lecter comment was meant as a joke

  10. “WARNING: if the puppet master doesn’t like your post”

    This troll has been melting down for six months. That has to be a record.

  11. DC wrote, “Now, it would be improper to conclude that there is no reason to mark products that perform method claims. In the 1993 American Medical Systems case, the Federal Circuit ruled that marking would be required if “both apparatus and method claims” were asserted and there is a “tangible item to mark.” In this case, the patent claimed both a method and apparatus, but Rexam sued only on the method claims.”

    Why should the requirement to mark – which is a pre-infringement, pre-suit requirement – depend on whether or not apparatus claims are asserted at trial? It should be a single rule for method claims, irrespective of whether or not I also assert appartus claims: to assert apparatus claims, there must have been marking; to assert method claims, there need not have been marking. If I didn’t mark and I assert both apparatus and method claims, I lose on the apparatus claims, but the method claims should still be good to go.

    If we’re going to say that method claims don’t need marking, then there’s no reason the viability of my method claims should depend upon the co-assertion of apparatus claims, and the marking of my apparatus, in the same suit.

    Sounds like the CAFC (yet again) needs to get its house in order.

  12. WARNING: if the puppet master doesn’t like your post, e.g. if it is dissenting or critical of Mooney, et al. it will be deleted either immediately or after it gets pushed down by new content.

  13. With regard to the marking in method claims, does this also extend to a claim reciting a method of using a widget, where the structural elements of the widget are recited in the preamble? Clearly there is a product in such a case. Thoughts?

  14. Wow, Professor Crouch – you are soo smart!, would you consider representing Just ordinary inventors?

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