Charles Machine Works v. Vermeer Mfg: CAFC continues rolling back the vitiation doctrine

By Jason Rantanen

The Charles Machine Works, Inc. v. Vermeer Manufacturing Company (Fed. Cir. 2013)
Panel: Dyk, Mayer, Moore (author)

The Charles Machine Works (CMW) holds U.S. Patent No. 5,490,569, which relates to a two-pipe apparatus for boring underground holes in the horizontal direction.  Claim 1 is illustrative (emphasis added):

1. An apparatus for boring a hole with a directional control from the surface comprising:

a body having an elongate axis and a front end;
a drill bit mounted at the front end of the body for rotary motion about a drill bit axis, the drill bit axis being constantly noncoincident with the elongate axis of the body at the front end;
a casing rigidly secured to the body and extending to the surface to selectively rotate the body independent of the drill bit to position the deflection Shoe to deflect the apparatus within the bore;
a deflection shoe mounted on a first side of the body; rotating structure to rotate the drill bit continuously to bore the hole, the rotating structure extending to the surface.

In 2011, CMW brought an infringement suit against Vermeer Manufacturing.  A central issue in the dispute was the design of the drill casing.  "Vermeer’s apparatus for boring is a “bent sub,” in which two sides of the body or casing are attached together to form a bend or elbow in the casing."  Order Granting Summary Judgment for Defendant, Charles Machine Works, Inc. v. Vermeer Manufacturing Co., No. 4-11-cv-507-CRW-CFB (June 21, 2012).  CMW contended that this "bent sub" structure met the "deflection shoe" and "mounted on" limitations.  After construing "mounted on" to mean "attached to" and "deflection shoe" to mean a "structure that can be attached to the side of the body or casing and that can be positioned to deflect the boring apparatus from a linear path," the district court granted summary judgment of nonfringement, both literal and equivalents.

On appeal, the Federal Circuit affirmed the district court's claim construction and summary judgment of no literal infringement without substantive discussion. The Court then turned to the doctrine of equivalents.  From the district court's summary judgment order:

Also there is no infringement in this record under the doctrine of equivalents. A bent sub is plainly different from and not the equivalent of the “deflection shoe” described over and over in the ‘569 patent that must be “mounted on” the apparatus, fully described with drawings in the patent itself. This record does not establish that persons learned in the art would deem the bent sub and mounted shoe interchangeable. See Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609 (1950). None of Vermeer’s products described in this summary judgment record infringes any of the claims in the ‘569 patent.

Order Granting Summary Judgment for Defendant at 8.  The Federal Circuit disagreed and found that the testimony of CMW's expert was sufficient to raise a genuine factual dispute under the "function-way-result" test for determining equivalency.

Vitiation: In addition to arguing the factual issue of equivalency, Vermeer's brief also raised a vitiation argument: that allowing the "bent sub" to satisfy the deflection shoe limitation would "read the “deflection shoe” and “mounted on” limitations out of the claims."  Vermeer Response Brief at 58. In addressing this argument, the Federal Circuit reaffirmed its pushback against the vitiation doctrine.  Just as the court did in Deere and Brilliant Instruments, Charles Machine Works treats vitation not as an exception to equivalency, but as simply the application of the "function-way-result" or "insubstantial differences" tests:

Vitiation is “a legal determination that ‘the evidence is such that no reasonable jury could determine two elements to be equivalent.’” Deere, 703 F.3d at 1356 (quoting Warner-Jenkinson, 520 U.S. at 39 n.8). “[S]aying that a claim element would be vitiated is akin to saying that there is no equivalent to the claim element in the accused device based on the well-established ‘function-way-result’ or ‘insubstantial differences’ tests.” Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1347 (Fed. Cir. 2013)

We also conclude that the doctrine of claim vitiation does not bar CMW’s application of the doctrine of equivalents. On summary judgment, the appropriate question for the court was whether no reasonable jury could find equivalence based on the record. Deere, 703 F.3d at 1356. Based on CMW’s expert declaration, we hold that a reasonable jury could have found equivalence, and the court erred by making a contrary legal determination.

Slip Op. at 8-9.  The court's conclusion in this case is particularly notable given that it applied vitiation in a very different way to a "mounted on" limitation in Asyst Technologies, Inc. v. Emtrak, Inc. 402 F.3d 1188, 1195 (Fed. Cir. 2005), ("This case falls within both that doctrine and its corollary, the "specific exclusion" principle, since the term "mounted" can fairly be said to specifically exclude objects that are "unmounted."). 

CMW's Lack of Notice: The Federal Circuit also reversed the district court's grant of summary judgment as to Vermeer's non-commercial prototypes (which include a structure called a wear pad) on the ground that CMW had insufficient notice that the summary judgment decision would include the prototypes.  Vermeer's moving papers were titled "MOTION FOR SUMMARY JUDGMENT THAT VERMEER’S COMMERCIAL
PRODUCTS DO NOT INFRINGE," its proposed rulings bore the heading "GRANT SUMMARY JUDGMENT
THAT VERMEER’S COMMERCIAL PRODUCT DOES NOT INFRINGE THE ASSERTED CLAIMS . . . OF THE
’569 PATENT," and at oral argument it indicated that the prototypes were not the focus of the motion and trial would still be required on the prototypes. 

 

20 thoughts on “Charles Machine Works v. Vermeer Mfg: CAFC continues rolling back the vitiation doctrine

  1. I thought you liked Rader — he has a BA English, BYY, was a Republican staffer in both the House and Senate, as was initially appoint to the court of claims by Ronald Reagan in 1988.

  2. It is unbelievable the complete lack of respect for the learning of science/engineering there is in this country. To imagine that someone in their 40′s to 50′s who has never cared to learn any science should be appointed to the CAFC is a slap in the face of ever patent attorney.

    And, to imagine that an attorney that has only “taught” patent law or has no patent law experience can sit on the CAFC is another slap in the face of every patent attorney. Practicing patent attorneys have paid their dues. We know that only after years of struggling with patent law and science do we finally start to get a grasp of these issues.

    Seriously, most objective people think it takes 10 years to become an expert at patent law after you pass the registration examination. And, how in the world are these liberal arts majors (and/or no patent law attorneys) going to apply the law? I can tell you the answer is they will not be able to.

    Welcome to the third world. Thank you “Mr.” President.

  3. “absurdly incompetent bunch of Soviologists and Liberal Arts majors comprising the CAFC. ”

    I lulzed.

    And as to the time, meh, it comes from taking time away from more important things in life.

  4. Where do you folks find time to read the cases and patent in suit? And how is it that your comments post 24 hours before we ordinary (working patent lawyers) get them?
    Academicians, per chance?

    Hats off to Crouch. A full teaching load yet ample time to scan the daily ramblings of an absurdly incompetent bunch of Soviologists and Liberal Arts majors comprising the CAFC. That court will never be confused with the Deutches Patent Amt.

  5. Off topic, but poking around the Supreme Court website yielded this:

    link to supremecourt.gov

    It appears that Alice has sought an extension to file its petition for certiorari until September 6, and it has been granted.

    My apologies if this has been covered elsewhere.

  6. Malcolm, I too was surprised that the court seem to think that if two apparatus deflected the drilling apparatus by pressing against the borehole wall with some structure that there could be equivalents. This would imply that the claimed “deflection shoe” was not limited in any meaningful way to the disclosed structure and that the claim effectively cover all apparatus that pressed against the borehole wall.

    If the DOE has this scope, why do we need disclosures at all? We could just say, I claim every and all means of steering drilling apparatus by pressing against the boreholes walls.

  7. This is one case where drawings would be useful to determine whether the claimed “mounted” “deflection shoe” was equivalent to the accused bent casing.

  8. Yes I agree that it could. And I’m sure there is some law student up for doing just that :)

    And yes I’m familiar with how it came to be and why we keep it.

    Though I will additionally say snarkily that at this point in the timeline its main purpose is just to overrule the notice function of claims. And that is regardless of whatever other “justification” is given or can be given.

    I’m a no-nonsense kind of person by nature in my professional dealings, and the whole thing just reeks of nonsense meant to coddle people who blatantly did not invent that which they’re now getting credit for inventing. The patent system is quite generous enough without such coddling.

  9. MM said…

    Here’s the claim term:

    a deflection shoe mounted on a first side of the body

    Then let’s substitute the construction of “mounted.” We get:

    a deflection shoe attached to a first side of the body

    So far so good. Now the district court does something odd. It construes “deflection shoe” functionally:

    a “deflection shoe” [is a] “structure that can be attached to the side of the body or casing and that can be positioned to deflect the boring apparatus from a linear path,”

    If no jury could find that the accused device has a substantially similar structure that performs the same function, then the equivalents analysis is over. Here the facts are indisputable that there is no deflecting structure that “can be attached” in the infringing device. And, in the context of this invention, it can’t reasonably be argued that a unitary “attachable” “positionable” “deflecting” structure is an “insignificant difference” from an alternate approach that achieves deflection by joining two pieces of the apparatus body in an incongruent fashion. If those differences can be deemed “insignificant”, then what isn’t? There is no “attachable” functionality in the infringing device. None. If you are going to make the counter-argument, you might as well just hold that every structure that achieves deflection is equivalent to every other structure that achieves deflection, period. Why not? How do you draw the line? And if the line is being extended that far, then the issue of obviousness (or anticipation) certainly needs to be revisited again as it would appear that all prior art solutions to the deflection problem (not just mountable solutions) would need to be considered.

    It is baffling that the Federal Circuit seems intent to animate a doctrine that should be resting in a crypt, waiting for the next blue moon in a leap year.

  10. Here’s the claim term:

    a deflection shoe mounted on a first side of the body

    Then let’s substitute the construction of “mounted.” We get:

    a deflection shoe attached to a first side of the body

    So far so good. Now the district court does something odd. It construes “deflection shoe” functionally:

    a “deflection shoe” [is a] “structure that can be attached to the side of the body or casing and that can be positioned to deflect the boring apparatus from a linear path,”

    If no jury could find that the accused device has a substantially similar structure that performs the same function, then the equivalents analysis is over. Here the facts are indisputable that there is no structure that can be attached” in the infringing device. And, in the context of this invention, it can’t reasonably be argued that a unitary “attachable” “positionable” “deflecting” structure is an “insignificant difference” from an alternate approach that achieves deflection by joining two pieces of the apparatus body in an incongruent fashion. If those differences can be deemed “insignificant”, then what isn’t? There is no “attachable” functionality in the infringing device. None. If you are going to make the counter-argument, you might as well just hold that every structure that achieves deflection is equivalent to every other structure that achieves deflection, period. Why not? How do you draw the line? And if the line is being extended that far, then the issue of obviousness (or anticipation) certainly needs to be revisited again as it would appear that all prior art solutions to the deflection problem (not just mountable solutions) would need to be considered.

    It is baffling that the Federal Circuit seems intent to animate a doctrine that should be resting in a crypt, waiting for the next blue moon in a leap year.

  11. Especially in view of the judicial inefficiency of returning patent cases back to the D.C. for an undefined claim scope doctrine of equivalents trial [and will not prior art have to be considered re equivalency scope limitations?], will not such a case practially insure another Fed. Cir. appeal and risk yet another Sup. Ct. cert grant?

  12. That assertion could use a little support, 6. The doctrine of equivalents was adopted in recognition of the imprecision of language, especially with regards to developing technologies. As far as I can tell, that imprecision is not “bygone.”

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