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:
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.