by Dennis Crouch
Steuben Food recently lost its infringement case against Shibuya Hoppmann with the district court holding (1) the doctrine of equivalents (DOE) cannot extend to cover the accused aseptic bottle filling technique and further (2) the reverse doctrine of equivalents shields the defendant against charges of literal infringement. Steuben Foods, Inc. v. Shibuya Hoppmann Corp., No. 1:19-cv-02181-CFC, 2023 WL 2498810 (D. Del. Mar. 14, 2023) (U.S. Patent Nos. 6,209,591; 6,536,188; and 6,702,985) (Chief Judge Connolly). The case is now pending on appeal at the Federal Circuit with the successful defendant’s responsive brief due in mid-September.
There is fierce competition in the bottling industry, and Shibuya sold bottling lines to a major Steuben customer. Steuben sued Shibuya on three patents and initially won with a jury awarding $38 million in infringement damages. However, Chief Judge Connolly rejected the jury verdict by issuing a Judgement Notwithstanding the Verdict, holding that no reasonable jury could have found infringement. The rules of civil procedure now identify JNOV as the perhaps more politically correct name of Judgment as a Matter of Law (JMOL). The new name avoids the inconvenient truth that the process involves the rejection of a constitutionally protected jury decision.
Based upon what I’ve read — that admittedly does not yet include the appellee’s brief — I would side with Steuben Foods in this one. Judge Connolly was too aggressive at rejecting the jury verdict of infringement; too aggressive at applying the vitiation doctrine to a single word within the claim; and too aggressive at applying the long dormant reverse doctrine of equivalents.
= = =
Judge Connolly’s JMOL decision turns on two controversial patent law doctrines – the doctrine of equivalents and its inverse, the reverse doctrine of equivalents.
Doctrine of Equivalents
The doctrine of equivalents allows a patentee to establish infringement, even when an accused product or process does not literally fall within the claims of the patent, if the accused product or process contains only insubstantial differences from the patent claims. The Supreme Court recognized the doctrine of equivalents in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950), explaining that it operates to prevent copying that makes only minor, insubstantial changes to avoid the literal scope of the claims. The doctrine is justified on the basis that language has inherent limitations in capturing the true scope of an invention, so equivalents help protect the inventor and promote innovation. However, the doctrine is controversial because it expands patent scope beyond literal claim terms, reducing public notice and potentially ensnaring later-developed technologies in infringement. The Supreme Court placed key limitations on the doctrine in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), requiring equivalence to be assessed on an element-by-element basis and prohibiting vitiation of claim limitations.
Steuben’s ‘985 patent covers a sterilization machine and includes the following element: “wherein said atomized sterilant is intermittently added to said conduit.” Claim 1 (emphasis added). The problem though is that the accused device was shown to add the sterilant continuously. Although the jury found infringement by equivalents, the district court reasoned that the doctrine of equivalents could not apply in this type of binary situation. That lead to the court’s conclusion that allowing equivalents for continuous operation would vitiate the intermittent operation limitation. On appeal, Steuben contends the court ignored precedent against using a ‘binary choice’ approach to vitiation. See, Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356–57 (Fed. Cir. 2012) (“Courts should be cautious not to shortcut this inquiry by identifying a ‘binary’ choice in which an element is either present or ‘not present.'”). The patentee also argues that substantial evidence supported the jury’s equivalents verdict based on applying the proper function-way-result test.
This aspect of the dispute thus raises important questions about how narrowly the doctrine of equivalents should be applied. And, in addition, it challenges the power distribution between judge and jury in finding infringement.
Reverse Doctrine of Equivalents
A more surprising aspect of Judge Connolly’s decision is his application of the reverse doctrine of equivalents. Reverse DOE allows an accused infringer to escape liability, even if its product or process literally satisfies every element of the patent claim, if the accused product or process is so substantially changed in principle that it performs the same or a similar function in a substantially different way. The doctrine originated in Supreme Court precedent such as Graver Tank and was designed to prevent unwarranted extension of patent scope over later-developed technologies functioning in new ways. However, the doctrine is controversial because it negates what would otherwise constitute infringement under the statute, conflicts with literal claim interpretation, and is seldom applied by courts today.
For the ‘591 patent, the lower court rejected the jury verdict of infringement based upon the reverse DOE — holding that the accused product operated “in a substantially different way” from Steuben’s invention as described in its specification. Here, the claims required a “second sterile location.” Steuben accomplished this with a redesign of filling valves to avoid attracting contaminants and use of sterilant. On the other hand, the accused product used a bellows surrounding the valve stem to prevent contamination.
The district court found the accused product’s approach to fit within the literal claim scope, but still non infringing because the approach was radically different from that described in Steuben’s specification.
In the case, Shibuya provided expert testimony of the key differences of operation by comparing the accused product against the disclosed embodiments. During the trial, the patentee focused on the claim language and did not attempt to rebut the argument that the underlying approaches to create the sterile region was quite different. (Steuben also apparently mischaracterized the patents disclosure). In its JMOL decision, the court concluded that the unrebutted evidence of significant difference was enough to entitle Shibuya to JMOL of noninfringement under the reverse doctrine of equivalents. The court emphasized here that the critical issue is whether the accused device is so far changed in principle that it operates substantially differently from the claim, even if it literally infringes.
On appeal, Steuben argues the court fundamentally misapplied Reverse DOE analysis by comparing Shibuya’s device to patent specifications rather than the actual claims. It also contends the Reverse DOE improperly negates infringement, conflicting with the Patent Act.
The Federal Circuit now has the opportunity (and duty) to shape the law on these two important equivalents doctrines. On the doctrine of equivalents, the court can provide guidance on applying a legal test of vitiation versus the factually intensive function-way-result test. In the lead up to the recent Amgen decision, many of us have had ongoing discussions about the relationship between disclosure doctrines (enablement/WD) and the doctrine of equivalents. As one doctrine is locked-down, there is more pressure to expand the other. With so much focus on the disclosure side, it may be time to ease up on the DOE limitations.
For the reverse doctrine of equivalents, the court can clarify if this much maligned doctrine still remains viable in today’s statutory framework. And if so, the court should delineate the proper role of the reverse doctrine versus literal claim interpretation. As with DOE, I would argue that reverse DOE should be given to the jury to decide rather than JMOL.
The appeal was filed by Cook Alciati (Steuben’s former Chief IP Counsel, now in private practice at Gardella Grace). A team from Sterne Kessler, apparently led by appellate specialist JC Rozendaal represents the defendant-appellee.
What we need is antiseptic for the inane virtue signaling in the series of articles that brook no (direct) rebuttals.
Take for example this statement and ponder it for just a little while:
“ Although it is no surprise that both men and women benefit from the support of patent professionals, interestingly, female applicants derive much more significant gains than men from firm and attorney affiliations.”
If this assertion is true, ‘women’ (in single quotes as I am not a biologist), already have a disproportionate – and yes, you may equate that to inequitable – advantage.
If the assertion is false, why make it?
As one of these professionals, I am insu1ted by the implied assertion that I am complicit in some type of “muh patriarchy” that is actively denying innovation protection based on gender.
What diversity means to a Woke person is that they can openly discriminate against white males and (and females in some cases.)
The irony is that our society was making incredible gains in the 2000’s. And then the Ds figured out that if they didn’t divide us that they would lose. A poll was done in like 2010 and found that middle class black, white, and Hispanic people had the most in common in the entire country and should be voting in block. That is when the Ds started pouring gasoline on the racism fire.
Always look at who is to gain. Filth like Pelosi have the most to gain.
More asinine from the post that brooks no critique:
“It is crucial to address these challenges at each stage of the pipeline with interventions such as providing better access to information and free legal representation.”
Translation: do NOT treat me equally in the name of “equity.”
Activist Privilege at its finest.
(that would be a hard NO)
I am all for removing unjust unequal treatment, but you do not get “there” by insisting on unjust and unequal treatment.
You two nutcases really need to be smacked with a baseball bat across the face, ideally swung by a young brown skinned gay woman. Turn off whatever puke funnel your mainlining and get a fan life already.
What (exactly) does “fan life” mean?
Aside from your own immediate call for violence (with that peculiar intersectionalist tone), maybe you should sit still for a moment, gather yourself and control your emotions and then realize that my positions are NOT “anti” any actual personal rights, but instead are “anti” the attempted usurpation of actual equality under the (misguided) guise of Woke and its accompanying virtue signaling.
One simply does not — cannot — fight discrimination and bigotry WITH discrimination and bigotry.
Inform yourself.
“Fan life” means that your beloved “AI” is total c r @ p.
AI is a total non sequitur to the topic at hand.
Please pay attention.
What diversity means to a Woke person is that they can openly discriminate against white males and (and females in some cases.)
Three quick thoughts:
(1) You are certainly correct that one can find self-professed “woke” internet voices that make a case much like the one you describe above.
(2) It should be self-evident to anyone with any experience in the actual workforce, however, that this line of thinking has essentially zero influence in the real world. That line of thinking in an invitation to a lawsuit, and (not surprisingly) the number of actual hiring managers who act (or even think) that way is vanishingly small.
(3) No white male needs to be all that anxious about discrimination in the workplace (or any other aspect of society) simply on the basis of their whiteness or their maleness. Just look around you and start counting. Law partners, federal judges, Fortune 500 CEOs, Congress members, heads of executive agencies, college professors, medical doctors, journalists, authors, musicians, etc. In pretty much any desirable station in society or line of work, white men are present in a manner at least proportional to their presence in society, and often out of proportion. We white guys are doing just fine. No need to get anxious.
About the only line of work in which we are not present in numerical proportion to our prevalence in the overall population is elite athletics. If we are going to be over-represented in so many other lines, mathematically we have to be under-represented somewhere. Even there, you do not have to work hard to find white males in the elite reaches of celebrated athletics (e.g., Djokovic, Brady, Jokic, Snell, etc).
[I]n like 2010… the Ds started pouring gasoline on the racism fire… Filth like Pelosi have the most to gain.
Both the date and the attribution of blame here seem wrong to me. For one thing, the politics of the entire first half of the XX century were dominated by the Southern monomania around white supremacy. Secondly, even if we confine the analysis to U.S. politics as they existed after the 1960s civil rights movement, one sees racial identity politics playing out in big ways on both sides long before the 2010s. Jesse Helms Hands ad aired in 1990, while Rev. Al Sharpton tried to use Tawana Brawley to seize political power in New York in the late 1980s and early 1990s.
Nothing special about racial identity politics newly emerged in the 2010s, and nothing about it was unique to one party of the other. Indeed, it seems passing strange to point at Nancy Pelosi, whose politics were far less centered on racial identity (or any other demographic identity) than were so many of her contemporaries.
“(2)” is the quintessential Motte and Bailey.
It is also absolutely incorrect given the aims of the Sprint Left philosophy.
But then again, Greg already fully know this.
… and on queue, the New York Times (that bastion of Sprint Left propaganda) in commemorating Dr. King’s non-divisive aim of judging on character and not color,
F
A
I
L
S
to even mention that Hope:
link to nytimes.com
As for your item (2), I suggest you look into Mansfield Certification for law firms and law departments.
It requires that law firms consider at least 30% women, racial and ethnic minorities, LGBTQ+ lawyers, and lawyers with disabilities for leadership and governance roles, equity partner promotions, formal client pitch opportunities, and senior lateral.
I have seen leadership roles change greatly in law firms that seek such certification. Similar to the impact of Affirmative Action in college admissions, the result is that non-gay white males must be outstanding to be considered for leadership positions. Is that equity?
Is Mansfield a quota system?
Or is it a type of “Activist-washing?”
Per Greg, the actuality regardless of any stated aims (or perhaps Quota of candidates (merely) ‘considered’) speaks to NO cause for ANY concern (for ANY demographic set — that is, until you hear that exact same snippet as used by Greg AS the basis of Activist Privilege and the call for MORE Sprint Left ideologies that one will be forced to bend the knee to).
Yes. 🙂
I’d feel better about this will turn out if Newman was on the CAFC panel.
“a constitutionally protected jury decision.”
LOL. This is the same Constitution that turns women into second class citizens. The idea that a “jury decision” is some holy truth that can never be nullified is pretty funny but hey Missouri is a funny state where people say all kinds of things.
Always feel free to go somewhere else if the Constitution here soooo upsets you.
The idea that a “jury decision” is some holy truth that can never be nullified is pretty funny but hey Missouri is a funny state where people say all kinds of things.
You know what state cast the largest single vote total for Donald Trump in 2020? California. Evidently it is not just Missouri where people say and do funny things. Every state has its “funny” population, for better or worse.
^^^
A: 1 a r s, statisticians and damm statisticians.
Q: well, I don’t recall the specifics, but it has to do with Mark Twain.
I am going to regret asking this, but how does the Constitution turn women into second class citizens exactly?
He might be thinking pre-19th Amendment.
PM,
I hope that you are not actually waiting for an answer from Malcolm. A legitimate one will not be forthcoming.
(as it is, his feelings need no actual factual support)
One can dream…
I sometimes I feel like I live in a different world than the people who see discrimination and victimhood in everything.
I sometimes I feel like I live in a different world than the people who see discrimination and victimhood in everything.
That is fair. I feel like I live in a different world than the one in which you purport to live. Your 6.1.2.3, for example, suggests that you live in a world in which straight, white men face hostile discrimination in the search to fill law firm leadership positions. This seems like no world that I have ever experienced. When I look around, I see firm after firm whose leadership teams are disproportionately composed of white men. I am hard pressed to perceive this putative discrimination.
Speaking as a straight, white man, I think I might have noticed if the world were stacked against me. This just really does not jibe with my own experience.
Mansfield Certification for law firms… requires that law firms consider at least 30% women, racial and ethnic minorities, LGBTQ+ lawyers, and lawyers with disabilities for leadership and governance roles, equity partner promotions, formal client pitch opportunities, and senior lateral.
Sure, as I noted above, you can find all sorts of things talked about on the internet. But then you look around at actual law firms in the real world, and you notice that among large firms, Paul Hastings has the highest percentage of non-white equity partners (22.3%), and it drops off quickly after that. Squire Patton Boggs, for example, has only 17.3%—and they still place in the top ten for non-white equity partner totals.
In other words, even in the large firm with the fewest white equity partners, the total still comes in at 77.7%. And remember, that was the firm with the fewest white equity partners as a percent of the total—most have even higher percentages, including all of the wealthiest and most prestigious white shoe firms!
We white folks are doing just fine. No need to worry that we are being marginalized or repressed.
“I feel like I live in a different world than the one in which you purport to live.”
One only has to see the heavy stream of Sprint Left propaganda that Greg is nigh constantly (hidden) signaling with to see what “world” Greg lives in.
Historically, how many POCs go/have gone to law school? That is the first issue. The supply pipeline is simply not there. It is increasing, but look at the numbers. Many firms are fighting over the same pool of POCs. Require a science background, and the number of POCs available decreases even more. Why do people ignore this basic fact? You tell me. Because, you ignored it.
The percentage of POCs currently enrolled in law schools is around 30%. The highest percentage is Hispanic (40%).
One also needs to look out career choices in law. How many want to go into private versus government practice? Criminal versus civil?
So, you are not going to see the change overnight, but if firms keep following Mansfield, you will see a change. As I mentioned, we already are.
I believe women surpass men in law school classes in numbers, but the numbers who stay in practice drop off. That is an area where we may need to see some changes. How to address female attrition/leadership/partners. Some firms have implemented part-time partnership tracks. But, as a woman, I would not want to be elevated just or mainly because I am a woman.
Context does not matter to Equity.
For that matter; neither does equality (or opportunity or otherwise).
The number one goal (as well as goals 2-5) is power.
Pure and simple.
See the great multitude of highly detailed exposes by Dr. James Lyndsay (New Discourses on Spotify).
The Planck time is 5.39×10**(-44) s.
Time that is shorter than that has no meaning.
The Planck length is 1.6 x 10**(-35) meters.
A length that is shorter than that has no meaning.
That means that time and length are quantized and nothing is continuous.
Near your Planck items, things get a little, shall we say, foamy…
link to youtu.be
“The new name avoids the inconvenient truth that the process involves the rejection of a constitutionally protected jury decision.”
Stir the pot
As invoked here, the reverse DOE is mindless.
The non-applicability of the DOE, on the other hand, makes perfect sense here. You can’t drop a term like “intermittent” into a claim and then find infringement of a device/method that operates continuously. That makes no sense. There’s no equity there and no justice.
“ Steuben’s ‘985 patent covers a sterilization machine and includes the following element: “wherein said atomized sterilant is intermittently added to said conduit.” … The problem though is that the accused device was shown to add the sterilant continuously… That lead to the court’s conclusion that allowing equivalents for continuous operation would vitiate the intermittent operation limitation.”
Of course this is the correct result. How could it be otherwise?
agree. what am i missing?
Obviously, you only talk about DoE when there isn’t literal infringment i.e., DoE inherently ‘vitiates’ something in the claims.
Here, the actual element was either “a second supply source providing a non-intermittent supply of hot sterile air to a conduit” or “an atomizing system producing an atomized sterilant from the mixing of the sterile air from the first supply source of sterile air with the sterilant.” The language at-issue comes from a wherein clause modifying one/both of them.
Without knowing the art, I guess I could see a reasonable jury finding that the main function/way/result was adding the atomized sterilant to a conduit located between the atomizing system and the container.
As to the “drop” of the word “intermittent” into the claim, I am wondering why the Applicant did that. Perhaps it is irrelevant to the outcome under US law but I should still like to know why.
Was it, for example, to distinguish over close prior art?
Or was it perhaps that doing it intermittently delivers some technical performance result that you don’t get if you do it continuously? That’s my EPO background again, thinking that a patent claim defines an invention as a combination of technical features which work together to deliver a technical effect, an effect not delivered when even only one of the recited elements is absent.
Doesn’t any of this “technical effect” stuff matter, in a US Function-Way-Result DoE analysis?
As to the “binary choice” aspect, I do find it a little unfortunate, and liable to bring patent law into disrepute, that if the claim stipulates “black” and the accused infringer uses white, you still have to go through all the F-W-R analysis before you can say that there is no infringement.
While I am not disagreeing with your view of “every element recited should matter,” is not the result here a necessary byproduct of the Courts wanting a “gist of the invention “ mentality?
As it often appears, some people applaud the “kit” (when it serves their Ends), but have trouble with the (necessarily) accompanying “kaboodle.”
>Was it, for example, to distinguish over close prior art?
It was presumably part of the as-filed claims (else Festo would preclude DoE), though I suppose they could have done a pre-filing search.
Side note: claim 26 in the OP is drafted kinda weirdly too. The “350 bottles per minute” limitation seems unlikely to add patentable weight today. Early means-plus-function rewrite??
As to the 350 per minute limitation, there was a case in England about a hundred years ago, the claim being directed to a cigarette making machine. Inclusion in the claim of a limitation to high speed machines was found by the court to be effective to avoid a fatal novelty attack on otherwise inventive subject matter. Molins 55RPC31.
My answer blocked in the filter. No idea why. Perhaps the presence of an “f” word.
Will edit and try again.
As to the 350 per minute limitation, there was a case in England about a hundred years ago, the claim being directed to a cigarette making machine. Inclusion in the claim of a limitation to high speed machines was found by the court to be effective to avoid a good novelty attack on otherwise inventive subject matter. Molins 55RPC31.
It was the f word. My winning edit was to replace it with “good”.
The filter rules never cease to amaze. But one lives in hope (that AI will improve the filtering rules).
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