February 21, 2013
Brilliant Instruments filed a declaratory judgment action against GuideTech over microprocessor timing error detection circuits (e.g., 6,181,649). Brilliant prevailed before the district court, which found non-infringement. GuideTech appealed, arguing that the district court got it wrong in considering the doctrine of equivalents.
Brilliant Instruments v. GuideTech (CAFC 2012-1018) precedential; Judges Dyk (dissent), Moore (author), Reyna
One way of proving infringement under the doctrine of equivalents is to show, for each claim limitation, that 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." Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009). This is a question of fact. Id.; Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1313 (Fed. Cir. 2003).
Detailed application of the function-way result test to the claim element and the allegedly equivalent feature of the accused product is sufficient to create a genuine issue of material fact for the jury to resolve.
Reversed and remanded.
Judge Dyk dissented, beginning with an echo of the same case law to different effect.
The function-way-result test for equivalents requires "showing on a limitation by limitation basis that the accused product performs substantially the same function in substantially the same way with substantially the same result." Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009) (emphasis added). Similarly, we have recently reiterated that "[r]egardless [of] how the equivalence test is articulated, 'the doctrine of equivalents must be applied to individual limitations of the claim, not to the invention as a whole.'" Mirror Worlds, LLC v. Apple Inc., 692 F.3d 1351, 1357 (Fed. Cir. 2012) (quoting Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997) (emphasis added)). This guidance to consider each claim limitation under the doctrine of equivalents flows from the principles of claim vitiation, which require a determination of whether there is a substantial difference or a difference in kind between each individual claim limitation and the accused product. See Trading Techs. Int'l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1355 (Fed. Cir. 2010).
On the panel, Judge Dyk held the short straw in agreeing with the district court, arguing that the same result could not be had because the way the function works is not the same.
But there is no evidence in the record - from Dr. West or elsewhere - explaining why the difference between the claimed invention and the accused device (i.e., that the capacitor in the accused device is located inside, as opposed to outside, the first current circuit) is insubstantial or how the function-way-result test is satisfied as to this limitation.
Ready application of the law continues to elude U.S. patent courts at every level. Under the current regime of obtuseness, patent litigation is guaranteed to be a case-by-case crapshoot, where bias and subjectivity decide the day over rigorous legal logic applied to genuine issues of material fact. However damaging to rule of law in the large, case-by-case how courts like to decide matters, precisely because it affords subjective bias.
Posted by Patent Hawk at February 21, 2013 12:52 AM | Infringement