Federal Circuit Continues Pushing Back the Vitiation Doctrine

The Charles Machine Works, Inc. v. Vermeer Manufacturing Co. By Mengyi Wang – Edited by Kathleen McGuinness The Charles Machine Works, Inc. v. Vermeer Manufacturing Co., No. 12-1578 (Fed. Cir. July 26, 2013) Slip Opinion 20130807 Charles Machine Works v. VermeerOn July 26, the U.S. Court of Appeals for the Federal Circuit vacated-in-part, affirmed-in-part, and reversed-in-part a lower court’s summary judgment of noninfringement, literally or under the doctrine of equivalents, as to Vermeer Manufacturing Company’s (“Vermeer”) commercial products and non-commercial prototypes. In a unanimous opinion, the Federal Circuit held that The Charles Machine Works (“CMW”) lacked notice that the non-commercial prototypes were within the scope of summary judgment and therefore vacated the relevant part of the lower court’s decision. For the commercial products, the court affirmed the finding of no literal infringement but reversed the grant of summary judgment regarding non-infringement under the doctrine of equivalents. It reasoned that the lower court had improperly discounted CMW’s expert testimony that established genuine factual disputes about equivalence. Patently-O summarizes the history of the litigation and briefly explains the court’s ruling. Finnegan and McKenna Long & Aldridge feature analyses of prior Federal Circuit jurisprudence regarding the doctrine of claim vitiation. CMW’s U.S. Patent No. 5,490,569 (“the ‘569 patent”) claims “a two-pipe drill for boring underground holes in the horizontal direction.” The Charles Machine Works, Inc. v. Vermeer Manufacturing Co., No. 12-1578, slip op. at 2 (Fed. Cir. July 26, 2013). The outer pipe includes a body and casing, and several claims recite “a deflection shoe mounted on a first side of” either “the body” or “the casing.” Id. In 2011, CMW sued Vermeer for infringing its ‘569 patent with two types of Vermeer drills, both the commercial products and non-commercial prototypes, contending that the bent subs on Vermeer’s drills satisfy the “deflection shoe” and “mounted on” limitations. Id. at 1–3. The court vacated the summary judgment concerning the prototypes, which are structurally different from the commercial products. It noted that, based on the title of Vermeer’s moving papers, Vermeer’s proposed final rulings, and Vermeer’s statement at the summary judgment hearing, CMW did not have adequate notice that the lower court was considering the prototypes. Id. at 4–5. The court went on to review the lower court’s construction of “deflection shoe” and “mounted on” and found no error, thus upholding no literal infringement by Vermeer’s commercial drills. Id. at 6. Turning next to the equivalence inquiry, the Federal Circuit disagreed with the lower court and concluded that CMW’s expert declaration raised genuine factual disputes under the "function-way-result" test. Id. at 7–8. The Federal Circuit also addressed arguments based on the doctrine of claim vitiation, which bars a claim on the grounds of “a legal determination that the evidence is such that no reasonable jury could determine two elements to be equivalent” — here, that no reasonable jury could have found equivalence based on the “function-way-result” or “insubstantial differences” tests. Id. at 7 (internal citation omitted). In addressing Vermeer’s argument that vitiation bars a finding of equivalence, the court reiterated that vitiation is not a separate legal limitation on equivalence, but a determination of whether the accused device and the claim element differ too significantly as assessed by the two tests. Id. at 7–8. The decision is a potent reinforcement that the vitiation doctrine is not an exception to the doctrine of equivalents. As Patently-O notes, the Federal Circuit here treats vitiation merely as an application of the “function-way-result” or “insubstantial differences” tests, following its jurisprudence in Deere & Co. v. Bush Hog, LLC, No. 11-1629, -1630, -1631 (Fed. Cir. Dec. 4, 2012) and Brilliant Instruments, Inc. v. Guidetech, LLC, No. 12-1018 (Fed. Cir. Feb. 20, 2013). Patently-O also underscores the notability of the decision given a different application of vitiation to a “mounted on” limitation in Asyst Technologies, Inc. v. Emtrak, Inc. 402 F.3d 1188, 1195 (Fed. Cir. 2005). Finnegan and McKenna Long feature analyses of the court’s decisions in Deere and Brilliant Instruments respectively.