Holding: The “substantially the same way” comparison to find equivalence to a means plus function limitation should focus on the overall structure corresponding to the claimed function and not on the unclaimed, individual components of that structure. An accused structure that operates in the opposite manner to a construed claim limitation cannot be an equivalent under the doctrine of equivalents.
Steuben sued Shibuya for patent infringement of US Patent No. 6,209,591; US Patent No. 6,536,188; and US Patent No. 6,702,985. After a five day jury trial, the patents were found to be valid and infringed, and Steuben was awarded over $38M in damages. However, after the verdict, the district court entered a judgment as a matter of law (JMOL) of noninfringement of all the asserted claims.
The Steuben patents are directed to systems for the aseptic packaging of food products designed to keep microorganisms such as bacteria and viruses from contaminating the packaged food. The ‘591 Patent claims an apparatus for filling a bottle that includes a first sterile region (blue) that surrounds the valve exit that supplies fluid to the bottle and a second sterile region (green) proximate the first sterile region. As shown below, this ensures that the portion of the valve stem shown in red does not introduce contaminants into the first sterile region when the valve stem is extended to allow the liquid to be dispensed.
The district court found that Shibuya’s system included a product pipe that acted as a second sterile region positioned proximate to the first sterile region. However, the district court granted JMOL of noninfringement, finding that the reverse doctrine of equivalents (RDOE) precluded a finding of infringement, holding that Steuben’s expert testimony was wrong as a matter of law and entitled no weight. RDOE allows an alleged infringer to avoid infringement by showing that the accused product is so far changed from the principle of the asserted claims that it performs the same or similar function in a substantially different way.
Although RDOE has been recognized by the Supreme Court in both Boyden Power-Brake Co. v. Westinghouse, 170 U.S. 537, 568 (1898) and in Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 608-09 (1950), Steuben alleged that RDOE was eliminated by the 1952 Patent Act. In particular, Steuben argued that the language “[e]xcept as otherwise provided in this title” in 35 U.S.C. §271(a) requires that exceptions to infringement be expressly identified in Title 35. The argument follows that since RDOE is not codified in Title 35, then it cannot be used as a defense for infringement.
Despite the Federal Circuit describing Steuben’s argument as “compelling,” it refused to decide whether RDOE survived the 1952 Patent Act. Instead, the Federal Circuit found the JMOL of noninfringement was improper because the district court erred in not entitling any weight to Steuben’s expert’s testimony describing the ‘591 Patent’s principle of operation. When Steuben’s expert testimony is considered, the Federal Circuit found that a reasonable jury could have found the principles of operation claimed in the ‘591 Patent and exhibited by the Shibuya system were not so substantially different as to support noninfringement under RDOE.
The ‘188 Patent is directed to an aseptic bottle sterilization filling line and claims “means for filling the aseptically disinfected plurality of bottles at a rate greater than 100 bottles per minute.” A means plus function limitation may be used to describe a claim limitation in terms of a function achieved rather than a definite structure. The limitation is construed to cover the corresponding structure, material, or acts described in the specification. To show infringement, the patent owner must show that the accused product performs the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification. Equivalence of two structures requires that the structures perform the identical function, in substantially the same way, with substantially the same result.
The district court granted JMOL of noninfringement because the Shibuya system uses rotary wheels and neck grippers to move and secure the bottles as they are being disinfected and filled, while the ‘188 Patent describes a system that uses a conveyor and conveyor plate. The neck grippers secure the bottle at the neck, while the conveyor plate secures the base of the bottle. The Federal Circuit overturned district court’s decision, stating that the “substantially the same way” comparison should be tethered to the claimed function rather on focusing on whether the accused structures are equivalent. The individual components of the structure are not the claim limitations, rather, the claim limitation is the overall structure that corresponds to the claimed function. Although the neck grippers of the Shibuya system are structurally different than the conveyor plates of the claimed system, both of these features help perform the same function of holding and moving bottles from one location to another. Therefore, there was no error in the jury’s finding of equivalence and infringement.
The ‘985 Patent claims an apparatus and method that provides interior sterilization of a container by intermittently adding atomized sterilant to a conduit that applies the sterilant to the container. The term “intermittently” was construed to mean added in a non-continuous manner. The Shibuya machines add sterilant continuously, so the district court granted JMOL of noninfringement since the “intermittently added” limitation could not be met under the doctrine of equivalents, since “intermittent” and “continuous” are antonyms of each other. The Federal Circuit upheld the district court’s ruling, agreeing that when intermittent has been construed to mean non-continuous, it is not possible for something done continuously to be equivalent.
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