Vitiation exclusion: a judicial determination ensuring that doctrine of equivalents does not overtake statutory function of claims in defining scope of exclusive rights

Rob Raheja | January 2, 2013

Deere & Co. v. Bush Hog

December 4, 2012

Panel:  Rader, Newman and Plager. Opinion by Rader.

Summary

The United States District Court for the Southern District of Iowa, among other things, construed the claimed term “into engagement with” of ‘980 Patent to require direct contact and construed “being secured to” of ‘980 Patent as “fastened or attached.” Based on this construction, the district court granted Bush Hog & Co. LLC’s and Great Plains Inc.’s motions for summary judgment of noninfringement by holding that Deere did not raise a genuine issue of material fact as to literal infringement because the upper deck walls do not come into contact with the lower deck walls in any of the accused products. In addition, the district court held that Deere could not assert infringement under the doctrine of equivalents because doing so would vitiate the “into engagement with” limitation. Because in the context of the ‘980 Patent “into engagement with” encompasses indirect contact, the Federal Circuit vacated the district court’s construction of this term, reversed the grant of summary judgment, and remanded for further proceedings. Also, the Federal Circuit found that the district court invoked vitiation exclusion in error by refusing to apply the doctrine of equivalents because “a reasonable jury could find that a small spacer connecting the upper and lower deck walls represents an insubstantial difference from direct contact.” Therefore, the Federal Circuit also vacated the grant of summary judgment of no infringement under the doctrine of equivalents.

Details

Deere & Co. (“Deere”) is owner of U.S. Patent No. 6,052,980 (the ” ‘980 Patent”).

Claim 1 of the ‘980 Patent recites:

1. A rotary cutter deck comprising:

a lower, substantially planar, horizontal deck wall (28);

an upper deck wall (56) including a central portion elevated above said lower deck wall, and

front and rear portions respectively sloped downwardly and forwardly, and downwardly and rearwardly from said central portion into engagement with, and being secured to, said lower deck wall;

and right- and left-hand end wall structures respectively being joined to right- and left-hand ends of said lower and upper deck walls to thereby define a box section having torsional stiffness.” (Emphasis in Original, Reference numbers added).

deere1

Literal Infringement

The United States District Court for the Southern District of Iowa, among other things, construed the claimed term “into engagement with” of ‘980 Patent to require direct contact and construed “being secured to” of ‘980 Patent as “fastened or attached.” Based on this construction, the district court granted Bush Hog, LLC’s (“Bush Hog”) and Great Plains Manufacturing, Inc.’s (“Great Plains”) motions for summary judgment of noninfringement by holding that Deere did not raise a genuine issue of material fact as to literal infringement because “the upper deck walls do not come into contact with the lower deck walls in any of the accused products.”

The issue on appeal waswhether the district court’s construction of the claimed term “into engagement with” to require direct contact was proper. Under Phillips v. AWH Corp., 415 F.3d 1303, to properly construe claims:

  1.  “[T]he words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.
  2. [T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which [it] appears, but in the context of the entire patent, including the specification. While claim terms are understood in light of the specification, a claim construction must not import limitations from the specification into the claims.”

Applying Phillips, the Federal Circuit found that the district court erroneously construed the term “into engagement with” to require direct contact between the upper and lower deck walls.

The Federal Circuit found that under its plain meaning, the term “engagement” would include indirect contact. According to the Federal Circuit, “[t]he term ‘engagement’ connotes a connection between two objects in which the motion of one object is constrained by the other. This connection can be indirect, such as where a motor is engaged with a gear through a second, intermediate gear. Also, this construction does not conflict with the construction of claimed term “secured” as the gear and motor can be engaged even if they are not ‘secured’ together, such as with nuts and bolts or by welding.”

Also, the Federal circuit found that the specification of the ‘980 Patent supported the construction that “‘engagement’ includes indirect contact between the upper and lower deck walls.” For example, the Figure 1, reproduced below, shows the filler plates (88) that provide an indirect connection between the upper deck wall (56) and the lower deck wall (28).

In addition, the Federal Circuit was not persuaded by the Defendants’ argument “that the filler plates cannot be considered to bring the upper deck ‘into engagement with’ the lower deck as contemplated by Claim 1, because they are located at a point where the upper deck is substantially horizontal.” Although the Federal circuit agreed with the Defendants’ argument that “[c]laim 1 requires engagement at a point where the upper deck ‘slope[s] downwardly’ to meet the lower deck,” it found that “the specification describes the portion of the upper deck wall where the filler plate is attached (labeled 64 in Figure 1) as ‘convexly bowed’ from front to rear. In other words, the upper deck wall is ‘sloped downwardly’ at the point where it engages the lower deck wall via the filler plate.”

deere2

 

 

 

 

Because in the context of the ‘980 Patent “into engagement with” encompasses indirect contact, the Federal Circuit vacated the district court’s construction of this term, reversed the grant of summary judgment, and remanded for further proceedings.

Infringement Under Doctrine of Equivalents/ Vitiation

“[T]he district court [also] held [that] Deere could not assert infringement under the doctrine of equivalents because doing so would vitiate the ‘into engagement with’ limitation.” The district court was of the opinion that because it construed “contact” to require “direct contact,” allowing “no direct contact” would vitiate this construction.

The Federal Circuit disagreed. According to the Federal Circuit, “‘Vitiation’ is not an exception to the doctrine of equivalents, but instead a legal determination that ‘the evidence is such that no reasonable jury could determine two elements to be equivalent.’” The Federal Circuit explained that vitiation exclusion is properly invoked by courts in situations “where the accused device contain[s] the antithesis of the claimed structure” and “application of the doctrine of equivalents would ‘vitiate’ a claim element.” (Emphasis added).

For example, in Planet Bingo, the Federal Circuit upheld the district court’s refusal to apply the doctrine of equivalents because “the proposed application of the doctrine of equivalents would change ‘before’ to ‘after,’ a more marked difference.” More specifically, in Planet Bingo, “the difference in timing create[d] a difference of knowing the winning combination before the game starts or after the game starts. [Whereas the accused device,] Rainbow Bingo[,] always determine[d] the winning combination after start of the game. Therefore, it [the winning combination in the accused device] cannot be ‘predetermined.’” Also, in Moore case, the Federal Circuit “refused to find infringement under the doctrine of equivalents for an accused product with only a minority of adhesive strips where the claim called for a majority.” (Emphasis added).

In other words, in Planet Bingo and Moore cases, the vitiation exclusion was properly invoked because no reasonable fact finder could determine “before” to be equivalent to “after” or “minority” to be equivalent to “majority” without actually reading the claimed limitation right out of the claim.

According to the Federal Circuit, “[t]he proper inquiry for the court is to apply the doctrine of equivalents, asking whether an asserted equivalent represents an ‘insubstantial difference’ from the claimed element, or ‘whether the substitute element matches the function, way, and result of the claimed element.’ If no reasonable jury could find equivalence, then the court must grant summary judgment of no infringement under the doctrine of equivalents.”

In the present case, the Federal Circuit found that the district court invoked vitiation exclusion in error by refusing to apply the doctrine of equivalents because “a reasonable jury could find that a small spacer connecting the upper and lower deck walls represents an insubstantial difference from direct contact.”

Therefore, the Federal Circuit vacated the district court’s determination that Deere is barred from asserting infringement under the doctrine of equivalents.

Prosecution Tips

Keep in mind that the language in the specification can limit the scope of the patented claims in future proceedings. Therefore, at the time of writing the specification, the specification drafter should be careful in choosing words that go into the specification. For instance, in this case, the specification did not limit the claims to require “direct contact” between the upper and lower deck walls. As the Federal Circuit pointed out, the specification used the words such as “cooperate”, “join”, “engage” that, under the plain meaning, defined the relationship between the upper and lower deck walls without requiring direct contact.

Full Opinion

Patent At Issue

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