Intelectual Property (IP)

Alston & Bird

Steuben Foods, Inc. v. Shibuya Hoppmann Corp., et al., No. 2023-1790 (Fed. Cir. (D. Del.) Jan. 24, 2024). Moore’s opinion, with Hughes and Cunningham.

Steuben filed a lawsuit against Shibuya alleging infringement of three patents related to systems for aseptic packaging of foods. A jury returned a verdict finding the patent claims valid and infringed and awarding damages of more than $38 million.

After the verdict, Shibuya moved for judgment as a matter of law (JMOL) of noninfringement, invalidity, and damages, and in the alternative moved for a new trial. The court granted JMOL for noninfringement of the three patents. It also found Shibuya waived its invalidity arguments. A new trial was granted conditionally on infringement, validity, and damages. Steuben appealed. The district court’s awarding of JMOL noninfringement to the first patent was based on reverse doctrine of equals (RDOE). In that doctrine, a defendant can avoid infringement if they show that their product is “so far changed in principles from a patented item that it performs the exact same or a very similar function in a significantly different way”, even if the product falls under the literal words of a claim. The Federal Circuit found “Steuben’s arguments compelling” and noted that the court has “never affirmed a decision finding noninfringement based on the reverse doctrine of equivalents.” But the court ruled that it “need not decide whether RDOE survived the 1952 Patent Act” because here “there was substantial evidence to rebut any prima facie case of RDOE.” Thus, the Federal Circuit reversed the district court’s JMOL of noninfringement.

For the second patent, the Federal Circuit again reversed the JMOL of noninfringement. The asserted claim included means-plus function limitations. The district court ruled that a reasonable juror would not be able to find that the “way” in which the accused machines operate is substantially the same as what was claimed, and therefore JMOL could not be found guilty of infringement. The Federal Circuit disagreed because Steuben’s expert had provided testimony “that went directly to the ‘way’ the structures operate in the context of the claimed function, and provided the jury substantial evidence with which to find infringement.”

Turning to the third patent, the claims require a sterilant to be added to a conduit “intermittently.” The accused machines add the sterilant continuously rather than intermittently, and the jury found infringement under the doctrine of equivalents. The district court reversed the verdict, and Shibuya JMOL was awarded noninfringement. “Intermittently” is an antonym for “continuously”, not equivalent. The Federal Circuit agreed, explaining that a finding of infringement under the doctrine of equivalents “would vitiate the claim limitation,” since “something that is done non-continuously cannot be the equivalent of something done continuously.”

Lastly, the Federal Circuit reversed the conditional grant of a new trial on infringement because the district court did not provide any basis for granting a new trial that was not subsumed by the Federal Circuit’s JMOL analysis. The Federal Circuit also vacated a conditional grant of new trial on invalidity or damages because the district courts did not provide their reasoning. The Federal Circuit therefore vacated the conditional award of a new hearing and remanded.

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