CAFC declines to declare RDOE subsumed under 1952 Patent Act despite ‘compelling’ arguments
“[T]he CAFC did not find any reason to affirm a ruling of noninfringement under the reverse doctrine of equals (RDOE) in this case, as it was improper for district court to grant JMOL.”
On the 25th of January, the U.S. Court of Appeals of the Federal Circuit (CAFC), issued a precedent-setting decision in Steuben Foods, Inc. v. Shibuya Hoppman Corp., reversing in part the District of Delaware District of Delaware District of Delaware District of Delaware District of Delaware District of Delaware District of Delaware District of Delaware District of Delaware District of Delaware District of the District of Delaware District of Delaware District of Delaware District of Delaware District of Delaware District of Delaware District of Delaware District of Delaware District of Delaware District’s post trial rulings of Delaware District of Delaware District of Delaware District of Delaware District of Delaware District of Delaware District of Delaware Post-trial judgments of the District of Delaware District of Delaware’ The Federal Circuit reversed the noninfringement findings under the reverse doctrines of equivalents. They declined to declare that the doctrine was subsumed under the 1952 Patent Act but found that Steuben Foods made “compelling arguments” on this point. Chief Judge Moore authored the opinion.
Elma-based food manufacturer Steuben Foods filed a patent lawsuit against Shibuya Hoppman, in the Western District New York in 2010. Shibuya filed a renewed motion for JMOL for noninfringement on all of Steuben Foods’ asserted patent claims, which was granted by U.S. District Judge Colm Connolly. He also conditionally granted a new trial under Federal Rule of Civil Procedure 50(c)(1). After the trial, Shibuya filed a renewed motion for JMOL for noninfringement on all of Steuben Foods’ asserted patent claims, which was granted by U.S. District Judge Colm Connolly, who also conditionally granted a new trial under Federal Rule of Civil Procedure 50(c)(1).
District Court Improperly Discredited Expert Testimony When Applying RDOE
Shibuya had argued that it’s P7 aseptic bottling line did not infringe claim 26 of Steuben Foods’ U.S. Patent No. 6209591, Apparatus for Container Filling with an Aseptic Processing Apparatus. The district court determined that Shibuya’s bottle filling line met the literal claims by using a valve system with first and second sterile areas to prevent contamination of valve stem. Judge Connolly granted JMOL after trial, as he found that Shibuya had made a prima facie case for RDOE, giving no weight to testimony proffered by Steuben Foods’ infringement expert. Judge Connolly granted JMOL after trial as he found Shibuya made a prima-facie case for RDOE and gave no weight to testimony given by Steuben Foods infringement expert. Steuben Foods posited that RDOE conflicts directly with the 35 U.S.C. direct infringement provisions. SS 271(a) and was effectively subsumed under the patent specification requirements codified in 35 U.S.C. SS 112. In Steuben Foods’ eyes, defendants trying to avoid literal infringement on overbroad patent claims should raise a Section 112 validity challenge instead of pursuing RDOE as a defense.
Although the Federal Circuit found Steuben Foods’ arguments compelling, the appellate court found no reason to affirm a noninfringement ruling under the RDOE for the first time ever, since it was improper for the district court to grant JMOL in this case. The Federal Circuit determined that the jury could credit testimony of Steuben Foods expert, whom Judge Connolly had discredited because he misrepresented the contamination exposure in the second sterile area claimed by the ‘591 Patent. However, Steuben Foods’ expert proffered other testimony on the operation of the second sterile region in relation to contaminants that the jury was free to consider, the Federal Circuit found.
JMOL Rulings Affirmed-in-Part Due to Stipulated Claim Construction
The Federal Circuit also found that the district court erred in its means plus function analysis relevant to Steuben Foods’ U.S. Patent No. The Federal Circuit also found that the district court erred in its means plus function analysis relevant to Steuben Foods’ U.S. Patent No. The ‘188 claims a device to aseptically bottle aseptically sterilized foodtuffs with a means of providing a plurality bottles and a way to fill more than 100 bottles per minute. Steuben Foods’ infringement expert testified that the rotary wheels and neck grippers of Shibuya’s accused product works in substantially the same way as the conveyor structure identified in the ‘188 patent, which the appellate court found to be substantial evidence supporting the jury’s infringement finding.
Steuben Foods was unsuccessful, however, in overturning Judge Connolly’s post-trial JMOL ruling of noninfringement as to the asserted claims of U.S. Patent No. Apparatus for providing Container Interior Sterilization with an Aseptic Processing Apparatus. As to claim 1’s requirement that an atomized sterilant is “intermittently added” to a conduit, both Steuben Foods and Shibuya stipulated to a construction that meant the sterilant was “added in a non-continuous manner.”
Although the jury found that the Shibuya system, which added atomized sterilant in a continuous manner, infringed the ‘985 patent under the doctrine of equivalents (DOE), the Federal Circuit concluded that this finding essentially vitiated the ‘985 patent’s claim language given the stipulated claim construction. “Something that is done non-continuously cannot be the equivalent of something done continuously,” the Federal Circuit held.
Finally, reviewing the district court’s grant of a motion for new trial under Third Circuit regional law, the Federal Circuit found that the district court provided no rationale for ordering a new trial on validity and damages, and that any analysis regarding a new trial on infringement was subsumed by the appellate court’s ruling. The Federal Circuit vacated the district court’s conditional grant of motion for a new trial and remanded for further proceedings.
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Steve Brachmann
Steve Brachmann graduated from the University at Buffalo School of Law in May 2022, earning his Juris Doctor. He served as the president of the Intellectual
