Brilliant Instruments v. GuideTech – Doctrine of Equivalents on Review
Contributed by Theresa Stadheim of Schwegman Lundberg & Woessner
In Brilliant Instruments, Inc., v. Guidetech, LLC, Appeal no. 2012-1018 (Fed. Cir. February 20, 2013) (a copy can be found at the end of this post), a panel of the Federal Circuit reversed and remanded the Northern District of California’s summary judgment that Brilliant Instruments, Inc. (“Brilliant”) did not infringe GuideTech’s patents: 6,226,231 (the ‘231 patent), 6,091,671 (the ‘671 patent) and 6,181,649 (the ‘649 patent). (A copy of each patent can be found at the end of this post.)
One issue was whether there was a genuine issue of material fact as to whether Brilliant infringed the ‘671 and the ‘649 patents under the doctrine of equivalents. The particular claim limitation at issue recited in claim 1 of the ‘671 patent: “wherein said shunt and said capacitor are operatively disposed in parallel with respect to said first current circuit.”
The court applied a doctrine of equivalents test, quoted in Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., and asked whether GuideTech created a genuine issue of material fact regarding whether Brilliant’s capacitor, while in the first current circuit, “could still perform substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product.” Crown Packaging Tech., Inc. v. Rexam Beverage Can Co.l, 559 F.3d 1308, 1312 (Fed. Cir. 2009).
Brilliant argued that doctrine of equivalent infringement theory vitiated the requirement that the claimed “first current circuit” and “capacitor” are separate claim elements. The court cited Deere & Co. v. Bush Hog, LLC _F.3d_, Nos. 2011-1629, -1630, -1631, 2012 WL 6013405 (Fed. Cir. Dec. 4, 2012):
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 proper inquiry for the court is to apply the doctrine of equivalents, asking 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.
The court stated that vitiation can most clearly be applied when the accused device contains elements that are polar opposites of the device it is accused of infringing. As further stated by the court, the vitiation test cannot be satisfied by simply noting that an element is missing, because the doctrine of equivalents recognizes that the missing element could be supplied by an equivalent substitute. The court was not convinced by Brilliant’s vitiation argument, and the court found that the expert witness, Dr. West, applied the function-way-result test in such a way to show that there was a genuine issue of material fact. Accordingly, the court reversed and remanded.
The dissent disagreed that there was a genuine issue of material fact as to whether the accused device infringed the ‘671 and ‘649 patents under the doctrine of equivalents. As noted by the dissent, the district court construed the “in parallel” from the limitation at issue to mean “arranged in a manner capable of forming alternative paths of current such that the current can flow across one or the other path.” The expert witness did not explain how the capacitor, placed as it was, could have been capable of forming alternative paths of current such that the current can flow across one or the other path.
The dissent stated that doctrine of equivalents test must be applied to individual limitations of the claim, not the invention as a whole. Mirror Worlds, LLC v. Apple Inc., 692 F.3d 1351, 1357 (Fed. Cir. 2012). The dissent noted that this guidance flows from the concept of vitiation, which requires a determination of whether there is a substantial difference or a difference in kind between each individual limitation and the accused product. The dissent stated that the expert witness’s testimony applied to the device as a whole rather than each individual limitation and that this was inconsistent with previous case law. Also, according to the dissent, the expert witness did not explain why the difference between the claimed invention and the accused device was insubstantial or how the function-way-result test was satisfied as to the limitation at issue.