Federal Circuit Once Again Addresses Vitiation Test Under the Doctrine of Equivalents | Practical Law

Federal Circuit Once Again Addresses Vitiation Test Under the Doctrine of Equivalents | Practical Law

In Brilliant Instruments, Inc. v. GuideTech, LLC, the US Court of Appeals for the Federal Circuit rejected the alleged infringer's vitiation argument in reversing the district court's summary judgment determination that the accused product did not infringe the asserted patents under the doctrine of equivalents.

Federal Circuit Once Again Addresses Vitiation Test Under the Doctrine of Equivalents

by PLC Intellectual Property & Technology
Published on 22 Feb 2013 • USA (National/Federal)
In Brilliant Instruments, Inc. v. GuideTech, LLC, the US Court of Appeals for the Federal Circuit rejected the alleged infringer's vitiation argument in reversing the district court's summary judgment determination that the accused product did not infringe the asserted patents under the doctrine of equivalents.
Brilliant Instruments, Inc. commercializes certain time interval analyzers that measure the timing errors of digital signals in high-speed microprocessors. Brilliant sued GuideTech, LLC for a declaratory judgment that its time interval analyzers, known as the BI200 and BI220 products, do not infringe GuideTech's:
The district court construed the disputed claim terms and granted Brilliant summary judgment of noninfringement for all three patents. GuideTech appealed.
In its February 20, 2013 opinion, the Federal Circuit reversed in part the district court's grant of summary judgment of noninfringement.

The '231 patent

For the '231 patent, the issue on appeal was whether Brilliant's time interval analyzers have the claimed "plurality of measurement circuits defined within said signal channel." The district court construed "defined within said signal channel" as "contained within a signal channel" and concluded that GuideTech failed to present sufficient evidence that the BI200 and BI220 products have multiple measurement circuits within a single channel. On appeal, GuideTech argued there was a genuine issue of material fact because:
  • GuideTech's expert, Dr. West, reported that the BI200 and BI220 products use two circuits contained within a single channel when operating in a particular mode (One-Channel-Two-Edge mode).
  • Brilliant's schematics show that during One-Channel-Two-Edge mode, the accused products operate on a single channel and use two measurement circuits.
The Federal Circuit held that the expert report and schematics, viewed in GuideTech's favor, show that the only signal channel operative during One-Channel-Two-Edge mode contains two measurement circuits. This raised a genuine issue of material fact as to whether Briliant's products literally infringe the '231 patent claims.

The '671 and '649 patents

The Federal Circuit agreed that the district court properly granted summary judgment that Brilliant's accused products do not literally infringe the '671 and '649 patents. However, the Federal Circuit determined that the district court erred when it granted summary judgment that Brilliant does not infringe under the doctrine of equivalents.
In its analysis, the Federal Circuit reviewed the doctrine of equivalents law noting that to find infringement under the doctrine of equivalents any differences between the claimed invention and the accused product must be insubstantial, citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 US 605 (1950). One test for making this determination is to show for each claim limitation that the accused product performs substantially the same function in substantially the same way with substantially the same result.
GuideTech's expert submitted a report that set out its infringement theory under the doctrine of equivalents. Brilliant neither contested nor provided any contrary evidence to the expert report but instead argued that GuideTech's theory vitiates certain separate claim elements.
The Federal Circuit rejected Brilliant's vitiation argument, citing its December 2012 Deere & Co. v. Bush Hog, LLC decision. Specifically, the Federal Circuit explained that vitiation:
  • Is not an exception to the doctrine of equivalents but is a legal determination that the evidence shows that no reasonable jury could determine that the claim element and the substitute element are equivalent.
  • Has its clearest application when the accused device contains the polar opposite of the claimed structure because one of ordinary skill in the art would understand that the literal and substitute limitations:
    • are not interchangeable;
    • are not insubstantially different; and
    • do not perform substantially the same function in substantially the same way to accomplish substantially the same result.
  • Cannot be satisfied by simply noting that an element is missing from the claimed structure or process because the doctrine of equivalents recognizes that an element is missing that must be supplied by the equivalent substitute.
The dissent argued that the expert report did not apply the doctrine of equivalents to the individual claim elements as required by Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997).
This case is noteworthy because it demonstrates that the doctrine of equivalents theory is still alive. Although patentees should not totally rely on this doctrine, they should continue to pursue it if they do not have a clear case of literal infringement. On the other hand, parties adverse to patents should consider the doctrine of equivalents in their freedom to operate studies, even if they believe that they do not literally infringe.

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