Expert declaration does not create a genuine issue of material fact to preclude summary judgment when the declaration does not identify the claim construction relied upon or explain the specific functioning of the accused products

Akzo Nobel Coatings, Inc. v. Dow Chem. Co., Nos. 2015-1331, 2015-1389 (Fed. Cir. Jan. 29, 2016)

The district court granted summary judgment in a patent infringement case, finding no infringement literally or under the doctrine of equivalents. The patentee appealed the grant of summary judgment and the Federal Circuit affirmed.

The court determined that the alleged infringer satisfied its initial burden of identifying the legal basis of its motion and pointing to those portions of the record it believed demonstrated the absence of a genuine issue of material fact. The burden then shifted to the patentee to designate specific facts showing that a genuine issue for trial existed. Relying primarily on its expert’s declaration, the patentee failed to meet its burden. The expert’s declaration was ambiguous as to whether a particular step in the claimed invention occurred in the accused process and failed to identify which construction of a disputed term the expert relied on in his conclusion of infringement. Moreover, the expert did not expressly refute the accused infringer’s contention that its process did not require that particular step.

As to infringement under the doctrine of equivalents, summary judgment was also proper because the patentee failed to present evidence establishing equivalency or to establish a genuine issue of material fact as to whether the accused process operated in substantially the same way. The patentee again relied on its expert’s declaration, which was deemed conclusory and broad in its discussion of the doctrine. The declaration failed to articulate “how” the accused process operated in substantially the same way or how the differences between the two processes were insubstantial.

A copy of the opinion can be found here