For the “all elements” rule of the doctrine of equivalents, claim vitiation applies when there is a clear, substantial difference or a difference in kind, as opposed to a subtle difference in degree.
Trading Technologies, Int’l, Inc. v. eSpeed, Inc., 2008-1392, -1393, -1422 (Fed. Cir. Feb. 25, 2010)
The patentee alleged infringement of three software products for electronic trading. The district court entered summary judgment of non-infringement concerning two of the accused products, and granted a motion in limine precluding assertion of an on-sale bar defense. After a jury trial, the district court found that the third accused product infringed, but overturned the jury’s finding of willful infringement. After a later bench trial, the court found no inequitable conduct. The Federal Circuit affirmed on all counts.
The Federal Circuit affirmed the construction of the term “static,” noting that despite the district court’s “central role” in claim construction, no deference may be paid to its constructions. The specification and prosecution history made clear that the “static” display of prices may move only in response to a manual “re-centering” command. Therefore, the automatic re-centering feature of two accused products means they do not infringe. “Because an inventor must evince a ‘clear intention’ to limit the claim terms to a specification embodiment, this court examines other claims to detect any contrary intentions.” Here, all other claims of the patent supported the construction.
The doctrine of equivalents may not be used to encompass a product with automatic re-centering because under the “all elements” rule, “a patentee may not assert a theory of equivalence that would entirely vitiate a particular claim element.” “Claim vitiation applies when there is a clear, substantial difference or a difference in kind,” as opposed to a “subtle difference in degree.” Even occasional automatic re-centering is not a “subtle difference of degree” because the “static” display of prices “lies at the heart of the advantages of the patented invention.” Prosecution history estoppel also applied to prohibit reliance on the doctrine of equivalents because “the inventors surrendered any subject matter that moves automatically.”
Despite the finding of the jury, there was no willful infringement because “the record shows no objective recklessness.” As soon as the patents issued and the lawsuit commenced, the accused infringer redesigned its product and replaced it with a non-infringing product within four months.
There was no on-sale bar. “Inventors can request another entity’s services in developing products embodying the invention without triggering the on-sale bar.” Finally, there was no inequitable conduct because the withheld information and evidence of the inventor’s alleged “sale” was not material.
A copy of the opinion can be found here.