Summary: Summary judgment of non-infringement under the doctrine of equivalents affirmed. Imposition of sanctions on plaintiff vacated and remanded.
Case: Eastcott v. Hasselblad USA, Inc., Nos. 2013-1050, -1051 (Fed. Cir. June 4, 2014) (non-precedential). On appeal from S.D.N.Y. Before O’Malley, Wallach and Taranto.
Procedural Posture: Plaintiff appealed grant of summary judgment of non-infringement and imposition of sanctions. CAFC affirmed summary judgment of non-infringement and vacated and remanded the imposition of sanctions.
- Doctrine of Equivalents: Equivalence is established on a limitation-by-limitation basis rather than on a general assessment of the accused product as a whole. Evidence of equivalence must be shown through particularized testimony of one skilled in the art, typically a qualified expert, who on a limitation-by-limitation basis describes the claim limitations and establishes that those skilled in the art would recognize the equivalents. The CAFC agreed with the district court that the inventor’s deposition and affidavit testimony was conclusory and failed to provide the requisite particularized testimony.
- Sanctions: The CAFC found the district court violated due process under Second Circuit law because it did not give adequate notice of the standard and authority under which sanctions were being considered before they were imposed. The CAFC also concluded that at least a portion of the sanction imposed was punitive rather than compensatory in nature such that on remand appellant should have the benefit of procedural protections that are typically afforded to a person charged with a crime.