Very simple expert declaration was sufficient to defeat summary judgment on infringement under the doctrine of equivalents; limiting summary judgment motion to certain accused products was binding.

The Charles Machine Works, Inc. v. Vermeer Mfg. Co., No. 2012-1578 (Fed. Cir. Jul. 26, 2013).

A patentee of a two-pipe drill for boring underground holes brought an action for infringement accusing two types of defendant’s products: non-commercial prototypes and commercial products. The district court granted summary judgment to the accused infringer on both types of products.

The Federal Circuit vacated the grant of summary judgment on the prototypes, holding that the patentee had insufficient notice that the prototypes were part of the summary judgment motion. The infringer had limited the motion to the commercial products, both in its papers and at the hearing, and the title of both the motion and the proposed ruling specifically referenced commercial products. The court found that one offhand reference to the “accused products” did not wash away this limiting language.

The Federal Circuit also determined that there was an issue of fact as to whether the commercial products infringed under the doctrine of equivalents. In order to establish infringement under that doctrine, the patentee must show that a “substitute element matches the function, way, and result of the claimed element.” An expert declaration submitted by the patentee was not properly considered by the district court and it was found to be sufficient to create a factual dispute on these points. The expert opined that the function of the claimed structure was to deflect the drill bit from a linear path—the same function as the accused product—and that both structures “achieve the same result of deflecting the drill bit in a direction opposite the deflection shoe.” The expert added that the structures “could be considered substitutes.” Based on this affidavit, the court held that a genuine factual dispute existed on function, way, and result and reversed the summary judgment of non-infringement under the doctrine of equivalents.

A copy of the opinion can be found here