“[T]he CAFC found no reason to affirm a noninfringement ruling under the reverse doctrine of equivalents (RDOE) for the first time ever, since it was improper for the district court to grant JMOL in this case.”
On January 25, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Steuben Foods, Inc. v. Shibuya Hoppman Corp., reversing-in-part the District of Delaware’s post-trial rulings of judgment as a matter of law (JMOL) of noninfringement in favor of Shibuya. The Federal Circuit reversed noninfringement findings made under the reverse doctrine of equivalents (RDOE), declining to declare the doctrine subsumed by the 1952 Patent Act, but finding that Steuben Foods raised “compelling” arguments on that point. The opinion was authored by Chief Judge Moore.
Elma, NY-based food manufacturer Steuben Foods first filed a patent infringement lawsuit against Shibuya Hoppman in the Western District of New York back in 2010. The district court ruled on claim construction in 2020 and in 2021, and a jury trial led to a $38 million damages verdict for Steuben Foods. After the trial, Shibuya filed a renewed motion for JMOL for noninfringement on all of Steuben Foods’ asserted patent claims, which was granted by U.S. District Judge Colm Connolly, who also conditionally granted a new trial under Federal Rule of Civil Procedure 50(c)(1).
District Court Improperly Discredited Expert Testimony When Applying RDOE
Shibuya had argued that it’s P7 aseptic bottling line did not infringe claim 26 of Steuben Foods’ U.S. Patent No. 6209591, Apparatus and Method for Providing Container Filling in an Aseptic Processing Apparatus. At the summary judgment stage, the district court found that Shibuya’s bottling line met the literal scope of the claims through use of a valve system having first and second sterile regions to prevent contamination of the valve stem. However, Judge Connolly denied Steuben Foods’ motion for summary judgment, finding a genuine issue of material fact as to whether infringement was precluded based on Shibuya’s reverse doctrine of equivalents (RDOE) theory. After trial, Judge Connolly granted JMOL as he found that Shibuya had made a prima facie case for RDOE, according no weight to testimony proffered by Steuben Foods’ infringement expert.
On appeal, Steuben Foods argued that RDOE is not a viable defense to infringement, contending that this common law doctrine, first referenced at least as early as 1898 in the U.S. Supreme Court’s Westinghouse v. Boyden Power Brake ruling, had been eliminated by passage of the 1952 Patent Act. Steuben Foods surmised that RDOE conflicts with the operation of direct infringement provisions codified at 35 U.S.C. § 271(a), and was effectively subsumed by the patent specification requirements codified at 35 U.S.C. § 112. In Steuben Foods’ eyes, defendants trying to avoid literal infringement on overbroad patent claims should raise a Section 112 validity challenge instead of pursuing RDOE as a defense.
Although the Federal Circuit found Steuben Foods’ arguments compelling, the appellate court found no reason to affirm a noninfringement ruling under the RDOE for the first time ever, since it was improper for the district court to grant JMOL in this case. The Federal Circuit found that the jury was free to credit testimony from Steuben Foods’ expert, who Judge Connolly discredited for explaining the ‘591 patent’s principle of operation as contrary to the specification by misstating the contamination exposure of the claimed second sterile region. However, Steuben Foods’ expert proffered other testimony on the operation of the second sterile region in relation to contaminants that the jury was free to consider, the Federal Circuit found.
JMOL Rulings Affirmed-in-Part Due to Stipulated Claim Construction
The Federal Circuit also found that the district court erred in its means plus function analysis relevant to Steuben Foods’ U.S. Patent No. 6536188, Method and Apparatus for Aseptic Packaging. The ‘188 patent claims a device for aseptically bottling aseptically sterilized foodstuffs having a means for providing a plurality of bottles and a means for filling more than 100 bottles each minute. Steuben Foods’ infringement expert testified that the rotary wheels and neck grippers of Shibuya’s accused product works in substantially the same way as the conveyor structure identified in the ‘188 patent, which the appellate court found to be substantial evidence supporting the jury’s infringement finding.
Steuben Foods was unsuccessful, however, in overturning Judge Connolly’s post-trial JMOL ruling of noninfringement as to the asserted claims of U.S. Patent No. 6702985, Apparatus and Method for Providing Container Interior Sterilization in an Aseptic Processing Apparatus. As to claim 1’s requirement that an atomized sterilant is “intermittently added” to a conduit, both Steuben Foods and Shibuya stipulated to a construction that meant the sterilant was “added in a non-continuous manner.”
Although the jury found that the Shibuya system, which added atomized sterilant in a continuous manner, infringed the ‘985 patent under the doctrine of equivalents (DOE), the Federal Circuit concluded that this finding essentially vitiated the ‘985 patent’s claim language given the stipulated claim construction. “Something that is done non-continuously cannot be the equivalent of something done continuously,” the Federal Circuit held.
Finally, reviewing the district court’s grant of a motion for new trial under Third Circuit regional law, the Federal Circuit found that the district court provided no rationale for ordering a new trial on validity and damages, and that any analysis regarding a new trial on infringement was subsumed by the appellate court’s ruling. The Federal Circuit vacated the district court’s conditional grant of motion for a new trial and remanded for further proceedings.
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