Rader: Vitiation Can’t Swallow Doctrine of Equivalents


By D GuisingerLast week, on December 4, 2012, the Federal Circuit addressed the doctrine of equivalents and reminded district courts not to employ “vitiation” to nullify the doctrine of equivalents. The case was Deere & Co. v. Bush Hog, LLC.  At trial in the United States District Court for the Southern District of Iowa, the district court construed the terms of Deere’s U.S. Patent No. 6,052,980 and granted the defendants Bush Hog and Great Plains Manufacturing, Inc.’s summary judgment of noninfringement.

On appeal to the Federal Circuit, Chief Judge Rader (writing for the majority and joined by Judge Newman and Judge Plager) affirmed the construction of the claim term “rotary cutter deck” and the determination that the terms “substantially planar” and “easily washed off” do not render the asserted claims invalid under 35 U.S.C. § 112. However, the Federal Circuit also determined that because the district erroneously construed the term “into engagement with” to require direct contact, that construction was reversed.  Accordingly, the grant of summary judgment was also reversed and the case remanded for further proceedings consistent with the Federal Circuit decision.

The Patent and District Court Construction: “into engagement with”

Claim 1 of the ’980 Patent recites:

1. A rotary cutter deck comprising:

a lower, substantially planar, horizontal deck wall;

an upper deck wall including a central portion elevated above said lower deck wall, and

front and rear portions respectively sloped downwardly and forwardly, and downwardly and rearwardly from said central portion into engagement with, and being secured to, said lower deck wall;

and right-and left-hand end wall structures respectively being joined to right-and left-hand ends of said lower and upper deck walls to thereby define a box section having torsional stiffness.

The district court construed the term “into engagement with” to mean “brought into contact with,” and construed “being secured to” as “fastened or attached.”

In addition to granting summary judgment of no literal infringement, the district court prevented Deere from asserting infringement under the doctrine of equivalents because, in the opinion of the district court, that would vitiate the “into engagement with” limitation. Furthermore, the district court barred Deere from asserting equivalence because the “into engagement with” limitation “specifically excludes structures where the deck walls are not engaged with each other.”

Federal Circuit on “into engagement with”

Right off the bat, the Federal Circuit explained that the district court erroneously construed the term “into engagement with” because the claim language itself points away from such a narrow interpretation.

Chief Judge Rader wrote: “To give effect to all terms of the claim, ‘secured to’ and ‘into engagement with’ must have distinct meanings.” He would go on to write:

The term “engagement” connotes a connection between two objects in which the motion of one object is constrained by the other. This connection can be indirect, such as where a motor is engaged with a gear through a second, intermediate gear. The gear and motor are engaged even though they are not “secured” together, such as with nuts and bolts or by welding. Objects that are secured to one another are not just connected, but are fastened or attached in some way. Thus, construing “engagement” to include indirect contact, consistent with its plain meaning, does not render the term superfluous.

Not convinced? Chief Judge Rader went on to also write:

The ordinary meanings of the terms that describe the relationship between the upper and lower deck walls— “cooperate,” “join[ ],” “engage[ ]”—do not necessitate direct contact… Read in the context of the specification, Claim 1 allows for the upper deck wall to come “into engagement with” the lower deck wall through indirect contact.

This last sentence is really what defines the outcome. Certainly “engagement” does not require direct contact by any fair interpretation of how that term is ordinarily understood. The more troublesome term is “secured.” But when you review the specification, it becomes clear what the claim is describing, and it does appear as if the Federal Circuit got this one correct, at least in my opinion.

What about Vitiation?

Chief Judge Rader wrote that this case provided an opportunity for the Court to clear up a popular misconception about vitiation.

Rader explained: “The concept of vitiation derives from the requirement that the doctrine of equivalents must be applied to the claims ‘on an element-by-element basis,’ so that every claimed element of the invention—or its equivalent—is present in the accused product.”  He would later go on to point out that vitiation is not an exception to the doctrine of equivalents, but rather is a “legal determination that the evidence is such that no reasonable jury could determine two elements to be equivalent.”

Chief Judge Rader summarized vitiation as follows:

[T]he vitiation test cannot be satisfied by simply noting that an element is missing from the claimed structure or process because the doctrine of equivalents, by definition, recognizes that an element is missing that must be supplied by the equivalent substitute. If mere observation of a missing element could satisfy the vitiation requirement, this “exception” would swallow the rule. And, the Supreme Court declined to let numerous contentions bury the doctrine.  Thus, preserving the doctrine in its proper narrowed context requires a court to examine the fundamental question of whether there is a genuine factual issue that the accused device, while literally omitting a claim element, nonetheless incorporates an equivalent structure.

What next? Who knows! In years past, the likelihood that this type of issue would do anything other than go back to the district court was minimal. Over the years, the Supreme Court has shown a fondness for the doctrine of equivalents, and the Supreme Court is taking ever more patent cases. Would a reprisal on the issue of the doctrine of equivalents be out of the question? Not at all. Having said that, it seems that the panel is spot on correct and there really wasn’t a determination on the doctrine of equivalents from a factual standpoint. Thus, it seems unlikely that this case is heading up at this juncture.


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