CAFC Reverses Summary Judgment on Doctrine of Equivalents


In The Charles Machine Works, Inc. v. Vermeer Manufacturing Co. (Fed. Cir., July 26, 2013), the patent in question was U.S. Patent 5,490,569 (the “’569 patent”), which generally relates to a two-pipe drill for boring underground holes in the horizontal direction. An inner pipe rotates the drill bit. An outer pipe, which includes a body and casing, is used for steering. The ’569 patent also discusses a structure called a “deflection shoe” as a steering mechanism. The deflection shoe is included on one side of the casing to create an asymmetry about the casing’s centerline axis. If the casing does not rotate, the deflection shoe causes the drill to deflect away from a straight path. When the casing rotates, however, the drill follows a straight horizontal path.

The Charles Machine Works (“CMW”) sued Vermeer for infringement of the ’569 patent. Asserted apparatus claims 1, 4–8, 10, 12, 18, 20–25, and 27 recite “a deflection shoe mounted on a first side of” either “the body” or “the casing.” Asserted method claims 30–31 recite “the casing having a deflection shoe thereon.”

CMW alleged infringement by two types of Vermeer drills: non-commercial prototypes and commercial products. Both types of drills include a structure called a bent sub, which CMW contends meets the “deflection shoe” and “mounted on” limitations. The prototypes include an additional structure called a wear pad. Vermeer moved for summary judgment of noninfringement, literal or under the doctrine of equivalents, of the asserted claims. The district court granted Vermeer’s motion as to all accused products. CMW appealed to the United States Court of Appeals for the Federal Circuit.

On appeal, CMW argued, among other things, that the court erred by granting summary judgment as to Vermeer’s accused prototypes. Furthermore, CMW argued that Vermeer’s motion for summary judgment covered only the accused commercial products. As a result, CMW asserted that it did not have notice that the district court was considering making a ruling relative to the prototypes, which CMW maintained are structurally different than the commercial products.

Vermeer responded to CMW’s arguments by pointing out that, both in its proposed final rulings submitted to the district court and at the summary judgment hearing, it argued that none of the “accused products” included the “deflection shoe” limitation. Vermeer asserted that “accused products” specifically covered both the commercial products and the prototypes. Vermeer also argued that, at the hearing, CMW made arguments about the wear pad structure that exists only in the prototypes.

The Federal circuited agreed with CMW that there was insufficient notice that the summary judgment decision would include the prototypes for three reasons. First, Vermeer titled its own moving papers as a MOTION FOR SUMMARY JUDGMENT THAT VERMEER’S COMMERCIAL PRODUCTS DO NOT INFRINGE” [capitalization in original, emphasis added]. Furthermore, nowhere in its motion did Vermeer make substantive arguments about the prototypes.

Second, Vermeer’s proposed final rulings were again expressly limited to the commercial products. Vermeer’s heading was titled “GRANT SUMMARY JUDGMENT THAT VERMEER’S COMMERCIAL PRODUCT DOES NOT INFRINGE THE ASSERTED CLAIMS . . . OF THE ’569 PATENT” [capitalization in original].

Third, Vermeer explained at the summary judgment hearing that its motion was limited to the commercial products. It stated that “[counsel for CMW] is correct, it would not resolve CMW’s claims as to those three prototype units.”

Accordingly, the Federal Circuit vacated the grant of summary judgment of no infringement by the prototypes.

With respect to infringement, the district court construed “deflection shoe” as a “structure that can be attached to the side of the body or casing and that can be positioned to deflect the boring apparatus from a linear path.” The district court also construed “mounted on” as “attached to.” Seeing no error in this claim construction, the Federal Circuit affirmed the grant of summary judgment insofar as the accused commercial products were found not to literally infringe the asserted claims.

With respect to infringement under the doctrine of equivalents, the district court concluded that “[a] bent sub is plainly different from and not the equivalent of the ‘deflection shoe.’” The district court further found that the record “does not establish that persons learned in the art would deem the bent sub and mounted [deflection] shoe interchangeable.”

The Federal Circuit, however, found that summary judgment was not appropriate on the issue of infringement under the doctrine of equivalents because CMW’s expert declaration contained facts that created a genuine issue of material fact. Specifically, the expert’s declaration contained assertions that could have been used by a reasonable jury to conclude that there was infringement under the doctrine of equivalents. Thus, summary judgment on that issue was inappropriate.

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