02/19/14

Ring & Pinion Serv. Inc. v. Arb Corp.: No Forseeability Requirement in Doctrine of Equivalents

Category: Infringement  
 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleRing & Pinion Serv. Inc. v. Arb Corp., No. 2013-1238 (Fed. Cir. Feb. 19, 2014).
IssueThus, the parties agreed that the outcome of the case would be determined by the resolution of a single legal issue: whether an equivalent is barred under the doctrine of equivalents because it was foreseeable at the time of the patent application. […]
Ring & Pinion Serv. Inc. at *3.
HoldingWe conclude that the foreseeability of an equivalent at the time of patenting is not a bar to a finding of infringement under the doctrine of equivalents.
Id. at *5.
 


Procedural HistoryDefendant ARB Corporation Ltd. (ARB) appeals from the district court’s grant of summary judgment of non-infringement of U.S. Patent No. 5,591,098 (the ’098 pa- tent) to Ring & Pinion Service, Inc. (R&P).
Ring & Pinion Serv. Inc. at *2.
 
 
Legal Reasoning (Moore, Clevenger, Reyna)
Background
Claim at issueClaim 1 is representative:
A locking differential comprising a differential carrier . . . ,
a locking means . . .
cylinder means formed in said differential carrier and housing an actuator position[ed] to cause movement of said locking means relative to said carrier . . . .
Ring & Pinion Serv. Inc. at *2.
Legal Analysis: No Forseeability Requirement in Doctrine of Equivalents
Distinguishing Vitiation from forseeability
There is not, nor has there ever been, a foreseeability limitation on the application of the doctrine of equivalents. It has long been clear that known interchangeability weighs in favor of finding infringement under the doctrine of equivalents. […] Excluding equivalents that were foreseeable at the time of patenting would directly conflict with these holdings that “known interchangeability” supports infringement under the doctrine of equivalents.
Ring & Pinion Serv. Inc. at *4-5 (internal citations omitted).
Sage Products held that claim vitiation, not foreseeability, prevented the application of the doctrine of equivalents in that case because its application “would have utterly written” express limitations “out of the claim.” […] Sage Products did not create a foreseeability limitation on the doctrine of equivalents, but instead held that a finding of infringement under the doctrine of equivalents would vitiate a claim limitation based on the facts of that case.
Id. at *5-6.
[T]wo differences between "equivalence" under literal infringement (§ 112(f)) and "equivalence" under the doctrine of equivalents
[TIMING] Equivalence under section 112(f) is evaluated at the time of issuance. Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1320 (Fed. Cir. 1999). Equivalence under the doctrine of equivalents, in contrast, is evaluated at the time of infringement. Id. Hence, an after-arising technology, a technology that did not exist at the time of patenting, can be found to be an equivalent under the doctrine of equivalents even though it cannot be an equivalent under the literal infringement analysis of § 112(f). Id.
Id. at *5-6.
[FUNCTION] The second difference between literal infringement and doctrine of equivalents infringement under § 112(f) relates to the function of the element. For literal infringement, the accused structures must perform the function recited in the claim (identical function). The doctrine of equivalents covers accused structures that perform substantially the same function in substantially the same way with substantially the same results. The doctrine of equivalents thus covers structures with equivalent, but not identical, functions. This is true whether the accused equivalent was known at the time of patenting or later arising.
Id. at *5-6.
Case at Hand
Parties Joint Stipulation
The parties agreed that “should the Court hold . . . that foreseeability of an equivalent at the time of application prevents use of the doctrine of equivalents, . . . the accused differential would not infringe under the doctrine of equivalents.” [...] (emphasis added). In the alternative, they further agreed that “should the Court hold . . . that foreseeability at the time of application does not prevent use of the doctrine of equivalents, . . . the accused differential would infringe under the doctrine of equivalents.” Id. (emphasis added). […] The district court entered an order approving the parties’ joint stipulation.
Ring & Pinion Serv. Inc. at *3 (internal citations omitted).
A stipulation of fact that is fairly entered into is controlling on the parties and the court is generally bound to enforce it. See Am. Title Ins. Co. v. Lacelaw Corp., 861 F.2d 224, 226 (9th Cir. 1988). Here, the parties stipulated to equivalence, which is a question of fact, and agreed that there were no remaining issues of fact.
Id. at *8.
Vitiation not an ExceptionVitiation is “not an exception to the doctrine of equivalents, but instead a legal determination that the evidence is such that no reasonable jury could determine two elements to be equivalent.” […] The parties’ stipulation precludes the conclusion that the “cylinder means formed in . . . ” limitation is vitiated because it states that the Ziplocker includes an equivalent to that limitation. […] Thus, we hold that the court erred by failing to grant summary judgment of infringement to ARB under the doctrine of equivalents.
Id. at *9 (internal citations omitted).
Conclusion
We have considered R&P’s remaining arguments and find them unpersuasive. We reverse the grant of summary judgment of non-infringement and remand with instructions to grant summary judgment of infringement to ARB.
Ring & Pinion Serv. Inc. at *9.
 
 
 
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