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All-Limitations Rule Does Not Require One-to-One Correspondence

September 17, 2002

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Last Month at the Federal Circuit - October 2002

Judges: Linn (author), Rader, and Schall

In Eagle Comtronics, Inc. v. Arrow Communication Laboratories, Inc., No. 01-1544 (Fed. Cir. Sept. 17, 2002), the Federal Circuit reversed an interlocutory order finding that Eagle Comtronics, Inc. (“Eagle”) and its counsel had not violated a protective order, reversed a SJ of noninfringement, and remanded.

Eagle owns U.S. Patent No. 5,662,494 (“the ‘494 patent”), which is directed to a sealed multipiece collet assembly to prevent moisture and/or other contaminants from entering an electrical signal filter. Eagle sued Arrow Communication Laboratories, Inc. and others (collectively “Arcom”), alleging that Arcom’s filters infringed the claims of the ‘494 patent under the DOE.

Before allowing discovery, the parties entered a protective order that provided that confidential material should not be used for any purpose other than for this action, unless authorized by the district court. The protective order also stated that before a party discloses confidential information, that party must so inform the other party in writing.

During discovery, Arcom produced a pending patent application (“the Arcom application”) marked as confidential. The Arcom application listed several of its employees as the inventors. Upon reviewing the Arcom application, Eagle believed that one of its employees was the real inventor of the device in the application. To protect its rights, Eagle copied the applications and filed them as two separate applications in the PTO. When Eagle then notified Arcom of what it had done, Arcom moved for an order that Eagle show cause why it was not in violation of the protective order. The district court found that Eagle’s conduct was not egregious enough to warrant granting Arcom’s motion because the applications had clearly been filed by Arcom at the PTO.

Applying Second Circuit law, the Federal Circuit ruled that the district court had abused its discretion in not finding that Eagle violated the protective order. The Court explained that patent applications are preserved in secrecy by both law and regulation for a reason, and thus, in this case, sanctions were appropriate.

Eagle appealed the SJ of noninfringement under the DOE. The claims of the ‘494 patent require that the collet assembly comprise multiple pieces, including a front cap, a rear-insert body, and a seal between the front cap and rear-insert body. The Arcom device is a one-piece assembly and does not have separate elements corresponding to the front cap and rear-insert body. Arcom argued that its one-piece collet assembly could not infringe without violating the all-limitations rule.

The Court held that the all-limitations rule requires that a claim limitation cannot be totally missing from an accused device, but does not require one-to-one correspondence of components. The Court observed that whether or not a limitation is deemed to be vitiated must take into account that when two elements of the accused device perform a single function of the patented invention, or when separate claim limitations are combined into a single element of the accused device, a claim limitation is not necessarily vitiated, the DOE may still apply if the differences are insubstantial. The Court ruled that the question of whether Arcom’s one-piece collet assembly was insubstantially different from the claimed multipiece collet assembly was a question of fact and required a traditional infringement analysis. Hence, the Court remanded the case.