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Cursory Conclusions by Patentee’s Expert Insufficient to Raise a Genuine Issue of Material Fact for SJ as to Infringement Under DOE

07-1186
November 28, 2007

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Last Month at the Federal Circuit - December 2007

Judges: Schall, Bryson, Moore (author)

[Appealed from: D. Col., Judge Matsch]

In Stumbo v. Eastman Outdoors, Inc., Nos. 07-1186, -1205 (Fed. Cir. Nov. 28, 2007), the Federal Circuit affirmed the district court’s grant of SJ of noninfringement in favor of Defendants Eastman Outdoors, Inc. and Ameristep Corporation (collectively “Defendants”).

Defendants moved for SJ of noninfringement, arguing that their products did not infringe the ’338 patent, either literally or under the DOE. The district court construed the term “closable vertical opening” as a “slit-like opening that runs straight up and down or perpendicular to the plane of the horizon.” Slip op. at 3. Based on this construction, the district court concluded that the accused products did not literally infringe the ’338 patent, given that they had triangular openings. The district court also found that the accused products did not infringe under the DOE because their triangular openings did not operate in substantially the same way to create substantially the same result as the ’338 patent’s vertical slit. Moreover, the district court held that the accused products could not infringe under the DOE because the ’338 patent would then cover the prior art and because the “vertical opening” claim element would be vitiated. Stumbo appealed.

On appeal, the Federal Circuit agreed with the district court’s construction of “closable vertical opening.” The Court rejected Stumbo’s argument that the district court erred by applying the word “vertical” to the slit-like shape of the opening in the blind instead of its orientation. The Court noted that accepting Stumbo’s construction would render claim phrases like “along one of said edges” and “along one vertical corner of said structure” superfluous. The Court explained that the specification also supported construing “vertical” to refer to the slit-like shape of the opening because it disclosed that the “legs must flex in order to enable the door opening to expand for ingress and egress.” Id. at 8.

The Court observed that a linear slit was the only possible shape of an opening with these characteristics and that there was nothing in the specification to suggest that the patentee contemplated any other shape of opening that could work with this invention. Thus, the Court held that the district court correctly interpreted the claims.

Because Stumbo did not dispute that the accused products did not have vertical slit-like openings, the Federal Circuit noted that there was no factual dispute that the accused products did not literally infringe the ’338 patent. Instead, Stumbo argued that the district court erred in finding no infringement under the DOE. Disagreeing with Stumbo, the Federal Circuit observed that Stumbo had failed to raise any genuine issues of material fact regarding whether the triangular door flap of the accused products operated in substantially the same way with substantially the same result as the slit-like opening of the ’338 patent. The Court rejected Stumbo’s argument that because the claims did not discuss or identify any safety issues, the evidence of whether the triangular flap was easier or safer to enter was not relevant. The Court explained that when the claims and specification of a patent are silent as to the result of a claim limitation, as they are in the ’338 patent, the Court turns to the ordinarily skilled artisan. The Court noted that just because the patent did not mention safety or ease of use did not mean that such evidence was irrelevant to the analysis under the DOE.

The Federal Circuit noted that Defendants offered evidence that a person ordinarily skilled in the art would conclude that the vertical slit opening of the ’338 patent and the triangular opening of the accused products substantially differed in way and result. Stumbo, on the other hand, noted the Court, produced nothing but “cursory conclusions” of how the vertical opening created substantially the same result in substantially the same way. Id. at 12. The Court noted that Stumbo’s expert declaration did not explain how either opening operated or how the differences were insubstantial. Accordingly, it concluded that Stumbo failed to raise a genuine issue of material fact for infringement under the DOE for either Defendants’ accused products and affirmed the district court’s grant of SJ of noninfringement. Given this holding, the Federal Circuit did not reach the issues of practicing the prior art or claim element vitiation.