Federal Circuit Reinstates Jury Verdict, Casts Doubt on Reverse Doctrine of Equivalents

In Steuben Foods, Inc. v. Shibuya Hoppmann Corp., No. 2023-1790 (Fed. Cir. Jan. 24, 2025), the Federal Circuit partially reversed a district court’s judgment of noninfringement as a matter of law (JMOL) for two patents based on Shibuya’s defense under the rarely applied reverse doctrine of equivalents (RDOE), while affirming JMOL for a third patent.

Steuben asserted that Shibuya’s P7 aseptic bottling line infringed three of its patents relating to aseptic food packaging systems. The jury found Shibuya infringed all three patents under the doctrine of equivalents, awarding Steuben $38 million in damages. Shibuya then sought JMOL of noninfringement under the reverse doctrine of equivalents (RDOE), arguing its products were “so far changed in principle” from the asserted claims that they perform the claimed functions “in a substantially different way.” The district court granted JMOL of noninfringement on all asserted claims and conditionally ordered a new trial.

On appeal, the Federal Circuit reversed the district court’s ruling on two of the patents. The Court concluded that Steuben had presented sufficient evidence to sustain the jury’s verdict that Shibuya’s product did not operate in a “substantially different” way from the patented technology. The Court found Steuben’s arguments that the common law doctrine of RDOE was eliminated by the 1952 Patent Act compelling but declined to rule on this point. Nonetheless, the Court’s language signals the doctrine may have limited relevance today. The Court affirmed the district court’s grant of JMOL on the third patent, finding a reasonable juror could not have found Shibuya’s product to be equivalent for one of the claimed limitations.