In Olaf Sööt Design, LLC v. Daktronics, Inc., Nos. 2020-1009, 2020-1034 (Fed. Cir. Jan. 7, 2021) (non-precedential) (Prost, Lourie, and Reyna), the Federal Circuit held that claim construction disputes must not be submitted to the jury and reversed the district court’s judgment of infringement. Judge Lourie wrote separately to express additional views, cautioning litigants and courts against rendering the doctrine of equivalents meaningless and being particularly concerned if, as on these facts, there are more than two differences between the claims and the accused device.
Olaf Sööt Design, LLC (“OSD”) sued Daktronics, Inc. (“Daktronics”), alleging infringement of OSD’s U.S. Patent No. 6,520,485 (“the ’485 patent”), directed to a theater winch for moving scenery and lighting by winding and unwinding cables around a drum. The only claim at issue on appeal recited several elements, labeled a) through h).
The parties heavily disputed element h), which recites:
h) said hollow hub and hollow drum being sized such that the screw can move into the hollow hub to allow the hollow drum to receive the screw as the cable unwinds from or winds up on the drum as the object moves to its respective down or up position.
OSD argued that “the hub is a part of the drum.” Daktronics argued that the hub and drum are separate. Under OSD’s interpretation of element h, because the Vortek hub is able to receive the screw, Daktronics’ product infringes.
Although the parties disputed the construction of element h), the district court did not construe the term in its Markman order, instead finding that no construction was necessary. Despite the claim construction dispute being unresolved, the case went to a jury trial, where the jury found in favor of OSD that Daktronics’ product infringed under the doctrine of equivalents. In a post-jury-verdict decision, the district court finally resolved the claim construction issue, ruling in favor of OSD and basing its ruling in part on the jury’s decision.
The Federal Circuit reversed, holding that there was a disputed claim construction issue that was “for the judge to decide, not the jury.” The district court’s failure to resolve the dispute before trial violated O2 Micro Int’l Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008), the Federal Circuit held.
Because the district court had construed the claim (although belatedly), and because the parties had fully briefed the dispute, the Federal Circuit held that it could resolve the claim construction dispute without remand. The plain language of element h), the Court held, clarifies that the hollow hub is not part of the hollow drum. For example, the claim recites “the hollow hub and hollow drum,” indicating the components are separate. And the claim states that the screw moves into the hollow hub “to allow the hollow drum to receive the screw,” further indicating that the hollow hub is facilitating entry of the screw into another component, the hollow drum. The specification, which explained that the screw entered the drum by passing through another component, i.e., the hollow hub, bolstered the Court’s construction.
Under this construction, Daktronics’ product did not literally infringe the ’485 patent because Daktronics’ product “does not literally meet element h of claim 27[;] the hollow drum of the Vortek is not able to receive the screw.” Furthermore, the Federal Circuit held that the product did not infringe at least element h) under the doctrine of equivalents because Daktronics’ product has no equivalent function. Such a finding would, in the Court’s opinion, “impermissibly eliminate the requirement that the hollow drum be able to receive the screw.” As a result, the Court reversed the district court’s judgment of infringement.
Having joined in the Court’s opinion, Judge Lourie wrote separately to express very interesting additional views on the doctrine of equivalents. Judge Lourie “express[ed] concern over the use of the doctrine of equivalents to find infringement when four claim limitations have not literally been met by the accused device.” “Equivalence requires meeting the function-way-result test, or the insubstantial differences test, or both.” But Judge Lourie also noted judges and juries must use common sense and be cautious not to apply the doctrine of equivalence to “eliminate completely” elements of the claim language. In some circumstances, Judge Lourie wrote, it is possible that two products may satisfy the function-way-result test even though they are not equivalent on a structural or identity basis. For example, aspirin and ibuprofen could be considered to have the same function, way, and result, despite being substantially different.
Where a product, like the one in this case, does not literally infringe four separate claim elements, it should be, in the views of Judge Lourie, highly unlikely to infringe under the doctrine of equivalents:
Having multiple differences from the claim should be a hallmark of noninfringement. It fails the straight face test to assert that the accused subject matter does not meet the claims in multiple distinct ways, but infringes anyway.
“That would be equivalent,” in Judge Lourie’s view, “to holding that the accused product infringes when it does not infringe.” “Designing around” is an important concept in patent law and finding a product with “multiple significant instances of inventing around still infringe runs counter to that important theory of patent law.”
In sum, Judge Lourie sought to “call attention to the danger” “in extending equivalence to multiple claim limitations.” In Judge Lourie’s view, this has the potential to undermine the most fundamental source of patent coverage—the claim language.
“[F]or if the public comes to believe (or fear) that the language of patent claims can never be relied on, and that the doctrine of equivalents is simply the second prong of every infringement charge, regularly available to extend protection be-yond the scope of the claims, then claims will cease to serve their intended purpose.” [citation omitted]
Claims with multiple components or steps present additional considerations for patent drafters. There a risk of putting unnecessary steps or components in issued claims, raising the danger that an alleged infringer will use less than all the steps or components recited in issued claims and avoid infringement, both literally and under the doctrine of equivalents. But there is also a risk that claiming multiple components in a device will set up more points of distinction on which an alleged infringer can avoid infringement both literally and under the doctrine of equivalents.
Infringement under the doctrine of equivalents remains an important concept in U.S. patent law meant to prevent slight copying of an invention that would effectively render a patent useless. As Judge Lourie notes in his concurring opinion, the doctrine of equivalents is the exception, not the rule. “The doctrine of equivalents is not a talisman…; it is a limited remedy available in special circumstances, the evidence for which is the responsibility of the proponent.” Schoell v. Regal Marine Indus., Inc., 247 F.3d 1202, 1210 (Fed. Cir. 2001).
Patent drafters therefore should not rely on having the doctrine of equivalents available to bail them out. The public should be entitled to notice of what is infringing. The claims provide that notice, and courts have said repeatedly that it is the patentee, not the public, who should bear the cost for non-optimum claim drafting.
The claim drafter should at least think about whether all elements of a claimed device are required. That might lead the drafter to reduce the number of elements and hence reduce the number of targets for avoiding both literal infringement as well as infringement under the doctrine of equivalents.
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