Finding of structural non-equivalence for purpose of literal infringement precludes doctrine of equivalents infringements

Chiuminatta Concrete Concepts, Inc. v Cardinal Indus., Inc., 145 F.3d 1303 (Fed. Cir. 1998).

The Federal Circuit Court of Appeals held a finding of structural non-equivalence under 112, * 6 of the Patent Act, 35 sec U.S.C. 100 et seq., precludes doctrine of equivalents infringement when the equivalence issue does not involve later-developed technologies.

Here, Chiuminatta Concrete Concepts, Inc., owned a patent for a concrete saw. The patent included a means for supporting the concrete to prevent damage. The only structure disclosed for this function was a skid plate. Cardinal Industries, Inc., manufactured a virtually identical saw; however, it used two wheels to support the concrete. Chiuminatta sued Cardinal, alleging patent infringement. The trial court granted plaintiff summary judgment, holding that defendant's saw literally infringed plaintiff's patent under sec 112, 1 6.

Reversing, the Federal Circuit rejected the trial court's finding that plaintiff's patent included every conceivable support surface for the concrete. The means-plus-function limitation under sec 112, 6 requires a court to determine whether there is both an equivalent structure and an identity of function between the devices, the court said. Thus, although the function recited in plaintiff's patent was supporting the concrete surface to prevent damage, the specification clearly identified the structure for performing that function as the skid plate. Because defendant's wheels and plaintiff's skid plate were not equivalent, the trial court had erred in finding literal infringement.

The court also rejected plaintiff's argument that the infringement judgment should be affirmed under the doctrine of equivalents. Under the doctrine, a product that does not literally infringe upon the express terms of a patent claim nevertheless may infringe if there is equivalence between its elements and those of the patented product. The court noted that the doctrine is necessary because, as a result of technological advances, a variant of an invention may be developed after the patent is granted. Such a variant could not have been disclosed in the patent. Here, however, the technology involved predated the invention itself.

Thus, a finding of non-equivalence under sec112, 1 6 precludes a contrary finding under the doctrine of equivalents. Given the prior knowledge of the technology asserted to be equivalent, it could readily have been disclosed in the patent, the court observed.

Accordingly, the court directed the trial court to enter summary judgment of non-infringement for defendant. [ Comment: In AT&T Corp. v. Excel Communications, Inc., No. 96-434-SLR, 1998 WL 175878 (D. Del. Mar. 27, 1998), a trial court held AT&T's method for marking data on telephone records that allows it to implement customer-to-customer discounts was an unpatentable subject matter under sec101 of the Patent Act. The court rejected AT&T's patent, in part, because it relies on a mathematical formula. Although the use of a formula is not automatically a ground for rejection, the process involved must change the article at issue to a different state or thing, the court said. AT&T's patent, however, took information already known within the system-the primary long-distance carrier for a caller and the person called-and retrieved it for use in billing.

Accordingly, the court granted Excel Communications, Inc., summary judgment.

Excel was represented by William J. Marsden and Michael S. McGinniss, both of Wilmington, Del.; Wayne M. Harding and *Clarence E. Eriksen, both of Houston, Tex.; and Mike McKool Jr., Eric W. Buether, and Monte M. Bond, all of Dallas, Tex.]

Copyright Association of Trial Lawyers of America Dec 1998
Provided by ProQuest Information and Learning Company. All rights Reserved