In Brilliant Instruments, Inc. v. GuideTech, LLC, No. 12-1018 (Fed. Cir. Feb. 20, 2013), the Federal Circuit reversed the district court's grant of SJ for noninfringement and remanded the case to the district court.

Brilliant Instruments, Inc. ("Brilliant") filed a DJ action on GuideTech, LLC's ("GuideTech") three patents: U.S. Patent Nos. 6,226,231 ("the '231 patent"); 6,091,671 ("the '671 patent"); and 6,181,649 ("the '649 patent").  The three patents relate to circuits that measure the timing errors of digital signals.  Claim 1 of the '231 patent requires "a plurality of measurement circuits defined within said signal channel."  Claim 1 of the '671 patent and claim 1 of the '649 patent require a capacitor that is "operatively disposed in parallel with respect to said first current circuit."  The district court construed the above claim terms and entered SJ of noninfringement in favor of Brilliant for all three patents.

On appeal, with regard to the '231 patent, the Federal Circuit held that the district court erred in granting SJ.  The Court noted that the district court construed the claim term "defined within said signal channel" as "contained within a signal channel," and that neither party challenged this construction.  Slip op. at 5 (citation omitted).  Based on the relevant circuit schematics and the expert testimony in GuideTech's favor, the Court concluded that a genuine issue of material fact existed as to whether Brilliant's accused products, "when operating in One-Channel-Two-Edge mode, have two measurement circuits contained within a signal channel."  Id. at 6.

"[V]itiation applies when one of skill in the art would understand that the literal and substitute limitations are not interchangeable, not insubstantially different, and when they do not perform substantially the same function in substantially the same way, to accomplish substantially the same result."
Slip op. at 10.

With regard to the '671 and '649 patents, the Federal Circuit held that the district court properly granted SJ that Brilliant's accused products did not literally infringe.  The Court stated that GuideTech could not establish literal infringement because, in Brilliant's accused products, it was undisputed that the capacitor was part of the first current circuit, while claim 1 of the '671 patent and claim 1 of the '649 patent required the capacitor to be "operatively disposed in parallel" with respect to the first current circuit.

The Federal Circuit, however, held that the district court erred when it granted SJ of noninfringement under the DOE.  The Court disagreed with Brilliant's argument that GuideTech's DOE infringement theory vitiated the requirement that the claimed "first current circuit" and the "capacitor" be separate claim elements.  The Court reiterated that "'[v]itiation' is not an exception to the doctrine of equivalents."
Id. at 9 (quoting Deere & Co. v. Bush Hog, LLC, Nos. 11-1629, -1630, -1631, 2012 WL 6013405, at *5 (Fed. Cir. Dec. 4, 2012)).  Moreover, "the vitiation test cannot be satisfied by simply noting that an element is missing from the claimed structure or process because the doctrine of equivalents, by definition, recognizes that an element is missing that must be supplied by the equivalent substitute."
Id.  at 10 (quoting Deere, 2012 WL 6013405, at *5).

Instead, the Federal Circuit held that "vitiation applies when one of skill in the art would understand that the literal and substitute limitations are not interchangeable, not insubstantially different, and when they do not perform substantially the same function in substantially the same way, to accomplish substantially the same result."  Id.  According to the Court, a claim element would be vitiated if no equivalent exists in the accused infringing device based on either the "function-way-result" or the "insubstantial differences" tests.  Id.  To succeed on a DOE theory, "the patentee must demonstrate equivalence under one of these two tests."  Id.

In this case, the Federal Circuit reasoned that the proper DOE inquiry should be:  "did GuideTech create a genuine issue of material fact regarding whether Brilliant's capacitor, located within the first current circuit, performs substantially the same function in substantially the same way to achieve substantially the same result as the claimed capacitor . . . ?"  Id. at 11.  The Court answered this question in favor of GuideTech based on GuideTech's expert applying the function-way-result test to the accused product, concluding that GuideTech created a genuine issue of material fact that precludes SJ of noninfringement under the DOE.  

Accordingly, the Federal Circuit reversed and remanded the case to the district court.

Judge Dyk concurred-in-part and dissented-in-part.  Judge Dyk agreed with the majority with respect to the '231 patent, and that there was no literal infringement of the '671 and '649 patents.  Judge Dyk disagreed, however, that a genuine issue of material fact remained as to infringement of the '671 and '649 patents under the DOE.  According to Judge Dyk, the DOE "must be applied to individual limitations of the claim, not to the invention as a whole."  Dyk Dissent at 3 (quoting Mirror Worlds, LLC v. Apple Inc., 692 F.3d 1351, 1357 (Fed. Cir. 2012)).  According to Judge Dyk, GuideTech's expert applied the equivalent to the invention as a whole rather than to the particular claim limitation at issue.  Specifically, Judge Dyk stated that the expert report failed to explain why the change in location of the disputed capacitor was an insubstantial difference and how the function-way-result test was satisfied as to the claim limitation.  Thus, Judge Dyk concluded that the district court's judgment of noninfringement as to the '671 and '649 patents under the DOE should have been affirmed.

Judges:  Dyk (concurring-in-part and dissenting-in-part), Moore (author), Reyna

[Appealed from N.D. Cal., Judge Wilken]

This article previously appeared in Last Month at the Federal Circuit, March 2013.

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