{"id":2039,"date":"2010-03-09T20:03:22","date_gmt":"2010-03-10T02:03:22","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=2039"},"modified":"2010-12-07T09:33:49","modified_gmt":"2010-12-07T15:33:49","slug":"doctrine-of-claim-vitiation-part-2","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=2039","title":{"rendered":"Doctrine of Claim Vitiation — Part 2"},"content":{"rendered":"

Judge Rader had a second bite at the claim vitiation apple in the recent case of Nystrom v. Trex Co., Inc.<\/span>, 2009-1026\u00a0(Fed. Cir. 2009).\u00a0 During the oral argument for that case, Judge Rader had the following exchange with appellee’s counsel: [Listen<\/a>].<\/p>\n

In his concurring opinion, Judge Rader echoed his position from the oral argument that the\u00a0doctrine of claim vitiation is a redundant test that is performed as part of a doctrine of equivalents analysis.\u00a0 He wrote:<\/p>\n

\n

While I endorse the reasoning and results of the panel, I write separately to address the doctrine of claim vitiation. In Warner-Jenkinson<\/span>, the Supreme Court adopted this court\u2019s established \u201call-elements\u201d rule. Warner-Jenkinson Co. v. Hilton Davis Chem. Co.<\/span>, 520 U.S. 17, 39 n.8 (1997) (\u201c[U]nder the particular facts of a case, . . . if a theory of equivalence would entirely vitiate a particular claim element, partial or complete judgment should be rendered by the court . . . .\u201d). \u201cInformed by this guidance, we have held that in certain instances, the \u2018all elements\u2019 rule forecloses resort to the doctrine of equivalents because, on the facts or theories presented in a case, a limitation would be read completely out of the claim <\/span><\/span>\u2014 <\/span>i.e.<\/span><\/span>, the limitation would be effectively removed or \u2018vitiated.\u2019\u201d DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.<\/span>, 469 F.3d 1005, 1017 (Fed. Cir. 2006). Nonetheless, this court has also warned that an overly broad application of the all elements rule may improperly \u201cswallow the doctrine of equivalents entirely\u201d and limit infringement to \u201ca repeated analysis of literal infringement.\u201d Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp.<\/span>, 149 F.3d 1309, 1317 (Fed. Cir. 1998). <\/span><\/span><\/p>\n

\u00a0<\/span><\/p>\n

Ironically, the Supreme Court adopted this vitiation limitation on the doctrine of equivalents at a point near the time that this court had learned of its internal inconsistency. Claim vitiation limits the doctrine of equivalents. The doctrine of equivalents, by definition, acknowledges that a specific claim limitation is not expressly found in the accused product or process. Claim vitiation proceeds from the same acknowledgment that a specific claim limitation is missing from the accused product or process. The doctrine of equivalents permits a finding of infringement, despite the missing limitation, because the deficit is not substantial. Claim vitiation bars infringement because the same deficit is substantial. In other words, claim vitiation, by definition, simply rewinds and replays the doctrine of equivalents test for substantiality of a missing claim limitation. Thus, a finding of insubstantial difference to show equivalency obviates any further vitiation analysis\u2014the wholly insignificant equivalent, by definition, would not vitiate the claim. On the other hand, a finding of substantial difference renders vitiation unnecessary. Thus, the vitiation doctrine is really subsumed within the test for equivalents itself. In other words, the all elements rule is simply a circular application of the doctrine of equivalents. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

While the tests for equivalents and vitiation are coterminous, the Supreme Court\u2019s Warner-Jenkinson <\/span>decision did create one difference: the identical equivalents and vitiation tests are made by different decision makers. \u201cThe determination of equivalency is a question of fact . . . .\u201d Upjohn Co. v. Mova Pharm. Corp.<\/span>, 225 F.3d 1306, 1309 (Fed. Cir. 2000). Conversely, this court has instructed\u2014as required by Warner-Jenkinson<\/span>\u2014that application of the all elements rule is a question of law. See Panduit Corp. v. HellermannTyton Corp.<\/span>, 451 F.3d 819, 826 (Fed. Cir. 2006) (\u201cThe determination of infringement under the doctrine of equivalents is limited by two primary legal doctrines, prosecution history estoppel and the \u2018all elements\u2019 rule, the applications of which are questions of law.\u201d). The problem with this conflict is apparent. Judges decide vitiation; juries decide equivalents. Although the tests are the same, the testers are different, which could produce different results in application of the same rules. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

This case can serve to illustrate this situation. Trex argued to the district court that a finding of equivalents on a product comprised of forty to fifty percent wood would necessarily vitiate the claim language requiring the board to be \u201cmade [entirely] from wood.\u201d The district court agreed and barred Nystrom from pursuing an infringement theory based on equivalents. Would the result be different, however, if the accused device was comprised of fifty-five or sixty percent wood? Seventy percent? Should this question be resolved by a jury, by a judge, or by both?<\/span><\/span><\/p>\n<\/blockquote>\n

\u00a0<\/p>\n

You can read the court’s\u00a0entire opinion here: [Read<\/a>].<\/p>\n

You can listen to the entire oral argument here: [Listen<\/a>].<\/p>\n

For a succinct article on the Doctrine of Claim Vitiation (written prior to Judge Rader’s comments), see “The Doctrine of Claim Vitiation” by Hanft and Chiarelli at the following link: [Link<\/a>].<\/p>\n","protected":false},"excerpt":{"rendered":"

Judge Rader had a second bite at the claim vitiation apple in the recent case of Nystrom v. Trex Co., Inc., 2009-1026\u00a0(Fed. Cir. 2009).\u00a0 During the oral argument for that case, Judge Rader had the following exchange with appellee’s counsel: [Listen]. In his concurring opinion, Judge Rader echoed his position from the oral argument that […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[13],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2039"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2039"}],"version-history":[{"count":17,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2039\/revisions"}],"predecessor-version":[{"id":2055,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2039\/revisions\/2055"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2039"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2039"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2039"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}