Charles MacHine Works, Inc. v. Vermeer Manufacturing Co.
723 F.3d 1376
Fed. Cir.2013Background
- The dispute concerns U.S. Patent No. 5,490,569, which claims a two-pipe horizontal boring drill having a "deflection shoe" mounted on the side of the casing or body to steer/deflect the drill bit.
- CMW sued Vermeer for infringement, asserting apparatus claims reciting a "deflection shoe mounted on a first side" and method claims referring to a casing "having a deflection shoe thereon."
- Vermeer’s accused devices included commercial products (with a bent sub) and three non-commercial prototypes (which also have a wear pad); CMW argued the bent sub (and wear pad for prototypes) met the "deflection shoe" and "mounted on" limitations.
- The district court construed "deflection shoe" as a structure attachable to the side of the body or casing that can be positioned to deflect the apparatus, and construed "mounted on" as "attached to." It granted summary judgment of no literal or equivalent infringement as to all accused devices.
- On appeal the Federal Circuit held CMW lacked adequate notice that the district court’s summary judgment extended to the prototypes and vacated that portion; it affirmed no literal infringement of the commercial products but reversed as to doctrine-of-equivalents noninfringement and remanded for genuine dispute on equivalence.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Did the district court improperly decide noninfringement for prototypes on summary judgment? | CMW: prototypes structurally differ and were not included in Vermeer’s motion; CMW lacked notice. | Vermeer: its motion and proposed rulings targeted all "accused products," including prototypes; arguments at hearing addressed both. | Vacated summary judgment as to prototypes; CMW lacked sufficient notice that prototypes were encompassed. |
| Was the claim construction of "deflection shoe" and "mounted on" correct? | CMW: (challenged implicitly via literal infringement claim). | Vermeer: supported the district court construction. | Affirmed the district court’s constructions. |
| Do Vermeer’s commercial products literally infringe the asserted claims? | CMW: bent sub (and wear pad for prototypes) meets "deflection shoe mounted on" limitation. | Vermeer: accused commercial products lack an attachable "deflection shoe mounted on" the casing/body as construed. | Affirmed: no literal infringement of commercial products. |
| Do the commercial products infringe under the doctrine of equivalents? | CMW: expert declaration shows bent sub performs same function-way-result as claimed deflection shoe; differences are insubstantial. | Vermeer: expert declaration is conclusory; finding equivalence would vitiate claim limitations. | Reversed district court on equivalents for commercial products; CMW raised genuine factual disputes and vitiation does not bar trial; remanded. |
Key Cases Cited
- Grober v. Mako Prods., Inc., 686 F.3d 1335 (Fed. Cir.) (summary judgment review follows regional circuit law)
- Wilson v. Spain, 209 F.3d 713 (8th Cir. 2000) (summary judgment reviewed de novo)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) (nonmovant evidence credited and inferences drawn favorably on summary judgment)
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir.) (claim construction is reviewed de novo)
- Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308 (Fed. Cir.) (infringement is a question of fact on appeal from summary judgment)
- Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349 (Fed. Cir.) (doctrine of equivalents and claim vitiation standards)
- Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997) (function-way-result test for equivalents)
- Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298 (Fed. Cir.) (function-way-result is fact question)
- Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342 (Fed. Cir.) (explaining vitiation and equivalence tests)