734 F.3d 1352
Fed. Cir.2013Background
- ITC sued Rudolph for infringement of the ’894 patent directed to a probe-card inspection system with a window, probe tips, and dual-force states for image capture.
- District court granted summary judgment of literal infringement for Rudolph’s pre-2007 products where tips contact the window.
- Three issues at trial: willfulness of pre-2007 literal infringement, whether no-touch products meet the claim’s “first state” contact limitation, and damages.
- Jury found no willfulness for pre-2007 products but found willful infringement under the doctrine of equivalents for the no-touch products, awarding lost profits.
- District court denied Rudolph’s JMOL that prosecution history estoppel bars the doctrine of equivalents and held no laches; treble damages for willfulness; case deemed exceptional with fees and costs to ITC.
- On appeal, court reverses the denial of JMOL on equivalents, vacates willfulness and treble damages, affirms literal-infringement damages, vacates exceptional-case fees, and remands for costs.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does prosecution history estoppel bar the doctrine of equivalents? | Rudolph argues amendment narrowed claim scope and should not bar equivalents. | ITC contends exceptions apply to preserve some equivalents. | Prosecution history estoppel bars the doctrine of equivalents. |
| Do any exceptions to estoppel apply to preserve the no-touch equivalent? | ITC asserts tangential or unforeseeable rationale exists. | Rudolph argues tangential or unforeseeable rationale not shown. | No applicable exception; estoppel applies. |
| Is the no-touch product infringing under the doctrine of equivalents? | ITC argues no-touch falls within equivalents due to claim scope. | Rudolph contends estoppel bars it and that no infringement under equivalents. | Equivalents barred; no-touch products do not infringe under equivalents. |
| Was the damages award for literal infringement supported by substantial evidence? | ITC supports lost profits and two-supplier theory. | Rudolph challenges the basis for damages given no-touch infringement issues. | Damages for literal infringement sustained. |
| Was the case exceptional under § 285 and were attorneys’ fees proper? | District court relied on willfulness and misconduct to deem exceptional. | Rudolph argues error since exceptional finding depended on willfulness. | Exceptional-case finding and related fees vacated. |
| Did the district court abuse or err in ruling on laches? | N/A specific to laches argument in brief. | N/A specific to laches argument in brief. | No abuse; no laches. |
Key Cases Cited
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (U.S. 2002) (prosecution history estoppel and its exceptions)
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 734 (U.S. 2002) (presumptive estoppel framework)
- Chimie v. PPG Indus. Inc., 402 F.3d 1371 (Fed. Cir. 2005) (how to rebut prosecution-history estoppel; tangential relation)
- Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 480 F.3d 1335 (Fed. Cir. 2007) (very narrow tangential relation standard)
- Felix v. American Honda Motor Co., 562 F.3d 1167 (Fed. Cir. 2009) (tangential rationale and amendment strategy)
- Honeywell Int’l, Inc. v. Hamilton Sundstrand Corp., 523 F.3d 1304 (Fed. Cir. 2008) (unforeseeability and estoppel considerations)