Is the End Near for the Reverse Doctrine of Equivalents?

On January 24, in Steuben Foods, Inc v. Shibuya Hoppman Corporation, the Federal Circuit found that Steuben had made a compelling argument that the common law Reverse Doctrine of Equivalents (RDOE) did not survive the 1952 Patent Act. However, the Federal Circuit did not need to decide that issue, instead reversing the district court’s grant of Judgement as a Matter of Law (JMOL) on the question of infringement on other grounds.

The patents asserted in Steuben generally relate to systems for aseptic packaging of food products. One of the asserted claims recites in part an apparatus for aseptically filling a series of bottles that includes a valve, a first sterile region that surrounds a region where the product exits the valve, and a second sterile region positioned proximate to the first sterile region. In operation, a portion of the valve that enters and exits the first sterile region does so via the second sterile region to avoid contamination that could happen without the presence of the second sterile region.

A jury found the asserted patents were infringed and not shown to be invalid. However, the district court granted Shibuya’s motion for JMOL, finding that Shibuya had made a prima facie case of RDOE. The district court also found Steuben’s rebuttal testimony was wrong as a matter of law and entitled to no weight.

RDOE is the reverse of the Doctrine of Equivalents. An alleged infringer may avoid a judgment of infringement by showing the accused product has been so far changed in principle from the asserted claims that it performs the same or similar function in a substantially different way.

In the 1950 decision in Graver Tank v. Linde Air Products, the Supreme Court explained the defense of RDOE as follows:

[The doctrine of equivalents] is not always applied in favor of a patentee but is sometimes used against him. Thus, where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee’s action for infringement.

The Federal Circuit has previously described the RDOE as “an anachronistic exception, long mentioned but rarely applied.” In Steuben, the Federal Circuit recognized that it has never affirmed a decision finding noninfringement based on the RDOE.

Steuben argued that if a device literally infringes a claim, but the accused infringer believes the claim is too broad, then the appropriate recourse is a § 112 challenge, not assertion of the RDOE. The Federal Circuit has previously noted that when Congress enacted § 112 as part of the 1952 Patent Act, and after the decision in Graver Tank, “it imposed requirements for the written description, enablement, definiteness, and means-plus-function claims that are co-extensive with the broadest possible reach of the RDOE.” The Federal Circuit did not need to address Steuben’s arguments. Instead, the Federal Circuit decided that even if Shibuya had made a prima facie case, the jury’s verdict should not have been overturned under the RDOE because the rebuttal testimony provided by Steuben at trial was sufficient. The Federal Circuit remanded the case to the district court for further proceedings.

This decision strongly hints at the end of the RDOE. However, the ultimate decision as to whether the common law RDOE was eliminated by the 1952 Patent Act will have to wait for another case.

For more information on this ruling, please contact Fitch Even partner Jon A. Birmingham, author of this alert.

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