The Federal Circuit has reversed a district court’s judgement of non-infringement of a patent as a matter of law based on an unusual defense based on the reverse doctrine of equivalents.
The case is Steuben Foods, Inc. v. Shibuya Hoppmann Corp., No. 2023-1790 (Fed. Cir. Jan. 24, 2025).
In 2010, Steuben filed a complaint alleging that Shibuya infringed, among other things, claims of Steuben’s ’591, ’188, and ’985 patents. The patents relate to systems for the aseptic packaging of food products.
In 2021, the case finally went to trial before a jury. After the evidence had been presented, Shibuya moved for judgment as a matter of law (JMOL) under Federal Rule of Civil Procedure 50(a) of noninfringement as to all asserted claims of the asserted patents.
Under Rule 50, if a party has been fully heard on an issue during a jury trial and the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue, the court may resolve the issue against the party.
The district court denied the JMOL motion. The jury then found the patents at issue valid and infringed and awarded $38,322,283.78 in damages.
After the verdict, Shibuya renewed its JMOL of noninfringement under Rule 50(b). The district court granted Shibuya’s motion regarding noninfringement of all the patents at issue and conditionally granted a new trial.
Steuben appealed. It alleged Shibuya’s P7 aseptic bottling line infringed claim 26 of the ’591 patent:
Specifically, Steuben argued the accused product contained a sterile zone surrounding the fill pipe, identified by Steuben as a first sterile region, and a sterile food product passage, identified as the “second sterile region”…
Shibuya argued the accused product didn’t infringe because it did not meet the “second sterile region” limitation and, separately, there existed genuine material facts in dispute regarding noninfringement under the reverse doctrine of equivalents (RDOE).
The Federal Circuit explained that
We have previously described RDOE as an “anachronistic exception, long mentioned but rarely applied.” …. RDOE is, as it sounds, 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.”
The court noted that
A patentee alleging infringement bears the initial burden of proving infringement. …. If the patentee establishes literal infringement, then an accused infringer claiming noninfringement under RDOE bears the burden of establishing a prima facie case of noninfringement under RDOE….. If the accused infringer meets this burden, then the burden shifts back to the patentee to rebut the prima facie case.
Here, the jury found claim 26 of the ’591 patent not invalid and infringed. The district court granted JMOL of noninfringement, holding that no reasonable juror could have found infringement.
Steuben argued on appeal that:
(1) the district court erred in relying on RDOE to overturn the jury’s verdict of infringement of claim 26 of the ’591 patent, and
(2) RDOE is not a viable defense to infringement.
The Federal Circuit noted that RDOE is a venerable doctrine that can be traced back to at least the 1800s. But Steuben argued that the common law RDOE doctrine was eliminated by the 1952 Patent Act. Specifically, Steuben argued that RDOE conflicts with 35 U.S.C. § 271(a) and was subsumed in 35 U.S.C. § 112 when Congress enacted the 1952 Patent Act.
Steuben argued that if a device literally falls within the scope of a patent claim, but the accused infringer believes the claim is too broad and its device should not infringe, the appropriate recourse is a § 112 challenge, not a claim of noninfringement under RDOE.
Shibuya countered with an argument that RDOE survived the 1952 Patent Act.
The Federal Circuit noted that it found Steuben’s arguments compelling, but that it didn’t need to decide whether or not RDOE survived the 1952 Patent Act in this case.
The court also noted that it had never “affirmed a decision finding noninfringement based on the reverse doctrine of equivalents.”
The court concluded that Steuben had presented enough evidence to sustain the jury’s verdict that Shibuya’s product did not operate in a “substantially different” way from the patented technology.
The court thus reversed the JMOL of noninfringement with respect to the asserted claim of the ’591 patent and reinstated the jury’s verdict of infringement.
The court also reversed the JMOL for a second patent but affirmed it for the third.
The court’s opinion suggests that an RDOE defense may have questionable viability if defendants assert it in future.
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