Steuben Foods, Inc. v. Shibuya Hoppmann Corp., et al., No. 2023-1790 (Fed. Cir. (D. Del.) Jan. 24, 2024). Opinion by Moore, joined by Hughes and Cunningham.
Steuben sued Shibuya for infringement of three patents relating to systems for the aseptic packaging of food products. A jury returned a verdict finding the patent claims valid and infringed and awarding damages of more than $38 million.
After the verdict, Shibuya moved for judgment as a matter of law (JMOL) of noninfringement, invalidity, and damages, and in the alternative moved for a new trial. The court granted JMOL of noninfringement of all three patents, found Shibuya’s invalidity arguments waived, and conditionally granted a new trial on infringement, invalidity, and damages. Steuben appealed.
The Federal Circuit reversed the JMOL of noninfringement for the first two patents but affirmed the JMOL of noninfringement for the third patent.
As to the first patent, the district court’s award of JMOL of noninfringement was based on the reverse doctrine of equivalents (RDOE). Under that doctrine, an alleged infringer can avoid infringement by showing that the accused product “is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way” even though the product falls within the literal words of the claim.
In the appeal, Steuben argued that Congress eliminated the common law doctrine of RDOE when it passed the 1952 Patent Act. The Federal Circuit found “Steuben’s arguments compelling” and noted that the court has “never affirmed a decision finding noninfringement based on the reverse doctrine of equivalents.” But the court ruled that it “need not decide whether RDOE survived the 1952 Patent Act” because here “there was substantial evidence to rebut any prima facie case of RDOE.” Thus, the Federal Circuit reversed the district court’s JMOL of noninfringement.
For the second patent, the Federal Circuit again reversed the JMOL of noninfringement. The asserted claims included means-plus-function limitations. The district court held that no reasonable juror could find the “way” the accused machines operate to be substantially the same as the claimed way, thus warranting JMOL of noninfringement. The Federal Circuit disagreed because Steuben’s expert had provided testimony “that went directly to the ‘way’ the structures operate in the context of the claimed function, and provided the jury substantial evidence with which to find infringement.”
Turning to the third patent, the claims require a sterilant to be added to a conduit “intermittently.” The accused machines add the sterilant continuously rather than intermittently, and the jury found infringement under the doctrine of equivalents. The district court overturned the verdict and awarded Shibuya JMOL of noninfringement because “intermittently” and “continuously” are antonyms, not equivalents. The Federal Circuit agreed, explaining that a finding of infringement under the doctrine of equivalents “would vitiate the claim limitation,” since “something that is done non-continuously cannot be the equivalent of something done continuously.”
Lastly, the Federal Circuit reversed the conditional grant of a new trial on infringement because the district court did not provide any basis for granting a new trial that was not subsumed by the Federal Circuit’s JMOL analysis. The Federal Circuit also vacated the conditional grant of a new trial on invalidity and damages because the district court did not provide its reasoning. Thus, the Federal Circuit vacated the conditional grant of a new trial and remanded.