Whether summary judgment for noninfringement of a patent that describes an easily interchangeable cartridge spool for use in a fishing reel is warranted where the allegedly infringing device employs two fixed pieces and the allegely infringed invention uses only one removable piece and a means to attach it for the same purpose.
Yes. A device that uses two fixed parts to do what the invention does in one with an attachment means is substantially different because it does not meet every limitation of the claim and thus cannot literally infringe.
Cortland Line Co., Inc. ("Cortland") owns US Patent No. 5,120,003 ('003 patent) which is directed to a fishing reel with an interchangeable cartridge spool that allows fishermen to change fishing line types during varying fishing conditions more rapidly than previous methods. To operate the invention, a fisherman exchanges one cartridge spool that is housed between two end plates and which is coupled by a threaded connector with a spool of different-sized fishing line. Cortland sued Orvis Co. ("Orvis") alleging infringement by the "Rocky Mountain Reel", a device manufactured based on technology from the United Kingdom Patent No. 2,183,431 ('431 patent). Orvis's device uses a single end plate and is attached to the housing using a rubber grommet and plastic insert. During operation, an exchanged spool slides over the axle. Prongs of the axle snap into receiving slots in the plastic insert to hold the spool in place. The district court held that the Rocky Mountain Reel did not infringe the invention either literally or under the doctrine of equivalents and that no trademark infringement had occurred. Thus, the district court granted summary judgment to Orvis on both issues. Cortland appeals this decision.
The Federal Circuit reviews summary judgments de novo. The Court held that the district court had properly construed the claim to find two elements at issue, the "second end plate" and the "means for connecting" the end plate to the reel housing. The Court construed Cortland's "end plate" to be a disk-like structure separate from the cartridge spool that abuts the end face of the spool. The Federal Circuit agreed with the district court that the Rocky Mountain Reel lacked a second end plate under proper claim construction and thus could not literally infringe. In addition, the rubber grommet and end plastic insert, even if found to function as a second end plate, would require an "attachment means" for literal infringement. Under 35 U.S.C. § 112, a means-plus-function claim must be met with a corresponding structure for literal infringement. Orvis's device did not require an attachment means, therefore, infringement was impossible.
Additionally, the Court found that during patent prosecution, Cortland specifically distinguished its invention from the technology disclosed in the '431 patent that is substantially similar to the Rocky Mountain Reel.The Court held that under the doctrine of prosecution history estoppel, Cortland could not recover under the doctrine of equivalents what it had relinquished during prosecution In addition, infringement under the doctrine of equivalents requires that the accused product contain each limitation of the claim or an equivalent that is not substantially different. Here, the rubber grommet of the Rocky Mountain Reel is not an insubstantially different equivalent of the second plate of Orvis' device, even when considered in combination with the plastic insert. Thus, the Court held that the Rocky Mountain Reel did not infringe under the doctrine of equivalents.
The Federal Circuit remanded the issue of trademark infringement to the district court for further proceedings.
Prepared by the liibulletin-patent Editorial Board.