Whether summary judgment of noninfringement is proper where the patentee presented considerable evidence that the accused device, though structurally different, was a known alternative structure to the patented device, performs the same function in substantially the same way to achieve substantially the same result as the patented device, and where the district court used a component-by-component analysis to determine that the two devices were not structurally equivalent.
No. A district court cannot use a component-by-component analysis to determine structural equivalence and should consider all credible evidence regarding interchangeablility and similarity of the accused and patented devices before granting summary judgment of noninfringement.
Caterpillar, Inc. ("Caterpillar") sued Defendant John Deere & Co. ("Deere") for infringement of its US Patent No. 5,279,378 ("the '378 patent") for a "frictionally driven belted work vehicle." The '378 patent teaches a system that allows the user to move the front axle and the front wheels of a tractor forward or backward, thereby properly adjusting the tension of the belt that connects the front wheel with the back wheels and permits facile movement of the tractor in difficult situations. Deere's accused system uses a "swing link" that adjusts tension between the belts and the wheels of the tractor. The Deere system does not have a front axle. Rather, the wheels are connected to the frame of the tractor by a diamond-shaped lever arm. In addition to these structural differences, Deere claimed that its system is superior to Caterpillar's because it permits better operator visibility of the ground.
In granting summary judgment of noninfringement under 35 U.S.C 112, para. 6, the district judge held that no reasonable jury could find that the Deere tensioning system performed the tensioning function in substantially the same way or with substantially the same result as Caterpillar's system. The district court noted that the accused product lacked an axle, a spherical bearing and angled struts, had a different number of parts of different sizes, and was thus different from Caterpillar's system on a component-by-component basis. Additionally, the district court dismissed expert evidence that the Deere system was a well-known substitute for Caterpillar's system. Caterpillar appealed the summary judgment of noninfringement.
On appeal, neither party disputed the claim construction and the sole issue was whether the Deere system was the structural equivalent of the patented system. The Federal Circuit held that the district court impermissibly conducted a component-by-component analysis in determining whether the two structures were equivalent. The Court cited Odetics, Inc. v. Storage Tech. Corp., 185 F.3d at 1268, 51 USPQ2d at 1230 (Fed. Cir. 1999) for the proposition that a court should use the whole structure in determining if the differences between two structures are insubstantial. The Federal Circuit observed that Caterpillar offered considerable evidence to show that while the individual systems were different, they performed the same function in substantially the same way to achieve substantially the same result. Therefore the district court should have credited the patentee's evidence and allowed the issue to go to the jury. Further, the district court should have considered Caterpillar's evidence that the Deere system was well-known as an alternative by experts in the field. However, the district court should not have considered the evidence put forth by Deere relating to enhanced operator visibility because this advantage did not relate to the disputed tensioning function.
Thus the Federal Circuit reversed the district court's grant of summary judgment and remanded for further proceedings, finding that a genuine issue of material fact remained regarding substantial equivalence of the accused system.
In a dissenting opinion, Judge Lourie disagreed with the Court's characterization of the district court's analysis as a component-by-component comparison, and agreed with the district court that no reasonable jury could find that Deere infringed on Caterpillar's patent. Judge Lourie reasoned that the accused device performed its tensioning function in a substantially different way from the patented device by moving the wheels individually rather than by moving the entire axle in a particular direction. Thus the different means of performing the same tensioning function yielded substantially different results, including improved operator visibility, that would support the district court's summary judgment of noninfringement.
Prepared by the liibulletin-patent Editorial Board.