NextStep asserted that Comcast’s Voice Remote infringed U.S. Patent No. 8,280,009. At trial, a jury found that Comcast infringed the ’009 patent under the doctrine of equivalents but did not literally infringe. In post-trial motions, Comcast moved for judgment as a matter of law that the evidence did not support a finding of infringement under a doctrine of equivalents theory. The district court granted Comcast’s motion.
The Federal Circuit affirmed. The court first addressed the proper framework to address the issue. First, there are two tests to show equivalence: the function-way-result test, which asks “whether the accused product performs the substantially the same function in substantially the same way to obtain the same result,” and the insubstantial differences test, which asks whether “differences between the claimed invention and the accused device or process are insubstantial.” The particular test to be used depends on the particular facts of each case. Second, proof of equivalence must be shown on a limitation-by-limitation basis, not the invention as a whole. Third, evidence of equivalence must be from the perspective of one skilled in the art. And finally, the patentee “must provide particularized testimony and linking argument as to the insubstantiality of the differences between the claimed invention and the accused device.” Generalized testimony is not sufficient—the patentee must provide evidence to establish what the function, way, and result of both the claimed device and accused device are, and why those functions, ways, and results are substantially the same or insubstantially different.
The limitation at issue on appeal was “responsive to a single action performed for a user.” The parties agreed that the point of novelty of the ’009 patent was that customer service support may be initiated with a “single action.” In other words, the claim requires that all the recited steps for troubleshooting must occur “responsive to a single action performed by the user.”
To support its doctrine of equivalence argument at trial, NexStep’s expert, Dr. Selker, testified that, under the function-way-result test, Comcast’s accused tools met the “single action” limitation. Dr. Selker testified that, when users try to diagnose their device, there may be several button presses along the way, but concluded “that’s the same function.” And he went on to conclude “it’s done in the same way” because using Comcast concierge services is like giving someone “authorization” to diagnose and solve the problem, as opposed to the user doing it themselves. As for the result, Dr. Selker concluded the result to be similar in that “this thing is going to be restarted, refreshed, whatever…without me having to tangle with understanding all of the issues…so it’s going to come with a result of my modem working.”
The majority disagreed, criticizing Dr. Selker for never explaining why the function, way, or result were substantially the same. Dr. Selker did not identify a particular element of any of the accused tools as equivalent to the “single action” limitation. Nor did Dr. Selker explain why each element of the accused tools were equivalent to any particular claim element.
NexStep also argued that its literal infringement evidence, coupled with its doctrine of equivalence evidence, rendered the district court’s grant of judgment as a matter of law erroneous. The majority dismissed this argument because the district court considered the literal infringement evidence but, more importantly, NexStep never articulated “what the function, way, and result of both the claimed device and accused device are, and why those functions, ways, and results are substantially the same.”
Finally, NexStep argued that, when the claimed technology is “easily understandable,” the evidentiary requirement to provide particularized testimony and linking argument should not be so stringent. The court held, however, that these evidentiary requirements originated in cases concerning “easily understandable” technologies. And the policy reason for the evidentiary standard still stands: to guard the definitional and public-notice functions of patent claiming.
Judge Reyna dissented on the doctrine of equivalents issue. He argued that the majority disregarded the jury’s role at trial and did not consider the evidence in its entirety, including the literal infringement evidence. Judge Reyna also criticized the majority for establishing “a rigid new rule” requiring expert testimony to prove infringement under the doctrine of equivalents, even where the technology is “simple.”
This article appeared in the 2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions report.
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