By Mark Engstrom, J.D.
In a patent infringement action brought by a manufacturer of food blenders, the federal district court in Cleveland found that two "blender jars" of a competing company did not infringe, as a matter of law, the plaintiff’s patent on a "Container for a blender." Summary judgment of non-infringement was therefore granted to the competitor. One of the accused products—the defendant’s "WildSide" blender jar—was discontinued before the patent was issued. A claim of direct infringement by that product was thus rejected. With respect to the second accused product—a "WildSide+" jar—the defendant had "designed around" the patent so the jar lacked a "bottom surface having a periphery defining only one line of symmetry." In addition, the jar did not infringe under the doctrine of equivalents (Vita-Mix Corp. v. Blendtec, Inc., August 9, 2017, Gaughan, P.).
WildSide jar. In anticipation of the issuance of U.S. Patent No. 8,753,004—a "blender jar" patent owned by plaintiff Vita-Mix Corp.—defendant Blendtec Inc. discontinued the sales of its WildSide jar, permanently modified the jar’s mold to create a new jar (the "WildSide+"), and scrapped its entire inventory of WildSide jars. According to Blendtec, the only evidence of infringement that Vita-Mix had produced was "screen shots"—from third party websites—that depicted its WildSide jar after the product had been discontinued. Even if those advertisements constituted patent infringement, Blendtec argued, they did not show infringement by Blendtec.
The court agreed. No reasonable juror could find that Blendtec’s WildSide jar had infringed the patent in suit. Significantly, Blendtec’s evidence showed that, prior to the issuance of the patent, Blendtec had begun to "design around" it. To that end, Blendtec removed the WildSide jar from the market, re-molded its machinery to manufacture the WildSide+, and issued a press release to announce that all of its blenders would thereafter include the WildSide+ jar. In addition, Blendtec submitted evidence to show that it had recycled its inventory of WildSide jars and had discontinued its sales of those jars before the patent in suit was issued.
Because undisputed testimony showed that Blendtec had ceased its sales of the WildSide jar before the issue date of the Vita-Mix patent, summary judgment of non-infringement was warranted, with respect to the WildSide jar, on the issue of direct infringement.
Wildside+ jar (literal infringement). To establish literal infringement, Vita-Mix had to prove that Blendtec’s WildSide+ jar had an "interior bottom surface having a periphery defining only one line of symmetry." Blendtec argued that it had designed around that limitation by placing two "ridges" along the side walls and interior bottom periphery of the jar, such that the bottom surface lacked a literal line of symmetry.
Again, the court agreed with Blendtec. In the court’s view, no reasonable juror could find that the WildSide+ jar had an "interior bottom surface having a periphery defining only one line of symmetry" because the placement of ridges altered the periphery of the interior bottom surface such that no line of symmetry existed. Moreover, the lack of a single line of symmetry was visible on "visual inspection alone."
The court rejected Vita-Mix’s argument that the ridges were an added feature that should be ignored in assessing infringement. That approach was applicable when an element was added to a product that otherwise met each claim element, the court explained. If the addition of elements changed the structure such that the claim element was no longer present, the product would not infringe. In this case, the ridges altered the interior bottom periphery such that no single line of symmetry existed. In the court’s view, the ridges were not "additional elements" and their existence negated a claim term. As a result, the WildSide+ jar was non-infringing.
Wildside+ jar (doctrine of equivalents). As a matter of law, prosecution history estoppel precluded Vita-Mix from relying on the doctrine of equivalents to prove infringement. The court noted that, for prosecution history estoppel to apply, Blendtec had to show that a narrowing amendment had occurred. If it had, the court had to determine whether the amendment had "a substantial reason relating to patentability."
According to the court, Blendtec showed that a narrowing amendment had indeed occurred. The addition of the "symmetry" language to the "bottom surface" limitation "narrowed the scope of that limitation," the court explained. Moreover, Vita-Mix did not dispute Blendtec’s assertion that the amendment was "narrowing." Finally, because Blendtec showed that the amendment was narrowing, Vita-Mix bore the burden of showing that the amendment was not made for a "substantial reason related to probability." However, Vita-Mix made "no effort" to do so.
The court thus presumed—under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd., 344 F.3d 1359 (Fed. Cir. 2003), and Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997)—that the narrowing amendment was made "for a substantial reason related to patentability." It also presumed that Vita-Mix had "surrendered all territory between the original claim limitation and the amended claim limitation."
Nevertheless, the court noted that Vita-Mix could overcome the court’s presumption if: (1) it could show that the alleged equivalent would have been unforeseeable at the time of the narrowing amendment; (2) the rationale underlying the narrowing amendment bore no more than a "tangential relationship" to the equivalent question; or (3) there was "some other reason" suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent.
Vita-Mix did not respond to Blendtec’s arguments regarding the first and third options, so the sole issue before the court was whether Vita-Mix had overcome the presumption of surrender by the second option: showing that the "symmetry" limitation bore no more than a "tangential relationship" to the equivalent in question.
The court noted that Vita-Mix had devoted just one line of argument to its claim that the rationale underlying the narrowing amendment bore no more than a "tangential relationship" to the equivalent in question. Vita-Mix asserted that the patentee’s rationale for the amendment was "to provide the necessary context for the location of the blade assembly’s vertical axis." Vita-Mix failed, however, to provide any citation to the prosecution history (or otherwise) to support its position. On the other hand, Blendtec’s citations to the prosecution history showed that the rationale was not tangential to the equivalent.
Based on Vita-Mix’s own characterization and express statements to the PTO, the court concluded that the "only one line of symmetry" limitation was added to distinguish the claim from prior art. And even if the prior art did not contain the alleged equivalent, the court added, "it does not automatically follow that the amendment was ‘tangential’ to the equivalent." According to the court, prosecution history estoppel applied even if the patentee surrendered more than necessary to overcome the prior art.
In this case, Vita-Mix chose to expressly amend the claim to require a single line of symmetry, an action that did not render the amendment "tangential" to the equivalent, in the court’s view. Rather, even if the amendment was not undertaken in an effort to distinguish the prior art, the prosecution history made it readily apparent that Vita-Mix had intended to surrender the equivalent.
Ultimately, the court concluded that Vita-Mix failed to show that the amendment bore no more than a "tangential relationship" to the equivalent question, and thus failed to overcome the presumption of surrender. Prosecution history estoppel thus barred Vita-Mix from relying on the doctrine of equivalents.
The case is No. 1:15 CV 1118.
Attorneys: Brodie M. Butland (Porter, Wright, Morris & Arthur) for Vita-Mix Corp. and Vita-Mix Management Corp. Brett L. Foster (Holland & Hart) for Blendtec, Inc.
Companies: Vita-Mix Corp.; Vita-Mix Management Corp.; Blendtec, Inc.
MainStory: TopStory Patent OhioNews
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