Doctrine of Equivalents Infringement

Transcription

1 Chapter 7 Doctrine of Equivalents Infringement The All Elements Rule Dolly, Inc. v. Spaulding & Evenflo Cos. 16 F.3d 394, 29 USPQ2d 1767 (Fed. Cir. 1994) Before ARCHER, PLAGER, and RADER, Circuit Judges. RADER, Circuit Judge. Dolly, Inc. (Dolly) sued Spalding & Evenflo Companies, Inc. (Evenflo) in the United States District Court for the Southern District of Ohio (Western Division) for unfair competition and infringement of U.S. Patent No. 4,854,638 (the '638 patent). On an earlier appeal in this same case, Dolly, Inc. v. Spalding & Evenflo Cos., 954 F.2d 734, 23 USPQ2d 1555 (Fed.Cir.1992), this court vacated the district court's preliminary injunction because the trial court had improperly construed the patent claims. On remand, the district court determined that Evenflo infringed the '638 patent under the doctrine of equivalents. Due to improper application of the doctrine of equivalents, this court reverses. BACKGROUND Chapter 7 Doctrine of Equivalents Infringement 1

2 The '638 patent discloses a portable, adjustable child's chair that also serves as a booster seat or a highchair. The '638 patent carries the title "Portable Adjustable Child's Chair." The claimed chair has a series of channels into which the seat panels slide, thereby adjusting the seat height to accommodate a growing child. The chair also has a detachable tray, means for retaining the child in the seat, and means for securing the chair to a standard kitchen chair for use as a highchair. Claim 19, the only claim at issue, is dependent upon claims 16 and 17. Claims 16, 17, and 19 state: 16. A portable adjustable child's chair, comprising: (a) a contoured seat panel; (b) a contoured back panel; (c) two side panels having on their inner surfaces facing each other a plurality of generally horizontal grooves or channels to slidably receive said seat panel whereby said seat panel may be raised or lowered; and (d) a stable rigid frame which is formed in part from said side panels and which along with said seat panel and said back panel provides a body supporting feature, said stable rigid frame being self-supporting and free-standing, whereby said child's chair is readily portable and easily stored. 17. The portable adjustable child's chair of claim 16 further comprising: a serving tray; and means for removably attaching said tray to said child's chair. 19. The portable adjustable child's chair of claim 17 further comprising means for retaining the occupant in said child's chair and means for securely attaching said child's chair to an existing chair or other support. Evenflo produces the "Snack & Play" chair, a portable adjustable child's chair which also converts into a booster seat or highchair. The Snack & Play chair consists of four interlocking panels, a tray, and two sets of straps. The Snack & Play chair completely disassembles for easy portability and storage. Indeed Evenflo sells its chair disassembled. The purchaser assembles the components to form a chair. In disassembled form, the Snack & Play chair consists of four panels--a back panel, a seat panel, and two side panels. During assembly, the back panel tabs slide into receiving grooves on the side panels, the seat slides into one of three slots on the side panels and engages a receiving slot on the back panel to make a stable chair. The seat height adjusts because the assembler can choose from among three slots on the side panels when attaching the seat panel. The Snack & Play has no additional frame or components supporting the side, back, and seat panels. In granting Dolly's motion for a preliminary injunction on January 8, 1991, the district court held that the Snack & Play infringes claim 19 both literally and under the doctrine of equivalents. The trial court read paragraph (d) of claim 16 to mean that the back and seat panels can be part of the stable rigid frame. See Dolly, Inc. v. Spalding & Evenflo Cos., 18 USPQ2d 1737, 1748, 1991 WL (S. D. Ohio 1991). On appeal, this court vacated the injunction and remanded. This court stated: "[T]he claim language requires that the stable rigid frame must be formed independent of the seat and back panels." Dolly, 954 F.2d at 734, 23 USPQ2d at On remand, Dolly withdrew its claim for literal infringement. The Snack & Play lacks a stable rigid frame separate from the seat and back panels as required by claim 16. Dolly continued to assert infringement under the doctrine of equivalents. Both Evenflo and Dolly filed motions for summary judgment. Evenflo sought a judgment of non-infringement; Dolly sought reinstatement of the injunction. Chapter 7 Doctrine of Equivalents Infringement 2

3 The district court granted Dolly's motion for summary judgment, permanently enjoining Evenflo from infringing the '638 patent. The district court held that the Snack & Play infringes Claim 19 of the '638 patent under the doctrine of equivalents. The trial court reasoned that the Snack & Play's assembly of a frame from the back, seat, and side panels is the equivalent of the stable rigid frame limitation in claim 16. Evenflo appeals the district court's determination that the Snack & Play infringes under the doctrine of equivalents. DISCUSSION The determination of infringement is a two-step process: First, the court interprets the claim to determine its scope and meaning; second, the court determines whether the accused device is within the scope of the properly construed claim. Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 796, 17 USPQ2d 1097, 1099 (Fed. Cir. 1990). To show infringement, the plaintiff must establish that the accused device includes every limitation of the claim or an equivalent of each limitation. Id. An accused device may infringe a claim under the doctrine of equivalents if it performs substantially the same overall function or work, in substantially the same way, to produce substantially the same overall result as the claimed invention. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, (1950); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934, 4 USPQ2d 1737, 1739 (Fed. Cir. 1987) (in banc), cert. denied 485 U.S. 961, 485 U.S (1988). "To be a[n]... 'equivalent,' the element substituted in the accused device for the element set forth in the claim must not be such as would substantially change the way in which the function of the claimed invention is performed." Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1533, 3 USPQ2d 1321, 1325 (Fed. Cir. 1987). On remand, the district court determined that the Snack & Play contained an equivalent to the missing separate stable rigid frame: The stable rigid frame which exists when the Snack and Play side panels, back panel, and seat panel are assembled performs substantially the same function as the stable rigid frame in the claimed chair because the side panels are interconnected through the back panel and through the seat panel. The seat panel and back panel of the Snack and Play chair, like the tubular supports and tie rods in the '638 Patent's preferred embodiment connect the side panels so that they are upright, parallel to each other, and rigidly and uniformly spaced apart from each other, forming a stable rigid frame which is self-supporting and free standing and which also provides a body supporting feature. Dolly, Inc. v. Spalding & Evenflo Cos., No. C , slip op. at 5 (S. D. Ohio Feb. 9, 1993). The court thus held that the Snack & Play's stable rigid frame, assembled from the various panels, is the substantial equivalent of the separate stable rigid frame in claim 16. In addition, the district court found that the Snack & Play's stable rigid frame provides the body supporting feature without the addition of other components. The district court erred by disregarding a specific limitation in claim 16. Although the Snack & Play chair, assembled from seat, back, and side panels, is itself a stable rigid frame, the '638 claim requires a stable rigid frame apart from the back and seat panels. The Snack & Play chair has no separate stable rigid frame. The doctrine of equivalents cannot extend or enlarge the scope of the claims. Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 684, 14 USPQ2d 1942, 1948 (Fed. Cir.), cert. denied, 498 U.S. 992 (1990). "The claims--i.e. the scope of patent protection as defined by the claims--remain the same and application of the doctrine expands the right to exclude to Chapter 7 Doctrine of Equivalents Infringement 3

4 'equivalents' of what is claimed." Id. The doctrine of equivalents is not a license to ignore claim limitations. See Pennwalt Corp., 833 F.2d at 935. Claim 16's language requiring a stable rigid frame independent of seat and back panels is not a requirement solely for literal infringement. This limitation applies under the doctrine of equivalents as well. "Under the doctrine of equivalents, the accused device and the claimed invention cannot work in 'substantially the same way' if a limitation (including its equivalent) is missing." Valmont Indus. v. Reinke Mfg., 983 F.2d 1039, 1043 n.2, 25 USPQ2d 1451, 1455 n.2 (Fed. Cir. 1993). The Snack & Play chair lacks a stable rigid frame separate from the panels. The Snack & Play also lacks a structure to which additional components are added to form the body supporting feature. Rather, the Snack & Play chair achieves its function without a stable rigid frame independent of the various panels. In the absence of the stable rigid frame limitation or its equivalent, the Snack & Play chair does not infringe. The doctrine of equivalents does not require a one-to-one correspondence between components of the accused device and the claimed invention. Intel Corp. v. International Trade Comm'n, 946 F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed. Cir. 1991); see also Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 882, 20 USPQ2d 1045, 1054 (Fed. Cir. 1991). An accused device may infringe under the doctrine of equivalents even though a combination of its components performs a function performed by a single element in the patented invention. Intel Corp., 946 F.2d at 832. The accused device must nevertheless contain every limitation or its equivalent. Id. Contrary to Dolly's assertions, Intel Corp. and Vaupel Textilmaschinen do not apply here. In those cases, more than a single element in the accused device performed the function of a single limitation in the claimed invention. Every limitation or its equivalent, however, was present in the accused device. Equivalency thus can exist when two components of the accused device perform a single function of the patented invention. In this case, however, a vital limitation of the claim is absent from the accused device. Equivalency can also exist when separate claim limitations are combined into a single component of the accused device. See Sun Studs, Inc. v. ATA Equip. Leasing Inc., 872 F.2d 978, 10 USPQ2d 1338 (Fed. Cir. 1989), overruled on other grounds, A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, , 22 USPQ2d 1321, 1333 (Fed. Cir. 1992). In the instant case, one element of the accused device fulfills two functions of the claimed chair--the Snack & Play's panels serve as both the stable rigid frame and the body supporting feature. Contrary to Dolly's contention, however, Sun Studs does not apply here. In Sun Studs, the patent claimed log processing equipment, comprising, inter alia, "aligning means for receiving and holding a log at a reference location," and "charger means for releasably gripping said log at said reference location and transporting the log past said scanning means." Sun Studs, 872 F.2d at 988. The district court held that the accused device, lacking a separate aligning means, did not infringe either literally or under the doctrine of equivalents. On appeal, this court reversed: It was legal error to hold that the aligning and charging steps must be performed by separate elements in the apparatus. One-to-one correspondence of components is not required, and elements or steps may be combined without ipso facto loss of equivalency. Each case must be decided in light of the nature and extent of the differences between the accused device and the claimed invention, on the equitable principles of the doctrine of equivalents. Id. at 989. Chapter 7 Doctrine of Equivalents Infringement 4

5 Sun Studs does not apply here because the claim in Sun Studs merely recited aligning and charging means without any additional limitation regarding the relationship of the two means to one another. In contrast, claim 16 specifically requires a stable rigid frame formed of components other than the seat and back panels. Such a stable rigid frame does not exist in the accused device. This court cannot "convert a multi-limitation claim to one of [fewer] limitations to support a finding of equivalency." Perkin-Elmer Corp., 822 F.2d at The Snack & Play stable rigid frame assembled from the panels is not the equivalent of the claimed stable rigid frame which specifically excludes the seat and back panels. Finally, Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 9 USPQ2d 1962 (Fed. Cir. 1989), does not support an application of the doctrine of equivalents to find infringement in this case. In Corning Glass, the inventions related to optical fibers which transmit light for optical communications. The optical fiber, according to the claims, features a core with a positive dopant in excess of that in the cladding layer around the core. Thus, the core's index of refraction is greater than that of the cladding layer. This refraction differential channels the light signals through the core. The accused fibers contained no dopant in the core. These fibers, instead, contained a negative dopant in the cladding layer. The refractive index of the core remained different from that of the cladding layer to channel the light signals. This court upheld the district court's determination that the addition of a negative dopant to the cladding layer was the equivalent of the addition of a positive dopant to the core. The Corning Glass court rejected the accused infringer's argument that the accused fibers could not infringe under the doctrine of equivalents because they lacked a claimed "element," the core dopant. This court noted the confusion about the term "element": "Element" may be used to mean a single limitation, but it has also been used to mean a series of limitations which, taken together, make up a component of the claimed invention. In the [Pennwalt ] All Elements rule, "element" is used in the sense of a limitation of a claim... An equivalent must be found for every limitation of the claim somewhere in an accused device, but not necessarily in a corresponding component, although that is generally the case. Corning Glass, 868 F.2d at This language, however, did not alter the Pennwalt rule to create a more expansive test for infringement under the doctrine of equivalents. This language in Corning Glass did not substitute a broader limitation-by-limitation comparison for the doctrine of equivalents than the element-by-element comparison in Pennwalt. Rather, the Corning Glass court merely clarified the meaning of the term "element" in the context of the Pennwalt rule. Corning Glass reaffirmed that the rule requires an equivalent for every limitation of the claim, even though the equivalent may not be present in the corresponding component of the accused device. Corning Glass, 868 F.2d at In Corning Glass, this court upheld the finding of infringement under the doctrine of equivalents: The use of... a [negative] dopant in the cladding thus performs substantially the same function in substantially the same way as the use of a [positive] dopant in the core to produce the same result of creating the refractive index differential between the core and cladding of the fiber which is necessary for the fiber to function as an optical waveguide. Id. at 1260 (alterations in original) (quoting Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 671 F. Supp. 1369, 1387, 5 USPQ2d 1545, 1559 (S.D.N.Y. 1987)). The accused device achieved the same refractive index differential by the addition of dopant, as required by the claim. The accused device only added a negative dopant to a different component. This court noted that this insubstantial change merely substituted a known alternative way to achieve the same result and perform the same function of achieving a refractive index differential. Id. Chapter 7 Doctrine of Equivalents Infringement 5

6 In the case at bar, the difference between the accused chair and the claimed invention is more fundamental. The Snack & Play chair did not merely substitute a known alternative to a stable rigid frame independent of seat and back panels to achieve the same body supporting function as the claimed invention. The difference here was not "insubstantial" at all. See Charles Greiner & Co. v. Mari-Med Mfg., 962 F.2d 1031, 1036, 22 USPQ2d 1526, 1529 (Fed. Cir. 1992). To perform its body supporting function, the claimed invention adds panels to a separate stable rigid frame. The Snack & Play has no stable rigid frame or equivalent structure to support additional panels. The Snack & Play disassembles completely into its flat panel components. An "equivalent" of a claim limitation cannot substantially alter the manner of performing the claimed function. Pennwalt, 833 F.2d at 935. Where an accused device performs substantially the same function to achieve substantially the same result but in a substantially different manner, there is no infringement under the doctrine of equivalents. Perkin-Elmer Corp., 822 F.2d at 1531 n.6. In Corning Glass, the accused device retained both a core and cladding layer and the relationship of their respective refractive indices. In contrast, the Snack & Play chair lacks both a separate stable rigid frame and the claimed relationship between that frame and the seat and back panels to perform the body supporting function. See Perkin-Elmer Corp., 822 F.2d at In short, the concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims. A stable rigid frame assembled from the seat and back panels is not the equivalent of a separate stable rigid frame which the claim language specifically limits to structures exclusive of seat and back panels. The district court erred by failing to give effect to this claim limitation in applying the doctrine of equivalents to the Snack & Play chair. Questions, Comments, Problems * * * * 1. How does the holding in Dolly relate to the Supreme Court s statements regarding vitiation in Warner-Jenkinson? Dolly tiptoes around cases, such as Sun Studs, which hold that infringement cannot be avoided simply by combining two claim elements into a single component in the accused product or process. Perhaps Dolly stands for the proposition that, when one of the claim elements is totally subsumed into the other element in the accused product or process, such that it cannot be identified apart from the other element, it cannot support a finding of infringement due to the All Elements rule. For example, in Dolly, the frame and panels of the accused high chair were not only combined into a single structural piece, but the frame could not even be identified apart from the panels. Thus, the accused chair either had panels or it had a frame, but it did not have both, so it was lacking at least one claim element entirely. Or, perhaps the patent claim in Dolly recited the invention in a very specific manner that actually did positively exclude the construction that the plaintiff had urged. What do you think? 2. Dolly is generally believed to have been joined by two later sister cases that purport to follow the rule presented in Dolly. The first case is Weiner v. NEC Electronics, 102 F.3d 534, 41 USPQ2d 1023 (Fed. Cir. 1996). In Weiner, the patent was for a device for addressing a memory array or matrix in a read-only memory (ROM) device, and the claims called for columns. The court construed the term columns to conclude that the columns were structures on the data matrix of the memory chip. In contrast, the accused devices retrieved information from a data register, which was outside and isolated from the data matrix. The devices therefore did not literally infringe. The court also found that the devices did not infringe under the doctrine of equivalents because, like the claim in Dolly, which explicitly recited a stable rigid frame, Weiner s claim explicitly required columns, which the court had construed to be located on the data matrix. Because the accused device did not call on columns in the data matrix even if it called on columns somewhere else, the court concluded that the required structure was specifically excluded from the claims. Id. at 541, 41 USPQ2d at Chapter 7 Doctrine of Equivalents Infringement 6

7 In the second case, Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420, 44 USPQ2d 1103 (Fed. Cir. 1997), the invention was for a secure medical instrument disposal container. The claimed container contained two slotted baffles to permit a person to get waste into the container without contacting sharp objects already in the container. The asserted claim called for a barrier means next to an elongated slot at the top of the container body. The accused product had a slot, if at all, within the container body and not at its top. Referring to the top of the container limitation and citing Dolly, the court held that Sage would need to remove entirely the limitation since the accused device clearly did not have a slot at its top. In Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, 47 USPQ2d 1272 (Fed. Cir. 1998), United States Surgical (USSC) had obtained a summary judgment of no infringement under the doctrine of equivalents and pushed Dolly, Weiner, and Sage on appeal as supporting the district court s ruling. Ethicon s patent covered a surgical stapler, and the asserted claim (claim 6) called for an improvement comprising a lockout mechanism connected to... logitudinal slots in a staple cartridge to prevent attempts to discharge staples from an empty staple cartridge. Although the lockout mechanism in USSC s staplers was not connected to the slots, there was record testimony that it played substantially the same role as the claimed mechanism and a skilled artisan would have recognized the two mechanisms as interchangeable. Nevertheless, the district court held that, under Sage, the accused product was specifically excluded from the claims. The Federal Circuit disagreed: Ethicon argues that the district court's reliance on Dolly and Weiner, as well as USSC's reliance on Sage, is misplaced because those cases are factually distinguishable, and in any event no language in claim 6 "directly addresses and specifically excludes" a lockout positioned as in USSC's staplers. Ethicon also argues that the statements relied upon by the district court and USSC, if read broadly, would thoroughly undermine the doctrine of equivalents and specifically contradict Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1259, 9 USPQ2d 1962, 1968 (Fed. Cir. 1989) ("An equivalent must be found for every limitation of the claim somewhere in an accused device, but not necessarily in a corresponding component, although that is generally the case.").... USSC responds that Dolly, Weiner, and Sage require summary judgment of noninfringement of claim 6. USSC asserts that Ethicon's theory vitiates the "in a staple cartridge" and "connected to said longitudinal slots" limitations by construing too broadly the function that these limitations perform.... The discussion of our case law by both parties, as well as the district court, requires that we place the cited decisions in perspective, as well as in the context of Warner-Jenkinson. We agree with Ethicon that, if read as argued by USSC, the above-quoted statements from Dolly, Weiner, and Sage would force the All Elements rule to swallow the doctrine of equivalents, reducing the application of the doctrine to nothing more than a repeated analysis of literal infringement. Once a negative determination of literal infringement is made, that failure to meet a limitation would preclude a finding of infringement under the doctrine. The doctrine of equivalents would thus be rendered superfluous under USSC's view, because a finding of non-infringement would be foreordained when a court has already found that the accused subject matter does not literally fall within the scope of the asserted claim. However, any analysis of infringement under the doctrine of equivalents necessarily deals with subject matter that is "beyond," "ignored" by, and not included in the literal scope of a claim. Such subject matter is not necessarily "specifically excluded" from coverage under the doctrine unless its inclusion is somehow inconsistent with the language of the claim. Literal failure to meet a claim limitation does not necessarily amount to "specific exclusion."... * * * * Dolly, Weiner, and Sage were decided on their facts, and were consistent with both our precedent and with the Supreme Court's recent express adherence to the doctrine of equivalents as a viable alternative to literal infringement. They simply explained that on the facts presented, no reasonable finder of fact could have found infringement by Chapter 7 Doctrine of Equivalents Infringement 7

8 equivalents because the differences between the allegedly infringing devices and the claimed inventions were plainly not insubstantial. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609, 85 USPQ 328, 330 (1950) ("What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case."). But they did not read the doctrine of equivalents out of existence when a claim limitation is not expressly met by an accused device. (Emphasis added). Is the court s distinction of Dolly, Weiner, and Sage satisfactory? Is precedent of any value if it can be cast away as limited to its facts? Is the approach taken in Ethicon similar to that taken in YBM, i.e., limiting to its facts an opinion that was being applied too broadly? 3. The holding in Sage raises an additional concern. The relevant phrase from the claim recited an elongated slot at the top of the container body for permitting access to the interior of the container body. The court, however, referred to the top of the container body claim limitation, and found that the accused container s slot at the body s middle was not equivalent to that limitation. Did the court parse the claim limitation too thinly? This question is important because the level of abstraction that a court takes in parsing out claim limitations (also referred to as elements) can change the result in any given case. For example, suppose that the claim limitation above recited a thin, rectangular slot at the top of the container and that the accused product had a thin, rectangular slot at the middle of the container. If the claim limitation is a thin, rectangular slot at the top of the container, the patentee is 2-for-3 when arguing about the similarities of the two structures, i.e., both are thin and rectangular. However, if the limitation is at the top, the patentee is 0-for-0 because the slot is not at the top, and the patentee risks being hung up on a vitiation theory. At least in a literal infringement sense, every narrowing word that is added to a claim could be viewed as a claim limitation. However, if every word in a claim is an element under the doctrine of equivalents, the doctrine quickly collapses into literal infringement. Unfortunately, the Federal Circuit has provided no guidance whatsoever on how to parse out claim elements from patent claims for purposes of the all-elements rule. The court has also used the terms element and limitation interchangeably. There is a footnote in Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1533 n.9, 3 USPQ2d 1321, 1325 n.9 (Fed. Cir. 1987), which attempts to explain the difference between the two terms, but it is a less than satisfactory explanation. The ambiguity was compounded by the court s explanation in Corning Glass Works v. Sumitomo Elec., U.S.A., Inc., 868 F.2d 1251, 1259, 9 USPQ2d 1962, 1968 (Fed. Cir. 1989). See also Ethicon, 149 F.3d at 1317 n., 47 USPQ2d at 1277 n. The Doctrine and Means-Plus-Function Claim Elements Al-Site Corp. v. VSI International, Inc. 174 F.3d 1308, 50 USPQ2d 1161 (Fed. Cir. Mar. 30, 1999) Before MAYER, Chief Judge, RICH, and RADER, Circuit Judges. RADER, Circuit Judge. Magnivision and VSI both sell non-prescription eyeglasses. Magnivision is the assignee of U.S. Patent Nos. 4,976,532 (the 532 patent), 5,144,345 (the 345 patent), 5,260,726 (the 726 patent), and 5,521,911 (the 911 patent). These patents claim technology for displaying eyeglasses on racks. The claimed inventions allow consumers to try on eyeglasses and return them to the rack without removing them from their display hangers. Chapter 7 Doctrine of Equivalents Infringement 8

9 The jury determined that the [accused] hanger tag literally infringes claims 8, 9, 14, 15, and 17 of the 532 patent. Claim 8, the independent claim from which the other infringed claims depend, claims the combination of a pair of eyeglasses and a hanger means for removably mounting the eyeglasses on a cantilevered support. The claim itself gives some structural definition of the hanger means as including a body having aperture means adapted for suspending the hanger and eyeglasses on the cantilevered support. Additionally, the hanger means includes an extension projecting from the bottom edge portion of the hanger body. This extension encircles the nose bridge of the eyeglasses. The claim specifies that fastening means in engagement with said extension hold the extension in a closed loop. Figure 1 from the 532 patent illustrates these claimed features: The district court determined that the fastening means was a means-plus- function element subject to the interpretation requirements of 35 U.S.C. 112, 6 (1994). Consistent with that determination, the trial court instructed the jury that the fastening means... is either a rivet or a button and hole arrangement as shown in the 532 patent or the structural equivalents thereof. Neither party challenges this part of the district court s claim construction. On appeal, VSI contends that its Version 1 hanger tag does not infringe because it does not include the fastening means required by claim 8. VSI s Version 1 hanger tag is a one-piece paper sticker having two large portions connected by a narrow extension. The entire back of the tag, including the extension, is coated with an adhesive. Backing paper covers the adhesive to prevent undesired adhesion. In use, a merchant removes the backing paper from the large portions of the tag. The extension (still covered with backing paper) then wraps around the nose bridge of the glasses. This wrapping glues the large portions together. In use, therefore, glue secures the two large portions of the tag to each other, leaving the narrow extension of the tag wrapped around the bridge of the eyeglasses. The adhesive used by VSI is not identical to the fastening structure (namely, a rivet or button) described in the 532 patent. The jury, however, applying the rules of 112, 6, determined that the VSI adhesive was equivalent to the structure disclosed in the specification. Accordingly, the Chapter 7 Doctrine of Equivalents Infringement 9

10 jury returned a verdict of literal infringement of the 532 patent. VSI argues that substantial evidence does not support the jury s finding of literal infringement. VSI first challenges the jury determination that adhesive is structurally equivalent to the mechanical fasteners disclosed in the specification of the 532 patent. [However,] Magnivision s technical expert, Mr. Anders, testified that, for one of ordinary skill in the art, it would be an insubstantial change to substitute a rivet for a staple or for glue or for any other method that s standard in the [point of purchase] industry to maintain this loop as a closed loop.... This testimony constitutes sufficient evidence to sustain the jury s verdict that persons of ordinary skill in the art consider glue an equivalent structure to those disclosed in the specification for maintaining a closed loop. As a fallback position, VSI argues that, even if the glue is an equivalent of the rivet or button, Magnivision presented no evidence that the glue was in engagement with the extension as claim 8 requires..... VSI s argument is unpersuasive. The claims of the 532 patent only require that the fastening means be in engagement with the extension. As noted above, VSI coats the extension of its Version 1 hanger tag with glue the fastening means identified by Mr. Anders. Furthermore, Mr. Anders testimony explains that the extension and the glued portions are one integral piece. The jury could have interpreted his testimony to mean that the extension includes more than the narrow, middle portion of the Version 1 tag. Under this interpretation, the extension would also directly engage the glue fastening means. Alternatively, the jury could have determined that the extension is only the narrow portion of the Version 1 tag, but that the fastening means includes one of the two portions of the tag body in addition to the glue. Under any of these reasonable views of the accused product, the extension of the Version 1 hanger tag is in engagement with the glue fastening means as required by the claims. As the finder of fact, the jury receives deference for its function of weighing witness demeanor, credibility, and meaning. See Anderson v. City of Bessemer City, North Carolina, 470 U.S. 564, 575 (1985) (factfinder entitled to deference on credibility determinations). Substantial evidence therefore supports the jury s verdict that VSI s Version 1 hanger tag literally infringes the 532 patent. [The Version 2 Hanger Tag] The jury determined that VSI s Version 2 hanger tag and display rack did not literally infringe claim 1 of the 345 patent; nevertheless, [the juty] found infringement of [this] claim under the doctrine of equivalents. [Claim 1 of the 345 patent includes a means for securing element; the district court judge, however, did not instruct the jury as to the doctrine of equivalents in the context, but instead instructed the jury as if the claim was written in traditional form.] The means for securing claim element is in conventional means-plus-function format without specific recital of structure and therefore invokes 112, 6. The jury s finding of infringement of claim 1 of the 345 patent under the doctrine of equivalents indicates that the jury found every element of the claim literally or equivalently present in the accused device. The question before this court, therefore, is whether the jury s finding that the accused structure was equivalent to the means for securing element under the doctrine of equivalents, also indicates that it is equivalent structure under 112, 6. This court has on several occasions explicated the distinctions between the term equivalents found in 112, 6 and the doctrine of equivalents. See, e.g., Valmont Indus., Inc. v. Reinke Mfg. Chapter 7 Doctrine of Equivalents Infringement 10

11 Co., 983 F.2d 1039, , 25 USPQ2d 1451, (Fed. Cir. 1993); Chiuminatta, 145 F.3d at 1310; Alpex Computer Corp. v. Nintendo Co., 102 F.3d 1214, 1222, 40 USPQ2d 1667, (Fed. Cir. 1996); Dawn Equip. Co. v. Kentucky Farms Inc., 140 F.3d 1009, , 46 USPQ2d 1109, (Fed. Cir. 1998) (Plager, J., additional views) (Newman, J., additional views) (Michel, J., additional views). Indeed, the Supreme Court recently acknowledged distinctions between equivalents as used in 112, 6 and the doctrine of equivalents. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 27, 41 USPQ2d 1865, (1997) ("[Equivalents under 112, 6] is an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements. [Section 112, 6] was enacted as a targeted cure to a specific problem.... The added provision, however, is silent on the doctrine of equivalents as applied where there is no literal infringement. ) Section 112, 6 recites a mandatory procedure for interpreting the meaning of a means- or stepplus-function claim element. These claim limitations shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. 112, 6. Thus, 112, 6 procedures restrict a functional claim element s broad literal language... to those means that are equivalent to the actual means shown in the patent specification. Warner-Jenkinson, 117 S. Ct. at Section 112, 6 restricts the scope of a functional claim limitation as part of a literal infringement analysis. See Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934, 4 USPQ2d 1737, 1739 (Fed. Cir. 1987). Thus, an equivalent under 112, 6 informs the claim meaning for a literal infringement analysis. The doctrine of equivalents, on the other hand, extends enforcement of claim terms beyond their literal reach in the event there is equivalence between the elements of the accused product or process and the claimed elements of the patented invention. Warner-Jenkinson, 117 S. Ct. at One important difference between 112, 6 and the doctrine of equivalents involves the timing of the separate analyses for an insubstantial change. As this court has recently clarified, a structural equivalent under 112 must have been available at the time of the issuance of the claim. See Chiuminatta, 145 F.3d at An equivalent structure or act under 112 cannot embrace technology developed after the issuance of the patent because the literal meaning of a claim is fixed upon its issuance. An after arising equivalent infringes, if at all, under the doctrine of equivalents. See Warner-Jenkinson, 117 S. Ct. at 1052; Hughes Aircraft Co. v. U.S., 140 F.3d 1470, 1475, 46 USPQ2d 1285, 1289 (Fed. Cir. 1998). Thus, the temporal difference between patent issuance and infringement distinguish an equivalent under 112 from an equivalent under the doctrine of equivalents. See Chiuminatta, 145 F.3d at In other words, an equivalent structure or act under 112 for literal infringement must have been available at the time of patent issuance while an equivalent under the doctrine of equivalents may arise after patent issuance and before the time of infringement. See Warner-Jenkinson, 117 S. Ct. at An after-arising technology could thus infringe under the doctrine of equivalents without infringing literally as a 112, 6 equivalent. 3 Furthermore, under 112, 6, the accused device must perform the 3 These principles, as explained in Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 46 USPQ2d 1752 (Fed. Cir. 1998), suggest that title 35 will not produce an equivalent of an equivalent by applying both 112, 6 and the doctrine of equivalents to the structure of a given claim element. A proposed equivalent must have arisen at a definite period in time, i.e., either before or after patent issuance. If before, a 112, 6 structural equivalents analysis applies and any analysis for equivalent structure under the doctrine of equivalents collapses into the 112, 6 analysis. If after, a non-textual infringement analysis proceeds under the doctrine of equivalents. Patent policy supports application of the doctrine of equivalents to a claim element expressed in means-plusfunction form in the case of after-arising technology because a patent draftsman has no way to anticipate and account for later developed substitutes for a claim element. Therefore, the doctrine of equivalents appropriately allows marginally broader coverage than 112, 6. Chapter 7 Doctrine of Equivalents Infringement 11

12 identical function as recited in the claim element while the doctrine of equivalents may be satisfied when the function performed by the accused device is only substantially the same. See Cybor, 138 F.3d at 1456; Hughes Aircraft, 140 F.3d at Although 112, 6 and the doctrine of equivalents are different in purpose and administration, a finding of a lack of literal infringement for lack of equivalent structure under a means-plusfunction limitation may preclude a finding of equivalence under the doctrine of equivalents. Chiuminatta, 145 F.3d at Both equivalence analyses, after all, apply similar analyses of insubstantiality of the differences. Id. This confluence occurs because infringement requires, either literally or under the doctrine of equivalents, that the accused product or process incorporate each limitation of the claimed invention. See Warner-Jenkinson, 117 S. Ct. at 1049; Pennwalt, 833 F.2d at 935. Therefore, if an accused product or process performs the identical function and yet avoids literal infringement for lack of a 112, 6 structural equivalent, it may well fail to infringe the same functional element under the doctrine of equivalents. See Chiuminatta, 145 F.3d at This same reasoning may be applied in reverse in certain circumstances. Where, as here, there is identity of function and no after-arising technology, a means-plus-function claim element that is found to be infringed only under the doctrine of equivalents due to a jury instruction failing to instruct on 112, 6 structural equivalents is also literally present in the accused device. VSI s Version 2 hanger tag has a central body and two arms, with one arm extending from each side of the body. Each arm has a hole near the end for receipt of an eyeglasses temple. The body also has an aperture through which a cantilever rod can be placed so the hanger tag can be hung from a display rack. VSI s Version 2 hanger tag is the subject of U.S. Patent No. 5,141,104 (the 104 patent). Figure 4 of the 104 patent illustrates these features. Chapter 7 Doctrine of Equivalents Infringement 12

13 As noted above, the doctrine of equivalents and structural equivalents under 112, 6, though different in purpose and administration, can at times render the same result. In this case, the jury found infringement under the doctrine of equivalents. This finding presupposes that the jury found an equivalent for each element of the claimed invention, including the means for securing. The holes in the arms of VSI s Version 2 hanger tag secure a portion of the eyeglasses frame (the temples) to the hanger member and therefore perform the identical function of the claim element in question. The jury was instructed that the means for securing disclosed in the 345 patent is a mechanically fastened loop that... can be formed from a separate extension or integral extension and includes either the rivet fastener or the button and hole fastener. Based on this instruction, the jury found that the holes in the arms of the Version 2 hanger tag were equivalent to the mechanically fastened loop of the 345 patent under the doctrine of equivalents. The parties do not dispute that the holes in the arms of the accused device perform a function identical to the extension of the patented device. Furthermore, the holes do not constitute an afterarising technology. Because the functions are identical and the holes are not an after-arising technology, the jury s finding of infringement under the doctrine of equivalents indicates that the jury found insubstantial structural differences between the holes in the arms of the Version 2 hanger tag and the loop of the 345 patent claim element. That finding is also sufficient to support the inference that the jury considered these to be structural equivalents under 112, 6. For these reasons, any perceived error in the district court s jury instruction regarding the means for securing is, at most, harmless. Chiuminatta Concrete Concepts v. Cardinal Industries 145 F.3d 1303; 46 U.S.P.Q.2D (BNA) 1752 (Fed. Cir. 1998) Before MICHEL, PLAGER, and LOURIE, Circuit Judges. LOURIE, Circuit Judge. [On summary judgment,] the district court found that Cardinal infringed claim 11, an apparatus claim, of U.S. Patent B1 5,056, Chiuminatta owns two patents, the '499 patent and the '675 patent relating to an apparatus and method, respectively, for cutting concrete before it has completely cured to a hardened condition. The apparatus claims are directed to a rotary saw that has two significant features. First, the leading edge of the saw rotates in an upward direction so as to prevent the accumulation of displaced wet concrete in the groove created behind the saw. Second, a support surface applies downward pressure at the point where the saw blade emerges from the concrete in order to prevent the upwardly rotating blade from damaging the concrete (commonly referred to as raveling, chipping, spalling, or cracking). Claim 11 of the '499 patent (the sole apparatus claim on appeal) reads, with emphasis added, as follows: A saw for cutting concrete even before the concrete has hardened to its typical, rock-like hardness, comprising: Chapter 7 Doctrine of Equivalents Infringement 13

14 a circular concrete cutting blade having sides and a leading cutting edge; a motor connected to rotate the concrete cutting blade in an up-cut rotation; means connected to the saw for supporting the surface of the concrete adjacent the leading edge of the cutting blade to inhibit chipping, spalling, or cracking of the concrete surface during cutting; wheel means for movably supporting the saw on the surface of the concrete during cutting. As illustrated in the following figure adapted from the patent, the only structure disclosed for supporting the surface of the concrete is a skid plate. The written description summarizes the invention, stating: An apparatus is provided for cutting a groove in soft concrete. The apparatus can cut the concrete anytime after the concrete is finished and before the concrete attains its rock like hardness.... The soft concrete saw has a base plate [12] on which are mounted two wheels and a skid plate [24], each of which contacts the concrete to provide three point support on the concrete.... The saw blade [34] extends through a... slot in the skid plate, in order to project into and cut the concrete below the skid plate. The dimensions of the slot in the skid plate are selected to support the concrete immediately adjacent the saw blade so as to prevent cracking of the concrete as it is cut. '499 patent, col. 3, ll Cardinal manufactures and sells the accused device, the Green Machine (R) saw. It, too, uses a rotary blade that rotates upward at its leading edge. Additionally, as illustrated above, the accused device has two small wheels [14] mounted adjacent to the leading edge of the saw blade [12]. Chapter 7 Doctrine of Equivalents Infringement 14

15 Cardinal concedes that these wheels support the surface of the concrete in order to prevent chipping, spalling, or cracking. A. The '499 Patent 1. Literal Infringement Cardinal concedes that the accused device meets every claim limitation except the "means... for supporting the surface of the concrete." However, Cardinal argues that under a proper analysis, that means limitation should be construed as corresponding only to the disclosed skid plate and to structures that are equivalent to that skid plate. An equivalent structure, argues Cardinal, is one that includes the essential structural components of the disclosed apparatus. Cardinal [**8] identifies in its brief the key essential structural component as a "hard plate fixedly mounted to the base of the saw," although Cardinal concedes that the particular shape of the plate and its means for attachment are not essential. Chiuminatta responds that the limitation was properly construed as being broader than the disclosed skid plate to encompass any "support surface." Chiuminatta asserts that the court correctly premised its infringement finding on the observation that "both [the structure in the patent and the wheels of the accused device] consist of flat planes on either side of the saw blade which hold the concrete in place." We must determine whether the district court erred in concluding that the means limitation reads on the accused device as a matter of law. Neither party argues that there are disputed fact questions regarding the accused device. Both parties agree that the means-plus-function clause is the only limitation in dispute and that all other limitations [**9] are met by the accused device. What they dispute is whether the scope of the means clause is broad enough to encompass wheels such as those on the accused device. A means-plus-function limitation contemplated by 35 U.S.C. ß 112, 6 (1994) recites a function to be performed rather than definite structure or materials for performing that function. Such a limitation [*1308] must be construed "to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." Id. "To determine whether a claim limitation is met literally, where expressed as a means for performing a stated function, the court must compare the accused structure with the disclosed structure, and must find equivalent structure as well as identity of claimed function for that structure." Pennwalt Corp. v. Durand- Wayland, Inc., 833 F.2d 931, 934, 4 U.S.P.Q.2D (BNA) 1737, 1739 (Fed. Cir. 1987) (in banc) (emphasis in original). A determination of the claimed function, being a matter of construction of specific terms in the claim, is a question of law, reviewed de novo. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 46 U.S.P.Q.2D (BNA) 1169 (Fed. Cir. 1998) (in banc); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34 U.S.P.Q.2D (BNA) 1321, 1329 (Fed. Cir. 1995) (in banc), aff'd, 517 U.S. 370, 38 U.S.P.Q.2D (BNA) 1461, 134 L. Ed. 2d 577, 116 S. Ct (1996). Likewise, the "means" term in a means-plus-function limitation is essentially a generic reference for the corresponding structure disclosed in the specification. Accordingly, a determination of corresponding structure is a determination of the meaning of the "means" term in the claim and is thus also a matter of claim construction. See B. Braun Med., Inc. v. Abbott Lab., 124 F.3d 1419, , 43 U.S.P.Q.2D (BNA) 1896, (Fed. Cir. 1997) (determining de novo which structures disclosed in the specification corresponded to the means limitation); cf. Markman, 52 F.3d at 977 n.8, 34 U.S.P.Q.2D (BNA) at 1327 n.8 (reserving only the question whether a determination of equivalence under 112, 6 is a question of law or fact). Cardinal argues that the district court erroneously identified as the disclosed structure broad functional Chapter 7 Doctrine of Equivalents Infringement 15

16 language in the specification rather than physical structure. Chiuminatta responds that the passage identified by the district court, a "support surface or plate... in movable contact with the surface of the concrete," is indeed structure. We agree with Cardinal that the court misidentified the corresponding structure. The function recited in the means clause of claim 11 is "supporting the surface of the concrete adjacent to the leading edge of the cutting blade to inhibit chipping, spalling, or cracking of the concrete surface during cutting." The specification clearly identifies the structure performing that function as the skid plate, which is the only embodiment of the "support surface" disclosed in the specification: A support surface or plate is in movable contact with the surface of the concrete 13 in order to support the surface of the concrete immediately adjacent the groove being cut in the concrete 13. In the illustrated embodiment, this surface takes the form of a skid plate 24 which depends from the base plate 12 in the direction of the concrete 13. The structure of the skid plate is broadly described in the specification of the '499 patent as follows: a generally rectangular strip of metal having rounded ends 26 and 28 between which is a flat piece 30. The flat piece 30 is generally parallel to the base plate '499 patent, col. 5, ll Having identified the corresponding structure of the recited means, the next question is whether the wheels of the accused device are equivalent to that structure. "Section 112, paragraph 6, rules out the possibility that any and every means which performs the function specified in the claim literally satisfies that limitation." Pennwalt. The proper test is whether the differences between the structure in the accused device and any disclosed in the specification are insubstantial. Cardinal argues that the wheels of its device are not equivalent to the disclosed skid plate because they are rotatably mounted. It asserts that for a structure to be equivalent to a skid plate, it must include substantially all of the structural features of a skid plate, and thus must be hard, flat, and fixedly attached to the saw. Chiuminatta responds that the district court properly held the wheels of the accused device to be within the scope of the claims. Chiuminatta asserts that the differences between the skid plate and wheels are insubstantial, and that an equivalent structure need not be flat or fixedly attached. Chiuminatta argues that the wheels of the accused device are equivalent because "in use, the [accused] wheels compress to form flattened planes on each side of the saw blade, coinciding with the structure of a skid plate." The fundamental flaw in Chiuminatta's argument is that "flattened planes" are not structure. The undisputed structure that produces the concededly identical function of supporting the concrete consists of soft round wheels that are rotatably mounted onto the saw. The assertedly equivalent structures are wheels, and the differences between the wheels and the skid plate are not insubstantial. The former support the surface of the concrete by rolling over the concrete while the latter skids. The former are soft, compressible, and round; the latter is hard and predominantly flat (albeit with rounded edges to prevent gouging of the concrete). Additionally, the wheels rotate as opposed to skid as the saw moves across the concrete and thus have a different impact on the concrete. Since the wheels and the skid plate are substantially different from each other, they cannot be equivalent, and no reasonable jury could so find. Chapter 7 Doctrine of Equivalents Infringement 16

17 Chiuminatta also argues that the wheels are equivalent to the skid plate because they are interchangeable; the alleged infringer's saw may be outfitted with a skid plate and the patentee's saw may be outfitted with the accused wheels. This argument is not persuasive. Almost by definition, two structures that perform the same function may be substituted for one another. The question of known interchangeability is not whether both structures serve the same function, but whether it was known that one structure was an equivalent of another. Moreover, a finding of known interchangeability, while an important factor in determining equivalence, is certainly not dispositive. Such evidence does not obviate the statutory mandate to compare the accused structure to the corresponding structure. Because the wheels of the accused device are not equivalent to the skid plate disclosed in the '499 patent, the accused structure is not within the scope of the claim. Accordingly, the district court erred by granting Chiuminatta's motion for summary judgment of literal infringement. 2. Doctrine of Equivalents Infringement Chiuminatta argues that, should we rule against it on the question of literal infringement, we may affirm the district court under the doctrine of equivalents. Although the district court did not reach the issue because it found literal infringement, Chiuminatta argues that the undisputed evidence of record conclusively establishes that the wheels of the accused device differ from the patented invention only insubstantially. Such an assertion cannot succeed given our determination regarding literal infringement under 112, 6. Although an equivalence analysis under 112, 6, and the doctrine of equivalents are not coextensive (for example, 112, 6, requires identical, not equivalent function) and have different origins and purposes, their tests for equivalence are closely related. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 117 S. Ct. 1040, 1048, 41 U.S.P.Q.2D (BNA) 1865, , 137 L. Ed. 2d 146 (1997) ("[Equivalents under 112, 6] is an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements. We recognized this type of role for the doctrine of equivalents in Graver Tank itself."). Both 112, 6, and the doctrine of equivalents protect the substance of a patentee's right to exclude by preventing mere colorable differences or slight improvements from escaping infringement, the former, by incorporating equivalents of disclosed structures into the literal scope of a functional claim limitation, and the latter, by holding as infringements equivalents that are beyond the literal scope of the claim. They do so by applying similar analyses of insubstantiality of the differences. Thus, a finding of a lack of literal infringement for lack of equivalent structure under a means-plus-function limitation may preclude a finding of equivalence under the doctrine of equivalents. There is an important difference, however, between the doctrine of equivalents and 112, 6. The doctrine of equivalents is necessary because one cannot predict the future. Due to technological advances, a variant of an invention may be developed after the patent is granted, and that variant may constitute so insubstantial a change from what is claimed in the patent that it should be held to be an infringement. Such a variant, based on after-developed technology, could not have been disclosed in the patent. Even if such an element is found not to be a 112, 6, equivalent because it is not equivalent to the structure disclosed in the patent, this analysis should not foreclose it from being an equivalent under the doctrine of equivalents. That is not the case here, where the equivalence issue does not involve later-developed technologies, but rather involves technology that predates the invention itself. In such a case, a finding of non-equivalence for 112, 6, purposes should preclude a contrary finding under the Chapter 7 Doctrine of Equivalents Infringement 17

18 doctrine of equivalents. This is because, as we have already determined, the structure of the accused device differs substantially from the disclosed structure, and given the prior knowledge of the technology asserted to be equivalent, it could readily have been disclosed in the patent. There is no policy-based reason why a patentee should get two bites at the apple. If he or she could have included in the patent what is now alleged to be equivalent, and did not, leading to a conclusion that an accused device lacks an equivalent to the disclosed structure, why should the issue of equivalence have to be litigated a second time? As indicated, this consideration does not necessarily apply regarding variants of the invention based on after-developed technologies. Our case law clearly provides that equivalence under the doctrine of equivalents requires that each claim limitation be met by an equivalent element in the accused device. Because this requirement is not met for 112, 6, purposes with respect to one limitation, it is therefore not met in this case for doctrine of equivalents purposes. An element of a device cannot be "not equivalent" and equivalent to the same structure. In this case there can also be no doctrine of equivalents infringement because, as we have explained, the structure in the accused device, the wheels, operates in a substantially different way compared with the structure of the claimed device, the skid plate. The former support the surface of the concrete by rolling over the concrete while the latter skids. The former are soft, compressible, and round; the latter is hard and predominantly flat (albeit with rounded edges to prevent gouging of the concrete). Additionally, the wheels rotate as opposed to skid as the saw moves across the concrete and thus have a different impact on the concrete. The wheels flatten slightly, applying more localized pressure against the concrete than that produced by a hard flat skid plate. Accordingly, for this additional reason, it cannot be an equivalent under the doctrine of equivalents and the district court is directed to enter summary judgment of non-infringement. Odetics v. Storage Technology Corporation 185 F.3d 1259; 51 U.S.P.Q.2D (BNA) 1225 (Fed. Cir. 1999). Before LOURIE, CLEVENGER, and SCHALL, Circuit Judges. Opinion for the court filed by Circuit Judge CLEVENGER. Dissenting opinion filed by Circuit Judge LOURIE. CLEVENGER, Circuit Judge. On March 27, 1998, a jury impaneled in the United States District Court for the Eastern District of Virginia concluded that automated storage library systems manufactured and sold by Storage Technology Corporation ( STK ) infringed United States Patent No. 4,779,151 ("the '151 patent") owned by the plaintiff, Odetics, Inc. ("Odetics"). Finding willful infringement, the jury awarded $ 70.6 million in damages. After initially denying STK's renewed motion for Judgment as a Matter of Law ("JMOL"), the district court sua sponte reconsidered, granting the JMOL and ordering that judgment be entered in favor of STK. The district court deemed its reconsidered decision to be "mandated" by "the analytical framework established" by this court's opinion in Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries... Odetics appeals the reconsideration judgment. I This patent infringement action, making its second appearance before this court, concerns robotic tape storage systems, which are typically used to store, organize, and retrieve videotapes or Chapter 7 Doctrine of Equivalents Infringement 18

19 computer data tapes. The storage systems generally consist of a large, generally cylindrical housing with a pivoting retrieval mechanism, such as a robotic arm, located in the center of the housing. Acting on commands to retrieve certain tapes, the robotic arm can selectively grip the desired tape, removing it from its storage shelf and placing it on another shelf or in a tape player/recorder. These systems are highly automated and are especially useful in situations where large quantities of data must be easily and quickly retrieved from storage. A At issue are claims 9 and 14 of the '151 patent. Claim 9 reads as follows (emphasis supplied to highlight disputed limitation): 9. A tape cassette handling system comprising: a plurality of tape transports; a housing including a cassette storage library having a plurality of storage bins and at least one cassette access opening for receiving cassettes to be moved to the storage bins or to the tape transports, or for receiving cassettes to be removed from the library or from the tape transports; a rotary means rotatably mounted within the library adjacent the access opening for providing access to the storage library, the rotary means having one or more holding bins each having an opening for receiving a cassette, wherein the rotary means is rotatable from a first position in which the opening of at least one holding bin is accessible from outside of the housing to a second position in which the opening of at least one holding bin is accessible from inside of the housing; and cassette manipulator means located within the housing for selectively moving cassettes between the rotary means, said storage bins and said tape transports. Claim 14 is identical in all relevant aspects. The critical "rotary means" claim element is in means-plus-function form, requiring that it "be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. 112, 6 (1994). In Odetics II, this court held that the structure corresponding to the "rotary means" element was "the components that receive the force and rotate as a result of that force (i.e., the rod, gear, and rotary loading and loading mechanisms)." 1997 WL , at *6. This court noted that this structure could be seen in Fig. 3 of the '151 patent, except that the structure did not include the motor (52) or its gear (54). Chapter 7 Doctrine of Equivalents Infringement 19

20 Thus, the structure corresponding to the "rotary means" element, as depicted in Fig. 3 of the '151 patent, is a set of tape holders or bins, a rod providing the axis of rotation, and a gear capable of receiving a force sufficient to cause the structure to accomplish the claimed "rotary" function. STK manufactures and sells Library Storage Modules ("libraries") to companies, such as Visa and Crestar, that require large quantities of automated data storage. Library systems sold by STK are scaleable: that is, additional libraries may be added to increase the amount of storage space. When libraries are added, STK uses a device known as a "pass-thru port" to link the libraries, allowing data tapes to be passed from library to library. The pass-thru ports bridge the gaps between the libraries using a "bin array"--a box-like set of tape slots or holders--that slides linearly along a short track. As the bin arrays move from library to library, they rotate to allow tapes to be manipulated from within the library housings. This rotation is accomplished by the use of "cam followers," or pins, that are affixed to the bottom of the bin array. As a bin array moves along its track, the pins come into contact with angled structures, or "cams," that exert force against the pins, causing the bin array to rotate about a rod that forms its axis. The "bin array" in the accused devices, then, comprises a set of tape holders or bins, a rod, and pins.... Chapter 7 Doctrine of Equivalents Infringement 20