In upholding a decision by a district court that granted summary judgment of non-infringement under the doctrine of equivalents, the U.S. Court of Appeals for the Federal Circuit held that because a finding of infringement under the doctrine of equivalents would vitiate a claim term, no reasonable jury could find that the accused device is insubstantially different from the claimed device. Searfoss v. Pioneer Consolidated Corporation, Case No. 03-1606 (Fed. Cir. July 6, 2004).
The patent-in-suit (`955 patent) is directed to a moveable cover system for truck beds. Searfoss conceded that Pioneer did not literally infringe the `955 patent. Rather, Searfoss argued that Pioneer infringed the `955 patent under the doctrine of equivalents. The infringement issue focused on the claim term "actuation means for connecting…"; the district court found the term to be a means-plus-function limitation (under §112(6)), having two claimed functions.
Over Searfoss’ argument that the ordinary dictionary definition of the term "connecting," which includes direct or indirect connection, should be adopted, the district court held that, as used in the claim and to achieve the two claimed functional limitations, the term "connecting" requires a direct, pivotal connection and construed the term, "connecting" to be synonymous with "attaching." The district court found further support for this construction in the corresponding disclosed structure found in the specification of the `955 patent.
The district court, after determining that "no reasonable jury could find the Pioneer System contains the equivalent of an ‘actuation means’ with a ‘connecting’ structure," granted Pioneer summary judgment of non-infringement. Searfoss appealed.
The Federal Circuit affirmed, noting that an element in an accused product is equivalent to a claimed limitation if the differences between the two are insubstantial to one of ordinary skill in the art. The Federal Circuit agreed with the district court that the claims require a direct connection through the actuation means and that the Pioneer product does not have such a direct connection. The Court went on to find the indirect connection of the Pioneer product to be an equivalent of the direct connection function and would, in effect, completely vitiate the connection function. Thus, the Federal Circuit agreed that no reasonable jury could find that the accused device was only insubstantially different than the claimed invention.
The Court also addressed the §112(6) issue raised by both parties, i.e., whether the claimed "actuation means" limitation was properly construed as a means-plus-function limitation. While noting the word "means" invoked a rebutable presumption that §112(6) applied, the Court found that the claim recited sufficient structure for performing the claimed function, such that the presumption was overcome. Although the Court found the district court had erred in construing the "actuation means" limitation to be a means-plus-function limitation, it found the error was harmless since both parties agreed that the scope of the claim would be identical, whether under the doctrine of equivalents or under the literal scope of structural equivalents accorded a means-plus-function claim element.
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