Intellectual Property Law

Reliance on initial expert for rebuttal sufficient to defeat summary judgment

By McKee, Voorhees & Sease, P.L.C.

In a decision Tuesday, the Federal Circuit reversed grants of summary judgment in favor of both parties.  The defendant was granted summary judgment of noninfringement, and the plaintiff (and counterclaim defendant) was granted summary judgment on the grounds of no marking under 35 U.S.C. § 287.  Both parties appealed.

The Federal Circuit determined there was a genuine issue of fact regarding infringement under the doctrine of equivalents of the plaintiff's patent.  Only one element of the claim was disputed, and the plaintiff's expert provided a detailed analysis under the function-way-result test.  In response, the defendant's expert testified there were two additional functions of the element in the accused device.  In reply, the plaintiff's expert referred to his previous analysis without explicitly rebutting the defendant's expert's claims.  The Federal Circuit stated the plaintiff's "decision to refer to the evidence already before the court should not be fatal," and held there was sufficient evidence to generate a question of fact on the issue of infringement.  Accordingly, the court reversed the district court's grant of summary judgment on this issue.

Regarding the marking issue, the Federal Circuit noted the defendant only asserted infringement of method claims in its counterclaim.  As such, the Federal Circuit held it was bound by its decision in Hanson v. Alpine Valley Ski Area, Inc., which held that marking is not required when only method claims are asserted in a case.  As such, any failure to mark was irrelevant to the defendant's counterclaims of infringement, and the district court's summary judgment on this issue was reversed as well.

More detail of Crown Packaging Tech., Inc. v. Rexam Beverage Can Co. after the jump.

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Full post as published by FileWrapper on March 20, 2009 (boomark / email).