Comparison of Commercial Products not the vehicle to analyze equivalenceFebruary 27, 2007

In a second appearance before the Federal Circuit, AquaTex again appealed a decision of the District Court that Techniche Solutions’ Cooling Apparel did not infringe their U.S. Patent No. 6,371,977 for a protective multi-layered liquid retaining composition. The Federal Circuit had previously affirmed the lower court’s finding of no literal infringement while remanding the case back to the District Court for further analysis of infringement under the Doctrine of Equivalents. The District Court again found that AquaTex was barred from recovery, this time because AquaTex was barred from utilizing the Doctrine of Equivalents to show infringement because of prosecution estoppel. The Federal Circuit sustained the District Court’s grant of summary judgment, but disagreed with the District Court as to the reason to grant summary judgment. While discussing infringement under the doctrine of equivalents, the Federal circuit emphasized that infringement, either literally or under the doctrine of equivalents, does not arise by comparing the accused product with a commercialized embodiment of the patentee. Infringement is not determined by comparison between commercial products sold by the parties. Instead, the identification of the elements of the function, way, result test entails an examination of the claim and the explanation of it found in the written description of the patent. According to the Federal Circuit, the inquiry leaves no room for consideration of the patentee’s product. The Court is barred from analyzing the infringement based upon how similar the accused infringer’s product is to the commercialized product of the patentee. Despite the discussion on the doctrine of equivalence, the Federal Circuit ended up sustaining the grant of summary judgment for Techniche because AquaTex failed to provide particularized testimony and linking arguments to show that Techniche’s Cooling Apparel was the equivalents of AquaTex claimed invention. Thus, AquaTex was barred from recovery because they failed to sustain the burden of proof. To read the full decision in AquaTex Indus. v. Techniche Solutions, click here.

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