Reliance on initial expert for rebuttal sufficient to defeat summary judgmentMarch 20, 2009

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.

At issue in the case were two patents, first, U.S. Patent Number 6,935,826 ("the '826 patent") issued to Crown Packaging Technology ("Crown"), and U.S. Patent Number 4,774,839 ("the '839 patent") issued to Rexam Beverage Can Co. ("Rexam").

Crown sued Rexam's alleging that Rexam's product ("the Rexam end") infringed claims 13 and 14 of the '826 patent. The '826 patent is directed to a particular "beverage end" used in producing beverage cans. In response, Rexam counterclaimed that Crown had infringed the '839 patent, which is directed to a method of attaching a can end to the can body.

Crown's motion for summary judgment of the '839 patent based on Rexam's failure to mark was granted on July 30, 2007. After oral arguments, Rexam's motion for summary judgment for noninfringement of the '826 patent under the doctrine of equivalents was granted on March 31, 2008. Both Crown and Rexam appealed the decision.

The Federal Circuit first dealt with the procedural issue of whether it properly had jurisdiction under 28 U.S.C. § 1295(a)(1). The issue was raised by the court during oral argument as there was a question as to the finality of the district court's order. The final judgment of March 31, 2008 did not mention the dismissal of Rexam's counterclaim, raising whether the final order had "end[ed] the litigation on the merits and le[ft] nothing for the court to do but execute the judgment." The court observed the earlier non-appealable order may be considered to be "merged" into the subsequent final judgment when there is a "clear and unequivocal manifestation by the trial court of its belief that the decision made, so far as it is concerned, is the end of the case." Further, remanding the case to the district court merely for an amended judgment would be "little more than delay and [a] waste of judicial resources." Accordingly, the court determined it had appellate jurisdiction.

The Federal Circuit next turned its attention to the issue of whether there was a genuine issue of material fact regarding whether Rexam infringed, under the doctrine of equivalents, dependent claim 14 of the '826 patent (Crown had originally asserted infringement of independent claim 13, from which claim 14 depends, but the issue was settled out of court). The analysis, both at the district court and at the Federal Circuit depended on whether the Rexam product included the equivalent to "an annular reinforcing bead," based on the "function-way-result" test, which, as stated in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., is "particularly suitable for analyzing the equivalents of mechanical devices."

At the district court, Crown's expert testified that the alleged "annular reinforcing bead" on the accused product had one function, while Rexam's expert identified three functions provided by the alleged "annular reinforcing bead." Crown did not dispute or otherwise directly address the two additional functions described by Rexam's expert, but instead relied upon the record established by its own expert. The district court relied on Crown's failure to respond to these additional functions to grant summary judgment to Rexam.

The Federal Circuit disagreed with the district court, holding that Crown's evidence consisted of expert testimony that there existed only one function of the "annular reinforcing bead," and therefore, resolving any reasonable inferences in favor of the non-movant, found there existed a material issue of fact regarding the function of the "annular reinforcing bead." Specifically, the Federal Circuit stated the plaintiff's "decision to refer to the evidence already before the court should not be fatal."

Finally, the court addressed whether summary judgment had properly been granted to Crown for Rexam's failure to mark their product with their patent. Briefly, Rexam sold, through a third-party licensee, a machine for assembling cans, the machine could be configured so as to practice or not practice the '839 patent (with machines configured to practice the '839 patent requiring a further license from Rexam). 35 U.S.C § 287(a) requires that a patentee mark his products with the patent number prior to recovering damages for infringement, or provide actual notice to the infringer of the existence of the patent (filing suit constitutes actual notice). Rexam had not marked its machines with the patent number, and therefore, the district court concluded, could not recover damages from Crown as there had been no infringement after Rexam provided actual notice to Crown by filing a counterclaim.

Again, the Federal Circuit disagreed with the district court. As stated by the court, the marking provision "do[es] not apply where the patent is directed to a process or method." Conversely, where a patent is directed to both method and apparatus claims, and both sets of claims are asserted by the patent holder the marking provision applies. However, as was true in this case, when only method claims are asserted against an infringer, the marking provision does not apply under the Federal Circuit's decision in Hanson v. Alpine Valley Ski Area, Inc.. Therefore, because Rexam had only asserted the method claim against Crown, summary judgment in favor of Crown by the district court was improper.

To read the full decision in Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., click here.