The Federal Circuit has noted that "saying that a claim element would be vitiated is akin to saying that there is no equivalent to the claim element in the accused device based on the well-established ‘function-way-result’ or ‘insubstantial differences’ tests." Brilliant Instruments, Inc. v. GuideTech, LLC , 707 F.3d 1342, 1347 (Fed. Cir. 2013). As a result, to determine whether Plaintiff's theory of equivalence would "vitiate" a claim element in the '207 patent, the Court considers whether a reasonable jury could find equivalence under either the "insubstantial differences" test or the "function-way-result" test.
"[S]aying that a claim element would be vitiated is akin to saying that there is no equivalent to the claim element in the accused device based on the well-established 'function-way-result' or 'insubstantial differences' tests." Id. at 1366-67 (quoting Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1347 (Fed. Cir. 2013)). "The vitiation test cannot be satisfied merely by noting that the equivalent substitute is outside the claimed limitation's literal scope."
AquaTex Indus., Inc. v. Techniche Sols., 479 F.3d 1320, 1326 (Fed. Cir. 2007). Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1345 (Fed. Cir. 2013).
Vitiation is best understood not as "an exception to the doctrine of equivalents, but instead [as] a legal determination that ‘the evidence is such that no reasonable jury could determine two elements to be equivalent.’ " Brilliant Instruments, Inc. v. GuideTech, LLC , 707 F.3d 1342, 1347 (Fed. Cir. 2013) (quoting Deere & Co. v. Bush Hog, LLC , 703 F.3d 1349, 1356 (Fed. Cir. 2012) ); see alsoCadence Pharm. Inc. v. Exela PharmSci Inc. , 780 F.3d 1364, 1371 (Fed. Cir. 2015) (defining vitiation as a "legal conclusion of a lack of equivalence based on the evidence presented and the theory of equivalence asserted"). In fact, "the proper inquiry for the court is to apply the doctrine of equivalents, asking whether an asserted equivalent represents an ‘insubstantial difference’ from the claimed element, or ‘whether the substitute element matches the "function," "way," and "result" of the claimed element.’
"Vitiation is not an exception to the doctrine of equivalents, but instead a legal determination that the evidence is such that no reasonable jury could determine two elements to be equivalent." Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1347 (Fed. Cir. 2013) (citation and internal quotation marks omitted). A proper vitiation inquiry simply applies the doctrine of equivalents, asking "whether an asserted equivalent represents an insubstantial difference from the claimed element, or whether the substitute element matches the function, way, and result of the claimed element."
Id. "Infringement, either literal or under the doctrine of equivalents, is a question of fact." Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1344 (Fed. Cir. 2013). Summary judgment of non-infringement is appropriate "if, after viewing the alleged facts in the light most favorable to the non-movant, there is no genuine issue whether the accused device is encompassed by the [patent] claims," and the moving party is entitled to judgment as a matter of law.
"[S]aying that a claim element would be vitiated is akin to saying that there is no equivalent to the claim element in the accused device based on the well-established ‘function-way-result’ or ‘insubstantial differences’ tests." Brilliant Instruments, Inc. v. GuideTech, LLC , 707 F.3d 1342, 1347 (Fed. Cir. 2013). More recently, we have explained that vitiation "is not an exception or threshold determination that forecloses resort to the doctrine of equivalents, but is instead a legal conclusion of a lack of equivalence based on the evidence presented and the theory of equivalence asserted."
We review summary judgment decisions de novo under Ninth Circuit law. Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1344 (Fed. Cir. 2013) (citing Greater Yellowstone Coal. v. Lewis, 628 F.3d 1143, 1148 (9th Cir. 2010)). Summary judgment is appropriate if "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law."
Exela's reliance on Planet Bingo is misplaced. Planet Bingo's holding was based on a finding that a combination determined before a game was substantially different, factually, from a combination determined after the game started. See Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1347 (Fed.Cir.2013) (explaining the rationale for Planet Bingo as “two elements likely are not insubstantially different when they are polar opposites”); Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356 (Fed.Cir.2012) (same). Exela's understanding of Planet Bingo (Fed.Cir.2006) is also expressly at odds with this court's holding in DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005 (Fed.Cir.2006), decided just a few weeks before Planet Bingo. DePuy Spine explained:
At the summary judgment stage, we credit all of the nonmovant's evidence and draw all justifiable inferences in its favor.Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1344 (Fed. Cir. 2013) (citations omitted) (internal quotation marks omitted). B. Claim Construction