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Judge Andrews adopts report and recommendation on summary judgment motions

Judge Richard G. Andrews recently adopted two reports and recommendations on a number of summary judgment claims.  Impulse Technology, Ltd. v. Microsoft Corp., C.A. No. 11-586-RGA (D. Del. Sept. 22, 2015).  In his memorandum adopting the Magistrate Judge’s recommendations, Judge Andrews discussed the “doctrine of vitiation,” which he characterized as “an obscure way of applying the ‘judgment as a matter of law’ standard to doctrine of equivalents cases.'”  Id. at 4.  Judge Andrews explained, quoting Federal Circuit decisions, that the doctrine of vitiation is “nothing more than a conclusion that the evidence is such that no reasonable jury could conclude that an element of an accused device is equivalent to an element called for in the claim, or that the theory of equivalence to support the conclusion of infringement otherwise lacks legal sufficiency.”  Id. (quoting Cadence Pharm. Inc. v. Exela Pharmsci Inc., 780 F.3d 1364, 1371 (Fed. Cir. 2015) (quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1018-19 (Fed. Cir. 2006)).  The Court added that “[i]t seems to me that the ‘doctrine of vitiation’ can be essentially the application of the ‘insubstantial differences’ test to limit the ‘function-way-result’ test” for determining equivalents.  Id. at 5.  “When cases talk about the claimed equivalent being the ‘opposite’ or ‘antithesis’ of the claimed limitation, it looks a lot like the cases are saying that the differences are to substantial to be overcome by the ‘function-way-result’ test.”  In this case, the Court agreed with the Magistrate Judge that the “difference between the claims’ defined physical space (known ‘prior’ to set up of the system) and the accused product’s hardcoded values (meaning the physical space is only known ‘after’ the set up of the system) is too great to be covered by the doctrine of equivalents.”  Id. at 5-6.


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