By Memorandum Opinion entered by The Honorable Leonard P. Stark in Osseo Imaging, LLC v. Planmeca USA Inc., Civil Action No. 17-1386-LPS (D.Del. October 28, 2020), the Court, inter alia, denied Defendant’s motion for summary judgment of no infringement with respect to literal infringement and granted Defendant’s motion for summary judgment of no infringement with respect to the doctrine of equivalents.

By way of background, Plaintiff Osseo owns a family of patents relating to dental and orthopedic imaging.  Id. at *1.  The Asserted Patents relate to X-ray imaging “that combines ‘densitometry (that is, quantitatively calculated bone density) with tomographic modeling.’”  Id.  Plaintiff accuses Defendant Planmeca’s 3D Imaging Systems with Romexis software (the “Accused Systems”), contending the Accused Systems produce 3D X-ray models of a patient’s dental structure using cone beam computed tomography (“CBCT”).  Id.

Defendant moved for summary judgment of no infringement of the Asserted Claims either literally or under the doctrine of equivalents.  Id. at *4.  In sum, Defendant contended that Plaintiff could not prove literal infringement because its infringement theory includes the incorrect premise that Hounsfield Unit values (“HU values”) used in the Accused Systems are “quantitative calculations of bone density.”  Id. at *5.

The Court, agreeing with Plaintiff, found that, taking the evidence in the light most favorable to Plaintiff, a reasonable fact finder could find that HU values used in the Accused Systems meet the “densitometry” limitation which the Court construed to mean “quantitatively calculated bone density.”  Id.  Thus, the Court denied Defendant’s motion for summary judgment of no literal infringement.  Id. at *7.

The Court granted Defendant’s motion for summary judgment of no infringement under the doctrine of equivalents after finding that Plaintiff merely reasserted its literal infringement arguments as doctrine of equivalent arguments and failed to provide particularized testimony and linking arguments in support of its doctrine of equivalents theory and Plaintiff’s expert failed to provide particularized testimony on a limitation-by-limitation basis.  Id. at *8-9.  In other words, Plaintiff’s repackaged literal infringement theory, without particularized linking evidence on a limitation-by-limitation basis, was insufficient to survive summary judgment of no infringement under the doctrine of equivalents.  Id.

A copy of the Memorandum Opinion is attached.

A general take away for parties asserting infringement claims under the doctrine of equivalents is that simply repackaging your literal infringement theory and its supporting evidence as evidence of your infringement claim under the doctrine of equivalents – without the particularized linking evidence on a limitation-by-limitation basis required to prove a claim of infringement under the doctrine of equivalents – is unlikely to survive summary judgment.

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