EPOS Technologies Ltd. v. Pegasus Technologies Ltd.

Addressing doctrine of equivalents, the U.S. Court of Appeals for the Federal Circuit vacated a finding of no infringement by a lower court, explaining that such a finding must be supported by a full doctrine of equivalent analysis.  EPOS Technologies Ltd. v. Pegasus Technologies Ltd., Case No. 13-1330 (Fed. Cir., Sept. 5, 2014) (Hughes, J.).

EPOS Technologies filed a complaint against Pegasus Technologies seeking declaratory judgment of non-infringement on four patents.  In its counterclaims, Pegasus asserted two additional patents.  After the district court construed the claims, EPOS moved for summary judgment of invalidity and non-infringement.  The district court granted the EPOS’s summary judgment motion of non-infringement and declined to address invalidity.  After the district court construed the claim limitation “intermittent” to as “something that occurs occasionally, in a non-continuous manner, in a random or unpredictable manner, or at selected times,” it found that EPOS did not infringe under the doctrine of equivalents, as EPOS’s products have continuous signals.  Pegasus appealed.

The Federal Circuit vacated the district court’s claim construction and remanded it to the district court on the issue of infringement under the proper construction.  The Federal Circuit also vacated the district court’s grant of summary judgment of non-infringement under the doctrine of equivalents. 

Regarding the district court’s finding of no infringement under the doctrine of equivalents, the Federal Circuit noted that the “district court devoted only two sentences to its decision on infringement . . . under the doctrine of equivalents.”  The Federal Circuit explained “a court must ask whether an asserted equivalent is an ‘insubstantial difference’ from the claimed element, or whether it matches the ‘function, way, and result of the claimed element’” when addressing the doctrine of equivalents.  The Federal Circuit explained that “the district court [engaged in a] ‘shortcut’ inquiry by identifying a binary choice (continuous or intermittent).”  The Federal Circuit instructed the district court to more thoroughly consider whether a reasonable jury could conclude products and claim limitation are equivalent.