Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Steuben Foods, Inc. v. Shibuya Hoppmann Corp., No. 2023-1790 (Jan. 24, 2025), affirming-in-part, reversing-in-part, and vacating-in-part the district court’s grant of JMOL of noninfringement and conditional grant of a new trial.
Steuben separately sued three defendants (collectively, “Shibuya”), asserting infringement of three patents, U.S. Patent Nos. 6,209,591, 6,536,188, and 6,702,985. A jury found infringement of all asserted claims and awarded substantial damages. After trial, Shibuya renewed its JMOL motion on noninfringement, moved anew for JMOL on invalidity and damages, and, alternatively, moved for a new trial on all three. The district court granted JMOL of noninfringement on all claims and conditionally granted Shibuya’s new trial motion. Steuben appealed.
The Federal Circuit: (1) reversed JMOL of noninfringement of the ’591 and ’188 patents and the conditional new-trial grant on infringement; (2) affirmed JMOL of noninfringement of the ’985 patent; and (3) vacated and remanded the conditional new-trial grant on invalidity and damages. Looking first at infringement, the Court held the district court erred in finding no infringement of the ’591 patent under the reverse doctrine of equivalents (RDOE), while declining to decide whether the RDOE was eliminated by the 1952 Patent Act. Instead, it found that Steuben’s expert testimony constituted substantial evidence for the jury’s rejection of the RDOE. Turning to infringement of the ’188 patent, the Court held the district court erred in concluding no reasonable juror could find the accused structures operated in substantially the same way as the claimed structures of the asserted means-plus-function claims. Finally, the Court affirmed JMOL of noninfringement of the ’985 patent, agreeing with the district court that the accused system’s continuous application of sterilant could not infringe because such a finding would vitiate the “intermittently added” claim limitation that the parties stipulated meant “[a]dded in a non-continuous manner.”
Turning to the conditional grant of a new trial, the Court reversed as to infringement, holding that its reasoning in reversing JMOL of noninfringement of the ’591 and ’188 patents subsumed the district court’s reasoning for that conditional new trial grant. With respect to invalidity and damages, the Court vacated and remanded because it could not assess whether the district court abused its discretion in that conditional new trial grant because the district court did not articulate its reasoning.
