Robinson v. Cannondale Corp.

81 F. App'x 725
CourtCourt of Appeals for the Federal Circuit
DecidedNovember 26, 2003
DocketNo. 02-1338
StatusPublished
Cited by1 cases

This text of 81 F. App'x 725 (Robinson v. Cannondale Corp.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Robinson v. Cannondale Corp., 81 F. App'x 725 (Fed. Cir. 2003).

Opinion

LINN, Circuit Judge.

Russell Robinson (“Robinson”) appeals from a decision of the United States District Court for the Central District of California, 00-CV-1236, granting summary judgment of non-infringement in favor of defendant Cannondale Corporation (“Cannondale”) with respect to Robinson’s U.S. Patents Nos. 5,350,185 (“the ’185 patent”) and 5,380,026 (“the ’026 patent”). Because the district court erred in its infringement analysis under the doctrine of equivalents for the ’185 patent, and further erred in construing “rotational indexing means” in claim 1 of the ’026 patent to be a means-plus-function limitation under 35 U.S.C. § 112, paragraph 6, we vacate and remand for further proceedings consistent with this opinion.

BACKGROUND

The ’185 and ’026 patents are both directed to a single shock absorber suspension system located in the head tube above [726]*726the front tire of a bicycle. The ’026 patent is a continuation of the T85 patent.

Defendant Cannondale manufactures and sells bicycles incorporating the Delta V and HeadShok™ suspension systems that Robinson alleges infringe the patents-in-suit. In December 2000, Robinson sued Cannondale, alleging infringement of its ’026 patent and state law claims of unfair competition. Cannondale responded and counterclaimed for a declaratory judgment of non-infringement and invalidity of the related T85 patent. In June 2001, Robinson moved for summary judgment that Cannondale infringed its ’026 patent. Cannondale responded with summary judgment cross motions asserting invalidity and non-infringement of the ’026 and T85 patents. In January 2002, the district court denied Robinson’s infringement motion and Cannondale’s invalidity motion, and granted Cannondale’s non-infringement motion. Robinson v. Cannondale Corp., No. SA-CV-00-1236-GLT (C.D.Cal. Jan. 29, 2002) (“Summary Judgment Order”). The district court entered a final judgment of non-infringement of the ’026 and ’185 patents in favor of Cannondale under Federal Rule of Civil Procedure 54(b). Robinson v. Cannondale Corp., No. SA-CV-00-1236-GLT (C.D.Cal. Feb. 25, 2002). Robinson timely appealed. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

ANALYSIS

I. Standard of Review

“We review the grant of summary judgment de novo, drawing all reasonable inferences in favor of the non-moving party.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1323 (Fed.Cir.2002) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). Summary judgment is only appropriate if there are no genuine issues of material fact and the movant is entitled to judgment as a matter of law. SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1116 (Fed.Cir.1985) (en banc).

II. The ’185 Patent

On appeal, Robinson does not dispute the district court’s construction that “rotational indexing means” in claim 1 of the ’185 patent was not a means-plus-function limitation within the meaning of 35 U.S.C. § 112, paragraph 6. Robinson further conceded both in the briefs and at oral argument that Cannondale does not literally infringe the claims of the ’185 patent.

The parties principally dispute whether the district court committed legal error in its analysis of infringement under the doctrine of equivalents. Robinson argues that the district court erred by failing to apply the doctrine of equivalents to the individual limitations of the claim, rather than the invention as a whole, as required by Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Company, 520 U.S. 17, 29, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997) (“Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole.”). Cannondale argues the district court properly recognized substantial differences between claim 1 of the ’185 patent and the accused devices.

The “[djetermination of infringement, whether literal or under the doctrine of equivalents, is a question of fact.” Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1341 (Fed.Cir.2001). “[Ijnfringement under the doctrine of equivalents requires that the accused product contain each limitation of the claim or its equivalent. ... An element in the accused prod[727]*727uct is equivalent to a claim limitation if the differences between the two are ‘insubstantial’ to one of ordinary skill in the art.” Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1371-72 (Fed.Cir.2001) (citing Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 40, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997)).

The district court’s entire discussion of Cannondale’s infringement of the 185 patent under the doctrine of equivalents stated:

The marked distinction in the manner in which the Cannondale suspension performs — without axial grooves on the inner wall of the outer cylinder, without aligned axial grooves in the outer wall of the outer cylinder, without bearing balls, and without a third, thin walled bearing retainer cylinder — indicates the Cannon-dale suspension does not achieve the suspension results in substantially the same way as the 185 patent limitations. The doctrine of equivalents therefore also does not apply.

Summary Judgment Order, slip. op. at 12. The district court’s analysis is confined to an abbreviated discussion that Cannon-dale’s accused suspension systems lack literal elements of the 185 patent. The district court failed to conduct the limitation-by-limitation analysis required by our precedent and to consider whether the elements of Cannondale’s accused suspension systems are identical to or insubstantially different from the individual limitations of claim 1 of the 185 patent. Because the district court failed to consider whether each claim limitation of the 185 patent or its equivalent was present in the accused device, we vacate the district court’s holding of no infringement under the doctrine of equivalents and remand to the district court for an analysis consistent with our precedent.

Cannondale argues that the district court’s summary judgment of non-infringement should be affirmed on the alternate ground that its accused product does not meet the “compression spring” limitation of claim 1(f) of the 185 patent.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Rates Technology Inc. v. Broadvox Holding Co.
15 F. Supp. 3d 307 (S.D. New York, 2014)

Cite This Page — Counsel Stack

Bluebook (online)
81 F. App'x 725, Counsel Stack Legal Research, https://law.counselstack.com/opinion/robinson-v-cannondale-corp-cafc-2003.