Misapplied, “All Elements Rule” Leads To Summary Judgment Reversal

In Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc. . (November 20, 2006), the Federal Circuit reverses summary judgment of non-infringement of Depuy's medical device patent by certain Medtronic spinal implant screw devices, finding error in the district court's application of the doctrine of equivalents. Resort to the doctrine of equivalents may be foreclosed under the “all elements rule” if the facts and theories in the case are such that “a limitation would be read completely out of the claim.” Thus, summary judgment of non-infringement may be appropriate when a party's theory or evidence of equivalence is legally incapable of establishing that the differences between the claim limitation and the accused device are insubstantial ( i.e. , either the infringement theory fails to address a claim limitation, or there are substantial differences between the asserted equivalent and the claimed structure).

The Federal Circuit finds that the district court erred in applying the ”all elements rule”. The district court had adopted Medtronic's argument that a conically-shaped portion of Medtronic's spinal implant screws could not infringe a “spherically-shaped” limitation without reading the limitation out of the claims. The Federal Circuit panel finds that there was no basis for the district court's conclusion, noting that contrary to Medtronic's arguments, Depuy had not argued that “any shape” could be an equivalent to the claimed spherical surface. Rather, the panel determines that Depuy's argument had retained the “spherically-shaped” limitation, noting Depuy's provision of specific, substantial expert testimony establishing the equivalence of certain shapes, and the lack of equivalence of other shapes. Accordingly, summary judgment of non-infringement is reversed with instructions for further proceedings on the question of whether the Medtronic conically-shaped device was an infringing equivalent. The Court also rejects Medtronic's request to set aside a jury verdict of infringement by other Medtronic spinal screw devices, where Medtronic's argument was based on the now-repudiated theory that Depuy failed to satisfy the “all elements rule.”