AVM Technologies LLC v. Intel Corporation

Filing 667

MEMORANDUM ORDER Denying 404 MOTION for Summary Judgment regarding Intel's Reverse Doctrine of Equivalents Defense (see Order for further details). Signed by Judge Richard G. Andrews on 4/28/2017. (ksr, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

AVM TECHNOLOGIES, LLC,
Plaintiff;
v.

Civil Action No. 15-33-RGA

INTEL CORPORATION,
Defendant.

MEMORANDUM ORDER

Presently before the Court is Plaintiffs Motion for Summary Judgment Regarding Intel's
Reverse Doctrine of Equivalents Defense (D.I. 404) and related briefing (D.I. 405, 504, 524).
The Court heard oral argument on April 12, 201 7. For the reasons that follow, IT IS HEREBY
ORDERED THAT Plaintiffs Motion for Summary Judgment (D.I. 404) is DENIED.

"The court shall grant summary judgment if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.
R. Civ. P. 56(a). When determining whether a genuine issue of material fact exists, the court
must view the evidence in the light most favorable to the non-moving party and draw all
reasonable inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380 (2007); Wishkin v.
Potter, 4 76 F.3d 180, 184 (3d Cir. 2007). A dispute is "genuine" only if the evidence is such that
a reasonable jury could return a verdict for the non-moving party. Anderson v. Liberty Lobby,
477 U.S. 242, 247-49 (1986).
Plaintiff argues that Defendant's defense of reverse doctrine of equivalents fails as a
matter of law. (D.I. 405 at 8). Plaintiff argues that Defendant has not applied the correct test for

reverse doctrine of equivalents. (Id.). Plaintiff also contends that Defendant's arguments focus
on the purpose for which Defendant's products allegedly use the claimed invention. (Id. at 10).
Finally, Plaintiff asserts that Defendant has not put forward sufficient evidence to prevail on this
defense. (Id. at 11 ).
The reverse doctrine of equivalents is available as a defense to infringement "where a
device is so far changed in principle from a patented article that it performs the same or a similar
function in a substantially different way, but nevertheless falls within the literal words of the
claim." Graver Tank & Mfg. Co. v. Linde Air Prod. Co., 339 U.S. 605, 608-09 (1950). In order
to establish a prima facie case of non-infringement under the reverse doctrine of equivalents,
Defendant must first "establish the principle of the ['547] patent." Roche Palo Alto LLC v.
Apotex, Inc., 531 F.3d 1372, 1378 (Fed. Cir. 2008). "The 'principle' or 'equitable scope of the

claims' of the patented invention is determined in light of the specification, prosecution history,
and the prior art." Id.
Defendant asserts that the principle of the '547 patent "is that the dynamic logic circuit
uses a delay coupled to the precharge transistor to purposefully cause simultaneous activation of
the precharge and evaluation transistors in order to overcome the problem of charge-sharing."
(D.I. 504 at 7, quoting D.I. 444-1 at 354,

~630).

Plaintiff makes no argument as to whether this

is the principle of the '547 patent. Defendant has identified the claim limitations, "delay" and
"simultaneous activation," to which it applies its reverse doctrine of equivalents defense. (D.I.
504 at 9). Defendant points to evidence in the record showing that its expert opined on the
function of each these claim limitations and how Defendant's accused products "operate in a
substantially different way with respect to" these limitations. (Id.). This is sufficient to create a
genuine dispute of material fact as to whether Defendant's products perform the same function as

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the claimed invention in a substantially different way. Therefore, I will deny Plaintiffs Motion
for Summary Judgment Regarding Intel's Reverse Doctrine of Equivalents Defense

Entered this

15

day of April, 201 7.

~~,(l/~
United States Disrict Judge

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