Moreover, the fact that the patented invention contained a constituent element absent in the accused product was a result of that element s necessity to perform the task at the time when the patented product was invented. Therefore, the absence of that constituent element in the accused product should not preclude a finding of infringement under the doctrine of equivalents. The Court set forth the material differences between claim 1 of the patented invention and the accused product and found that the accused device did not contain each limitation of the claim exactly. Thus, the Court granted summary judgment for the defendant on the issue of literal infringement. Additionally, the Court stated that ordinarily infringement under the doctrine of equivalents is a question of fact.
Summary judgment is only available when there is no material fact in dispute.
As the Court demonstrates, no material facts necessary for the resolution of this case are in dispute. The Court began its application of the all-elements test by identifying the material limitations of the disputed claim. To determine whether this difference is substantial for purposes of the equivalents doctrine, the Court stated that an explanation of what the inventors intended by including nut L in their claimed vectors. The Court pointed to Biogen s admission that the nut L sequence does in fact form a part of and serve a function in the plasmid vector. Either nut L is a part of the invention or it is not.