Wham-O Court Uses Vitiation Doctrine to Exclude DOE

Wham-O v. Sport Dimension (N.D. California 2005).

Wham-O sued Sport Dimension for infringement of its patented surfing body-board, alleging that Sport Dimension’s Snow Slider infringed the claims of the patent.

The claims require an “outer layer [of] plastic sheet material” with graphics printed on the inside surface of the sheet — to protect the graphics from damage.  It was undisputed that the Snow Slider’s graphics were printed on an inner layer, and Wham-O thus argued for infringement under the doctrine of equivalents (DOE).

On motion for summary judgment, the district court looked at two restrictions of the DOE — prosecution history estoppel and the all elements rule — and decided those as questions of law.

Prosecution History Estoppel: Regarding estoppel under Festo, the court determined that no estoppel should apply to the equivalent in question because the narrowing amendment made during prosecution “had nothing to do with graphics being on the outer layer only as opposed to the inner layer, which is the distinction at issue in this case.”

All Limitations Rule: The all limitations rule has two implications for the DOE. First, the DOE must be applied on a limitation-by-limitation basis as opposed to from the perspective of the invention as a whole.  Second, an accused element cannot be an equivalent to a limitation of the claimed invention if such a finding would entirely vitiate that limitation. (See Freedman Seating).

Here, Sport Dimension argued that “if graphics imprinted on the inner layer facing away from the core (Sport Dimension’s product) could be an equivalent for graphics imprinted on the outer layer facing the core (Wham-O’s patent), then the outer layer limitation of the claim would be entirely vitiated.”  The district court reviewed several factors and agreed that the vitiation doctrine excluded the product from consideration under the DOE.

Specifically, the court relied upon the following factors:

• The claim plainly requires an outer layer with graphics facing the core.
• The Sport Dimension’s product is simple and should have been foreseeable.
• As in Ethicon, Wham-O’s limitation was tied to a specific place (the inner side of the outer layer), and a change in that place to the inner layer constitutes a “difference in kind,” not a “subtle difference in degree.”

Summary judgment of non-infringement under the DOE granted.

File Attachment: Summary Judgment Order for Sport Dimension (161 KB)