Steuben Foods, Inc. v. Shibuya Hoppmann Corporation, Shibuya Kogyo Co., Ltd., Hp Hood LLC

United States Court of Appeals
for the Federal Circuit
______________________
STEUBEN FOODS, INC.,
Plaintiff-Appellant
v.
SHIBUYA HOPPMANN CORPORATION, SHIBUYA
KOGYO CO., LTD., HP HOOD LLC,
Defendants-Appellees
______________________
2023-1790
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:19-cv-02181-CFC, Chief
Judge Colm F. Connolly.
______________________
Decided: January 24, 2025
______________________
COOK ALCIATI, Gardella Grace PA, Washington, DC, ar-
gued for plaintiff-appellant.
J OHN CHRISTOPHER ROZENDAAL , Sterne Kessler Gold-
stein & Fox PLLC, Washington, DC, argued for defend-
ants-appellees. Also represented by WILLIAM MILLIKEN,
ANNA G. P HILLIPS , BYRON L EROY P ICKARD, D EIRDRE M.
WELLS .
______________________
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 2
Before M OORE, Chief Judge, HUGHES and C UNNINGHAM ,
Circuit Judges.
MOORE, Chief Judge.
Steuben Foods, Inc. (Steuben) appeals the United
States District Court for the District of Delaware’s entry of
judgment as a matter of law (JMOL) of noninfringement
for claim 26 of U.S. Patent No. 6,209,591, claims 19 and 22
of U.S. Patent No. 6,536,188, and claims 3 and 7 of U.S.
Patent No. 6,702,985. Steuben Foods, Inc. v. Shibuya
Hoppmann Corp., 661 F. Supp. 3d 322, 336 (D. Del. 2023)
(Decision). Steuben also appeals the district court’s condi-
tional grant of a new trial on infringement, invalidity, and
damages. Id. For the following reasons, we reverse the
JMOL for the ’591 and ’188 patents, affirm the JMOL for
the ’985 patent, reverse the conditional grant of a new trial
on noninfringement, and vacate the conditional grant of a
new trial on invalidity and damages.
BACKGROUND
In 2010, Steuben filed a complaint in the United States
District Court for the Western District of New York alleg-
ing Shibuya Hoppmann Corp. infringed, inter alia, claims
of the ’591, ’188, and ’985 patents (the Asserted Patents).
In 2012, Shibuya Kogyo Co., Ltd. was added as a defend-
ant. In 2012, Steuben filed a similar complaint, alleging
HP Hood LLC infringed, inter alia, claims of the Asserted
Patents. The cases were consolidated. In 2019, the West-
ern District of New York granted a motion filed by Shibuya
Hoppmann Corp., Shibuya Kogyo Co. Ltd., and HP Hood
LLC (collectively, Shibuya) to transfer the case to the Dis-
trict of Delaware.
In 2020, the district court issued its claim construction
order. In 2021, the district court denied cross-motions for
summary judgment of noninfringement, infringement, and
invalidity of the Asserted Patents. The district court held
a five-day jury trial. Decision at 325. At the close of
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 3
evidence, Shibuya moved for JMOL under Federal Rule of
Civil Procedure 50(a) of noninfringement as to all asserted
claims of the Asserted Patents. The district court denied
the motions, and the jury returned a verdict that the As-
serted Patents are valid and infringed and awarded
$38,322,283.78 in damages.
After the verdict, Shibuya renewed its JMOL of nonin-
fringement under Rule 50(b) as to all asserted claims of the
Asserted Patents; moved for JMOL in the first instance as
to invalidity of the asserted claims of the Asserted Patents
and as to damages; and, in the alternative, moved for a new
trial if the district court did not find noninfringement for
any of the claims. J.A. 5211–55. The district court granted
Shibuya’s motion regarding noninfringement of all the As-
serted Patents, found the invalidity arguments waived,
and conditionally granted a new trial under Rule of Civil
Procedure 50(c)(1). Decision at 336. The district court en-
tered a Rule 54(b) judgment, and Steuben appealed. J.A.
31–33. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
D ISCUSSION
I. Judgments as a Matter of Law
We review a district court’s grant of JMOL under re-
gional circuit law. Uniloc USA, Inc. v. Microsoft Corp.,
632 F.3d 1292, 1301 (Fed. Cir. 2011). The Third Circuit re-
views a grant of JMOL de novo, applying the same stand-
ard as the district court. Lightning Lube, Inc. v. Witco
Corp., 4 F.3d 1153, 1166 (3d Cir. 1993). “Such a motion
should be granted only if, viewing the evidence in the light
most favorable to the nonmovant and giving it the ad-
vantage of every fair and reasonable inference, there is in-
sufficient evidence from which a jury reasonably could find
liability.” Id. Infringement is a question of fact which we
review for substantial evidence when tried to a jury. Wi-
Lan, Inc. v. Apple, Inc., 811 F.3d 455, 462 (Fed. Cir. 2016).
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 4
A. ’591 Patent
The Asserted Patents generally relate to systems for
the aseptic packaging of food products. E.g., ’591 patent
at 1:9–10. The ’591 patent specifically is directed to “an
apparatus and method for providing container product fill-
ing in an aseptic processing apparatus.” Id. at 1:10–13.
Asserted claim 26 recites:
26. Apparatus for aseptically filling a series of bot-
tles comprising:
a valve for controlling a flow of low-acid food prod-
uct into a bottle at a rate of more than 350 bottles
per minute in a single production line;
a first sterile region surrounding a region where
the product exits the valve;
a second sterile region positioned proximate said
first sterile region;
a valve activation mechanism for controlling the
opening or closing of the valve by extending a por-
tion of the valve from the second sterile region into
the first sterile region, such that the valve does not
contact the bottle, and by retracting the portion of
the valve from the first sterile region back into the
second sterile region.
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 5
The claimed second sterile region is used to solve a po-
tential contamination problem created when the valve
stem actuates the valve between the closed and open posi-
tion (allowing the sterile food product to flow through the
valve). Figures 23 and 24 of the ’591 patent depict a filling
apparatus without the second sterile region:
Decision at 331 (annotated). As shown, when actuator
258A displaces valve stem 256A in a downward direction,
valve 194A is removed from nozzle 196A, allowing product
262A to flow into a bottle. ’591 patent at 14:1–16. When
this happens, portion 264A of the valve stem goes from non-
sterile region 268 into the first sterile region 260, poten-
tially contaminating the first sterile region. Id. at 14:16–
23.
The ’591 patent’s solution to this problem is depicted in
Figures 25 and 26:
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 6
Decision at 331 (annotated). The specification details “[i]n
the present invention, the first portion 264A of the valve
stem 256A has not introduced contaminants into the first
sterile region 260 because the first portion 264A of the
valve stem 256A was pre-sterilized in the second sterile re-
gion 270A before entering the first sterile region 260.” ’591
patent at 14:49–53. In other words, the second sterile re-
gion prevents contamination of the first sterile region by
pre-sterilizing the portion of the valve stem highlighted in
red, which would otherwise move from non-sterile region
268 into the first sterile region 260, and potentially intro-
duce contaminants.
Steuben alleged Shibuya’s P7 aseptic bottling line in-
fringed claim 26 of the ’591 patent and moved for summary
judgment of infringement. J.A. 5155. Specifically, Steuben
argued the accused product contained a sterile zone sur-
rounding the fill pipe, identified by Steuben as a first ster-
ile region, and a sterile food product passage, identified as
the “second sterile region,” as depicted below. Decision
at 332.
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 7
Id. (annotated).
At summary judgment, Shibuya argued the accused
product did not infringe because it did not meet the “second
sterile region” limitation and, separately, there existed
genuine material facts in dispute regarding noninfringe-
ment under the reverse doctrine of equivalents (RDOE).
J.A. 5156. The district court found that the accused prod-
uct’s product pipe was “a second sterile region positioned
proximate [to] said first sterile region,” and thus literally
infringed claim 26. J.A. 5159. However, the district court
denied summary judgment of infringement because there
was a genuine issue of material fact about whether RDOE
precluded a finding of infringement. J.A. 5163.
We have previously described RDOE as an “anachro-
nistic exception, long mentioned but rarely applied.” Tate
Access Floors, Inc. v. Interface Architectural Res., Inc.,
279 F.3d 1357, 1368 (Fed. Cir. 2002). RDOE is, as it
sounds, the reverse of the doctrine of equivalents. An al-
leged infringer may avoid a judgment of infringement by
showing the accused “product has been so far changed in
principle [from the asserted claims] that it performs the
same or similar function in a substantially different way.”
SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107,
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 8
1124 (Fed. Cir. 1985). A patentee alleging infringement
bears the initial burden of proving infringement. Id. at
1123. If the patentee establishes literal infringement, then
an accused infringer claiming noninfringement under
RDOE bears the burden of establishing a prima facie case
of noninfringement under RDOE. Id. at 1123–24. If the
accused infringer meets this burden, then the burden shifts
back to the patentee to rebut the prima facie case. Id.
at 1124.
The jury found claim 26 of the ’591 patent not invalid
and infringed. J.A. 5204–08. The district court granted
JMOL of noninfringement, holding that no reasonable ju-
ror could have found infringement. Decision at 335. The
district court found that Shibuya satisfied its prima facie
case of RDOE through Dr. Glancey’s testimony and Dr.
Sharon’s rebuttal testimony was wrong as a matter of law
and entitled to no weight. Id. at 334.
Steuben makes two primary arguments on appeal: (1)
the district court erred in relying on RDOE to overturn the
jury’s verdict of infringement of claim 26 of the ’591 patent,
and (2) RDOE is not a viable defense to infringement.
Shibuya argues the district court correctly granted JMOL
under RDOE. In the alternative, Shibuya argues that the
district court erred in its claim construction of “second ster-
ile region” and under the proper construction, JMOL of
noninfringement is warranted.
RDOE can be traced back to at least the 1800s. In
Boyden Power-Brake Co. v. Westinghouse, the Supreme
Court stated:
We have repeatedly held that a charge of infringe-
ment is sometimes made out, though the letter of
the claims be avoided. The converse is equally
true. The patentee may bring the defendant within
the letter of his claims, but if the latter has so far
changed the principle of the device that the claims
of the patent, literally construed, have ceased to
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 9
represent his actual invention, he is as little sub-
ject to be adjudged an infringer as one who has vi-
olated the letter of a statute has to be convicted,
when he has done nothing in conflict with its spirit
and intent.
170 U.S. 537, 568 (1898) (internal citations omitted). Half
a century later, in Graver Tank & Mfg. Co., Inc. v. Linde
Air Products Co., the Supreme Court commented:
[The doctrine of equivalents] is not always applied
in favor of a patentee but is sometimes used against
him. Thus, where a device is so far changed in prin-
ciple from a patented article that it performs the
same or a similar function in a substantially differ-
ent way, but nevertheless falls within the literal
words of the claim, the doctrine of equivalents may
be used to restrict the claim and defeat the pa-
tentee’s action for infringement.
339 U.S. 605, 608–09 (1950).
Steuben argues this common law doctrine, RDOE, was
eliminated by the 1952 Patent Act. Specifically, Steuben
argues RDOE conflicts with 35 U.S.C. § 271(a) and was
subsumed in 35 U.S.C. § 112 when Congress enacted the
1952 Patent Act. Whether the doctrine survived enact-
ment of the 1952 Patent Act is a question of first impres-
sion. Steuben argues the plain language of 35 U.S.C.
§ 271(a), “[e]xcept as otherwise provided in this title,” re-
quires that exceptions to infringement must be expressly
identified in Title 35. Opening Br. 39. Because RDOE is
not codified in Title 35, Steuben argues it is no longer a
defense to infringement. While RDOE may have been ap-
propriate prior to 1952, Congress wrote out any RDOE ex-
ception to infringement when defining infringement in the
1952 Patent Act.
Steuben argues this elimination was intentional be-
cause RDOE was subsumed by 35 U.S.C. § 112.
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 10
Specifically, Steuben argues that if a device literally falls
within the scope of a claim, but the accused infringer be-
lieves the claim is too broad and its device should not in-
fringe, the appropriate recourse is a § 112 challenge, not a
claim of noninfringement under RDOE. We have noted,
without deciding, “when Congress enacted 35 U.S.C. § 112,
after the decision in Graver Tank, it imposed requirements
for the written description, enablement, definiteness, and
means-plus-function claims that are co-extensive with the
broadest possible reach of the reverse doctrine of equiva-
lents.” Tate, 279 F.3d at 1368; see also Valmont Indus., Inc.
v. Reinke Mfg. Co., 983 F.2d 1039, 1042 (Fed. Cir. 1993)
(noting § 112 ¶ 6 “operates more like the reverse doctrine
of equivalents than the doctrine of equivalents because it
restricts the coverage of literal claim language”).
Shibuya argues RDOE survived the 1952 Patent Act.
Shibuya argues the Supreme Court held the 1952 Patent
Act “left intact the entire body of case law on direct in-
fringement” in Aro Mfg. Co. v. Convertible Top Replace-
ment Co., 365 U.S. 336, 342 (1961), which Shibuya
interprets to include defenses to direct infringement such
as RDOE. Shibuya also argues the Supreme Court rejected
Steuben’s § 112 argument in Warner-Jenkinson Co. v. Hil-
ton Davis Chemical Co. when it observed “[t]he 1952 Pa-
tent Act is not materially different from the 1870 Act with
regard to claiming,” and declined to overrule Graver Tank.
520 U.S. 17, 26 (1997).
We find Steuben’s arguments compelling, but need not
decide whether RDOE survived the 1952 Patent Act. We
have never “affirmed a decision finding noninfringement
based on the reverse doctrine of equivalents.” Tate,
279 F.3d at 1368; see also, e.g., U.S. Steel Corp. v. Phillips
Petroleum Co., 865 F.2d 1247, 1253 (Fed. Cir. 1989); Intel
Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 842 (Fed.
Cir. 1991); Odetics, Inc. v. Storage Tech. Corp., 116 F.3d
1497 (Fed. Cir. 1997); Amgen Inc. v. Hoechst Marion Rous-
sel, Inc., 314 F.3d 1313, 1351 (Fed. Cir. 2003); Roche Palo
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 11
Alto LLC v. Apotex, Inc., 531 F.3d 1372, 1378 (Fed.
Cir. 2008); DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1339 (Fed. Cir. 2009). And this case
does not cause a change of course. If Shibuya made a prima
facie case that the principle of operation of the accused
product was so far removed from that of claim 26 of the ’591
patent, the jury’s verdict should not have been overturned
under RDOE because Dr. Sharon provided rebuttal testi-
mony that the jury was entitled to credit. JMOL of nonin-
fringement was therefore improper.
The district court faulted Dr. Sharon’s explanation of
the ’591 patent’s principle of operation as contrary to the
specification, and therefore, did not consider any of Dr.
Sharon’s testimony. Decision at 334. With respect to the
’591 patent, Dr. Sharon testified the principle of operation
is “basically filling more than 350 bottles per minute asep-
tically and doing that with, by having these two sterile re-
gions that the valve is sort of constrained to so that as it
opens and closes, it only stays within those two regions and
it does not go into any non-sterile region and therefore risk
the possibility of bringing in contaminants, pathogens, into
the food.” J.A. 3089 at 355:7–13. The district court con-
cluded this was wrong as a matter of law because it is in-
consistent with the specification where “the whole purpose
of the second sterile region in the patented invention is to
sterilize the portion of the valve stem that is exposed to a
non-sterile region.” Decision at 334 (emphasis added by the
district court).
Regardless, Dr. Sharon provided other testimony that
the jury was entitled to consider. Dr. Sharon testified the
principle of operation of the second sterile region in the ac-
cused product is “that it provides a sterile region for the
valve tip to go up into when it’s being opened so that it
doesn’t, you know, go into a non-sterile region and then
bring contaminants into food.” J.A. 3090 at 360:20–361:3;
J.A. 8472–73. Dr. Glancey, Shibuya’s expert, testified the
principle of operation of claim 26 of the ’591 patent is “[t]he
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 12
second sterile region uses a sterilizing media or sterilant
that provides that second sterile region,” and “the valve
stem is sterilized in that second sterile region, removing
any contaminant.” J.A. 3227–28 at 907:8–908:1. He fur-
ther testified that Shibuya’s valve’s principle of operation
is substantially different because it uses a “flexible barrier
we called a bellows. That’s basically a barrier preventing
contaminants, blocking contaminants by the physical bar-
rier. So the contaminants can never move into the food
passage in the Shibuya valve.” J.A. 3228 at 908:6–10. The
jury heard conflicting testimony from experts regarding
the principle of operation of claim 26 of the ’591 patent. Dr.
Sharon’s testimony constitutes substantial evidence for the
jury’s rejection of RDOE. “We presume the jury resolved
all underlying factual disputes in favor of the verdict.” Ap-
ple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1040 (Fed.
Cir. 2016) (en banc).
JMOL “should be granted only if, viewing the evidence
in the light most favorable to the nonmovant and giving it
the advantage of every fair and reasonable inference, there
is insufficient evidence from which a jury reasonably could
find liability.” Lightning Lube, 4 F.3d at 1166. Here, view-
ing the evidence in the light most favorable to Steuben, the
non-movant, a reasonable jury could have found the prin-
ciples of operation of the accused product and claim 26 of
the ’591 patent were not “so far changed,” as to support a
theory of noninfringement under RDOE. SRI, 775 F.2d
at 1124. Because there was substantial evidence to rebut
any prima facie case of RDOE, we need not address
whether a prima facie case was met.
Shibuya argues in the alternative that the district
court erred when it did not adopt Shibuya’s proposed con-
struction of “second sterile region,” and that under the cor-
rect construction there is no infringement. Response Br.
60. Shibuya’s proposed construction of “second sterile re-
gion” is “a region that is sterile and proximate to the first
sterile region through which food does not flow.” Response
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 13
Br. 61. The district court declined to adopt Shibuya’s pro-
posed construction of “second sterile region.” J.A. 5074.
The district court noted Shibuya did not point to any lexi-
cography or disclaimer in the patent that would require the
negative limitation. J.A. 6122. Here too, Shibuya does not
tether the carveout of second sterile regions through which
food could flow to language in the specification. The patent
is silent as to whether food can flow through the second
sterile region. We see no error in the district court’s con-
struction.
For the foregoing reasons, we reverse the JMOL of non-
infringement with respect to the asserted claim of the ’591
patent and reinstate the jury’s verdict of infringement.
B. ’188 Patent
The ’188 patent is directed to an aseptic bottle sterili-
zation filling line. See ’188 patent at 2:1–6. Steuben al-
leged Shibuya infringed claims 19 and 22:
19. A device for aseptically bottling aseptically
sterilized foodstuffs having at least about a 12 log
reduction in Clostridium botulinum comprising:
means for providing a plurality of bottles;
means for aseptically disinfecting the plurality of
bottles;
means for aseptically filling the aseptically disin-
fected plurality of bottles with the aseptically ster-
ilized foodstuffs; and
means for filling the aseptically disinfected plural-
ity of bottles at a rate greater than 100 bottles per
minute.
22. The device for aseptically bottling aseptically
sterilized foodstuffs having at least about a 12 log
reduction in Clostridium botulinum of claim 21,
wherein the interior of the plurality of filled bottles
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 14
does not have a residual level of hydrogen peroxide
of about 0.5 ppm or more.
Id. at claims 19 and 22 (emphases added).
Under pre-America Invents Act 35 U.S.C. § 112 ¶ 6, a
claim limitation can be written in terms of a function
achieved, rather than a definite structure that achieves the
function. Odetics, Inc. v. Storage Tech. Corp., 185 F.3d
1259, 1266 (Fed. Cir. 1999). The limitation must be con-
strued “‘to cover the corresponding structure, material, or
acts described in the specification and equivalents
thereof.’” Id. at 1266–67 (quoting 35 U.S.C. § 112 ¶ 6). To
show infringement of a means plus function limitation, the
patent owner must show the relevant structure in the ac-
cused product “perform[s] the identical function recited in
the claim and be identical or equivalent to the correspond-
ing structure in the specification.” Id. at 1267. To show an
accused structure is equivalent, the structure must “per-
form the identical function, in substantially the same way,
with substantially the same result.” Kemco Sales, Inc. v.
Control Papers, Inc., 208 F.3d 1352, 1364 (Fed. Cir. 2000).
Identifying the claimed function and the corresponding
structures disclosed in the written description are issues of
claim construction. Id. at 1360. Whether an accused prod-
uct has an equivalent structure is a question of fact. Odet-
ics, 185 F.3d at 1268–69.
The district court construed the term “means for filling
the aseptically disinfected plurality of bottles at a rate
greater than 100 bottles per minute” as a means plus func-
tion limitation. Decision at 328. The district court identi-
fied the function as “[aseptically] filling the aseptically
disinfected plurality of bottles at a rate greater than 100
bottles per minute,” and the structure as “filling valves
(Items 194A, 194B) and filling nozzles (Items 190A, 190B);
a control system (Item 550); a conveyer plate (Item 94); con-
veyor (Item 106); and equivalents.” J.A. 5073–74. The jury
returned a verdict of infringement of claims 19 and 22 of
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 15
the ’188 patent. J.A. 5205. The district court granted
JMOL of noninfringement because no reasonable juror
could find “the way the accused machines’ rotary wheels
and neck grippers operate is substantially the same as the
way a conveyor and conveyor plate operate.” Decision
at 329.
Steuben argues Dr. Sharon provided substantial evi-
dence for the jury to find the accused structures perform
the claimed function in an equivalent way. Steuben argues
that the district court failed to consider infringement in the
context of the claimed function and erred by importing un-
claimed functions into its analysis. We agree with Steuben
and reverse the district court’s grant of JMOL of nonin-
fringement.
Steuben presented substantial evidence by which the
jury could find infringement. For the identified structure
of conveyor 106, Dr. Sharon testified the way conveyor 106
performs its role in the overall function of the claim limita-
tion is by moving the bottles via rotating around a pulley
system, causing the bottles to move along the machine.
J.A. 3102 at 408:18–25. Dr. Sharon testified the accused
product’s rotary wheels1 operate in substantially the same
way by “rotat[ing] to bring the bottles from . . . one station
to the next.” Id. at 410:1–11. In Dr. Sharon’s opinion,
these two structures are equivalents. Id. at 409:1–6.
Steuben also played the jury a video of the rotary wheels
moving within the accused machine during the testimony
of Dr. Sharon. Id. at 409:7–22.
1 Dr. Sharon refers to “dials” and “transfer wheels” in
his testimony, Dr. Glancey refers to “rotating turrets,”
whereas the district court and the parties use the term “ro-
tary wheels.” Compare J.A. 3102 at 409:5–6, with J.A.
3214 at 854:25, and Decision at 329. To avoid confusion,
we use the term “rotary wheels.”
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 16
For conveyor plate 94, Dr. Sharon testified the way the
conveyor plate performs its portion of the claimed function
is by holding the bottles as they are brought “to the filler
so they can then be filled.” J.A. 3101 at 404:16–406:25. He
testified the accused product’s neck grippers are equivalent
to the ’188 patent’s conveyor plate because they hold the
bottles as they move. Id. at 405:7–406:25. Dr. Sharon
showed the jury the neck grippers and the way they hold a
bottle. Id. at 405:18, 406:17–21. Dr. Sharon also pointed
out the neck grippers in a video of the accused product
played for the jury. J.A. 3102 at 409:12–20. Dr. Sharon
did note the two structures differ in that the accused prod-
uct’s neck grippers hold the bottles from the neck, rather
than the bottom as the conveyor plate does, on the way to
be filled, but testified this difference is insubstantial in the
context of the claimed function of filling bottles at a rate
greater than 100 bottles per minute. J.A. 3101 at 406:1–
25. This is substantial evidence by which the jury could
find infringement.
Shibuya argues Steuben reads out the structural iden-
tity requirement of the equivalence test and only recites
functional equivalence. Specifically, Shibuya contends
Steuben did not adduce sufficient evidence that the way
the accused structures operate is substantially equivalent.
We find there is substantial evidence with which the jury
could have concluded otherwise.
Shibuya fails to tether its “substantially the same way”
comparison to the claimed function. While Dr. Glancey tes-
tified to several differences in rotary wheels versus the con-
veyor, J.A. 3214 at 855:1–22, and in the neck grippers
versus the conveyor plate, J.A. 3214 at 853:3–854:14, these
differences must be evaluated in the context of the claimed
function. “The individual components, if any, of an overall
structure that corresponds to the claimed function are not
claim limitations. Rather, the claim limitation is the over-
all structure corresponding to the claimed function.” Odet-
ics, 185 F.3d at 1268. Dr. Sharon testified that the way the
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 17
conveyor and conveyor plate help perform the claimed func-
tion is by holding and moving bottles from one location to
the other. J.A. 3102 at 408:18–25; J.A. 3101 at 404:16–
406:25. He testified the accused product uses equivalent
structures of rotary wheels and neck grippers in substan-
tially the same way, “in the context of filling bottles at a
rate greater than 100 per minute.” J.A. 3101 at 406:2–25;
J.A. 3102 at 410:1–11. Dr. Sharon’s testimony went di-
rectly to the “way” the structures operate in the context of
the claimed function, and provided the jury substantial ev-
idence with which to find infringement. We reverse the
grant of JMOL of noninfringement with respect to the as-
serted claims of the ’188 patent and reinstate the jury’s ver-
dict of infringement.
C. ’985 Patent
The ’985 patent relates to “[a]n apparatus and method
for providing container interior sterilization in an aseptic
processing apparatus.” ’985 patent at Abstract. Steuben
asserted claims 3 and 7, which both depend from claim 1:
1. Apparatus for sterilizing a container compris-
ing:
a first supply source of sterile air;
a supply source of sterilant;
an atomizing system producing an atomized steri-
lant from the mixing of the sterile air from the first
supply source of sterile air with the sterilant;
a second supply source providing a non-intermit-
tent supply of hot sterile air to a conduit wherein
said conduit is operationally coupled between said
atomizing system and a container, and wherein
said atomized sterilant is intermittently added to
said conduit;
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 18
a mechanism for applying the atomized sterilant
and the second supply source of hot sterile air on to
the container; and
a third supply source of a hot sterile drying air for
activating and drying the sterilant in the interior
of the container, wherein the container is upright.
3. The apparatus of claim 1, wherein the container
is a bottle.
7. The apparatus of claim 1, wherein after drying
the container interior surface retains a concentra-
tion of hydrogen peroxide less than 0.5 PPM.
The asserted claims require the atomized sterilant to
be added to the conduit “intermittently.” ’985 patent at
claim 1. Steuben and Shibuya stipulated to a construction
of “intermittently added” as “[a]dded in a non-continuous
matter.” Decision at 325; J.A. 5075. It is undisputed the
accused machines add sterilant continuously. Decision
at 325. The jury found claims 3 and 7 of the ’985 patent
infringed under DOE. Decision, at 326. The district court
granted Shibuya’s motion for JMOL of noninfringement.
Id. at 328. The district court determined the “‘intermit-
tently added’ limitation cannot be met under the doctrine
of equivalents by a continuous addition of sterilant,” be-
cause “intermittently” and “continuously” are antonyms of
each other, not equivalents, and doing something in a non-
continuous manner cannot be achieved by doing it contin-
uously. Id. at 327.
Steuben argues the district court erred in granting
JMOL of noninfringement of the asserted claims of the ’985
patent. Specifically, Steuben argues substantial evidence
supports the jury’s verdict of infringement because under
DOE, the accused product’s continuous sterilization is
equivalent to claim 1’s “intermittently added” limitation.
find there is not substantial evidence to support the jury’s
verdict.
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 19
When at least one claim element is missing from an ac-
cused product, infringement can still be found under DOE
if the accused product contains “an equivalent device or in-
strumentality.” Warner-Jenkinson, 520 U.S. at 40. Some-
thing is equivalent if the differences between it and the
claim limitation are “insubstantial,” or it matches the
“function, way, and result of the claimed element.” Id.
DOE may not apply where “the accused device contain[s]
the antithesis of the claimed structure,” such that the claim
limitation would be vitiated. Deere & Co. v. Bush Hog,
LLC, 703 F.3d 1349, 1356 (Fed. Cir. 2012).
Steuben’s expert, Dr. Sharon, testified Shibuya’s prod-
uct’s continuous sterilization was equivalent to claim 1’s
“intermittently added” limitation under the “function, way,
result” test. J.A. 3107–08 at 430:20–434:17. Dr. Sharon
testified the ’985 patent uses a spoon dipper to add the ster-
ilant intermittently and the “function is to ensure the right
amount of sterilant gets to the bottle.” J.A. 3108 at 431:3,
12–13. He testified the “way” is the spoon dipper, and the
“result” is a properly sterilized bottle. Id. at 431:17–432:4.
Dr. Sharon testified the accused product’s equivalent is
“continuously using flow sensors and metering pumps to
achieve the same function because in the end, the point is
to get the right amount of sterilant into the bottle.” J.A.
3107 at 429:9–13. He testified the function of the
Shibuya’s product’s continuous sterilization is to “ensure
that the correct amout of sterilant gets to the bottles,” the
“way” is “with metering pumps and flow meters,” and the
result is “that the bottles are properly sterilized.” J.A. 3108
at 433:1–434:13.
In this case, where the parties stipulated to a claim
construction of “intermittently added” as “[a]dded in a non-
continuous matter,” with which we see no error, a finding
of infringement under DOE would vitiate the claim limita-
tion. Something that is done non-continuously cannot be
the equivalent of something done continuously. Steuben
points to different cases where this court has held
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 20
“continuous” and “intermittent” can be equivalents. See
Epos Techs., Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338,
1347 (Fed. Cir. 2014). But in Epos, as the district court
noted, the parties had not stipulated to a claim construc-
tion of “intermittent” that necessarily precludes a continu-
ous device. Decision at 328. A reasonable juror could not
find, under this construction, that Shibuya’s continuously
added sterilant is equivalent to the claims’ “intermittently
added.” We therefore affirm the district court’s grant of
JMOL of noninfringement with respect to the asserted
claims of the ’985 patent.
II. New Trials
We review a district court’s grant of a motion for a new
trial under regional circuit law. Uniloc, 632 F.3d at 1309.
The Third Circuit reviews a grant of a new trial for abuse
of discretion. Lightning Lube, 4 F.3d at 1167.
A. Infringement
Shibuya moved for a new trial on infringement in the
alternative to JMOL. J.A. 5252. The district court condi-
tionally granted a new trial with respect to infringement
under Rule 50(c)(1). Decision at 336. Rule 50(c)(1) states
“[i]f the court grants a renewed motion for judgment as a
matter of law, it must also conditionally rule on any motion
for a new trial by determining whether a new trial should
be granted if the judgment is later vacated or reversed.
The court must state the grounds for conditionally granting
or denying the motion for a new trial.” The district court’s
sole ground for conditionally granting a new trial on in-
fringement was “as explained above, the jury’s verdicts
with respect to infringement of the asserted claims of the
[Asserted Patents] are contrary to the evidence.” Decision
at 336. Because the district court did not provide any basis
for granting a new trial that is not subsumed by our anal-
ysis regarding the JMOLs, we reverse the conditional grant
of a new trial on infringement.
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 21
B. Validity
After the jury verdict, Shibuya moved for JMOL of in-
validity of the Asserted Patents under Federal Rule of Civil
Procedure 50(b) or, in the alternative, a new trial. Decision
at 335. The district court found Shibuya never moved un-
der Rule 50(a) at trial. Id. at 335–36. “A motion under
Rule 50(b) is not allowed unless the movant sought relief
on similar grounds under Rule 50(a) before the case was
submitted to the jury.” Exxon Shipping Co. v. Baker,
554 U.S. 471, 486 n.5 (2008). The district court determined
Shibuya could not bring a Rule 50(b) motion and denied the
motion. Decision at 336. The district court did, however,
“conditionally grant Shibuya’s motion for a new trial under
Federal Rule of Civil Procedure 50(c)(1).” Id.
On appeal, Steuben argues the district court erred in
not extending the waiver analysis to Shibuya’s request for
a new trial on invalidity. Shibuya argues a new trial on
validity is required because it is not possible to parse the
infringement and invalidity issues post-trial. And, even if
Shibuya waived its JMOL on invalidity, it was still entitled
to a new trial because the verdict went against the great
weight of the evidence. Response Br. 69–70.
The district court did not provide any reasoning for con-
ditionally granting a new trial specific to validity for us to
review. Decision at 336. We therefore cannot assess
whether the district court abused its discretion in the con-
ditional grant. We vacate the conditional grant of a new
trial on invalidity and remand for further proceedings.
C. Damages
After the jury verdict, Shibuya moved for JMOL on
damages or, in the alternative, a new trial. J.A. 5248–54.
The district court did not address the JMOL on damages
because it granted JMOLs of noninfringement for all as-
serted claims of the Asserted Patents, obviating any need
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STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION 22
for a damages verdict. Decision at 336. The district court
conditionally granted a new trial under Rule 50(c)(1). Id.
On appeal, Steuben argues no new trial on damages is
necessary because Shibuya necessarily infringed any one
of the asserted claims each time it ran the accused ma-
chines. Opening Br. 66–67. In Steuben’s view, if we rein-
state the jury verdict of infringement on any one or more of
the claims of the Asserted Patents, we should also reinstate
the full damages award. Shibuya argues a new trial on
damages is required if we reinstate any of the jury’s ver-
dict. Response Br. 71.
Because the district court provided no rationale for its
grant of a new trial on damages, we vacate and remand.
CONCLUSION
We have considered Steuben’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm-in-part, reverse-in-part, and vacate-in-part. We re-
mand for further proceedings.
AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART, AND REMANDED
COSTS
No costs.
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