IP Law Daily, PATENT—Fed. Cir.: Mixed appellate ruling in aseptic packaging patent dispute between Steuben Foods and Shibuya Hoppmann, (Jan 24, 2025)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Noninfringement JMOL reversed for two patents as evidence supported the jury’s infringement findings; affirmed for one patent as the jury's equivalence finding was unsupported by evidence.

The U.S. Court of Appeals for the Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded a federal district court’s post-trial decisions in an aseptic packaging maker’s infringement lawsuit against a bottling system designer. The appellate court affirmed the judgment as a matter of law (JMOL) of noninfringement for one of the asserted patents, finding no substantial evidence supporting the jury's equivalence finding. It reversed the JMOL of noninfringement for two asserted patents, holding that the district court improperly disregarded evidence supporting the jury’s infringement verdicts. Additionally, the Federal Circuit reversed the conditional grant of a new trial on infringement, concluding the district court failed to provide an independent basis for the grant beyond its JMOL analysis. Further, the court vacated the conditional new trial on the asserted patents’ invalidity, citing the district court’s lack of reasoning for such relief, and remanded the case for further proceedings (Steuben Foods, Inc. v. Shibuya Hoppmann Corp., No. 23-1790 (Fed. Cir. Jan. 24, 2025)).

Background. The plaintiff/appellant, Steuben Foods, Inc., is a manufacturer specializing in aseptic packaging systems for the food and beverage industry. The defendants/ appellees include Shibuya Hoppmann Corporation and Shibuya Kogyo Co., Ltd., manufacturers of aseptic bottling systems, and HP Hood LLC, a major U.S. dairy company that operates these systems. The dispute involves three patents owned by Steuben: U.S. Patent Nos. 6,209,591 (the ’591 patent), 6,536,188 (the ’188 patent), and 6,702,985 (the ’985 patent). These patents cover apparatuses and methods for sterilizing and aseptically filling food containers, addressing features like sterile regions, bottling speeds, and sterilization techniques.

The dispute arose after Shibuya sold aseptic bottling systems to HP Hood, which operated the accused systems in its facilities. Steuben filed this lawsuit alleging that Shibuya Hoppmann’s aseptic bottling systems directly infringed claim 26 of the ’591 patent, claim 45 of the ’188 patent, and claim 18 of the ’985 patent.

Following a trial in 2021, the jury found all three patents valid and infringed, awarding Steuben $38.3 million in damages. However, Shibuya moved for judgments as a matter of law (JMOL) on noninfringement for all three patents, asserting that the evidence presented was insufficient to support the jury’s findings. It also sought conditional new trials on infringement and damages, arguing that the jury improperly interpreted key claim limitations and relied on the doctrine of equivalents. The district court granted JMOL on noninfringement for all three patents and conditionally allowed new trials, overturning the jury’s verdict. Steuben appealed.

JMOL for the '985 patent. The appellate court affirmed the JMOL of noninfringement for the ’985 patent. The district court had ruled that applying the doctrine of equivalents (DOE) to the claim limitation of “intermittently added sterilant” would vitiate the limitation, as Shibuya’s system continuously added sterilant. Steuben argued that the difference between intermittent and continuous addition was minor and did not preclude equivalence.

However, the Federal Circuit disagreed, holding that substantial evidence did not support the jury’s finding of equivalence. The court cited Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356 (Fed. Cir. 2012), emphasizing that DOE cannot be used when the accused product embodies the opposite of a claim limitation. The court upheld the district court’s construction of “intermittently added” as “[a]dded in a non-continuous manner,” precluding equivalence.

JMOL for the ’591 patent. The appellate court reversed JMOL of noninfringement for the ’591 patent, finding that the district court improperly applied the reverse doctrine of equivalents (RDOE). The district court had concluded that Shibuya’s system, which used physical barriers rather than pre-sterilization, operated on substantially different principles from the patented invention.

The Federal Circuit held that RDOE is a limited defense applicable only when the accused system operates on fundamentally different principles, a standard not met here. Substantial evidence, including expert testimony, supported the jury’s finding of infringement. Relying on SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1124 (Fed. Cir. 1985), the appellate court reinstated the jury’s infringement verdict for the ’591 patent.

JMOL for the ’188 patent. The JMOL of noninfringement for the ’188 patent was also reversed. The district court had found that Shibuya’s rotary wheels and neck grippers did not perform the same function as the patented conveyors and plates. On appeal, Steuben contended that the accused components performed substantially the same function in substantially the same way to achieve substantially the same result, meeting the “function, way, and result” test.

Citing Kemco Sales, Inc. v. Control Papers, Inc., 208 F.3d 1352, 1364 (Fed. Cir. 2000), the appellate court agreed with Steuben’s assertions. The court noted that evidence, including expert testimony and video demonstrations, showed that the accused system moved bottles for aseptic filling substantially similarly. The appellate court reinstated the jury's finding of infringement for the '188 patent.

Conditional new trials. The appellate court reversed the conditional grant of a new trial on infringement, finding that the district court failed to provide an independent basis for the grant beyond its JMOL analysis. The Federal Circuit emphasized that new trials must be justified by specific deficiencies in the original trial process or jury findings, not simply as a fallback in case JMOL rulings are overturned.

Additionally, the Federal Circuit vacated the conditional new trial on invalidity, noting that the district court offered no reasoning to support such relief. Citing Exxon Shipping Co. v. Baker, 554 U.S. 471, 486 n.5 (2008), the court emphasized that district courts must clearly articulate their rationale for granting new trials based on evidence and legal principles. Without such justification, the conditional grants of new trials on invalidity and infringement could not stand.

The Case is No. 23-1790.

Judge: Moore, K.

Attorneys: Cook Alciati (Gardella Grace PA) for Steuben Foods, Inc. John Christopher Rozendaal (Sterne Kessler Goldstein & Fox PLLC) for Shibuya Hoppmann Corp.

Companies: Steuben Foods, Inc.; Shibuya Hoppmann Corp.

Cases: Patent FedCirNews DelawareNews GCNNews