Commercial Litigation and Arbitration

Spoliation — Destruction of One of Many Identical, Allegedly Infringing Machines after Adverse Party Has Examined It Causes No Prejudice and Does Not Constitute Actionable Spoliation

Vistan Corp. v. Fadei USA, Inc., 2013 U.S. App. LEXIS 24005 (Fed. Cir. Dec. 3, 2013):

Appellant Vistan Corporation is the owner U.S. Patent No. 5,870,949 ("the '949 patent"), which is directed to an apparatus for pitting soft fruit, such as prunes and dates. Claims 5 and 12, the claims at issue in this case, recite a fruit-pitting apparatus in which fruit is conveyed in fruit holders toward pitting knives and then briefly stopped under the knives. The knives are then forced down through the fruit, ejecting the pits through the bottoms of the fruit holders. After pitting, the knives are retracted and the fruit holders are conveyed away from the knives.

As explained in the specification, the fruit holders are configured so that a variable-strength gripping force can be exerted on the individual pieces of fruit. When the fruit is gipped tightly, the fruit holders are said to be in a "closed" configuration. When the grip is relaxed, the fruit holders are in an "open" configuration. In order to improve the efficiency of the pitting operation and assist in removing the pitted fruit flesh from the pitting knives and the fruit holders, the fruit-gripping force is varied over the course of the pitting operation. The fruit holders are first pushed to a closed configuration as they approach the pitting knives. '949 patent, col. 19, ll. 43-51. Then, after the pit is ejected, the fruit holders are briefly opened and then reclosed while the pitting knives are still engaged with the fruit. Id., col. 9, ll. 18-28; id., col. 13, ll. 4-11. The knives are then retracted while the fruit holders are in a closed position. The fruit holders are then opened so that fruit remaining in the holders can be ejected after the holders move out from under the pitting knives. Id., col. 13, ll. 27-34.

The final limitation of claims 5 and 12 of the patent describes an "active assembly" whose function is to engage the fruit holders and apply the variable force. The active-assembly limitation in claim 5 recites:

   An active assembly positioned to engage the holders as the holders pass the pitting knife assembly, and configured to cause the pockets of each of the holders to be in the closed configuration during the pitting operation and to move the pockets of said each of the holders from the closed configuration to the open configuration after the pitting operation thereby improving efficiency of separation of pitted fruit flesh from the holders after said pitting operation.

'949 patent, col. 21, ll. 43-51. Claim 12 is similar to claim 5 except that it describes the active assembly as "configured to move relative to the holders so as to vary the gripping force exerted by the pockets on the specimens of fruit held in said holders during and after the pitting operation." Id., col. 22, ll. 48-52. ***

1. The primary issue in this case is a narrow one. We must decide whether the disclosure of a "mechanical linear actuator" in the '949 patent specification is a sufficient description of structure that "one skilled in the art will know and understand what structure corresponds" to the claim limitations. Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999).

Based on record evidence submitted by both Vistan and the defendants, we conclude that mechanical linear actuators are a distinct and identifiable class of actuators separate from pneumatic and solenoid-based actuators. The district court therefore erroneously granted summary judgment of noninfringement based on its conclusion that a mechanical linear actuator not driven pneumatically or by solenoid could not infringe the '949 patent. ***

3. Vistan argues that the defendants were guilty of spoliation of evidence because, after Vistan had examined one of the accused pitting machines, the defendants disassembled it and used it for spare parts. The district court denied Vistan's request to treat that conduct as spoliation because Vistan's amended infringement contentions did not distinguish the destroyed pitter from the other accused pitters and because Vistan did not show that the unavailability of the destroyed machine, which Vistan had already examined, would affect Vistan's rights in any way. We see no basis to conclude that the court abused its discretion in failing to find that the defendants engaged in sanctionable spoliation of evidence.


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