  United States Court of Appeals
      for the Federal Circuit
                ______________________

      THE CHARLES MACHINE WORKS, INC.,
              Plaintiff-Appellant,

                           v.

    VERMEER MANUFACTURING COMPANY,
             Defendant-Appellee.
           ______________________

                      2012-1578
                ______________________

   Appeal from the United States District Court for the
Southern District of Iowa in No. 11-CV-0507, Senior
Judge Charles R. Wolle.
                ______________________

                Decided: July 26, 2013
                ______________________

   ROBERT D. TOMLINSON, Tomlinson Rust McKinstry
Grable, of Oklahoma City, Oklahoma, argued for plaintiff-
appellant. With him on the brief were LAWRENCE F.
GRABLE and GARY PETERSON. Of counsel on the brief were
EDMUND J. SEASE and JEFFREY D. HARTY, McKee, Voor-
hees & Sease, P.L.C., of Des Moines, Iowa.

   RACHEL K. ZIMMERMAN, Merchant & Gould P.C., of
Minneapolis, Minnesota, argued for defendant-appellee.
With her on the brief was AARON M. JOHNSON.
                 ______________________
2      CHARLES MACHINE WORKS     v. VERMEER MANUFACTURING


     Before DYK, MAYER, and MOORE, Circuit Judges.
MOORE, Circuit Judge.
    The Charles Machine Works, Inc. (CMW) appeals
from the district court’s grant of summary judgment that
Vermeer Manufacturing Company’s (Vermeer) accused
commercial products and non-commercial prototypes do
not infringe, literally or under the doctrine of equivalents.
CMW also challenges whether the prototypes were
properly within the scope of summary judgment. We hold
that CMW did not have sufficient notice that the proto-
types were within the scope of the summary judgment
decision, and thus vacate-in-part and remand. Regarding
the accused commercial products, we affirm that there is
no literal infringement, and reverse that there is no in-
fringement under the doctrine of equivalents and remand.
                       BACKGROUND
    U.S. Patent 5,490,569 (’569 patent) generally relates
to a two-pipe drill for boring underground holes in the
horizontal direction. An inner pipe rotates the drill bit.
An outer pipe, which includes a body and casing, is used
for steering. The ’569 patent also discusses a structure
called a “deflection shoe” as a steering mechanism. ’569
patent, col. 3 ll. 23–28; Fig. 1. The deflection shoe is
included on one side of the casing to create an asymmetry
about the casing’s centerline axis. Id. If the casing does
not rotate, the deflection shoe causes the drill to deflect
away from a straight path. Id. When the casing rotates,
however, the drill follows a straight horizontal path. Id.
at col. 3 ll. 31–44.
    CMW sued Vermeer for infringement of the ’569 pa-
tent. Asserted apparatus claims 1, 4–8, 10, 12, 18, 20–25,
and 27 recite “a deflection shoe mounted on a first side of”
either “the body” or “the casing.” Asserted method claims
30–31 recite “the casing having a deflection shoe thereon.”
 CHARLES MACHINE WORKS   v. VERMEER MANUFACTURING       3
CMW alleged infringement by two types of Vermeer drills:
non-commercial prototypes and commercial products.
Both types of drills include a structure called a bent sub,
which CMW contends meets the “deflection shoe” and
“mounted on” limitations. The prototypes include an
additional structure called a wear pad. Vermeer moved
for summary judgment of noninfringement, literal or
under the doctrine of equivalents, of the asserted claims.
The district court granted Vermeer’s motion as to all
accused products. CMW appeals. We have jurisdiction
under 28 U.S.C. § 1295(a)(1).
                       DISCUSSION
                            I.
    We review a grant of summary judgment under the
law of the regional circuit. Grober v. Mako Prods., Inc.,
686 F.3d 1335, 1344 (Fed. Cir. 2012). The Eighth Circuit
reviews a grant of summary judgment de novo. Wilson v.
Spain, 209 F.3d 713, 716 (8th Cir. 2000). Summary
judgment is appropriate if “the movant shows that there
is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.” FED.
R. CIV. P. 56(a). “The evidence of the nonmovant is to be
believed, and all justifiable inferences are to be drawn in
his favor.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
255 (1986).
    Claim construction is an issue of law that we review
de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1454–55 (Fed. Cir. 1998) (en banc). Infringement is a
question of fact. Crown Packaging Tech., Inc. v. Rexam
Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009).
“Thus, on appeal from a grant of summary judgment of
noninfringement, we must determine whether, after
resolving reasonable factual inferences in favor of the
patentee, the district court correctly concluded that no
reasonable jury could find infringement.” Id. (internal
quotation omitted).
4      CHARLES MACHINE WORKS      v. VERMEER MANUFACTURING
                            II.
    CMW argues that the court erred by granting sum-
mary judgment as to Vermeer’s accused prototypes. It
argues that Vermeer’s motion for summary judgment
covered only the accused commercial products. CMW also
argues that it did not have notice that the court was
considering the prototypes, which CMW argues are struc-
turally different than the commercial products.
    Vermeer responds that, both in its proposed final rul-
ings and at the summary judgment hearing, it argued
that none of the “accused products”—i.e., prototypes and
commercial models—meets the “deflection shoe” limita-
tion. Vermeer also argues that, at the hearing, CMW
made arguments about the wear pad structure that exists
only in the prototypes.
    We agree with CMW that it had insufficient notice
that the summary judgment decision would include the
prototypes for three reasons. First, Vermeer titled its own
moving papers as a MOTION FOR SUMMARY
JUDGMENT THAT VERMEER’S COMMERCIAL
PRODUCTS DO NOT INFRINGE. J.A. 1625 (capitaliza-
tion in original, emphasis added). Vermeer presented its
arguments under the heading, “Vermeer’s Commercial
Products Cannot Infringe Because They Lack a Deflection
Shoe Mounted on a Casing or Body.” J.A. 1648 (emphasis
added). Nowhere in its motion did Vermeer make sub-
stantive arguments about the prototypes.
    Second, Vermeer’s proposed final rulings were again
expressly limited to the commercial products. Vermeer’s
heading was titled GRANT SUMMARY JUDGMENT
THAT VERMEER’S COMMERCIAL PRODUCT DOES
NOT INFRINGE THE ASSERTED CLAIMS . . . OF THE
’569 PATENT. J.A. 3753 (capitalization in original). On
appeal, Vermeer emphasizes its proposal that, “[w]hen
the term ‘deflection shoe’ is properly construed, Vermeer’s
accused products do not” infringe. J.A. 3754; see also J.A.
 CHARLES MACHINE WORKS    v. VERMEER MANUFACTURING        5
3756 (addressing “the two structures [i.e., wear pad and
bent sub elbow] CMW has identified as meeting the
‘deflection shoe’ limitation”). The term “accused products”
could in a colloquial sense arguably include all of the
accused products. Here, however, the proposed rulings
were expressly limited to “COMMERCIAL” products. The
internal use of “accused products” did not expand the
motion beyond its own express limits.
    Third, Vermeer explained at the summary judgment
hearing that its motion was limited to the commercial
products. It stated that “[counsel for CMW] is correct, it
would not resolve CMW’s claims as to those three proto-
type units. I agree with that. And if [CMW] wanted to
proceed with a trial on those three prototype units . . .
that’s not what this motion is about.” J.A. 3904–05.
Vermeer went on to explain that its motion was “limited
to the commercial product. It would not end CMW’s
claims if it chose to proceed on them as to three prototype
units that were never sold. That would be up to CMW
whether it wanted to do that.” J.A. 3905. The court
called the latter a “good clarification” about the scope of
summary judgment. Id.
    CMW’s statements at the hearing did not indicate
that the prototypes were part of summary judgment. To
the contrary, it stated that, “[the prototype model] is not
the focus of this motion. And . . . even if this motion . . .
on the commercial product is granted . . . we still have to
go to trial on the prototype.” J.A. 3898; see also J.A. 3855
(“The other boring machines that have been accused of
infringement, whether you want to call them prototype, or
not, are not going to be disposed of on this motion.”). We
thus hold that CMW had insufficient notice that the
summary judgment decision would include the accused
prototypes. Accordingly, we vacate the grant of summary
judgment of no infringement by the prototypes.
6      CHARLES MACHINE WORKS      v. VERMEER MANUFACTURING
                           III.
    The district court construed “deflection shoe” as a
“structure that can be attached to the side of the body or
casing and that can be positioned to deflect the boring
apparatus from a linear path.” Charles Machine Works,
Inc. v. Vermeer Mfg. Co., No. 4:11-cv-507 (S.D. Iowa June
21, 2012), ECF No. 211, at 4–5. It also construed “mount-
ed on” as “attached to.” Id. at 4. On appeal, the parties
limit their arguments about literal infringement to the
correctness of the court’s construction. Because we see no
error in that claim construction, we affirm the grant of
summary judgment that the accused commercial products
do not literally infringe the asserted claims.
    Regarding infringement under the doctrine of equiva-
lents, the court concluded that “[a] bent sub is plainly
different from and not the equivalent of the ‘deflection
shoe.’” Id. at 8. It found that the record “does not estab-
lish that persons learned in the art would deem the bent
sub and mounted [deflection] shoe interchangeable.” Id.
    CMW argues that the court erred by discounting the
declaration of its employee-expert, which established
genuine factual disputes about equivalence. Vermeer
responds that the declaration was merely conclusory. It
also argues that a finding of equivalence would read the
“deflection shoe” and “mounted on” limitations out of the
claims and is thus barred by the doctrine of claim vitia-
tion.
    Infringement under the doctrine of equivalents may
be established by showing that “the substitute element
matches the function, way, and result of the claimed
element.’” Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349,
1356 (Fed. Cir. 2012) (quoting Warner-Jenkinson Co., Inc.
v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997)); see
also Crown Packaging, 559 F.3d at 1312. Whether the
substitute element (1) has substantially the same function
as the recited element, (2) achieves that function in sub-
 CHARLES MACHINE WORKS    v. VERMEER MANUFACTURING         7
stantially the same way, and (3) achieves substantially
the same result are questions of fact. See Crown Packag-
ing, 559 F.3d at 1312; Anchor Wall Sys., Inc. v. Rockwood
Retaining Walls, Inc., 340 F.3d 1298, 1313 (Fed. Cir.
2003).
    Vitiation is “a legal determination that ‘the evidence
is such that no reasonable jury could determine two
elements to be equivalent.’” Deere, 703 F.3d at 1356
(quoting Warner-Jenkinson, 520 U.S. at 39 n.8). “[S]aying
that a claim element would be vitiated is akin to saying
that there is no equivalent to the claim element in the
accused device based on the well-established ‘function-
way-result’ or ‘insubstantial differences’ tests.” Brilliant
Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1347
(Fed. Cir. 2013).
    CMW’s expert declaration established genuine dis-
putes about equivalence. The expert opined that “[t]he
function of the claimed deflection shoe mounted to the
body or casing is to deflect the drill bit from a linear path.
The way in which it does this is to react with the side of
the bore hole to cause the drill bit to deflect from the
linear path, and the result achieved is deflection of the
drill bit in a direction opposite the deflection shoe.” J.A.
3395.
     He then compared the accused bent sub to the claimed
deflection shoe. He opined that both structures have the
same function because “[as] for the elbow on the body of
the accused product, it too performs the function of de-
flecting the drill bit from a linear path.” Id. He also
opined that both structures perform the function “in
substantially the same way” because “[b]oth have at least
a portion disposed outside the cutting circle of the drill bit
to react with the side of the bore hole and cause the drill
bit to deflect from a linear path.” J.A. 3395–96. He then
opined that both structures “achieve the same result of
deflecting the drill bit in a direction opposite the deflec-
8      CHARLES MACHINE WORKS   v. VERMEER MANUFACTURING
tion shoe.” J.A. 3396. He added that “these structures
would be interchangeable,” and “could be considered
substitutes.” Id. Based on these opinions, he ultimately
determined that any differences between the recited
“deflection shoe” and bent sub elbow “are at most insub-
stantial.” Id. For purposes of summary judgment, we
must accept CMW’s expert’s factual assertions as true,
and we hold that they raised genuine factual disputes
material to the function-way-result inquiries.
    We also conclude that the doctrine of claim vitiation
does not bar CMW’s application of the doctrine of equiva-
lents. On summary judgment, the appropriate question
for the court was whether no reasonable jury could find
equivalence based on the record. Deere, 703 F.3d at 1356.
Based on CMW’s expert declaration, we hold that a rea-
sonable jury could have found equivalence, and the court
erred by making a contrary legal determination.
                      CONCLUSION
     As to the accused prototypes, we vacate the grant of
summary judgment of no infringement, literally or under
the doctrine of equivalents, and remand for further pro-
ceedings. As to the accused commercial products, we
affirm the grant of summary judgment of no literal in-
fringement, and reverse the grant of summary judgment
of no infringement under the doctrine of equivalents and
remand for further proceedings.
                         COSTS
    Costs are awarded to CMW.
     VACATED-IN-PART, AFFIRMED-IN-PART,
      REVERSED-IN-PART AND REMANDED
