Infringement

1
Infringement the Doctrine of Equivalents II

• Class Notes March 4, 2003
• Law 677 Patent Law Spring 2003
• Professor Wagner

2
Todays Agenda

• The All-Elements-Rule
• The DOE and Means-Plus-Function Claims

3
Review Warner-Jenkinson, n.8

• With regard to the concern over unreviewability
  due to black-box jury verdicts. Where the
  evidence is such that no reasonable jury could
  determine two elements to be equivalent, district
  courts are obliged to grant partial or complete
  summary judgment. Under the particular facts
  of a case, if a theory of equivalence would
  entirely vitiate a particular claim element,
  partial or complete judgment should be rendered
  by the court, as there would be no further
  material issue for the jury to resolve.

4
All-Elements Rule

• Basics of the All-Elements Rule
• 1. A chair comprising,
• a seat
• at least three legs
• a back
• For literal infringement, all elements must be
  present.
• For DOE infringement, all elements must be
  presentthough they need only be present
  equivalently

5
All-Elements Rule

• Basics of the All-Elements Rule
• 1. A chair comprising,
• a seat
• at least three legs
• a back
• For DOE infringement, all elements must be
  presentthough they need only be present
  equivalently.
• Note Warner-Jenkinson referred to this rule as
  one that disallowed vitiation of claim
  language. (Thus, this is sometimes referred to
  as vitiation approach to DOE analysis.)
• Recall that this had been the rule of the Federal
  Circuit since 1987.

6
The All-Elements Rule

• Dolly v Spaulding Evenflo (Fed. Cir. 1994)
  (Rader)
• Key claim element a stable rigid frame
• Evenflo makes a chair that uses the side panels,
  plus the seat and back panels, as the frame.
• Consider
• Claim construction
• Why no DOE infringement?
• What is the rule of Dolly?

7
The All-Elements Rule

• Weiner v NEC Electronics (Fed. Cir. 1996) (Rader)
• Claim required data in columns, which was
  interpreted to require data on the chip to be
  stored in columns.
• The accused device stored data in columns, but
  only on an external data register.
• Sage Products (Fed. Cir. 1997) (Rader)
• The claim language required an elongated slot at
  the top of the container body
• The accused device had a slot (if at all) within
  the body (not the top).
• What is the rule of Dolly/Weiner/Sage?
• Note Ethicon, on page 7-8, limits D/W/S to
  their facts. (What does this mean? Is this
  helpful? Now what?)

8
The All-Elements Rule

• Considering the Vitiation Approach
• A fastening system comprising
• A two-inch long bolt
• A corresponding nut with five sides
• Wherein the nut includes an insert of plastic
  material
• Device A same system, except bolt is 2.5 inches
  long.
• Device B same system, except the insert is cork
• Do the differences above vitiate the element?
• Or are they equivalent to the element?

9
The All-Elements Rule

• Considering Vitiation, continued
• Which of these claims has more elements/limitation
  s?Which is easier to avoid for infringement
  purposes?

1. A fastening system comprising a two-inch long bolt a corresponding nut with five angled sides A fastening system comprising a bolt, said bolt being two inches in length, and a corresponding nut, said nut having five angled sides
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The DOE and Means-Plus-Function Claims

• 35 USC 112 6
• An element in a claim for a combination may be
  expressed as a means or step for performing a
  specified function without the recital of
  structure, material, or acts in support thereof,
  and such claim shall be construed to cover the
  corresponding structure, material, or acts
  described in the specification and equivalents
  thereof.
• What does literal (statutory) infringement of a
  MPF claim element look like?
• What does DOE infringement look like?

11
The DOE and Means-Plus-Function Claims

• Chiuminatta Concrete Concepts (Fed. Cir. 1998)
  (Lourie)
• Means connected to the saw for supporting the
  surface of the concrete adjacent to the leading
  edge of the cutting blade to inhibit chipping,
  spalling, or cracking of the concrete surface
  during cutting.
• Is this an MPF claim element? (Why?)
• What is the corresponding structure?

12
The DOE and Means-Plus-Function Claims

• Chiuminatta, continued
• Does the accused device (wheels) infringe
  literally? Under DOE?
• How does Chiuminatta distinguish between 112 6
  equivalents and DOE equivalents?

13
The DOE and Means-Plus-Function Claims

• Odetics v Storage Technology (Fed. Cir. 1999)
• Claim element rotary means, rotably mounted
• What is the corresponding structure?
• 151 Patent Accused Device
• Bins Bins
• Axis of Rotation Axis of Rotation
• Gear Pins
• A jury found infringement. Why did the district
  court enter JMOL?

14
The DOE and Means-Plus-Function Claims

• Odetics, continued
• How does Odetics distinguish between 112 6 and
  DOE equivalents?
• Recall the test
• Equivalent function
• Equivalent way
• Equivalent result
• What function does a 112 6 element perform?
  (Literally? Equivalently?)
• Why not consider equivalence on a
  component-by-component basis?

15
The DOE and Means-Plus-Function Claims

• The Chiuminatta and Odetics Approaches

16

• Next Class
• Infringement the Doctrine of Equivalents III
• Prosecution History Estoppel
• Prior Art Limits on DOE
• Reverse DOE