Patents VI Infringement

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Patents VIInfringement the Doctrine of
Equivalents

• Class Notes March 17, 2003
• Law 507 Intellectual Property Spring 2003
• Professor Wagner

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Todays Agenda

• Literal Infringement
• The Doctrine of Equivalents

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The Basics of Infringement

• The patent right the right to exclude others
  from . . .
• Making
• Using
• Selling
• Offering to sell
• Importing
• Categories of Infringement
• Direct Infringement
• Indirect Infringement (direct assistance)

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The Basics of Infringement (2)

• Forms of Direct Infringement
• Literal infringement
• Infringement via the Doctrine of Equivalents

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Literal Infringement

• Basic rules of literal infringement
• all elements of the claim must be (identically)
  present in the accused device
• Additional elements in the accused device are
  (generally) not relevant to infringement
• Consider this claim . . .
• A writing implement comprising
• A wooden cylinder with a hollow core
• A cylinder of graphite in said hollow core
• A small cylinder of eraser material attached to
  one end of the wooden cylinder
• Which of the following infringes the claim?
• A typical wooden pencil with a small metal clip
  for shirt-pocket storage
• A plastic pencil (body made of plastic)
• A pencil without an eraser

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Literal Infringement

• Larami Corp v Amron (Ed Pa 1993)
• What is the key claim element? (Why?)
• What does the accused device have instead?
• Why does the court find no infringement as a
  matter of law? (Why isnt this at least a jury
  question?)
• How might TTMP have drafted the claim to cover
  the Supersoaker?

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The Doctrine of Equivalents

• Recall the basic rule of literal infringement
• all elements of the claim must be (identically)
  present in the accused device
• The Doctrine of Equivalents
• Allows elements in an accused device to be
  substantially equivalent and still be present
  for purposes of infringement
• Thus, the basic rule of infringement changes to
• all elements of the claim must be (identically or
  equivalently) present in the accused device

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The Doctrine of Equivalents

• Warner-Jenkinson v Hilton Davis (1997)
• Key limitation a pH of approximately 6.0 to
  9.0
• Accused process pH of 5.0
• The court reaffirms the DOE, though it notes an
  important limit on the doctrine - prosecution
  history estoppel
• Other points
• Intent is not an element of infringement
• Equivalents are not limited to those disclosed in
  the patent itself
• The Court leaves it to the Federal Circuit to
  determine the test

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The Doctrine of Equivalents

• Limits on the DOE
• Prior art limitations Equivalents cannot
  encompass the prior art (Wilson Sporting Goods)
• Prosecution History Estoppel (PHE) (Festo)
• Public Dedication disclosed-but-unclaimed
  subject matter (Johnson Johnston)
• Wilson Sporting Goods
• Suggests a hypothetical claim analysis. (Why?)
  (Is this useful?)
• What if the accused device is obvious in light of
  the prior art?

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The Doctrine of Equivalents

• Prosecution History Estoppel
• Basic rule of PHE cannot assert infringement
  by equivalents over subject matter surrendered
  during prosecution.
• Why have this rule?
• What is the key analytic problem?
• Festo Corp. (2002)
• The Federal Circuit rule amendment no
  equivalents for that element. (Why do you think
  the court did this? Pros?/Cons?)
• The Supreme Court presumption that an
  amendment no equivalents for that element.
  Exceptions
• Where the equivalent technology was
  unforeseeable
• The rationale for the amendment is unrelated to
  the equivalent in question
• Otherwise unreasonable to prevent infringement

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The Doctrine of Equivalents

• Public Dedication
• Johnson Johnston Assocs. (2002) (en banc)
• The claimed invention was a backing sheet of
  aluminum that allowed thin copper sheets to be
  safely handled for semiconductor manufacturing.
• The specification notes that various metals other
  than aluminum (including steel) could be used as
  the backing material.
• A jury found that the steel backing material was
  equivalent to the claimed aluminum

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The Doctrine of Equivalents

• Public Dedication
• Johnson Johnston Assocs. (2002) (en banc)
• Why does the court find no infringement as a
  matter of law?
• Is it correct to say that the patentee has
  dedicated the disclosed-but-unclaimed material to
  the public? (Is this always the case?)
• Doesnt the court appear to suggest that the
  patentee seek examination of even equivalents to
  the claimed invention? Is this consistent with
  the reasoning behind the DOE?
• In what ways can a patentee avoid the holding of
  Johnson Johnston? Are these beneficial?

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• Next Class
• Patents VII
• The Subject Matter of Patents