RECENT DEVELOPMENTS IN DOCTRINE OF EQUIVALENTS

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RECENT DEVELOPMENTS IN DOCTRINE OF EQUIVALENTS

• Benjamin C. Hsing
• Oct. 17, 2006

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Limitations on Doctrine of Equivalents

• All limitations rule
• Disclosure-dedication rule
• Specification disavowal
• Prosecution history estoppel

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All Limitations Rule

• Equivalence must determined on a limitation by
  limitation basis.
• DOE does not apply if applying the doctrine
  would vitiate an entire limitation.
• Totality of the circumstances
• whether the alleged equivalent can be
  characterized as an insubstantial change from the
  claimed subject matter without rendering the
  pertinent limitation meaningless.

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All Limitations Rule

• Convex ? concave. Bicon, Inc. v. Straumann Co.,
  441 F. 3d 945, 955 (Fed. Cir. 2006)
• Opening ? no opening. Panduit Corp. v.
  Hellermanntyton Corp., 451 F. 3d 819, 830 (Fed.
  Cir. 2006)
• Mounted ? unmounted. Asyst Tech., Inc. v. Emtrak,
  Inc., 402 F.3d 1188, 1195 (Fed. Cir. 2005)
• Plate dome. Primos, Inc. v. Hunters
  Specialties, Inc., 451 F.3d 841, 850 (Fed. Cir.
  2006)
• Saccharides microcrystalline cellulose. Pfizer,
  Inc. v. Teva Pharm., 429 F.3d 1364, 1380 (Fed.
  Cir. 2005)

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Disclosure-Dedication Rule

• Bars application of DOE to capture subject matter
  that is disclosed, but unclaimed.
• Disclosure must be of such specificity that one
  of ordinary skill could identify the subject
  matter that had been disclosed and not claimed.
• Unclaimed subject matter must have been
  identified by the patentee as an alternative to a
  claim limitation. Pfizer, 429 F.3d at 1379 (we
  are not convinced that one of ordinary skill in
  the art would come to the conclusion that the
  inventors have identified microcrystalline
  cellulose in that formulation as an alternative
  to a saccharide that prevent hydrolysis.).

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Specification Disavowal

• Bars application of DOE when the specification
  specifically identified, criticized, and
  disclaimed the alleged equivalent. See Gaus v.
  Conair Corp., 363 F.3d 1284,1291 (Fed. Cir.
  2004).
• Where the general summary or description of the
  invention describes a feature of the invention
  and criticizes other products that lack that same
  feature, this operates as a clear disavowal of
  these other products. Astrazeneca AB v. Mutual
  Pharm., 384 F.3d 1333, 1340 (Fed. Cir. 2004).

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Prosecution History Estoppel

• Amendment-based estoppel
• Argument-based estoppel

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Amendment-Based Estoppel

• Narrowing amendment made for patentability
  reasons creates a presumption that all territory
  between the original claim limitation and the
  amended claim limitation is surrendered.
• Patentee can rebut the presumption by showing
• Equivalent unforeseeable.
• Equivalent tangentially related to amendment.
• Some other reason of no reasonable expectation of
  equivalent.

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Amendment-Based Estoppel

• Adding length was not a narrowing amendment.
  Primos, 451 F.3d at 849 (every physical object
  has a length).
• Correction of an inadvertent omission not a
  narrowing amendment relating to patentability.
  Conoco, Inc. v. Energy Environmental Intl, 460
  F.3d 1349, 1364 (Fed. Cir. 2006).
• Equivalent foreseeable since patentee knew of of
  the equivalent at the time of the amendment.
  Amgen, Inc. v. Hoechst Marion Roussel, Inc., 457
  F.3d 1293, 1313 (Fed. Cir. 2006).
• 165 AA equivalent not tangential when limiting
  claim to 166 AA was central to distinguishing
  prior art. Amgen, 457 F.3d at 1314-15.

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Argument-Based Estoppel

• Applicant must clearly and unmistakably surrender
  subject matter by arguments made to the examiner.
• Unlike amendment-based estoppel, there is no
  presumption of surrendering an entire field of
  equivalents.
• Argument clearly disavowing metal stearates as
  equivalent to fatty acid wax not a clear
  surrender of all fatty acid wax equivalents.
  Conoco, 460 F.3d at 1364.