Patents VIPatents VIInfringement & the Doctrine of Infringement & the Doctrine of

EquivalentsEquivalents

Class 16 NotesClass 16 Notes

Law 507 | Intellectual Property | Spring 2004Law 507 | Intellectual Property | Spring 2004Professor WagnerProfessor Wagner

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Today’s AgendaToday’s Agenda

1. Literal Infringement

2. The Doctrine of Equivalents

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The Basics of InfringementThe Basics of Infringement

1.1. The patent right: the right to exclude The patent right: the right to exclude others from . . .others from . . .• Making• Using• Selling• Offering to sell• Importing

2.2. Categories of InfringementCategories of Infringementa) Direct Infringementb) Indirect Infringement (direct + assistance)

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The Basics of Infringement (2)The Basics of Infringement (2)1.1. Forms of Direct InfringementForms of Direct Infringement

a) Literal infringementb) Infringement via the Doctrine of Equivalents

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Literal InfringementLiteral InfringementBasic rules of 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 . . .Consider this claim . . .

1. A writing implement comprising:a) A wooden cylinder with a hollow coreb) A cylinder of graphite in said hollow corec) A small cylinder of eraser material attached to one end of the

wooden cylinder

Which of the following infringes the claim?Which of the following infringes the claim?1. A typical wooden pencil with a small metal clip for shirt-pocket

storage2. A plastic pencil (body made of plastic)3. A pencil without an eraser

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Literal InfringementLiteral Infringement

Larami Corp v AmronLarami Corp v Amron (Ed Pa 1993) (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 isn’t this at least a jury question?)

• How might TTMP have drafted the claim to cover the Supersoaker?

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The Doctrine of EquivalentsThe Doctrine of Equivalents

Recall: the basic rule of literal infringement: Recall: the basic rule of literal infringement: • all elements of the claim must be (identically)

present in the accused device

The Doctrine of Equivalents: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:o all elements of the claim must be (identically

or equivalently) present in the accused device

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The Doctrine of EquivalentsThe Doctrine of Equivalents

Warner-Jenkinson v Hilton Davis (1997)Warner-Jenkinson v Hilton Davis (1997)o Key limitation: “a pH of approximately 6.0 to 9.0”o Accused process: pH of 5.0

The court reaffirms the DOE, though it notes The court reaffirms the DOE, though it notes an important limit on the doctrine –- an important limit on the doctrine –- prosecution history estoppelprosecution history estoppel

Other points: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 EquivalentsThe Doctrine of Equivalents

Limits on the DOE:Limits on the DOE:1. Prior art limitations: Equivalents cannot

encompass the prior art (Wilson Sporting Goods)

2. Prosecution History Estoppel (PHE) (Festo)3. Public Dedication: disclosed-but-unclaimed

subject matter (Johnson & Johnston)

Wilson Sporting Goods:Wilson Sporting Goods:1. Suggests a ‘hypothetical claim’ analysis.

(Why?) (Is this useful?)2. What if the accused device is obvious in

light of the prior art?

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The Doctrine of EquivalentsThe Doctrine of EquivalentsProsecution History EstoppelProsecution History Estoppel

Basic rule of PHE: cannot assert infringement Basic rule of PHE: cannot assert infringement by equivalents over subject matter by equivalents over subject matter ‘surrendered’ during prosecution.‘surrendered’ during prosecution.• Why have this rule?• What is the key analytic problem?

Festo Corp. (2002)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:o Where the ‘equivalent’ technology was ‘unforeseeableo The rationale for the amendment is unrelated to the equivalent in

questiono Otherwise ‘unreasonable’ to prevent infringement

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The Doctrine of EquivalentsThe Doctrine of Equivalents

Public DedicationPublic Dedication

Johnson & Johnston Assocs.Johnson & Johnston Assocs. (2002) (en (2002) (en banc)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 EquivalentsThe Doctrine of Equivalents

Public DedicationPublic Dedication

Johnson & Johnston Assocs.Johnson & Johnston Assocs. (2002) (en banc) (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?)

• Doesn’t 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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Patents VIIPatents VIIThe Subject Matter of PatentsThe Subject Matter of Patents