Infringement & the Doctrine of Equivalents III

Infringement & the Doctrine of Infringement & the Doctrine of Equivalents IIIEquivalents III

Class Notes: March 6, 2003Class Notes: March 6, 2003

Law 677 | Patent Law | Spring 2003Law 677 | Patent Law | Spring 2003

Professor WagnerProfessor Wagner

03/06/0303/06/03 22Law 677 | Spring 2003Law 677 | Spring 2003

Today’s AgendaToday’s Agenda

1.1. Prosecution History EstoppelProsecution History Estoppel

2.2. Prior Art Limits on DOEPrior Art Limits on DOE

3.3. Reverse DOEReverse DOE


Prosecution History EstoppelProsecution History EstoppelPHE IllustrationPHE Illustration

• Patent ‘123 discloses a lighting system, using colored bulbs; Patent ‘123 discloses a lighting system, using colored bulbs; a blue color is given as an examplea blue color is given as an example

• The prior art contains very similar systems, including those The prior art contains very similar systems, including those using red colored bulbsusing red colored bulbs

Scenario 1:Scenario 1: Scenario 2: Scenario 2: Original claim:Original claim: Original claim:Original claim:

A lighting system comprising:A lighting system comprising: A lighting system A lighting system comprising:comprising:

… … a colored bulb …a colored bulb … … a blue light bulb … … a blue light bulb …

Amended claim:Amended claim:

A lighting system comprising:A lighting system comprising:

… … a blue light bulb …a blue light bulb …


Prosecution History EstoppelProsecution History Estoppel

Scenario 1:Scenario 1: Scenario 2: Scenario 2: Original claim:Original claim: Original claim:Original claim:

A lighting system comprising:A lighting system comprising: A lighting system A lighting system comprising:comprising:… … a colored bulb …a colored bulb … … a blue light bulb … … a blue light bulb …

Amended claim:Amended claim:A lighting system comprising:A lighting system comprising:… … a blue light bulb …a blue light bulb …

Which of the following are covered (in each scenario) (and, Which of the following are covered (in each scenario) (and, why?):why?):• Systems with blue bulbs• Systems with red bulbs• Systems with green bulbs



Festo (USSC 2002):Festo (USSC 2002):• How does the court describe the theory How does the court describe the theory

of PHE? What is the goal of the doctrine?of PHE? What is the goal of the doctrine?• To what sort of amendments does PHE To what sort of amendments does PHE

apply? (Why?)apply? (Why?)• When PHE applies, how much of the claim When PHE applies, how much of the claim

scope is surrendered?scope is surrendered?• A ‘presumption’ of complete surrender…• But, cases where surrender is inappropriate:

o ‘Unforeseeable’ equivalento ‘Tangential’ rationale for amendmento Other ‘unreasonable’ cases



FestoFesto, continued …, continued …• Do you agree with the court that: “the nature of

language makes it impossible to capture the essence of a thing in a patent application”? (p. 10)

• And, do you agree that amended language is unlikely to be any better? (p. 17)

• Is PHE really about the scope of patents (and the tension between DOE and notice)? Consider:o Who bears the risk/burden/cost of ‘uncertain’

language?o What are the incentives that PHE (can) provide?o Did the court miss its chance?


Recap: Limits on the DOERecap: Limits on the DOE

Following Footnote 8…Following Footnote 8…

1.1. The All-Elements RuleThe All-Elements Rule

2.2. Prosecution History EstoppelProsecution History Estoppel

3.3. Prior art Limitations on DOEPrior art Limitations on DOE


Prior Art Limits on DOEPrior Art Limits on DOE

IllustrationIllustration

Original claimOriginal claimA fastening system comprising:

A square-headed, stainless steel bolt; andA corresponding nut.

The Prior ArtThe Prior ArtBrass hex-headed bolts and nuts.

Can you (should you?) get DOE coverage of:Can you (should you?) get DOE coverage of:• Brass, hex headed bolts/nuts• Brass, square-headed bolts/nuts


Prior Art Limits on DOEPrior Art Limits on DOEWilson Sporting Goods (Fed Cir Wilson Sporting Goods (Fed Cir

1990)1990)

WSG invention: golf ball WSG invention: golf ball dimple pattern requiring six dimple pattern requiring six ‘great circle’ paths without ‘great circle’ paths without any intersectionany intersection

Prior art: patterns with six Prior art: patterns with six great circle paths, with at great circle paths, with at least one (and as many as 30 least one (and as many as 30 or more) intersectionsor more) intersections

Accused device: six great Accused device: six great circles, with 60 intersections circles, with 60 intersections



Wilson Sporting Goods, continued …Wilson Sporting Goods, continued …• Why can there be no infringement, as a Why can there be no infringement, as a

matter of law, under DOE?matter of law, under DOE?• Court: “a patentee should not be able to obtain,

under the DOE, coverage which he could not lawfully have obtained from the PTO by literal claims.”

• But the Court notes the accused golf balls were not in the public domain -- they differ from the prior art

• So is the court’s conception broader than it suggests? (How?)



Wilson Sporting Goods, continued …Wilson Sporting Goods, continued …• Hypothetical Claim Analysis• Develop a hypothetical claim, similar to

patent claim, but that covers the accused device

• If the hypothetical claim is unpatentable, then no DOE infringement

• Why might this be a better analytic process?


The Reverse Doctrine of The Reverse Doctrine of EquivalentsEquivalents

Westinghouse:Westinghouse: even if literal infringement is found, if the even if literal infringement is found, if the accused device is “so far changed from the accused device is “so far changed from the principle of the device” so that the literal claims principle of the device” so that the literal claims do not represent “the actual invention,” then do not represent “the actual invention,” then there will be no infringement. there will be no infringement. (The “reverse (The “reverse doctrine of equivalents”.)doctrine of equivalents”.)

• But … If you propose a claim construction that doesn’t represent your actual invention, what should happen?o Do we need the rDOE?

• Note: the Federal Circuit has never found rDOE


Next ClassNext Class

Infringement & the Doctrine of Infringement & the Doctrine of Equivalents IV Equivalents IV Class Exercise Class Exercise

Infringement & the Doctrine of Equivalents III

Documents

lighting system

patent law spring

blue light bulb law

examplethe prior art

claim scope

intersectionprior art

blue bulbssystems

intersections law