Infringement & the Doctrine of Equivalents II

Infringement & the Doctrine of Infringement & the Doctrine of Equivalents IIEquivalents II

Class Notes: March 4, 2003Class Notes: March 4, 2003

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

Professor WagnerProfessor Wagner

03/04/0303/04/03 22Law 677 | Spring 2003Law 677 | Spring 2003

Today’s AgendaToday’s Agenda

1.1. The All-Elements-RuleThe All-Elements-Rule

2.2. The DOE and Means-Plus-Function The DOE and Means-Plus-Function

ClaimsClaims


Review: Review: Warner-JenkinsonWarner-Jenkinson, n.8, n.8

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


All-Elements RuleAll-Elements Rule

Basics of the All-Elements RuleBasics of the All-Elements Rule

1. A chair comprising,a seatat least three legsa back

1. For literal infringement, all elements must be present.

2. For DOE infringement, all elements must be present…though they need only be present “equivalently”


All-Elements RuleAll-Elements RuleBasics of the All-Elements RuleBasics of the All-Elements Rule

1. A chair comprising,a seatat least three legsa back

For DOE infringement, all elements must be present…For DOE infringement, all elements must be present…though they need only be present “equivalently”.though 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.


The All-Elements RuleThe All-Elements RuleDolly v Spaulding & Dolly v Spaulding &

EvenfloEvenflo (Fed. Cir. 1994) (Fed. Cir. 1994) (Rader)(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?


The All-Elements RuleThe All-Elements RuleWeiner v NEC ElectronicsWeiner v NEC Electronics (Fed. Cir. 1996) (Rader) (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 ProductsSage Products (Fed. Cir. 1997) (Rader) (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 What is the rule of Dolly/Weiner/SageDolly/Weiner/Sage? ?

Note Note EthiconEthicon, on page 7-8, ‘limits’ , on page 7-8, ‘limits’ D/W/SD/W/S to their facts. to their facts. (What does this mean? Is this helpful? Now what?)(What does this mean? Is this helpful? Now what?)


The All-Elements RuleThe All-Elements Rule

Considering the Vitiation ApproachConsidering the Vitiation Approach

1. 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 Device A: same system, except bolt is 2.5 inches long.inches long.

• Device B: same system, except the insert is corkDevice B: same system, except the insert is cork

Do the differences above “vitiate” the element? Do the differences above “vitiate” the element?

Or are they “equivalent” to the element?Or are they “equivalent” to the element?


The All-Elements RuleThe All-Elements RuleConsidering Vitiation, continued…Considering Vitiation, continued…

Which of these claims has more Which of these claims has more elements/limitations?elements/limitations?

Which is easier to avoid for infringement Which is easier to avoid for infringement purposes?purposes?

1. A fastening system 1. A fastening system

comprising:comprising:

a two-inch long bolt

a corresponding nut with five

angled sides

1.1. A fastening system A fastening system

comprising:comprising:

a bolt,a bolt,

said bolt being two inches in

length, and

a corresponding nut,

said nut having five angled

sides


The DOE and Means-Plus-Function The DOE and Means-Plus-Function ClaimsClaims

35 USC § 112 ¶ 635 USC § 112 ¶ 6An element in a claim for a combination may be An element in a claim for a combination may be expressed as a means or step for performing a expressed as a means or step for performing a specified function without the recital of structure, specified function without the recital of structure, material, or acts in support thereof, and material, or acts in support thereof, and such claim such claim shall be construed to cover the corresponding shall be construed to cover the corresponding structure, material, or acts described in the structure, material, or acts described in the specification and specification and equivalentsequivalents thereof. thereof.

1.1. What does ‘literal’ (statutory) infringement of What does ‘literal’ (statutory) infringement of a MPF claim element look like?a MPF claim element look like?

2.2. What does DOE infringement look like?What does DOE infringement look like?



Chiuminatta Concrete ConceptsChiuminatta Concrete Concepts (Fed. Cir. 1998) (Fed. Cir. 1998) (Lourie)(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”?



ChiuminattaChiuminatta, continued…, continued…• Does the accused device (wheels) infringe

literally? Under DOE?• How does Chiuminatta distinguish between

112 ¶ 6 equivalents and DOE equivalents?

Type of Infringement Coverage Why it fails

Literal skid plates wheels ≠ skid plates

112 ¶ 6 equivalents equivalents of skid plates wheels are not“insubstantially” differentfrom skid plates

DOE equivalents after-arising technologythat is e quivalent to skidplates

wheels are not “afterarising” technology.



Odetics v Storage TechnologyOdetics v Storage Technology (Fed. (Fed. Cir. 1999)Cir. 1999)• Claim element: ‘rotary means,

rotably mounted…’• What is the corresponding

structure?

‘‘151 Patent151 Patent Accused Accused DeviceDevice

BinsBins Bins Bins

Axis of RotationAxis of Rotation Axis of Axis of RotationRotation

GearGear Pins Pins

A jury found infringement. Why did A jury found infringement. Why did the district court enter JMOL?the district court enter JMOL?



OdeticsOdetics, continued…, continued…• How does Odetics distinguish between 112 ¶

6 and DOE equivalents?• Recall the test:

o Equivalent functiono Equivalent wayo Equivalent result

• What ‘function’ does a 112 ¶ 6 element perform? (Literally? Equivalently?)

• Why not consider equivalence on a component-by-component basis?



The Chiuminatta and Odetics ApproachesThe Chiuminatta and Odetics Approaches

Type of Infringement Coverage: Chiuminatta Coverage: Odetics

Literal Structural/functionalidentity

Structural/functionalidentity

112 ¶ equivalents pre-existing structuralequivalents

structure with identical“function”, equivalent “way”and “result”

DOE equivalents after-arising structuralequivalents

structure with equivalent“function”, “way”, and“result”


Next ClassNext Class

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

Prosecution History Estoppel Prosecution History Estoppel

Prior Art Limits on DOE Prior Art Limits on DOE

Reverse DOE Reverse DOE

Infringement & the Doctrine of Equivalents II

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