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The Doctrine of Equivalents
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On May
28, 2002, a unanimous United States Supreme Court issued its decision
in the much anticipated case of Festo
Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., LTD.
The Supreme Court vacated and remanded the case, reaffirmed Warner
Jenkinson, and perhaps most importantly the Court
rejected the complete-bar approach to the doctrine of
equivalents adopted by the Federal Circuit in all cases where
amendments are made during prosecution of the patent. The
Court did, however, place upon the patentee "the burden of
showing that the amendment does not surrender the particular
equivalent in question." For more information on the Supreme
Court decision in Festo CLICK
HERE.
On September 26, 2003, the Federal Circuit issued the follow up
opinion in Festo
Corp. v. Shoketsu Kinzoku Kogyo Kabushiki (Fed. Cir., 2003)
- On remand from the US Supreme Court, the sole issue before the
Federal Circuit was whether Festo can rebut the presumption that the
filing of narrowing amendments for the two patents in suit
surrendered all subject matter between the original claim limitations
and the amended claim limitations. The Federal Circuit concluded that
Festo cannot overcome that presumption by demonstrating that the
rationale underlying the narrowing amendments bore no more than a
tangential relation to the accused equivalents or by demonstrating
that there was "some other reason" such that the patentee
could not reasonably have been expected to have described the accused
equivalents. However, the Federal Circuit did remand to the district
court in order for the district court to determine whether Festo can
rebut the presumption of surrender by establishing that the
equivalents in question would have been unforeseeable to one of
ordinary skill in the art at the time of the amendments.
More recently, however, in Honeywell
International Inc. v. Sundstrand Corp., 2004 U.S. App. LEXIS
10754 (Fed. Cir., June 2, 2004), the Federal Circuit seems to have
all but killed any claim for equivalent infringement for the
foreseeable future. In a very disappointing (and intellecutally
dishonest) decision, the Federal Circuit, sitting en banc, held that
the rewriting of dependent claims into independent form coupled with
the cancellation of the original independent claims creates a
presumption of prosecution history estoppel. |
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Doctrine of Equivalents Basics
A party who fails to prove literal infringement claim may prove
infringement under the doctrine of equivalents when the differences
between the claimed invention and the accused device are
insubstantial. Pall Corp. v. Micron Separations, Inc., 66 F.3d
1211, 1218 (Fed.Cir.1995), cert. denied, --- U.S. ----, 117 S.Ct.
1243, 137 L.Ed.2d 326 (1997). The Supreme Court has emphasized that
the focus of the analysis under this doctrine must be on each
separate element of the invention, rather than on the invention as a
whole. Warner-Jenkinson
Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 117 S.Ct.
1040, 137 L.Ed.2d 146 (1997). The Court stated:
Each element contained in a patent claim is deemed material to
defining the scope of the patented invention, and thus the doctrine
must be applied to individual elements of the claim, not to the
invention as a whole. It is important to ensure that the application
of the doctrine, even as to an individual element, is not allowed
such broad play as to effectively eliminate that element in its entirety.
Id. at 1049.
Elaborating on the Doctrine of Equivalents
Below is an excerpt from Festo
Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234
F.3d 558, 564-565 (Fed. Cir. 2000), which has since been vacated by
the United States Supreme Court. In vacating and remanding the case,
the US Supreme Court specifically rejected the complete-bar approach
to amendments and the doctrine of equivalents adopted by the Federal
Circuit. Nevertheless, the below excerpt does adequately, succinctly
and quite correctly state the general law applicable to the doctrine
of equivalents. In Festo the majority decision of
the Federal Circuit explained:
The doctrine of equivalents prevents an accused infringer from
avoiding liability for infringement by changing only minor or
insubstantial details of a claimed invention while retaining the
invention's essential identity. Graver
Tank Mfg Co. v. Linde Air Products Co., 339 U.S. 605, 608
(1950). The doctrine of equivalents is utilized "'[t]o temper
unsparing logic and prevent an infringer from stealing the benefit of
the invention.'" Id. (quoting Royal Typewriter Co. v.
Remington Rand, Inc., 168 F.2d 691, 692, 77 USPQ 517, 518 (2d
Cir. 1948) (Hand, J.)). In pursuing these goals, the doctrine
attempts to strike a balance between ensuring that the patentee
enjoys the full benefit of his patent and ensuring that the claims
give "fair notice" of the patent's scope. London v.
Carson Pirie Scott & Co., 946 F.2d 1534, 1538, 20 USPQ2d
1456, 1458-59 (Fed. Cir. 1991). This balance can be easily upset,
however, because "the doctrine of equivalents, when applied
broadly, conflicts with the definitional and public-notice functions
of the statutory claiming requirement." Warner
Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S.
17, 29 (1997).
Prosecution history estoppel is one tool that prevents the doctrine
of equivalents from vitiating the notice function of claims. Charles
Greiner & Co. v. Mari-Med Mfg., Inc., 962 F.2d 1031, 1036,
22 USPQ2d 1526, 1529-30 (Fed. Cir. 1992). Actions by the patentee,
including claim amendments and arguments made before the Patent
Office, may give rise to prosecution history estoppel. Pharmacia
& Upjohn Co. v. Mylan Pharms., Inc., 170 F.3d 1373, 1376-77,
50 USPQ2d 1033, 1036 (Fed. Cir. 1999). "Prosecution history
estoppel precludes a patentee from obtaining under the doctrine of
equivalents coverage of subject matter that has been relinquished
during the prosecution of its patent application." Id. at 1376,
50 USPQ2d at 1036. Therefore, "[t]he doctrine of
equivalents is subservient to . . . [prosecution history]
estoppel." Autogiro Co. v. United States, 384 F.2d 391,
400-01, 155 USPQ 697, 705 (Ct. Cl. 1967). The logic of prosecution
history estoppel is that the patentee, during prosecution, has
created a record that fairly notifies the public that the patentee
has surrendered the right to claim particular matter as within the
reach of the patent.
The Reverse Doctrine of Equivalents
"[W]here a device is so far changed in principle from a patented
article that it performs the same or a similar function in a
substantially different way, but nevertheless falls within the
literal words of the claim, the doctrine of equivalents may be used
[in reverse] to restrict the claim and defeat the patentee's action
for infringement." Graver
Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605,
608-09, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950)) (alteration in
original); see also Boyden
Power-Brake Co. v. Westinghouse, 170 U.S. 537, 568, 18 S.Ct.
707, 722, 42 L.Ed. 1136 (1898) ("The patentee may bring the
defendant within the letter of his claims, but if the latter has so
far changed the principle of the device that the claims of the
patent, literally construed, have ceased to represent his actual
invention, he is as little subject to be adjudged an infringer as one
who has violated the letter of a statute has to be convicted, when he
has done nothing in conflict with its spirit and intent.").
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