Doctrine of Equivalents
Intro to IP – Prof Merges
1.31.12
Topics Today
• Doctrine of Equivalents
• Prosecution history estoppel
• Indirect infringement: inducement
Start with the statute
35 U.S.C. § 271 Infringement of patent.
(a) Except as otherwise provided in this title,
whoever without authority makes, uses,
offers to sell, or sells any patented invention,
within the United States, or imports into the
United States any patented invention during
the term of the patent therefor, infringes the
patent.
Equivalents/Literal Claim Scope
Range of
Equivalents
Literal
Claim
Scope
Hughes Satellite – p. 275-78
Hughes Aircraft Co. v. United States, 717 F.2d.
1351, 1362-63 (Fed. Cir. 1983).
• Later developed technology to use onboard
computers to control satellite orientation is
equivalent to receive signals form the
satellite and use the computers on earth to
control the orientation of the satellite)
Hughes VIII 1998
• Because Hughes Aircraft Co. v. United States ,
717 F.2d 1351, 219 USPQ 473 (Fed. Cir. 1983)
( Hughes VII ) satisfies the legal requirements
announced in Warner-Jenkinson , we affirm.
S/E
S/E
S/E
Literal Infringement
Doctrine of Equivalents
Patent
Claim
Elements
•f “means disposed . .
. for receiving . . .
signals
•g “said valve being
coupled to said lastnamed means and
responsive ...
?
S/E
Literal Infringement
Doctrine of Equivalents
Patent
Claim
Elements
•f “means disposed . .
. for receiving . . .
signals
•g “said valve being
coupled to said lastnamed means and
responsive ...
Modest
Inventions
Pioneering
Inventions
Prosecution History Estoppel
• Festo v. SKK Kabushiki, p.
305
Original Claim
Scope
Original Claim
Scope
Narrowed
Scope, after
amendment
X
Accused
product:
ultrapurifica-tion
at 9.5 pH
No
Infringement
under DOE
??
Accused
Product: pH of
5.0 – can
Hilton-Davis
assert
infringement
under DOE?
• United States Patent 4,354,125 Stoll October 12, 1982 Magnetically
coupled arrangement for a driving and a driven member
The invention is concerned with a magnetically coupled arrangement for a
driving and a driven member, which arrangement is operable by a
pressure medium and is used in a conveying system. A slidable piston (16)
within a tube (10) has an arrangement of annular magnets (20) provided
at each end with sealing and sliding members (24, 26). A driven assembly
(18) slidable on the outer surface of the tube (10) has an arrangement of
annular magnets (32) corresponding to the magnets (20) and provided at
each end with a sliding ring (44). The members (24, 26, 44) prevent ingress
of foreign bodies to the magnet locations, and consequently enable the
spacing between the magnets and the tube (10) to be very small. A good
magnetic coupling is achieved resulting in effective transmission of power.
Several pistons (16) abutting one another can be used for conveying heavy
loads.
Inventors: Stoll; Kurt (Lenzhalde 72, D-7300 Esslingen, DE) Appl. No.:
153999Filed: May 28, 1980
Amendments
• Two patents –
–Stoll, 4,354,125
–Carroll, 3,779,401
Prosecution History
• Amendments
• What limitations did patentee add
during prosecution?
• Why were they made?
How amended?
• Claims changed to include a new
limitation: piston assembly must
now include a pair of sealing
rings
Equivalents and Prosecution
History
• P. 283
• “Insubstantial alterations”
• BUT: Cannot “recapture” an insusbtantial
alteration GIVEN UP during prosecution
1st point: “related to patentability”
• Claim amendment for any reason
can give rise to estoppel
• Not just prior art-related reasons
Presumption arising from claim
amendments
• P. 287
2nd Point: The 3-Part Test
• Supreme Court rejects “complete bar”
• Federal Circuit’s new rule reversed and
thrown out
Original
Claim Scope
Original
Claim Scope
Narrowed
Scope,
after
amendment
2nd Point: The 3-Part Test
• P 287
• [1] Unforeseeable equivalents
• [2] Amendment bears “tangential relation” to
equivalent
• [3] “Some other reason” -- ?
Doctrinal Sequence
• FIRST: What is the literal meaning of
the claim language?
• THEN: If the accused product falls
outside that language, is it an
“equivalent” of the claimed invention?
What is the test for equivalence?
• Is the accused product an “insubstantial
alteration” under Warner-Jenkinson and
Festo?
• Even if so, was this trivial variation on the
claim “given up” during patent prosecution;
in which case, equivalents are “estopped”
Equivalents/Literal Claim Scope
Range of
Equivalents
Literal
Claim
Scope
What is a
“baffle”? Is the
tank “thereon”?
Equivalents/Literal Claim Scope
Range of
Equivalents
Is a single sealing
ring equivalent to
“a pair” of them?
Literal
Claim
Scope
Prosecution History Estoppel
1. Warner-Jenkinson: presumption that part of claim
coverage is surrendered when applicant amends
claim
2. Festo case: 3 Ways to beat the presumption
3. Post-Festo developments: “disclosed but not
claimed”/dedicated to the public
“Range of
Equivalents”
Literal
Claim
Scope
Infringement
under DOE ?
Warner-Jenkinson
• DOE Survives challenge
• Presumption in cases of claim amendment:
amendment made for reasons related to
patentability; prosecution history estoppel
applies
 SO: Presumption of no DOE, you are limited to
your literal claim language
Original Claim
Scope
Original Claim
Scope
Narrowed
Scope, after
amendment
Direct vs. Indirect Infringement
• Direct: one party makes, uses, or sells an
entire patented invention – a thing that
meets all the elements of the claim
• Indirect infringement: a party assists another
party in making or using or selling; does
something to further an act of infringement
Various types of indirect
infringement
• Contributory infringement
– Making or selling a thing that someone else adds
to or finishes, to make an infringing embodiment
• Inducement
– Instructing, guiding or directing someone so that
an infringing thing results
§ 271
(b) Whoever actively induces infringement of a
patent shall be liable as an infringer.
(c) Whoever offers to sell or sells within the United
States or imports into the United States a
component of a patented machine. . . constituting
a material part of the invention, knowing the same
to be especially made or especially adapted for use
in an infringement of such patent, and not a staple
article or commodity of commerce suitable for
substantial noninfringing use, shall be liable as a
contributory infringer.
Global-Tech Appliances v. SEB
• Inducement
• 131 S. Ct. 2060 (2011)
Facts
• SEB – French company with innovative deep
fryer technology
• US Patent 4,995,312
• Sunbeam  Pentalpha/Global-Tech
[Outsourced design of competitive product]
Infringement law/strategy
• Why sue a party who is not a direct infringer?
– Business reasons: Don’t offend
customers/distributors
– Foreign bias concerns
• How does inducement/contributory
infringement come into play?
– Must decide under case law whether adding nondirect infringers leaves a viable case
Pentalpha/Global-Tech Product
Clearance Procedure
• Pentalpha did not tell lawyer that it had
copied directly from SEB design
• Attorney failed to find SEB patent in search
prior to issuing opinion letter
• Willful infringement relevance
Infringement theories
• Direct infringement: Pentalpha itself made,
used and perhaps sold some infrginging
copies of the SEB design
• Indirect: Pentalpha induced its contractual
partners/branded buyers (Sunbeam,
Fingerhut, Montgomery-Ward) to use and sell
infringing copies
Inducement standard
• Some level of knowledge (scienter) is
required for indirect infringement
• The specific act of the accused party is
attenuated, not directly listed among the
prohibited menu of activities; so to even out
the analysis some knowledge is required (“I
know my acts will lead you to infringe.”)
Federal Circuit standard
Court should find infringement where
defendant “deliberately disregarded
a known risk that SEB had a
protective patent.”
Conflicting precedent
In Aro II, a majority held that a violator
of § 271(c) must know “that the
combination for which his component
was especially designed was both
patented and infringing,” 377 U.S., at
488, and as we explain below, that
conclusion compels this same
knowledge for liability under §
271(b).
Holding
[W]e agree that deliberate indifference to a
known risk that a patent exists is not the
appropriate standard under § 271(b). We
nevertheless affirm the judgment of the
Court of Appeals because the evidence in
this case was plainly sufficient to support a
finding of Pentalpha’s knowledge under
the doctrine of willful blindness.