Infringement II
Brandon Baum
James Pistorino
February 19, 2015
Literal Infringement of a Means Plus Function Limitation
What is a means plus function limitation?
Means plus function – 112(f)
“An element in a claim for a combination may be expressed as a means or step for performing a
specified function without the recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure, material or acts described in the
specification and equivalents thereof.” 35 USC §112(f)
112(f) allows claim elements written in form “means for doing X,” where “doing X” is the
function.
Can also be written as “a step for doing X” in a method claim.
Means plus function limitations
E.g.: One way to claim a stool is to recite (1) a planar surface, (2) three legs, and (3) nails
securing the legs to the planar surface.
Using 112(f), the claim could instead recite (1) a planar surface, and (2) three legs, and (3) means
for fastening said legs to the planar surface.
Means plus function limitations
Identify the function (usually a verb)
Identify the corresponding structure in the specification.
Anything identified in the patent specification for performing the function described in the
limitation.
Examples of 112(f) -- means plus function
An apparatus for sitting, comprising: (1) a planar surface, and (2) three legs, and (3) means for
fastening said legs to the planar surface.
Function = fastening the legs to the planar surface
Corresponding structure = ???
What are “fastening means”?
Literal infringement under 112(f)
In order to prove that a structure in the accused product is equivalent to the structure in the
patent, the Plaintiff must show that a person of ordinary skill in the field would have considered
that the differences between the structure described in the patent and the structure in the accused
product are not substantial. The patent holder must also show that the structure was available on
the date the patent was granted.
[N.D. Cal. Model Instruction 3.5]
Means plus function limitations
Once you’ve identified the function and the corresponding structure, is the structure in the
accused device the same as the one “described in the specification” or an “equivalent[] thereof”?
To be “equivalent thereof” it must perform the identical function recited in the claim in
substantially the same way to achieve substantially the same result.
If it does, it literally meets the limitation.
Kinetic Concepts v. Blue Sky Medical
“vacuum means for creating a negative pressure between about 0.1 and 0.99 atmospheres on the
area of skin including and surrounding the wound;”
Identify the function (usually a verb)
Identify the corresponding structure in the specification.
Trial judge instructs the jury that to find this limitation present in the accused product, the
vacuum means must be (1) the same as or (2) equivalent to the structure I have identified, which
is a suction pump and a flexible hose.
“Vacuum Means”
Indirect infringement
Not insurmountable but requires an extra layer of proof
Surrounding facts become more important – knowledge and intent shown by marketing, emails,
actions, common sense
Defendants often take absurd positions to avoid knowledge/intent
‘We don’t know how our customers use our products. We don’t care what they do with them.’
Hilton-Davis
Claim: “at a pH from approx. 6.0 to 9.0”
Accused infringer: about 5.0 pH
DOE (Doctrine of Equivalents)
“A part/step of a product/method is equivalent to a requirement of an asserted claim if a person
of ordinary skill in the field would think that the differences between the part/step and the
requirement were not substantial as of the time of the alleged infringement.
One way to decide whether any difference between a requirement of an asserted claim and a
part/step of the product/method is not substantial is to consider whether, as of the time of the
alleged infringement, the part/step of the product/method performed substantially the same
function, in substantially the same way, to achieve substantially the same result as the
requirement in the patent claim.
N.D. Cal. Model Jury Instruction 3.4
Referred to as the “insubstantial differences” test.
Also, the function/way/result test (although remember it is substantially the same
function/way/result).
Doctrine of Equivalents
Applied to each limitation rather than to the claim as a whole
Measured at the time of the alleged infringement
Fact question (for jury) (but see Prosecution History Estoppel)
Quick digression
Why do we care whether something is a fact question
When issues must be decided by a jury, it is much harder to obtain summary judgment on that
issue
All you need to get the case to the jury is a dispute of fact – testimony one way and the other
uncertainty of jury decision-making puts added pressure on parties [often defendants] to settle
Jury questions more amenable to themes
Defendants seek to avoid honoring those whose ideas they profit from
Plaintiffs are seeking to stretch these claims far beyond what they had in mind when they filed
for their patent
Proving DOE
Typically shown by expert opinion
Expert opines that device performs substantially same function/way/result as the non-portable.
E.g., “In my opinion, a vacuum of .075 performs substantially the same function/way/result as
the claimed vacuum for creating pressure between about 0.1 and 0.99 atm.”
Proving DOE
But experts often give short shrift to DOE analysis, offering conclusory statements that the
accused structure is “the same as, or at least insubstantially different than, the claim limitation.”
Unsupported DOE opinion is often rejected by trial courts or on appeal
Up to the litigators to provide the expert with facts to support DOE opinion
Proving DOE
Statements in articles and treatises that the accused structure may be used in lieu of the claimed
structure.
Prior art statements of interchangeability.
Defendant’s patents/apps may contain statements that suggest other parts may be used as
substitutes without departing from the invention
Obtain admissions in deposition regarding the function/way/result of the accused structure.
What is the function of your vacuum?
Does it result in improved healing?
In what way does it improve healing?
Disproving DOE
Expert testimony that differences between accused structure and claim are ‘substantial’
Expert will typically focus on “way” of function/way/result test.
Look for articles and treatises treating the “way” as different and distinct.
I.e., “another way to fasten two wooden pieces is to use a screw.”
Arguments during prosecution that the ‘way’ claimed in the patent is sufficiently different to be
patentable over the prior art
Prosecution History Estoppel (PHE)
PHE prevents patentee from arguing one thing to obtain allowance of the patent and another to
prove infringement.
Can be based on
Amendments
Dialogue with examiner
PHE – Generally
E.g., in prosecuting the stool patent, the patentee distinguishes a prior art chair patent because in
that patent the legs were attached with screws.
In litigation, the patentee argues that the accused stool, which uses screws, nevertheless meets
the claim limitation requiring fasteners under the DOE.
Barred by PHE?
Festo generally
In Festo Corp. v. Shoketsu Kinzoku Kabushiki Co., 535 U.S. 722 (2002), the Supreme Court
adopted a rebuttable presumption that amendments made to narrow a claim limitation foreclose
later stretching of that limitation to reach an accused technology under the doctrine of
equivalents.
The Festo presumption
If 1) a narrowing amendment;
2) made for a substantial reason¹ related to patentability, then
amended claim limitation.
¹ Where no reason given, it is presumed to be related to patentability.
Rebutting a Festo presumption
1) The patentee may demonstrate that “the alleged equivalent would have been unforeseeable at
the time of the narrowing amendment.”
2) The patentee may demonstrate that “the rationale underlying the narrowing amendment bore
no more than a tangential relation to the equivalent in question.”
3) There may be “some other reason” suggesting that the patentee could not reasonably have
been expected to have described the alleged equivalent.
Proving Prosecution History Estoppel
Prepare an “evolution of the claims” which shows how claims appeared in original application
and how they “evolved” into the issued claims
Prepare a patent prosecution timeline
Depose patent prosecutor
Patentee’s Proof
The inventor
The defendant (technical)
The accused device
Claim elements
Evidence of copying
The technical expert
More defendant (damages)
The damages expert
Willfulness
Defendant’s Proof
Independent development witnesses
Timeline, witnesses, cost
The accused device
Patentee’s device vs. accused device
Accused device vs. figures
The missing element
The technical expert
The damages expert
Innocent infringement (no willfulness)
Lawsuit was a complete surprise
Proving your case
Remember that admissions by your opponent are the icing on your cake.
Admissions can eliminate disputes over your position
Experts likely to admit legal principles because they must be knowledgeable about the law
E.g., Plaintiff may ask opposing expert to admit that direct infringement does not require
knowledge of the patent.
E.g., Defendant may seek to have opposing expert to agree that if Defendant practicing what is in
prior art, it does not infringe.
Opponent’s refusal to admit the obvious will undermine their credibility
Infringement: Presenting your proof
Ask witnesses to work with and display devices, models, or mock-ups of infringing
instrumentality
Intersperse infringer’s own documents, brochures, sales videos to demonstrate each element
Bolster each element with excerpts of testimony of defendant’s witnesses
Finish with expert to confirm infringement