Doctrine Of Equivalence

Doctrine of Equivalents Hasit Seth This communication is not legal advice and is not intended to form or solicit an attorney-client relationship. Spec PHOSITA Judge Obviousness Jury Damages Claims Experts

Introductions
Hasit Seth
.edu = B.Sc. (Computer Science), LL.B., LL.M (Mumbai Uni, Gold Medal), LL.M. (Franklin Pierce Law Center)
Member of the New York bar and Maharashtra and Goa Bar
Asia Patent Manager with a Fortune 200 US MNC in manufacturing
Web: www.indyvation.com
Hasits at gmail dot com

US Patent Law
Patent Infringement

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.
Patent Infringement The Basic Law – 35 U.S.C. §271 © Hasit Seth, 2006

Knowledge of Patented Invention is Not Required
Intent of Infringement is Not Required
Patent Infringement © Hasit Seth, 2006 What 35 U.S.C. Does Not Require

Basics
Patent Infringement © Hasit Seth, 2006

Facts:
Plaintiff sued the United States for infringing 16 patents on helicopter technology.
Trial court: Held that 15 patents are valid and infringed
Appeal Court: Upheld infringement of 11 patents
Patent Infringement © Hasit Seth, 2006 AUTOGIRO Co. of America v. United States

Case summarizes many basics:
Patent Act of 1952 first codified infringement in the statute .
“ The claims …provide the concise formal definition of the invention”
“ No matter how great the temptations of fairness or policy making, courts do not rework the claims. THEY ONLY INTERPRET THEM.” (emphasis added)
“ Although courts are CONFINED BY THE LANGUAGE of the CLAIMS, THEY ARE NOT…CONFINED TO THE LANGUAGE of the CLAIMS in INTERPRETING THEIR MEANING ” (emphasis added)
Patent Infringement © Hasit Seth, 2006 AUTOGIRO Co. of America v. United States 384 F.2d 391 (1967) §112: “…one or more claims particularly pointing out and distinctly claiming the subject matter… invention”

Case summarizes many basics… (contd.)
“ Things are not made for the sake of words, but words for the sake of things. To overcome this lag, patent law allows the inventor to be his own lexicographer ”
Patent Infringement © Hasit Seth, 2006 AUTOGIRO Co. of America v. United States 384 F.2d 391 (1967)

All elements of the claim should read on the accused device, either literally or through equivalence
Patent Infringement © Hasit Seth, 2006 All Elements Rule

Two Step Process
Determine the meaning of the Claim
Read the claims on the accused structure
Patent Infringement © Hasit Seth, 2006 Source: AUTOGIRO Co. of America v. United States 384 F.2d 391 (1967)

Two Step Process
Determine the meaning of the Claim
To derive the meaning of the claim and to reach the “ felt meaning ” of the claim three documents are used:
Specification (includes claims)
Drawings
File Wrapper (a.k.a. Prosecution History)

Two Step Process
Read the claims on the accused structure
Literal Infringement
Doctrine of Equivalence

Claim should read literally on the accused structure
Claim 1.A writing device comprising:
an enclosure for holding a marker; and
a curved clip attached to the enclosure.
Patent Infringement © Hasit Seth, 2006 Source: Image Source – Wikipedia.org AUTOGIRO Co. of America v. United States 384 F.2d 391 (1967) Elements Preamble

“ ..law is to benefit the inventor’s genius and not the scrivener’s talents…”
Claims must read on the accused structures, and
structures must do the same function,
in the same way, and
accomplish substantially the same result
Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, at 568 (1898)
Patent Infringement © Hasit Seth, 2006 Source: Image Source – Wikipedia.org AUTOGIRO Co. of America v. United States 384 F.2d 391 (1967)

Two Step Process
Doctrine of Equivalence (DoE)
Substance is more important than form
Guides:
PHOSITA would have known of the interchangeable ingredient
Pioneer patents a have wider range of equivalence
DoE is subservient to file wrapper estoppel

DoE
Even without a literal overlap, a structure infringes if it performs the substantially – same function, same way, and in the same way.
Test: F-W-R (Function-Way-Result) Penwalt Corp. v. Durand-Wayland, Inc. 833 F.2d 931,934 (Fed. Cir. 1987)

DoE
Patent Infringement © Hasit Seth, 2006 AUTOGIRO Co. of America v. United States 384 F.2d 391 (1967) Claim

DoE
A seating apparatus comprising:
a vertical support portion;
a horizontal seating portion attached to the vertical support portion; and
at least three support bases attached to the horizontal seating portion.

Preamble: Does it include limitations? Or is it only an introduction?
Generally, preamble is not used to interpret the claims, but it can be used if it breathes meaning into the claim
Patent Infringement © Hasit Seth, 2006 Preamble and Claim Interpretation

General rule: Limitations may not be read into claims from specifications
Yet, specification is used to interpret the claims
Is there a dichotomy to be resolved here?
Patent Infringement © Hasit Seth, 2006 Specification and Claim Interpretation

Facts:
District Court (S.D.N.Y.) held that Brown’s certain products do not infringe Unique’s patent US 4,018,260 (Baslow, April 19, 1977). Federal Circuit affirms.
Apparatus: Assembly pieces to attach a fabric to the wall
Applicant states during prosecution that “…an amateur can practice the present invention ”
Patent Infringement © Hasit Seth, 2006 Source: Image Source – Wikipedia.org Unique Concepts, Inc v. Brown 939 F.2d 1558 (Fed. Cir. 1991)

Claim 1 “…said assembly comprising linear border pieces and right angle corner border pieces which are arranged …”
Claim 9 (later cancelled) recited “…right angle corner pieces are formed by a pair of short linear pieces whose ends are mitered and spaced from each other to define a slot therebetween…”
BROWN’s Assembly:
Mitered (cut at 45 degrees) pieces made from linear pieces aligned to form a right angle
- Does not use pre-formed pieces

Spec, Col. 8, lines 28-41
Unique’s Spec describes both, mitered and preformed pieces

Majority
Claim 1 mentions two kinds of pieces – linear and corner one.
Applied the “all element rule” and that the claim does not include unnecessary terms.
The mitered alternative to preformed pieces was dedicated to the public since the claim covering it (claim 9) was cancelled. Now, you cannot use the specification support for that alternative to say that Claim 1 be interpreted to cover mitered alternative.
Prosecution history’s use of “easy for Do-it-yourself” as an advantage shows that it was the preformed alternative that was the invention as claimed in Claim 1.
Patent Infringement © Hasit Seth, 2006 Unique Concepts, Inc v. Brown 939 F.2d 1558 (Fed. Cir. 1991)

Dissent (Rich, J.)
Cancelled Claim 9 indicates that the Claim 1 was intended to be a genus for both variants – mitered and preformed. The fact that it was cancelled has no consequence in interpreting Claim 1.
The emphasis on “do-it-yourself” in the prosecution history is misplaced since it is tenuous. It is used only once in specification and once in the file-wrapper and is preceded by “somewhat”

Majority on DoE
Majority upheld the trial court’s finding of no infringement under DoE
“ One of the main objects of the invention was stated to be to make something useful for a do-it-yourselfer. … The accused device has a different and complicated way of doing what the right-angle piece does in the patented device. It is a lot simpler for a the do-it-yourselfer to use the preformed right-angle pieces…”

Linde is the owner of the Jones patent (2,043,960, June 9, 1936) for an electric welding process and for fluxes used in that process
Linde sued Graver for patent infringement for ‘960 patent
District Court held four flux claims valid and infringed, and rest all processes and some flux claims as invalid.
Appeal court upheld the trial court’s validity and infringement findings but reversed the invalidity findings.
Supreme Court reversed the Appeal Court on the reversal and reinstated the District Court finding.
Patent Infringement © Hasit Seth, 2006 Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 U.S. 605 (1950)

Patent Infringement © Hasit Seth, 2006 Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 U.S. 605 (1950) Identical in operation, kind and quality of the welding Mechanical methods of employing the compositions are the same Lincolnweld 660 - Flux Unionmelt Grade 20 - Flux Same composition as the product, except it uses silicates of calcium and manganese (not an earth metal) Patent - Combination of alkaline earth metal silicate and calcium fluoride Product – Silicates of calcium and magnesium, two alkaline earth metal silicates Accused Patented

Trial Court invoked DoE to find the flux claims valid and infringed
Main issue – substitution of manganese (not an alkaline earth metal) for magnesium (an alkaline earth metal) - is this change of material insignificant and hence DoE applies or is it a change that makes DoE inapplicable?
Trial court said yes, DoE applies, and the Supreme Court agreed too.
Patent Infringement © Hasit Seth, 2006 Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 U.S. 605 (1950)

Hilton Davis sued Warner-Jenkison for infringing US 4,560,746
Jury found ‘746 as not invalid and that Warner-Jenkinson infringed under DoE, and hence the Trial Court entered judgment on the jury verdict
The appeal court upheld the Trial Court judgment.
Tests Used:
The F-W-R (Function-Way-Result) test, and
The “insubsantial differences” test
Patent Infringement © Hasit Seth, 2006 Hilton Davis Chemical Co. v. Warner-Jenkinson Co. 62 F.3d 1512 (Fed. Cir. 1995), cert. granted, 116 S. Ct. 1014 (1996)

Hilton Davis (HD) sued Warner-Jenkison(WJ) – business of Food, Drug and Cosmetic dyes
Dye making process yield impurities that must be removed using a purification process
HD & WJ used a “salting out” purification process that was expensive
‘ 746 patent brought by HD used “ultrafiltration” (osmosis) to remove impurities

Inventors added the phrase “at a pH from approximately 6.0 to 9.0” during prosecution to distinguish U.S. 4,189,380 to Booth that used ultrafiltration and operates at a pH above 9 and preferably between 11 and 13

WJ also tried to develop an ultrafiltration technique. They used an “already salted out” solution for their test which was carried out one week before HD’s test (both tests were done by Osmonics under a secrecy agreement). WJ did not get the desired results.
At trial HD showed that WJ’s ultrafiltration process at pressures in a range of 200 to nearly 500 p.s.i.g. and a pH of 5.
Patent Infringement © Hasit Seth, 2006 Hilton Davis Chemical Co. v. Warner-Jenkinson Co. 62 F.3d 1512 (Fed. Cir. 1995), cert. granted, 116 S. Ct. 1014 (1996) P,S.I.G. – Pound per Square Inch Gauge

Graver Tank case is said to have introduced the “substantiality of differences test”. For DoE to apply the differences must be insubstantial.
Graver Tank uses substantiality in addition to the F-W-R test, meaning that F-W-R is not conclusive though often shows substantiality of differences. Factors other than F-W-R are considered for substantiality of differences determination
Factors, e.g.:
PHOSITA’s knowledge of interchangeability would mean that the changes are insubstantial
Evidence of copying indicates that the objectively measured differences are insubstantial
Evidence of “designing around” works against finding DoE infringement. But independent creation is irrelevant for DoE.

Infringement under DoE is a question of fact to be tried by a jury in a jury trial
Trial judge has no discretion to apply DoE when literal infringement is not possible. Which means the Trial judge must apply DoE is there is not literal infringement.

Prior Art
Prosecution History Estoppel
Patent Infringement © Hasit Seth, 2006 What Limits the Application Scope of DoE’s?

To determine whether a claim limitation is met literally, where expressed as a means for performing a stated function, the court must compare the accused structure with the disclosed structure, and must find equivalent structure as well as identity of claimed function for that structure.
Penwalt Cited in LaitramCorp v. Rexnord, Inc, 939 F.2d 1533 (Fed. Cir. 1991)
Patent Infringement © Hasit Seth, 2006 Equivalents for Means Plus Function Claims 35 U.S.C. 112 para 6 - 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.

Literal infringement of a means-plus-function claim limitation requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification. Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1320 (Fed. Cir. 2003). Once the relevant structure in the accused device has been identified, a party may prove it is equivalent to the disclosed structure by showing that the two perform the identical function in substantially the same way, with substantially the same result. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed. Cir. 2000). As the party asserting infringement, Applied ultimately bears the burden of proof.
Patent Infringement © Hasit Seth, 2006 Equivalents for Means Plus Function Claims

Literal infringement of a means-plus-function claim limitation requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification. Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1320 (Fed. Cir. 2003). Once the relevant structure in the accused device has been identified, a party may prove it is equivalent to the disclosed structure by showing that the two perform the identical function in substantially the same way, with substantially the same result. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed. Cir. 2000). As the party asserting infringement, Applied ultimately bears the burden of proof.
APPLIED MEDICAL RESOURCES CORPORATION, V. UNITED STATES SURGICAL CORPORATION (Fed. Cir. 2006)

Means+Function Application:
Find in the accused device the identical function recited in the claim
Find in the accused device the structure that is identical or equivalent to the corresponding structure in the specification
To show equivalence between the structure of the accused device and structure in the specification use the Function-Way-Result test. The equivalence is shown such that the two structures perform the identical function in substantially the same way to achieve substantially the same result.

(g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use or retail sale of a product unless there is no adequate remedy under this title for infringement on account of the importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will, for purposes of this title, not be considered to be so made after -
(1) it is materially changed by subsequent processes; or
(2) it becomes a trivial and nonessential component of another product.
Patent Infringement © Hasit Seth, 2006 Process Patents

Some Recent Cases

ORTHO-McNEIL v. CARACO (Fed. Cir. 2007)
Ortho (Plaintiff) appeals Dist. Courts summary judgment of non-infringment
Federal Circuit Affirm, i.e., non-infringement is upheld

The ’691 patent has fifteen claims directed to a pharmaceutical composition comprising certain weight ratios of two known drugs, tramadol and acetaminophen – both are analgesics
Certain ratios of both analgesics have super additive or synergistic effect

The [acetaminophen] and the tramadol material are generally present in a weight ratio of tramadol material to [acetaminophen] from about 1:1 to 1:1600. Certain ratios result in a composition which exhibits synergistic analgesic effects. For example, in a composition comprising a tramadol material and [acetaminophen], the ratio of the tramadol material: [acetaminophen] is preferably from about 1:5 to 1:1600 ; and, more preferably, from about 1:19 to 1:800 . The most preferred ratios are from about 1:19 to 1:50 . Compositions of a tramadol material and [acetaminophen] within these weight ratios have been shown to exhibit synergistic analgesic effects. In addition, the particular compositions wherein the ratio of the components are [sic] about 1:1 and about 1:5 are encompassed by the present invention.

Caraco’s Abbreviated New Drug Application (“ANDA”) #77-184, as amended on or about July 26, 2005, evidences Caraco’s intent to make and sell a pharmaceutical composition containing tramadol and acetaminophen with an average weight ratio of tramadol to acetaminophen of 1:8.67. Caraco’s ANDA also expressly requires Caraco’s formulation to have a weight ratio of no less than 1:7.5.1 In response to Caraco’s ANDA, Ortho alleged that Caraco infringed claim 6 of the ’691 patent.

Claim 6
[A pharmaceutical composition comprising a tramadol material and acetaminophen], wherein the ratio of the tramadol material to acetaminophen is a weight ratio of about 1:5.”

Ortho: Proper construction is “approximately 1:5, and . . . encompasses a range of ratios of at least 1:3.6 to 1:7.1.”
Caraco: Proper construction is “approximately 1:5, subject perhaps to minor measuring errors of, say, 5 or 10%.”
Carcao: Under either construction – NO LITERAL INFRINGEMENT
DoE: See Case Text Page 5 onwards

JAPAN - DoE

Sources
http://www.law.washington.edu/CASRIP/Symposium/Number6/Takenaka.pdf [Takenaka]

DoE in Japan
Court’s stuck to literal interpretation
DoE was disfavored; literal interpretation was stretched
In 1998, Japanese Sup. Ct. decision in Ball Spline Case established DoE in Japanese Patent Law

Before the Ball Spline decision, Japanese courts placed heavy reliance on prosecution history (file-wrapper). This led to narrow scope of claim interpretation.

Ball Spline Decision
Japanese Sup. Ct. Adopts Five Conditions for Applying DoE
The conditions followed that of German Supreme Court and broadly similar to US DoE guidelines

Ball Spline Decision Conditions for DoE
Non-Essential Element Test – Only non-essential elements have DoE scope. DoE cannot eliminate an essential element.
Problem: What is an essential element or a non-essential element? US law doesn’t distinguish essentiality.

Capability of Replacement Test: Replace equivalent element (under DoE) should have no effect on the function of the invention (it must work the same way).
Similar to F-W-R test of US.

Obviousness Test – Readiness of replacement. PHOSITA should have easily known of the equivalent as a replacement. Same as in US.

Defense of the Free State of the Art – [a test shared by German Patent Law too]
Limits DoE range to cover things that existed in the prior-art.
Tanaka – The German Supreme Court expanded the test in the Formstein case (1987) to prevent the extension of an exclusive right with respect to subject matter that is obvious from the prior art. The Japanese Supreme Court adopted this expanded doctrine to prevent the expansion of patent rights under the doctrine of equivalents.”

No DoE for “intentionally” removed material from prior-art
US counterpart – Prosecution History Estoppel

A Tour of European DoEs

United Kingdom
House of Lords decision in Kirin-Amgen Inc and Others v. Hoechst Marion Roussel Limited and Others [2004] UKHL 46 ( erythropoietin ("EPO"); Recombinant DNA case)
No DoE in UK !!

France and Germany
DoE is available…

The End

The ’691 patent has fifteen claims directed to a pharmaceutical composition comprising certain weight ratios of two known drugs, tramadol and acetaminophen – both are analgesics
Certain ratios of both analgesics have super additive or synergistic effect

Doctrine Of Equivalence

by HASIT SETH on Dec 07, 2009

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