Patents VI Infringement & the Doctrine of Equivalents

1. Patents VIInfringement & the Doctrine of Equivalents Class 16 Notes Law 507 | Intellectual Property | Spring 2004 Professor Wagner

2. Today’s Agenda • Literal Infringement • The Doctrine of Equivalents

3. The Basics of Infringement • The patent right: the right to exclude others from . . . • Making • Using • Selling • Offering to sell • Importing • Categories of Infringement • Direct Infringement • Indirect Infringement (direct + assistance)

4. The Basics of Infringement (2) • Forms of Direct Infringement • Literal infringement • Infringement via the Doctrine of Equivalents

5. Literal Infringement Basic rules of literal infringement: • all elements of the claim must be (identically) present in the accused device; • Additional elements in the accused device are (generally) not relevant to infringement; Consider this claim . . . • A writing implement comprising: • A wooden cylinder with a hollow core • A cylinder of graphite in said hollow core • A small cylinder of eraser material attached to one end of the wooden cylinder Which of the following infringes the claim? • A typical wooden pencil with a small metal clip for shirt-pocket storage • A plastic pencil (body made of plastic) • A pencil without an eraser

6. Literal Infringement • Larami Corp v Amron (Ed Pa 1993) • What is the key claim element? (Why?) • What does the accused device have instead? • Why does the court find no infringement as a matter of law? (Why isn’t this at least a jury question?) • How might TTMP have drafted the claim to cover the Supersoaker?

7. The Doctrine of Equivalents • Recall: the basic rule of literal infringement: • all elements of the claim must be (identically) present in the accused device • The Doctrine of Equivalents: • Allows elements in an accused device to be “substantially equivalent” and still be ‘present’ for purposes of infringement • Thus, the basic rule of infringement changes to: • all elements of the claim must be (identically or equivalently) present in the accused device

8. The Doctrine of Equivalents • Warner-Jenkinson v Hilton Davis (1997) • Key limitation: “a pH of approximately 6.0 to 9.0” • Accused process: pH of 5.0 • The court reaffirms the DOE, though it notes an important limit on the doctrine –- prosecution history estoppel • Other points: • Intent is not an element of infringement • Equivalents are not limited to those disclosed in the patent itself • The Court leaves it to the Federal Circuit to determine the ‘test’

9. The Doctrine of Equivalents • Limits on the DOE: • Prior art limitations: Equivalents cannot encompass the prior art (Wilson Sporting Goods) • Prosecution History Estoppel (PHE) (Festo) • Public Dedication: disclosed-but-unclaimed subject matter (Johnson & Johnston) Wilson Sporting Goods: • Suggests a ‘hypothetical claim’ analysis. (Why?) (Is this useful?) • What if the accused device is obvious in light of the prior art?

10. The Doctrine of Equivalents • Prosecution History Estoppel • Basic rule of PHE: cannot assert infringement by equivalents over subject matter ‘surrendered’ during prosecution. • Why have this rule? • What is the key analytic problem? • Festo Corp. (2002) • The Federal Circuit rule: amendment = no equivalents for that element. (Why do you think the court did this? Pros?/Cons?) • The Supreme Court: ‘presumption’ that an amendment = no equivalents for that element. Exceptions: • Where the ‘equivalent’ technology was ‘unforeseeable • The rationale for the amendment is unrelated to the equivalent in question • Otherwise ‘unreasonable’ to prevent infringement

11. The Doctrine of Equivalents • Public Dedication • Johnson & Johnston Assocs. (2002) (en banc) • The claimed invention was a ‘backing’ sheet of aluminum that allowed thin copper sheets to be safely handled for semiconductor manufacturing. • The specification notes that various metals other than aluminum (including steel) could be used as the backing material. • A jury found that the steel backing material was equivalent to the claimed aluminum

12. The Doctrine of Equivalents • Public Dedication • Johnson & Johnston Assocs. (2002) (en banc) • Why does the court find no infringement as a matter of law? • Is it correct to say that the patentee has dedicated the disclosed-but-unclaimed material to the public? (Is this always the case?) • Doesn’t the court appear to suggest that the patentee seek examination of even equivalents to the claimed invention? Is this consistent with the reasoning behind the DOE? • In what ways can a patentee avoid the holding of Johnson & Johnston? Are these beneficial?

13. Next Class • Patents VII • The Subject Matter of Patents