Doctrine of Equivalents

1. Doctrine of Equivalents Intro to IP – Prof Merges 1.31.12

2. Topics Today • Doctrine of Equivalents • Prosecution history estoppel • Indirect infringement: inducement

3. 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.

4. Equivalents/Literal Claim Scope Range of Equivalents Literal Claim Scope

5. Hughes Satellite – p. 275-78

6. 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)

7. 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.

11. S/E S/E

12. S/E

13. Patent Claim Elements S/E • f “means disposed . . . for receiving . . . signals • g “said valve being coupled to said last-named means and responsive ... Literal Infringement Doctrine of Equivalents ?

14. Patent Claim Elements • f “means disposed . . . for receiving . . . signals • g “said valve being coupled to said last-named means and responsive ... Literal Infringement Doctrine of Equivalents Modest Inventions Pioneering Inventions

15. Prosecution History Estoppel • Festo v. SKK Kabushiki, p. 305

20. Original Claim Scope

21. Original Claim Scope Narrowed Scope, after amend-ment

22. Accused product: ultra-purifica-tion at 9.5 pH X No Infringement under DOE

23. Accused Product: pH of 5.0 – can Hilton-Davis assert infringement under DOE? ??

24. 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

28. Amendments • Two patents – • Stoll, 4,354,125 • Carroll, 3,779,401

29. Prosecution History • Amendments • What limitations did patentee add during prosecution? • Why were they made?

30. How amended? • Claims changed to include a new limitation: piston assembly must now include a pair of sealing rings

31. Equivalents and Prosecution History • P. 283 • “Insubstantial alterations” • BUT: Cannot “recapture” an insusbtantial alteration GIVEN UP during prosecution

32. 1st point: “related to patentability” • Claim amendment for any reason can give rise to estoppel • Not just prior art-related reasons

33. Presumption arising from claim amendments • P. 287

34. 2nd Point: The 3-Part Test • Supreme Court rejects “complete bar” • Federal Circuit’s new rule reversed and thrown out

35. Original Claim Scope

36. Original Claim Scope Narrowed Scope, after amend-ment

37. 2nd Point: The 3-Part Test • P 287 • [1] Unforeseeable equivalents • [2] Amendment bears “tangential relation” to equivalent • [3] “Some other reason” -- ?

38. 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?

39. 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”

40. Equivalents/Literal Claim Scope Range of Equivalents Literal Claim Scope What is a “baffle”? Is the tank “thereon”?

41. Equivalents/Literal Claim Scope Range of Equivalents Literal Claim Scope Is a single sealing ring equivalent to “a pair” of them?

42. Prosecution History Estoppel • Warner-Jenkinson: presumption that part of claim coverage is surrendered when applicant amends claim • Festo case: 3 Ways to beat the presumption • Post-Festo developments: “disclosed but not claimed”/dedicated to the public

43. “Range of Equivalents” Literal Claim Scope Infringement under DOE ?

44. 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

45. Original Claim Scope

46. Original Claim Scope Narrowed Scope, after amend-ment

47. 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

48. 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

49. § 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.

50. Global-Tech Appliances v. SEB • Inducement • 131 S. Ct. 2060 (2011)