Claims II

1. Claims II Patent Law – Prof Merges 10.25.2012

2. Agenda • Markman • Canons of claim interpretation • DOE

3. Warner-Jenkinson arguments in Sup Ct • What did petitioner W-J argue? • DOE Dead • DOE should be narrowed

4. 1952 Act and the DOE • Peripheral claiming • Reissue • PTO role • Sec. 112 Par. 6 – “means plus function” claims • Specific provision implies repeal of general DOE?

5. Proper Scope of DOE • “Overall equivalent” vs. “element-by-element” analysis • Judge Nies dissent key

6. What does this mean – element-by-element? • What exactly is an element?

7. What does this mean – element-by-element? “subjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx. 200-400 p.s.i.g. [3]at a pH from approximately 6.0 to 9.0”

8. Prosecution History Estoppel • Limit on DOE • What is the “prosecution history”?

13. United States Patent 4,189,380 Booth ,   et al.February 19, 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants The ultrafiltration purification of aqueous solutions of polymeric colorants, wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate, is carried out with improved efficiency when, during at least two diavolumes of ultrafiltration, the salt content of the retentate is maintained above about 1% by weight. • Inventors: Booth; Robin G. (Palo Alto, CA); Cooper; Anthony R. (Los Altos, CA) Assignee: Dynapol (Palo Alto, CA) Filed: November 18, 1976

15. Original Claim – Rebhahn Application In a process for the purification of a dye . . . the improvement which comprises: subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx. 200-400 p.s.i.g. to thereby cause separation of said impurities from said dye . . .

16. Amendment Added this phrase (claim limitation) to the claim: . . . at a pH from approximately 6.0 to 9.0 . . . Booth reference: pH Above 9.0

17. In a process for the purification of a dye . . . the improvement which comprises: subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx. 200-400 p.s.i.g. [3]at a pH from approximately 6.0 to 9.0, to thereby cause separation of said impurities from said dye . . .

18. Original Claim Scope

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

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

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

22. 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

26. Prosecution History • Amendments • What limitations did they add? • Why were they made?

27. Fed Cir opinion • Two aspects • Prosecution history estoppel (PHE) applies to all amendments, whatever the basis • PHE represents a complete bar to all equivalents of amended claim

28. Federal Circuit opinion • 11 – 1 on amendment rationale issue • 8-4 on “complete bar” approach

29. 2nd Point: The 3-Part Test • Supreme Court rejects “complete bar”

30. Original Claim Scope

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

32. Original Claim Scope X Narrowed Scope, after amend-ment Embodi-ment “X”: Can DOE cover?

33. X Narrowed Scope, after amend-ment Embodi-ment “X”: Can DOE cover?

34. “Estoppel” idea • Who is estopped from what? • Why? • Like other legal instances of estoppel concept?

35. The 3-Part Festo Test • [1] Unforeseeable equivalents • [2] Amendment bears “tangential relation” to equivalent • [3] “Some other reason” -- expectations

36. Is the DOE dying? • Allison, John R. and Lemley, Mark A., "The (Unnoticed) Demise of the Doctrine of Equivalents" . Stanford Law Review, Vol. 59, 2007 • The doctrine of equivalents was already near death by the late 1990s. That became even more true after 2000. Reason: Markman

37. "On the Decline of the Doctrine of Equivalents" Cardozo Law Review, Vol. 31, No. 4, 2010 Loyola-LA Legal Studies Paper 2010-25 LEE PETHERBRIDGE, Loyola Law School Los Angeles

38. True? • Very narrow range of equivalents in some cases • ““9. A vector comprising an isolated DNA molecule comprising a sequence selected from the group consisting of ORFs 1-13”, amended to read:

39. Narrow equivalents “A vector comprising an isolated DNA molecule of porcine circovirus type II comprising . . .” Held: ORFs between PCV I and PCV II have been surrendered; nothing in this rage can fall within claim BUT:

40. Something left of DOE? Merial is not, however, estopped from arguing that a pathogenic porcine viral sequence with over 99% nucleotide homology with one of the five representative strains is equivalent to that strain. Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1292 (Fed Cir 2010)