Infringement & the Doctrine of Infringement & the Doctrine of Equivalents IEquivalents I

Class Notes: February 27, Class Notes: February 27, 20032003

Law 677 | Patent Law | Spring 2003Law 677 | Patent Law | Spring 2003Professor WagnerProfessor Wagner

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Today’s AgendaToday’s Agenda

1.1. Basics of InfringementBasics of Infringement

2.2. The Doctrine of EquivalentsThe Doctrine of Equivalents

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The Basics of InfringementThe Basics of Infringement1.1. The patent right: the right to exclude The patent right: the right to exclude

others from . . .others from . . .• Making• Using• Selling• Offering to sell• Importing

2.2. Categories of InfringementCategories of Infringementa) Direct Infringementb) Indirect Infringement [March 20]

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The Basics of InfringementThe Basics of Infringement1.1. The patent right: the right to exclude The patent right: the right to exclude

others from . . .others from . . .• Making• Using• Selling• Offering to sell• Importing

2.2. Categories of InfringementCategories of Infringementa) Direct Infringementb) Indirect Infringement [March 20]

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The Basics of Infringement (2)The Basics of Infringement (2)1.1. Forms of Direct InfringementForms of Direct Infringement

a) Literal infringementb) Infringement via the Doctrine of Equivalents

Literal Infringement => consider this claim . . .Literal Infringement => consider this claim . . .1. A writing implement comprising:

A wooden cylinder with a hollow coreA cylinder of graphite in said hollow coreA small cylinder of eraser material attached to one end of

the wooden cylinderWhich of the following infringes the claim:Which of the following infringes the claim:

• A wooden pencil with a small metal clip for shirt-pocket storage

• A plastic pencil (body made of plastic)• A pencil without an eraser

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The Doctrine of EquivalentsThe Doctrine of EquivalentsWinans v Denmead (1853)Winans v Denmead (1853)

• What was significant about the Winans invention?

• Why did the Court find infringement by Denmead?

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The Doctrine of EquivalentsThe Doctrine of EquivalentsGraver Tank v Linde (1950)Graver Tank v Linde (1950)

• Technology: welding fluxes• Invention: alkaline earth metal + calcium

fluoride• Accused: non-alkaline earth metal + calcium

fluoride

Why are these facts relevant to infringement?Why are these facts relevant to infringement?1. Alkaline and non-alkaline metals performed

similarly2. The prior art suggested that even non-alkaline

metals would work3. No evidence of independent testing by Linde

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The Doctrine of EquivalentsThe Doctrine of EquivalentsThe Influence of Graver Tank - establishes modern The Influence of Graver Tank - establishes modern

DOEDOE• The test for DOE: when the accused device performs

“substantially the same function in substantially the same way to achieve substantially the same result” (“Function-Way-Result test”)

• “What determines equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case”

• “Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum.”

• “An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.”

• A finding of equivalence is a determination of fact• “The record contains no evidence that [the accused device] was

developed as the result of independent research experiments.”

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The Doctrine of EquivalentsThe Doctrine of EquivalentsGraver TankGraver Tank, continued., continued.

• How does the majority describe the purpose/use of the DOE?o Would a patent without DOE be a “hollow and

useless thing”?• What is the dissent’s primary objection?

o Why does the dissent note the possibility of ‘reissue’?

• Are you convinced?

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The Doctrine of EquivalentsThe Doctrine of EquivalentsWarner-Jenkinson v Hilton Davis (1997)Warner-Jenkinson v Hilton Davis (1997)

o Key limitation: “a pH of approximately 6.0 to 9.0”o Accused process: pH of 5.0

• Question 1: Does the DOE survive the 1952 Act?

• Question 2: What are the boundaries of the DOE?o The court “establishes” the “all-elements-rule”: the

DOE is to be applied on an element-by-element basis. (Note that this had been the law of the Federal Circuit since 1987.)– Does the ‘all elements rule’ reconcile the tension

between the DOE and the notice function of claims?

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The Doctrine of EquivalentsThe Doctrine of EquivalentsWarner-Jenkinson v Hilton Davis (1997)Warner-Jenkinson v Hilton Davis (1997)1.1. The court declines to determine the The court declines to determine the

appropriate ‘linguistic framework’ for the DOEappropriate ‘linguistic framework’ for the DOE2.2. The DOE remains a question of fact, but see The DOE remains a question of fact, but see

‘famous footnote 8’ (p. 898)‘famous footnote 8’ (p. 898)3.3. Whether the DOE applies is unrelated to the Whether the DOE applies is unrelated to the

mental state of the infringer (Why?)mental state of the infringer (Why?)4.4. Prosecution history estoppel (PHE) survives, Prosecution history estoppel (PHE) survives,

with a new ‘presumption’. (Why?)with a new ‘presumption’. (Why?)5.5. The DOE may apply to any technology, The DOE may apply to any technology,

whether known or unknown at the time of whether known or unknown at the time of filing. (Why is this important?)filing. (Why is this important?)

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The Doctrine of EquivalentsThe Doctrine of EquivalentsWhat is the ‘best’ argument or explanation What is the ‘best’ argument or explanation

for the DOE?for the DOE?1. Equity/Fairness: An inventor’s rights would be

valueless without DOE.2. Furtherance of the Law’s Purpose: Allowing

‘equivalent’ copies of patented inventions undermines the entire system.

3. (Broad) Claim Construction: we presume patentees have patented all they are entitled to.

Does any of these justify the costs of the Does any of these justify the costs of the DOE?DOE?

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Next ClassNext Class

Infringement & the Doctrine Infringement & the Doctrine of Equivalents II of Equivalents II The All Elements Rule The All Elements Rule

Means-Plus-Function Claims Means-Plus-Function Claims