Guest post by Donald S. Chisum, Chisum Patent Academy
Looking back at the approximately 125 precedential decisions on patent law of the Federal Circuit in 2012, I asked myself: are there any new trends? One trend smiled back: an increase in the number of decisions on the doctrine of equivalents. There were eight, and, surprisingly, four of them showed judicial favor toward application of the doctrine.
Since 1997, the Federal Circuit, with the encouragement of the Supreme Court, has developed various restrictions and limitations on the doctrine. This has led some commentators to assert that the doctrine of equivalent is “dead.” See Allison & Lemley, The (Unnoticed) Demise of the Doctrine of Equivalents, 59 Stan. L. Rev. 955 (2006-2007). That obituary may have been premature. The Supreme Court created the doctrine in 1850 and twice rejected frontal assaults: in 1950 and 1997. The 2012 Federal Circuit decisions show that well supported assertions of equivalency cannot be dismissed.
In particular, Chief Judge Rader wrote two opinions, expanding beyond what was necessary to decide the cases before him. In one, he emphasized that “the Supreme Court declined to let numerous contentions bury the doctrine.” Deere & Co. v. Bush Hog (Dec. 4, 2012). In Deere, Judge Rader attempted to clarify “misperceptions” about the “vitiation” limitation on the doctrine of equivalents. For a comment on Judge Rader’s discussion of vitiation, see Dennis Crouch, Reviving the Doctrine of Equivalents, Patently-O at https://patentlyo.com/patent/2012/12/rader-reviving-the-doctrine-of-equivalents.html.
In the other case, Judge Rader stressed that the doctrine is particularly appropriate when an accused equivalent is made possible only by technological improvements after a patent’s effective filing date. Energy Transportation Group v. William Demand Holdings (Oct. 12, 2012). Judge Rader has long espoused the view that the doctrine should be available when equivalents are not foreseeable but not when the opposite was true. A competent draftsperson should write claims to cover literally equivalents that were foreseeable at the time the application for the patent was prosecuted.
Also significant were two opinions by other judges. In one, the court addressed the recurring issues of equivalency applied to numerical and range limitations and to qualifiers such as “substantially.” Pozen Inc. v. Par Pharmaceutical (Sept. 28, 2012). The majority, by the recently-appointed Federal Circuit Judge Wallach, held that a claim, which required that a drug tablet layer have “substantially all” of an ingredient, and which was construed to mean “at least 90%,” was properly found infringed by equivalency by an accused tablet that had only 85% of the ingredient in the layer.
In another case, the court, in an opinion by Judge Prost, held that a district court erred in applying the “disclosure-dedication” rule and thus erred in granting summary judgment of no infringement under the doctrine of equivalents. Sandisk Corp. v. Kingston Technology Co., Inc. (Oct. 9, 2012).
In the other four cases, the Federal Circuit concluded, essentially, that asserted equivalents were not sufficiently equivalent or involved completely missing claim limitations or failure to claim literally well-known interchangeable elements. Technology Patents LLC v. T-Mobile Ltd. (Oct. 17, 2012); Mirror Worlds, LLC v. Apple Inc. (Sept. 4, 2012); General Electric Co. v. U.S. Int’l Trade Comm’n (July 6, 2012); Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC (June 22, 2012).
One may ask: why would there be renewed judicial interest in the doctrine of equivalents? One possibility: developments in other areas of patent law, such as the “abstract idea” restriction on Section 101 patent eligible subject matter, are creating pressures on patent applicants to formulate claims that are specific and narrow in literal scope. Courts may use a more robust doctrine of equivalents to provide a scope of protection that is determined to be appropriate in view of the patent’s disclosure, the prior art, and the development of the pertinent technology after a patent’s effective filing date.
IANAE Fair enough, but the proposed strategy was to get narrow claims while preserving equivalents, and then continue to fight for broader ones in a continuation while presumably generating all the prosecution history you were trying to avoid in the parent.
Ah, that was the strategy proposed by anon (not me). I agree with the concerns you raise (see my Jan 2 4:11 comment).
LOL – you laugh at a known anti-patentist and cry at a known patent realist.
Do you still wonder why people think you need to learn things?
it may make legal and financial sense to stop fighting for broader scope, keep the prosecution history to a bare minimum, and start/finish with the specific claim and its indeterminate halo of equivalents.
Fair enough, but the proposed strategy was to get narrow claims while preserving equivalents, and then continue to fight for broader ones in a continuation while presumably generating all the prosecution history you were trying to avoid in the parent. Not sure where the legal and financial sense is to be found in that approach, unless you need narrow claims issued in a hurry because someone is infringing them.
Why anybody would deliberately file narrow claims and sacrifice literal scope to gain equivalents scope is beyond me.
If you are prosecuting in a field where the USPTO has repeatedly demonstrated that it is going to issue only very narrow and specific claims (e.g., a protein consisting of SEQ ID NO:X, where SEQ ID NO:X is a 100 amino acids long) even where you arguably deserve more, it may make legal and financial sense to stop fighting for broader scope, keep the prosecution history to a bare minimum, and start/finish with the specific claim and its indeterminate halo of equivalents. There’s a decent chance that there are equivalents in such circumstances, assuming you haven’t dedicated them to the public.
I’m not saying the above is the best approach in all circumstances; just giving you an example where it might represent a reasonable strategy.
Thanks both, for making me both laugh (IANAE) and cry(AAA JJ).
The old maxim was, “that which infringes, if earlier anticipates” but that has sort of been changed to, “that which literally infringes, if earlier anticipates.”
I thought I could rely on that.
You could, until someone came up with the bright idea of having a “things that don’t infringe actually do infringe” doctrine.
And what about that dear old maxim “What comes after, and infringes, if coming before, anticipates”? I thought I could rely on that. Or must I now amend it, adding “or renders it obvious”?
Dear Examiner, your posting delighted me. Thanks. The way I see it, such disconformities as you advert to are a feature of jurisdictions (like Germany) that have one track for testing validity. In such jurisdictions, the patent owner escapes the discipline of finding for his claim a single meaning that will BOTH cover the accused embodiment AND preserve it from a finding of invalidity.
Typically, such jurisdictions try to do justice by resorting to a DoE but, in doing so, manage to f*** up fundamental tenets (What comes afterwards and infringes would, if coming before, anticipate) of patent law in the way you so concisely and clearly describe.
So why doesn’t Doctrine of Equivalents practice apply to examination for 102 purposes?
Because claim construction is much broader during examination. Anyway, 90% should be obvious over 85% during examination, and a claim to “substantially all” shouldn’t have a snowball’s chance over art teaching 85%, absent some art-specific evidence on the record that restricts the scope of “substantially all”.
Yes, it’s ridiculous to construe a claim to mean >=90% and then re-construe it to capture >=85%. Especially when the spec defines the claim term to mean >=90%. I wonder if the same result would have been reached had the claim recited “at least 90%” instead of “substantially all”, but that’s what you get for allowing claims with weasel words in them.
Let’s not forget that equivalents are meant to cover later-developed equivalents, because a competent prosecutor should be able to literally claim all the structure he wants the claim to cover. If something is known in the art and you choose not to describe or claim it, that’s your own problem.
The doctrine of equivalents is a litigation tactic, not a prosecution tactic. Why anybody would deliberately file narrow claims and sacrifice literal scope to gain equivalents scope is beyond me. Nice that their clients can afford to get one patent for the price of two, though.
“If the tablet with only 85% was prior art and the examiner made a 102 rejection the rejection would be reversed because 85% is outside of the range of >= 90%.”
Nothing wrong with that. The standard of anticipation is identity of invention, i.e. the prior art must be the identical invention recited in the claim in order to anticipate.
“Even more unbalanced is if the examiner had the range of 85-95% this may not even be anticipatory unless the range is found to overlap with sufficient specificity.”
I seriously doubt that a claim for “at least 90%” would be issued in view of prior art that disclosed “85-95%”, unless the applicant could demonstrate some unexpected results at a particular percentage or rather narrow range of percentages.
“So why doesn’t Doctrine of Equivalents practice apply to examination for 102 purposes?”
It does. It’s called 103(a), which states that a patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
In other words, even if the prior art does not include the identical invention recited in your claim, you still might not be able to get a patent.
Same thing with infringement. Even if your accused device/process/whatever doesn’t literally infringe the claim, you might still be infringing.
“at least 90%,” was properly found infringed by equivalency by an accused tablet that had only 85% of the ingredient in the layer.
This seems out of balance with 102 in examination. An item/process could be considered infringing yet the same item/process wouldn’t be anticipatory if it was prior art.
If the tablet with only 85% was prior art and the examiner made a 102 rejection the rejection would be reversed because 85% is outside of the range of >= 90%. Even more unbalanced is if the examiner had the range of 85-95% this may not even be anticipatory unless the range is found to overlap with sufficient specificity.
So why doesn’t Doctrine of Equivalents practice apply to examination for 102 purposes?
“But how to get there? England does it without either 112-6 or the DoE.”
That’s nice – but we don’t live under English law, do we?
Here, wear my glasses, they work for me…
Ah Goldilocks, Goldilocks. Not too much scope (112-6) but not too little either (DoE). Rather, a scope that’s just right, exactly commensurate with the extent of the contribution to the art.
But how to get there? England does it without either 112-6 or the DoE.
112-6 deters drafters from claiming conceptual/ functional. As MM notes above, the consequence is claims to concrete realisations. But they get obsolete and the claims then fail to cover literally the new realisations. So then you need Rader’s DoE to compensate them.
All this reminds me of the old process of “wheel balancing” when you had a new tyre fitted to an existing steel wheel of your auto. Little lead weights on the rim would ensure the whole thing spins freely, without damaging vibrations. But the thing to remember was: always strip off the wheel the weights that were correct for the discarded tyre, before installing the weights needed to balance the new tyre. DO NOT leave them in place.
AFAIK, no other country has a 112-6 provision. I think it is nmore trouble than it is worth. After all i) how do we know when it bites and when it does not, and ii) how do we know when the DoE will bite, and when it will not?
If your first is purposefully narrow, that should not be a concern.
The effect of amendments in continuations on the parent application should be a concern if the point of keeping the claims “purposefully narrow” in the parent case was to avoid Festo estoppel. But maybe you had a different reason for proposing your strategy as the “better tactic” (also not sure what tactic you were comparing to).
If your first is purposefully narrow, that should not be a concern.
draft the first application’s claims so that amendments can be avoided, and then strive for more proper scope in continuation applications.
Just make sure your client is aware that amendments made to the claims in the continuation application(s) may affect the scope of equivalents in the first case.
“Of course, the best way to avoid presenting claims that are likely to require amendments is to understand what the eligible invention is.”
Easy to say by someone like you that drafts minimal coverage picture claims with such ‘quality’ (which makes the typical quality for applications from your art units even lower on average).
The truth of the matter is that the better tactic is to draft the first application’s claims so that amendments can be avoided, and then strive for more proper scope in continuation applications. The plain truth is that to obtain optimum coverage, amendments should be expected – rather different than the Pollyanna advice from MM.
Welcome to the desert of the real.
One may ask: why would there be renewed judicial interest in the doctrine of equivalents? One possibility: developments in other areas of patent law, such as the “abstract idea” restriction on Section 101 patent eligible subject matter, are creating pressures on patent applicants to formulate claims that are specific and narrow in literal scope.
A far more likely explanation for applicants’ formulating claims that are “specific and narrow in literal scope” (assuming that is actually happening) is the Festo decision itself. The best way to preserve one’s rights to equivalents is to avoid presenting claims that are likely to require amendments. Of course, the best way to avoid presenting claims that are likely to require amendments is to understand what the eligible invention is. I’ll leave it to the peanut gallery to discuss whether a prosecution strategy focused first and foremost on preserving equivalents is a worthwhile strategy in all cases, or just some cases, or never.
Also, many (most?) of the “inventions” that run into eligibility problems are not the sorts of inventions that can be saved by claiming “with specificity.” See, e.g., the claims asserted in Prometheus v. Mayo which recited fairly specific metabolic levels. They could have added ten decimal points to those numbers and it wouldn’t have made any difference.
Lastly, I wouldn’t put it past certain judges on the Federal Circuit to coddle patentees with liberal application of the DoE. But even those judges know that you can’t get use the DoE to capture ineligible subject matter.
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