Doctrine of Equivalents: On the Rise Again?

By Dennis Crouch

Brilliant Instruments v. GuideTech (Fed. Cir. 2013), Majority Opinion by Judges Moore and Reyna with Judge Dyk dissenting in part.

 Shalom Kattan was a prolific inventor while an employee at GuideTech. When he left to form his own company, Brilliant Instruments, GuideTech threatened Kattan with charges of patent infringement. In 2009, Brilliant sued GuideTech for declaratory judgment of non-infringement. Patent Nos. 6,226,231, 6,091,671, and 6,181,649. In the litigation, district court judge Wilken sided with Brilliant and issued a summary judgment order of non-infringement. In a split decision, the Federal Circuit has reversed-in-part — holding that GuideTech still has an infringement argument under the doctrine of equivalents.

The patent statute defines direct infringement liability for someone who “makes, uses, offers to sell, or sells any patented invention” without authority of the patent holder. For more than 150 years courts have seen the “patented invention” as being roughly defined by the patent’s claims and infringement occurs when someone’s unauthorized activities include each element of a patent claim. Using its common law power, the Supreme Court long ago expanded the scope of infringement beyond the literal confines of claim elements in order to also capture “equivalents.” Thus, even if outside of the literal scope of a written claim, an accused infringer may still be liable if its activity is deemed equivalent to the claimed invention. In Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), the Supreme Court severely limited power of the doctrine of equivalents by ruling that the equivalents test must be done on an element-by-element basis rather than by focusing on the claim as a whole. In that case, the Supreme Court wrote:

In our view, the particular linguistic framework used [for the Doctrine of Equivalents] is less important than whether the test is probative of the essential inquiry: Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention? Different linguistic frameworks may be more suitable to different cases, depending on their particular facts. A focus on individual elements and a special vigilance against allowing the concept of equivalence to eliminate completely any such elements should reduce considerably the imprecision of whatever language is used. An analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute element plays a role substantially different from the claimed element. With these limiting principles as a backdrop, we see no purpose in going further and micromanaging the Federal Circuit’s particular word choice for analyzing equivalence. We expect that the Federal Circuit will refine the formulation of the test for equivalence in the orderly course of case-by-case determinations, and we leave such refinement to that court’s sound judgment in this area of its special expertise.

In this case, the claim at issue requires a shunt and a capacitor that is “operatively disposed in parallel” to a “first current circuit.” The accused product also includes a capacitor but it is actually within the first circuit rather than parallel to the first circuit. Thus, there was no literal infringement. However, the patentee’s technical expert analysis (available for the summary judgment) walked through the function-way-result test approved by Warner-Jenkinson and explained his opinion of infringement. The expert had explained:

[D]isposition of the shunt and the capacitor with respect to the [accused] first current circuit … is equivalent to the electrical disposition of the shunt and the capacitor with respect to the [claimed] first current circuit … because it performs substantially the same function (allowing the shunt to control the path of current flow to or from the first current circuit) in substantially the same way (wherein an electrical path from the first current circuit can be traced to either the capacitor or the shunt) to achieve substantially the same result (providing an electrical relationship wherein, e.g., the shunt can direct current to flow from the first current circuit to the second current circuit or from the first current circuit to the capacitor).

On appeal, the Federal Circuit found that that this “detailed application of the function-way-result test to the claim element and the allegedly equivalent feature of the accused product is sufficient to create a genuine issue of material fact for the jury to resolve.” (Like direct infringement, infringement under the doctrine of equivalents is a question of fact typically decided by a jury.)

One aspect of the doctrine of equivalents is the vitiation rule — stating that the DOE may not be used in a way that renders a claim term meaningless. However, almost since its introduction, the Federal Circuit has been rolling-back the doctrine. In the recent case of Deere & Co. v. Bush Hog, LLC, _ F.3d _ (Fed. Cir. 2012), the court wrote that

“Vitiation” is not an exception to the doctrine of equivalents, but instead a legal determination that “the evidence is such that no reasonable jury could determine two elements to be equivalent.” The proper inquiry for the court is to apply the doctrine of equivalents, asking whether an asserted equivalent represents an “insubstantial difference” from the claimed element, or “whether the substitute element matches the function, way, and result of the claimed element.” If no reasonable jury could find equivalence, then the court must grant summary judgment of no infringement under the doctrine of equivalents.

[T]he vitiation test cannot be satisfied by simply noting that an element is missing from the claimed structure or process because the doctrine of equivalents, by definition, recognizes that an element is missing that must be supplied by the equivalent substitute.

Vitiation is generally used when the claim element is the “polar opposite” of the accused equivalent. However, even there vitiation is simply a shorthand mechanism for saying that the two elements are “not insubstantially different.” Here, Judge Moore adds to the explanation from Deere:

The vitiation test cannot be satisfied merely by noting that the equivalent substitute is outside the claimed limitation’s literal scope. Rather, vitiation applies when one of skill in the art would understand that the literal and substitute limitations are not interchangeable, not insubstantially different, and when they do not perform substantially the same function in substantially the same way, to accomplish substantially the same result. In short, saying that a claim element would be vitiated is akin to saying that there is no equivalent to the claim element in the accused device based on the well-established “function-way-result” or “insubstantial differences” tests.

Judge Moore goes on to open the door for even polar opposites to be equivalents — noting that proving equivalents “will be more difficult when the accused structure has an element that is the opposite of the claimed element, especially where the specification or prosecution history highlights the differences.”

Applying these concepts to the facts of this case, we conclude that summary judgment must be reversed. The element at issue is: “wherein said shunt and said capacitor are operatively disposed in parallel with respect to said first current circuit.” … Everyone agrees that the capacitor in the accused device is not located in exactly the same place as the claimed capacitor, but is the change in location an insubstantial difference? We conclude that, viewing all factual inferences in favor of GuideTech, it has created a genuine issue of material fact which precludes summary judgment.

On remand, the equivalents question should then go to the jury.

In dissent, Judge Dyk argued that the expert report did not actually consider equivalents on a limitation-by-limitation basis as required by Warner-Jenkinson.

  

102 thoughts on “Doctrine of Equivalents: On the Rise Again?

  1. Can any one define me is that My process infringement under the doctrine of equivalents? if process claimed process is A+B in presence of C reagent to get D product and I used A+B in presence of E reagent to get D product. The function of reagent C and E are same. If it infringe then how I defend the same…

  2. … and under ‘pith and marrow’ it wasn’t necessary to have an equivalent to every element, which again is rather different from US jurisprudence.

  3. For Lord Diplock’s ‘purposive construction’ test from Catnic to be applied here, we would have to throw out In re Morris (Broadest unReasonable Interpretation). Bloody good idea, too, but it has little to do with the doctrine of equivalents. The latter used to be ‘pith and marrow’ in UK law, but I think that has been replaced with a new test.

  4. the obvious lack of listing all the statutory classes

    Right, that’s the one that reasonable people like me ignored. As IBP already wrote.

    the totally incorrect view of claiming with functional elements being excluded

    Where did he say that “claiming with functional elements” was excluded? Answer: He didn’t say that. Of course, nobody expects you to apologize, Humpty.

    Here’s what IBP said: The whole point of permitting utility patents [on machines, manufactures, or compositions] is to cover a machine, manufacture, or composition, which are defined, and therefore claimed, in terms of structure

    That’s not a fallacy. That’s 100% accurate. You can’t claim a new machine merely by reciting a new fucntion without structure. If you could do that, then why would the Fed Circuit have had to dream up a silly argument about a flowchart being “electronic structure”?

    Anyway, get used to it anon. Everyone is moving on. Meanwhile you’re out on a raft screaming like a derelict who lost his favorite volley ball.

  5. List:

    All.

    (Lol , lets just start with the obvious lack of listing all the statutory classes, move on to the totally incorrect view of claiming with functional elements being excluded, and we can gather your usual pack of 1_ies from there)

  6. The statements regarding the vitiation test are troubling, since that test was/is one of the only solid aspects of determining DOE. All else is etherial

    I’ve always felt that Festo in combination with Johnson & Johnston provided a more robust defense to the d.o.e. Vitiation is a bit of an odd duck, for reasons that Dennis alludes to.

  7. That’s absolute carp in my opinion, for this reason: the claiming of the structural relationship element effects a decision to limit the scope of the claim, a decision that should be within the sole purview of the applicant.

    Agreed. The applicant plainly knew how to claim an embodiment wherein “said shunt and said capacitor” were not “operatively disposed in parallel” with the first circuit but they chose not to do that. That embodiment was therefore dedicated to the public and there is no infringement under the d.o.e.. See Festo, Johnson v. Johnston, etc. End of analysis. I still don’t see how this case made it up to the Federal Circuit in the first place.

  8. anon–

    I had hoped that my implied restriction to article claims, and exclusion of method claims, would have been inferred by reasonable and informed readers.

  9. Careful IBP,

    You are slinging arrows at a member of the little circle.

    You might be asked to “Just Shut Up,” or take a vacation, or see a doctor.

    I am concerned for you (of course).

  10. The whole point of permitting utility patents is to cover a machine, manufacture, or composition, which are defined, and therefore claimed, in terms of structure.

    That’s a fallacy on so many levels.

  11. It’s as if Paul F. Morgan and bierbelly are the only commenters here to have actually read the opinions.

    Briefly: IMO Dyk got it right, Moore got it wrong, and Reyna was wrong in siding with Moore.

    This is really somewhat of an incredible situation: in a utility patent (which should be all about structure and therefore the required structural relationships among the various elements), an element specifically reciting a structural relationship, which element is therefore essential to the description of the structure itself, is vitiated.

    The whole point of permitting utility patents is to cover a machine, manufacture, or composition, which are defined, and therefore claimed, in terms of structure. This is why others are free to make and use machines, manufactures, and compositions of different structure, but accomplishing the same result, without infringing, as long as those structural differences are “substantial”.

    Here, Moore and Reyna have effectively rendered an expressly recited claim element insubstantial.

    That’s absolute carp in my opinion, for this reason: the claiming of the structural relationship element effects a decision to limit the scope of the claim, a decision that should be within the sole purview of the applicant.

    A claim element should not be able to be considered “substantial” for purposes of literal infringement, but “insubstantial” for purposes of infringement under the DoE, because the ultimate goal of the two tests is the same: to determine if there has been infringement of the claim…THE claim. Singular, NOT effectively “two different claims” as decided by Moore and Reyna, one with and the other without the structural relationship element.

    On page 8 Moore concludes that there was no literal infringement of a claim effectively including the structural relationship element, and then on page 12 she concludes that there might be infringement under the DoE of a claim effectively not including the structural relationship element.

    If I were the appellee, I would petition for an en banc rehearing on the DoE issue. Dyk seems exactly correct in both his understanding and application of the DoE.

  12. No, Max, I will let your post stand as the steaming pile that it is.

    There is nothing I can add, and no way that I can add it, that will meaningfully expose the weaknesses of your post better than was accomplished by your post itself.

    It’s a classic, IMO among the best-ever gaffes in the history of this blog.

  13. Too subtle for me there IBP. The rest of the world does include England you know and Englan taught me all I know about patent law. I try to keep as up-to-date on the English law reports as the ones reported here. In England, means for in a claim really does mean means for.

  14. “advises their clients to leave subject matter out of their patent application in order to increase the odds of a successful doctrine of equvalents [sic] argument.”

    That is vastly different than what anyone , including Newman had said.

    No, Humpty, it is not “vastly different” from what Newman said. It is, in fact, a very accurate expression of what Newman expressly wrote.

    You seem to have a very difficult time with anything that does not fit your world view

    That’s pretty funny coming from the guy who weekly re-defines words to cover up his factual errors.

    whether or not the “bar” was full of it was quite beside the point that she was accurate in her statement of what the bar was about.

    Yes, but it’s not “beside the point” that we were discussing: applicants did not start leaving subject matter of their applications in order to improve their chances of snaring infringers under the doctrine of equivalents. Just read the thread, you dissembling goon. You started out by arguing that applications got shorter as a result of Johnson & Johnston, an assertion that you and “the Bar” and Judge Newman were wrong about (5:45 pm). And unlike “the Bar” and Newman, you actually had access to data proving that you were wrong. Yet you went ahead and shot yourself in the face anyway.

  15. Max–

    “Everywhere else in the world “means for” means “means for”.”

    lol

    You know, Max, your comment belies a very civil-code mentality, with a rigid adherence to its foundational myths.

    That type of adherence is why jokes about it will always be funny, to those with active minds.

  16. Why don't you ask Rudy himself?

    Because the problem of functional claiming only involved claims that had a point of novelty and did not involve old elements, we ended up recommending a statutory fix that would mandate a rule of construction that essentially would give such claims full scope while reserving the "corresponding structure" approach to clarification of the "non infringement" section of 282 per the remark in Graver Tank that Westinghouse really was an example of the "reverse doctrine of equivalents", i.e., where the infringement was literal but nevertheless the infringement was not the equivalent of the disclosed means.

  17. Good point. On reading the article I found it almost incredible that the CAFC, after nearly 30 years of trying to eliminate the DOE would open the door so wide to its retention and even expansion. The statements regarding the vitiation test are troubling, since that test was/is one of the only solid aspects of determining DOE. All else is etherial, made more so by the SCOTUS.

  18. What? The “position” that I’m knocking down is…

    No. That is not the strawman you set up. Read my post again – the part I quoted from you was: “advises their clients to leave subject matter out of their patent application in order to increase the odds of a successful doctrine of equvalents [sic] argument.

    That is vastly different than what anyone , including Newman had said. The fact that you then go on to repeat your strawman, makes it no less a strawman. You getting snide about my identifying your strawmanning is quite needless. Let me know if you are still not aware of your strawmanning.

    Further, the post that you reference must be adjusted in time for the proper subject – the post dealt with patents – not directly applications at the relevant time.

    Finally, whether or not the “bar” was full of it was quite beside the point that she was accurate in her statement of what the bar was about. Please note that no one indicated that the bar was accurate in our discussion. If you want to set that (accuracy) up as another thing to knock down, well, I will just label your actions for what they are.

    You seem to have a very difficult time with anything that does not fit your world view Malcolm.

  19. (You set up a position that no one proposes, just to knock it down).

    What? The “position” that I’m knocking down is the one proposed by Judge Newman: the adverse effect on the disclosure of information in patents – an immediate and foreseeable result of this ruling.

    Note the term “immediate.” There was no such discernable effect, even five years later. On the contrary, applications got bigger — the complete opposite of Newman’s prediction.

    As I said, I’m not aware of anyone who advises their clients to leave subject matter out of their patent application in order to increase the odds of a successful doctrine of equivalents argument. That would probably constitute malpractice. Let me know if you are aware of any proponents of that strategy.

    she was not off in either what the bar was saying

    The “bar” was full of it.

  20. That’s a good chart, but not quite on the time factor for the particular item under discussion. I would suspect that application writing (as opposed to the charted patents granted) would likely lag the decision by considerably more time.

    I was also thinking of a Prof. Crouch article much more near in time than 2007 – I thought there was an update within the last 2-3 years that in fact bore out a reversing trend from the link you presented.

    As to “advises their clients to leave subject matter out of their patent application in order to increase the odds of a successful doctrine of equvalents [sic] argument.” – I would certainly hope no one buys into that strawman argument. (You set up a position that no one proposes, just to knock it down).

    As to Newman being dead wrong – well, let’s clarify that _ she may have been off on a prediction – even if we take that just for arguments sake – (that happens with predictions), but she was not off in either what the bar was saying, nor in her treatment of the law (in my opinion).

  21. I believe that Prof. Crouch ran a story on the fact that applications are in fact trending shorter.

    As I recall, that’s a recent trend and it is almost certainly a direct response to fee increases and has nothing to do with Johnson & Johnston or any other doctrine of equivalents case law. Johnson & Johnston is ten years old. Average application length was growing prior to Johnson & Johnston and continued to grow steadily for years after the case.

    link to patentlyo.com

    I’m not aware of anyone who advises their clients to leave subject matter out of their patent application in order to increase the odds of a successful doctrine of equvalents argument. As I said, that’s a fool’s game. Newman was dead wrong. That’s okay. It happens. Thankfully hers was the dissenting opinion.

  22. For the record, patent applications did not get shorter as a result of this decision

    Actually, that’s not true.

    I believe that Prof. Crouch ran a story on the fact that applications are in fact trending shorter. Plus, anecdotally, the content of applications is being trimmed down – unless a continuation family strategy is being planned.

    “Worrying” may be a fool’s game – ignoring the reality that the doctrine is in play is even more so.

  23. Newman For example, the adverse effect on the disclosure of information in patents – an immediate and foreseeable result of this ruling – has not been recognized by any of my colleagues, despite the fervid warnings of the bar.”

    For the record, patent applications did not get shorter as a result of this decision. There were no “adverse effects.” As LB points out upthread, worrying about the doctrine of equivalents when preparing a patent application is a fool’s game.

  24. Hi LB. There is no “typically” about it. I work with sole US practitioners, small US patent firms, medium-sized ones and big ones. There is a gulf of difference between those US patent attorneys interested in non-US patent law and those who are not.

    You make an excellent point about the “get a claim allowed” mentality. For me, an important difference between prosecuting at the EPO and the USPTO is the presumption of validity, deference to the PTO, and the C+C standard. In Europe, nobody, but nobody, gives any deference after issue to anything decided by the Patent Office prior to issue. Opponents and petitioners for revocation have only to get over the “balance of probability” and the issued patent (unless the owner comes up with an admissible rescue amendment)is revoked. In consequence, the EPO Examiner is your friend and you hope he or she examines diligently and intelligently, for then you have some chance (if you take to heart what the Examiner is putting to you) of going to issue with robust claims and thereby withstanding validity attacks after issue. This philosophy is something else that is beyond the comprehension of some of my US-based instructing associates. It is not surprising for me, that so many US corporations are taking European prosecution back in house.

  25. It is as if what I just explained simply “does not compute”

    Maybe you aren’t the only one who thinks “but that doesn’t matter, for it is easy to ignore them.

  26. can we clarify whether

    The tree of one word, while (often) missing the entire forest of legal principle…

    (sigh)

  27. Interesting. I’m curious, do you typically work with U.S. attorneys in large firms or small ones?

    Yes, of course they try that trick with USPTO examiners, and they get away with it often enough that they think they’re doing a bang up job of prosecution. And I suppose they are, if the only objective is to get a claim allowed. The state of examination is pretty poor, but there are plenty of bad and/or lazy prosecuting attorneys out there as well.

  28. Good point. I shall have to consider that advice carefully, for my situation is in fact worse than you can imagine LB. When I try to explain to them on the phone, it seems to go in one ear and straight out of the other. As I finish explaining there is a pause and then they say something like “Well, let me tell you how it goes here in the USA” and they then repeat what they told me in their original instructions. It is as if what I just explained simply “does not compute” yet from what you write, it certainly should. What a puzzle.

    LB do they try the same trick with USPTO Examiners. I’m sure i have seen it tried there, many times. But is that all now in the past? Am I remembering from long ago and has the world changed meantime?

  29. Now I know, it could be that I am misunderstanding the instructions I get from my US instructing associates.

    It could also be that those US instructing associates don’t know what they’re talking about.

    By my American instructing associates I am constantly told that the search reference does not prejudice novelty because, on its true construction, feature X in the claim is not in the reference. That is because the X in the reference is not the sort of X that is within the contemplation of the X in the specification, the one that is supporting the claim under examination. That approach just does not work in Europe…

    Ah, the Humpty Dumpty approach: “When I use a word, it means just what I choose it to mean — neither more nor less.”

    Max, that approach is not supposed to work in the U.S., either. You need to get some new U.S. instructing associates.

  30. Fervid. Great word. Thanks anon for that.

    But can we clarify whether the wretched thing is a Doctrine of Equivalents as Dennis has it, or is it a Doctrine of Equivalence, as you have it?

    Now perhaps it doesn’t matter how we think of it, and how we spell it, because we all know, more or less, what we are talking about? Biut if I were writing to, say, the Chief Patents Counsel of a global titan, I would want to spell it in the way my reader expects from any competent patent attorney.

  31. …..and you do help LB, and mightily.

    See, where I have been since 1978 when the EPO opened its doors, English language claims get looked at in a jurisdiction with (currently) 38 Member States and nearly as many languages. Substance counts, while deft wordplay gets you nowhere. So I’m in an environment that is a bit different from yours, in which there is, as you write……”extreme focus on the words of the claim, to the exclusion of nearly everything else, including (sometimes) common sense.”

    Nevertheless, it is not quite as simple as that.

    By my American instructing associates I am constantly told that the search reference does not prejudice novelty because, on its true construction, feature X in the claim is not in the reference. That is because the X in the reference is not the sort of X that is within the contemplation of the X in the specification, the one that is supporting the claim under examination. That approach just does not work in Europe, where claims mean what they say on their face, and where there is no Doctrine of File Wrapper estoppal, whereby an X is an X is an X and to get novelty you will have to take from the specification into the claim a limiting definition of X that delivers novelty over the X in the reference. The pressure for clarity of claiming, prior to issue, is compounded in Europe by the fact that clarity cannot be contested after issue. So the EPO is super-careful to get things as clear as possible before issuing a Notice of Allowance.

    So, in that sense, the EPO looks even more strictly at the precise words of the claim than does the USA.

    Now I know, it could be that I am misunderstanding the instructions I get from my US instructing associates. But if I explain here my bewilderment, the nice thing is that some kind soul then steps forward to put me straight. Of course it can be that others simply tell me I’m “inane” but that doesn’t matter, for it is easy to ignore them.

  32. Would I earn arrows by pointing out that MaxDrei is once again posting a self-contradiction?

    At once saying that Ned’s “magisterial” summary should be enough, he then goes on to provide not one but two avenues of thought that point out quite in fact that Ned’s “magisterial” summary is, in fact, not enough.

    This habit of posting as if in agreement and then disagreeing is a poor rhetorical tool.

    MaxDrei, you may think this clever, but you should be aware that the effect you actually achieve is one of duplicity. The phrase too clever by half comes to mind. Ah, if only your mind was truly desirous of understanding…

  33. Overall, good advise Leopold.

    I concur.

    There is too much hubbaboo made over the doctrine of equivalence, as quite frankly, language is simply an imperfect tool (no matter how well wielded).

    I think the point that Newman makes in dissent in the case that Malcolm presented has merit:

    The court overrules not only its own decisions but also those of the Supreme Court, and reaches out to create a new, unnecessary and often unjust, per se rule. This decision jettisons even the possibility of relief when relief is warranted, and further distorts the long-established balance of policies that undergird patent-supported industrial innovation. It is self-evident that the placement of an increasing number of pitfalls in the path of patentees serves only as a deterrent to innovation. Before taking so deliberate a step, the court should at least consider the consequences. For example, the adverse effect on the disclosure of information in patents – an immediate and foreseeable result of this ruling – has not been recognized by any of my colleagues, despite the fervid warnings of the bar.” (emphasis added), 285 F.3d 1046 Newman dissenting.

  34. Perhaps it is that experience which prompts me here to comment on aspects of US patent law. I wish it well.

    It’s good to know that your motives are pure, MD. But I think some of your concerns are misplaced. Neither the doctrine of equivalents nor 112-6 are nearly as important as you seem to think they are.

    Regarding 112-6 and means-for claims, the advice you should give your clients is quite simple – don’t do it. The legislature thought they were doing applicants a favor, but it simply didn’t work out. C’est la vie, as someone would say. Yes, you may grumble that the law effectively removes the word “means” from the lexicography of useful claim terms, but there are plenty of other (more specific words) to use.

    Now, you invited me above to tell you that the rest of the world needs 112-6. I shan’t do that, but I will tell you that U.S. law needs it, if only to keep prosecutors from using vague words like “means” in a claim. Those words work fine in jurisdictions where claims are actually interpreted in view of the specification, but they don’t work so well with our extreme focus on the words of the claim, to the exclusion of nearly everything else, including (sometimes) common sense. I like it that way, because I’m trained to do it that way, but I wouldn’t necessarily recommend it for everyone else.

    Regarding the doctrine of equivalents, a good patent prosecutor shouldn’t worry at all about it while drafting claims, and should only worry a little about it when amending them. If you use the clearest and best available words to describe the actual invention and don’t load the claim up with unnecessary baggage, the doctrine can only help your client, and probably won’t make any difference at all. On the other side, to the alleged infringer, it also isn’t terribly significant. It gets a mention in every complaint, but that’s just lawyers being lawyers.

    As yet another is fond of saying, I’m here to help!

  35. Thank you Ned. If I had nothing else to do today, I should enjoy finding and reading your Paper. But I do have other stuff to do. And anyway, your summary, magisterial, is enough, I should have thought.

    Functional at the point of novelty? Hmmmmm. The way I see it, such claims are usually obvious because they amount to nothing more than stating something obvious, namely, the problem to be solved. But occasionally, the insight “There is your problem” is enough in inself to solve the PHOSITA’s problem (because, once the PHOSITA has been told what is holding up the works, it is a matter of non-inventive routine to free the blockage). For those cases, a claim that is functional at the pint of novelty promotes the progress and might deserve to be found patentable and not-invalid.

    When patentability/validity is considered consistently and holistically there is no need for 112-6. Just deal with the claim as it is and, if it is so broad that it is obvious, its owner should have the choice of narrowing it or losing it.

  36. And Rudy Hoffman would be turning in his grave to see the twisted view that you now sell out with.

    There is more than one critical and contradicting view between what you post in such heavy revisionist tones and what the law of 1952 actually set out to do (not the least of which is your mantra of Haliburton – as unholy as that is).

  37. One giant point of novelty canard that is in actually completely out of step with how the law actually is.

    Now if this were Ned-Law-Land, this might make for some interesting conversation.

    As it is, this is pure malarkey. It’s a good thing that actual law is NOT driven by single people writing law review style articles.

    And Ned, don’t EVEN get started with Supreme Court likes or dislikes – your mutiny ways betray that you only view the Supreme Court right when they align with your crusades.

  38. MD, I have long thought the Federal Circuit’s construction of 112, p. 6, irrational. The people constuing it seem to give a rat’s a… about its history and origins.

    Fortunately, there are professors like Lemley that are taking a secons look. The Supreme Court likes Lemley. I am not sure the rat’s a… judges do, though.

  39. MD, I co-authored a Law Review article with Rudy Hoffmann about 112, p. 6 called Rossetta Stone. Look it up.

    Since the days of O’Reilly v. Morse, the US has resisted claiming an invention in terms of what it does rather than what it is. Such claims are thought to retard the progress in the useful Arts. They are called functional claims or the equivalent functional-at-the point-of-novelty.

    In Westinghouse v. Boyden Power Brake, the Supreme Court had before it a claim, a combination claim, that was functional at the point of novelty. Rather than holding the claim invalid, they construed the claim to cover the corresponding structure described the specification and equivalents thereof.

    In subsequent cases though, as in Perkins Glue, or in Wabash Appliance, the Supreme Court held that composition claims or article claims that described the invention in functional terms or in terms of its results, rather than what was, were indefinite.

    In 1946, the Supreme Court, in the famous Halliburton case, extended its holdings in Perkins Glue and Wabash Appliance to apply to combination claims like the claims in Westinghouse, i.e., functional at the point of novelty. The Supreme Court declared them indefinite. They later clarified in Faulkner V Gibbs that where the novelty was in the combination as in the combination of old elements, rather than a particular or most crucial element, there was no problem.

    The Halliburton case caused a lot of discussion in the patent bar, particular in view of the Westinghouse case that had construed such functional claims to cover only the corresponding structure and equivalents. Because the patent bar was heavily involved in drafting the ’52 act, they inserted what we now know to be section 112 paragraph 6, now paragraph (f), to overturn Halliburton and restore Westinghouse.

    While I am not certain that the Federal Circuit has fully grasped that the real problem was functionally claiming the invention, i.e. the new elements, so that when a claim functionally defines old elements those functional definition should be given literal scope, I think they are trending that way.

    I should also add at this point that the Federal Circuit does not seem understand that the Supreme Court was concerned with functional claiming at the point of novelty and not with the magic words “means for….” Thus they apply a rule of construction of Westinghouse only when the claim uses the magic words, almost as if the considerations of Morse did not apply except when “mean for…” was being used. Anyone observing the history here would think that the Federal Circuit analysis of section 112(f) as somewhat uninformed and all but irrational.

    But there are others who know the real problem is functionally claiming the invention. Lemley, among others, is leading the charge to have the rule of construction Westinghouse apply whenever a claim is functional at the point of novelty regardless that the magic words “means for” are not used in the claim.

  40. LB it is not mere differences in the legal systems of any two countries that upset me. There are differences a-plenty between patent litigation in England and in Germany but each country thinks its system is the better one, and valiantly defends it against assaults from the patent lawyers of the other jurisdiction. Out of that debate comes incremental improvement in both countries, helped here of course by the fact that litigants can choose which of those two jurisdictions to use when European patent issues are in dispute.

    Perhaps it is that experience which prompts me here to comment on aspects of US patent law. I wish it well.

  41. Will you (or Ned) tell me that the rest of the world is wrong and that what it needs is 112-6?

    I wouldn’t dream of it, Max. And I’m sorry that you are upset by the differences in our legal systems. That upsets me.

  42. Nice sharp riposte LB, except that I did not write that I personally find US patent law to be ridiculous or contemptible. It is what it is and we know how well-meaning legislative acts got it to where it is today.

    I am a patent attorney and have clients, so it is part of my job to explain US patent law to them whenever they ask for such advice. I do not find it easy to help them towards a useful appreciation of the likely scope of a claim that includes “means for” language. My clients, being used to claims that include the words “means for” and what that means in Europe and elsewhere, struggle to grasp how differently such claims are construed under US law. This upsets me. There is no need to put such difficulties in the way of those who pay to set up and run the patent system (and my hourly rate).

    Will you (or Ned) tell me that the rest of the world is wrong and that what it needs is 112-6? I would enjoy that too.

  43. If your client is trying to protect his invention in the best possible way, then keeping continuation patents pending forever is almost best practice.

    It’s certainly best for the patent attorney.

  44. Fish, of course.

    But these expenses are minor in comparison with the benefit.

    If your client is trying to multiply the patents to increase his pile, surely your client would be in favor of obtaining more patents than fewer from the same basic disclosure.

    If your client is trying to protect his invention in the best possible way, then keeping continuation patents pending forever is almost best practice.

    If your client is poor and cannot afford the extra issue fee and/or maintenance fee, and cannot file continuations as a general matter, then trying to pack as much firepower in the smallest package as possible should be given a premium.

    It all depends of course.

  45. I do not even try to explain to inventors the patent law of the USA, in particular its emphasis on the notion of “equivalent”. You see, I fear the ridicule, and I do not like to see something as precious as patent law dismissed with contempt.

    Well yes, if you view US patent law as ridiculous and contemptible, then perhaps you shouldn’t discuss it with inventors. For that matter, perhaps you shouldn’t deign to discuss it here.

  46. Oh please IBP, do find the time to “rip me to shreds”. From such utterances I often learn something useful about how US attorneys think. It helps me in my day job, you see.

  47. Well yes IBP, the unique US statute and case law on “means for”. Indeed.

    Everywhere else in the world “means for” means “means for”. I appreciate that, in the USA, because of 112-6 and the way the courts construe 112-6, “means for” means not what it says but, rather, something very tight and specific, namely, the means described in the specification and things that are “equivalent” to them. I like explaining to inventors the substantive patent law of Europe, the European Patent Convention. I do not even try to explain to inventors the patent law of the USA, in particular its emphasis on the notion of “equivalent”. You see, I fear the ridicule, and I do not like to see something as precious as patent law dismissed with contempt.

  48. LB, I don't have to tell my clients this. They know it.

    Why in the world would you not represent your client to the best of your ability by not point out to them the obvious advantage of this form of prosecution.

  49. IANAE, you are right, we generally have from the inventor what he thinks he invented. But, as we all know, what he actually invented might be quite different. As in war, the unexpected happens when the first shot is fired.

    Drafting claims to capture just the inventive concept and nothing more is the desired objective of us all. But this is not easy, and the real invention emerges from the process.

  50. It never occurred to me to leave them in and argue in an infrigement suit that they were not “critical” to patentability and thus should be read out of the claim. That strikes me as rather risky.

    It strikes me as malpractice.

  51. Recall, if you have two patents and both are infringed, you get two royalties. If you have only one, but two claims are infringed, you only get one royalty.

    Really? Is that what you tell your clients?

  52. We draft claims all the time with unnecessary limitations, not knowing precisely what the prior art is or what the invention really is.

    You must know what some of the prior art is. Why are you even drafting/prosecuting independent claims with more than one limitation you think is novel, unless the invention directly relates to more than one feature?

    After allowance is not the time to wonder whether your claims are properly drafted. We may be human, but we’re also patent attorneys.

  53. I will do it when responding to the FAOM. I inherited a case where the claimed invention was a method claim. Four steps recited. I looked at the examiner’s art, realized that steps 1 and 4 were not needed to define over the art, and deleted them from the independent claim and added them as dependents. The claim to steps 2 and 3 was allowable over the art the examiner had. It never occurred to me to leave them in and argue in an infrigement suit that they were not “critical” to patentability and thus should be read out of the claim. That strikes me as rather risky. Waiting til the notice of allowance to determine what elements/features/limitations should be in the claim to define over the known prior art and then filing a continuation seems too late and too expensive.

  54. AAA, Yes. But I normally simply add broader claims. But I hardly ever go back and fiddle with allowed claims. Therefore, when I get the reasons for allowance and they do not include a particular feature in the claims I thought important, I file the continuation and remove it there.

  55. Also, Max, how does the current law on “means for” limitations figure into your calculus on what is “fair in relation to what the inventor defined as her invention”, regarding the doctrine of equivalents?

  56. By “fair” protection I mean fair in relation to what the inventor defined as her invention. See Ned above: if inventor chooses to define the invention as a picture frame made of wood the interests of fairness do not require the court to extend the scope to cover brushed aluminium. And, extending to Al harms legal certainty, OK?

    Conversely, if the inventor chooses to define the invention using a term like conical”, cylindrical, “slide” or “ratchet”, I see every reason to give that term a purposive constuction to embrace things that might not fulfill the mathematical/dictionary definition but still capture the functional essence of the invention.

    Seems reasonable.

  57. For a tale of woe on this issue check-out Nystrom US 5,474,831: “A board for use in constructing exterior floors has a rounded or curved convex top surface to shed water, and a complementally shaped rounded or curved concave bottom surface for nesting engagement with the top surface of an adjacent board so that a plurality of the boards may be stacked in stable relationship.” link to patft.uspto.gov

    Held at Trial, and upheld on appeal: “Board” does not include a plastic simulated board but means a piece of wood: CAFC 2005 decision.
    link to cafc.uscourts.gov

    Second action: Patentee who failed to assert equivalents infringement in first suit is barred from doing so in subsequent suit CAFC 2009 decision.
    link to cafc.uscourts.gov

    Discussed: Intellirights.com
    link to intellirights.com

  58. “We draft claims all the time with unnecessary limitations, not knowing precisely what the prior art is or what the invention really is.”

    Yes. But once you’ve seen the art that the examiner has used to reject the claim, can’t you, shouldn’t you, don’t you, review the claims and figure out which elements/features/limitations are needed to define over the prior art, and amend your claims accordingly?

    That’s my practice. What is your practice?

  59. “But just how many of us, having received a notice of allowance based on a certain feature, take time to file an amendment removing every other limitation that might not be critical?”

    I would think the answer to that question is: none of us.

    You’re not entitled to entry of amendments under Rule 312 (i.e. after a Notice of Allowance), and I have yet to meet a single examiner who would agree to allow you to amend allowed claims to remove “every other limitation that might not be critical.” I wouldn’t even ask the examiner to entertain such a ridiculous notion.

  60. MD–

    Out of courtesy, I will give you an opportunity to amend your last post–otherwise there is a good chance that I will rip you to shreds, if I have a minute.

    OTOH I might not, as your post speaks for itself.

  61. I am reminded of a quote used on the patent prospector website:

    “Words ought to be a little wild, for they are the assault of thought on the unthinking.”
    - John Maynard Keynes -

    Now while some may cringe at the thought of “assault” (and QQ about “conversations” that are never actually intended to be had), I think the better cringing would be in regards to those that partake of the unthinking.

    The same that certain individuals simply close their eyes to.

  62. Good cite Malcolm.

    Within that cite: “A patentee who inadvertently fails to claim disclosed subject matter, however, is not left without remedy. Within two years from the grant of the original patent, a patentee may file a reissue application and attempt to enlarge the scope of the original claims to include the disclosed but previously unclaimed subject matter. 35 U.S.C. §251 (2000). In addition, a patentee can file a separate application claiming the disclosed subject matter under 35 U.S.C. §120 (2000) (allowing filing as a continuation application if filed before all applications in the chain issue). Notably, Johnston took advantage of the latter of the two options by filing two continuation applications that literally claim the relevant subject matter.

  63. A split panel remand of a summary judgment, as here, is not a good test of whether or not the very low odds in recent years of actually winning an infringement suit solely with the doctrine of equivalents has significantly improved for a FINAL judgement, given their two very different review standards. Especially for patent owners, who then have a full burden of proof of infringment.

  64. IBP thanks for that feed. Answer: Yes and No.

    Yes, the correct balance to strike is between fair scope of protection and reasonable legal certainty. No, the tool to do it with is not the DoE, because the DoE does nothing for the cause of legal certainty and nothing for the cause of “fair” protection.

    By “fair” protection I mean fair in relation to what the inventor defined as her invention. See Ned above: if inventor chooses to define the invention as a picture frame made of wood the interests of fairness do not require the court to extend the scope to cover brushed aluminium. And, extending to Al harms legal certainty, OK?

    Conversely, if the inventor chooses to define the invention using a term like conical”, cylindrical, “slide” or “ratchet”, I see every reason to give that term a purposive constuction to embrace things that might not fulfill the mathematical/dictionary definition but still capture the functional essence of the invention.

    I think a DoE is more trouble than it is worth. Because it exists, courts anmd litigators think in terms of literal infringement and infringement by equivalent. One species or the other. Truth is though, there is no such thing as sub-species literal and equivalent. According to the Statute, infringement is a binary Y/N question. Arguing about literal infringement, and infringement by equivalent sets up irrelevant legal tests which obfuscate rather than elucidate.

  65. On occasion in the past I have filed an RCE, Ned, to either take an unnecessary limitation out of a broad claim and put it in a new dependent claim or presented a new broader independent claim. But with the out of control RCE backlog that is less of an option now.

  66. Max,

    Regarding the doctrine of equivalents, “have you anything against its requirement to balance fair scope of protection against reasonable legal certainty? That is the correct balance to strike, is it not?”

  67. What is inane MaxDrei is the transparent soapbox and lack of any real desire of yours to have an actual conversation.

    That’s why your “I’m here to learn” TM shtick was so laughable.

  68. My point is that the US patent statute does not require the courts to use equivalents in deciding upon the extent of protection given by any particular claim. Subject to any binding effect on it of its own precedent, the supreme court of the USA is free to decide what is the meaning of any “Doctrine of Equivalents”. Is that so inane?

  69. Thanks Fly for that feed.

    Art 69 EPC was a political fudge in 1973 and again in 2000. But nevertheles, Fly, have you anything against its requirement to balance fair scope of protection against reasonable legal certainty? That is the correct balance to strike, is it not?

    Next, what do you say about 30 years of jurisprudence in the courts of DE, NL, GB, on pan-European infringement cases where courts in those three countries apply the same law to the same claims of the same EPO patent, and the facts of the infringement are the same (even if the process of fact-finding varies between the jurisdictions)? In such cases, are those courts converging, or diverging, on what is an infringement and what is not? What is your practical experience of litigating 50:50 cases in those three jurisdictions? Does it reveal to you that strtiking the balance betwen fair protection and reasonable legal certainty gets easier to do, and more predictable, year or year. Do you find, like me, that when the facts of infringement are not in dispute, the variance is greater between different judges in the same jurisdiction than it is between those three different jurisdictions?

  70. What I do is file a broadening continuation removing the non critical limitations.

    Uh … right. But why should you (meaning “anyone”) be entitled to equivalents to those “non-critical” limitations in the first case?

    If the element in question has nothing to do with patentability or validity, and that is quite apparent from the file history, I think you should read the claim as if the element were not even there.

    Wow! Talk about a new paradigm for patent law.

  71. anon, we patent attorneys are human. We draft claims all the time with unnecessary limitations, not knowing precisely what the prior art is or what the invention really is. The progress of a claim through the Office can quickly find what really is important. But just how many of us, having received a notice of allowance based on a certain feature, take time to file an amendment removing every other limitation that might not be critical?

    What I do is file a broadening continuation removing the non critical limitations. What is your practice?

  72. m, depends to me what the invention is — what is the departure from the prior art.

    If the element in question has nothing to do with patentability or validity, and that is quite apparent from the file history, I think you should read the claim as if the element were not even there.

    For example, assume the invention is a picture frame. You claim four pieces of wood attached together at their corners.

    The patentability hinges entirely on the structure.

    The infringer, instead of using wood, uses plastic.

    Plastic, at the time, was a well known substitute for wood in these applications.

    I say, there is infringement.

    In contrast, if the picture frame was old and the novelty lay solely in the wood because of it particular properties, I would not automatically assume that plastic was an infringement. In fact, I would assume the opposite.

  73. Yet another MaxDrei post that is simply internally inconsistent.

    Do as England does (but never mind that England simply does Doctrine of Equivalents under a different (equivalent) name.

    Yet another completely wrong legal forest for MaxDrei.

    Perhaps Leopold will tell me to just shut up for pointing out MaxDrie’s inane posts…

  74. The other easy questions to address on summary judgment are whether the alleged equivalent could have been claimed (by filing a broader claim) or whether it was dedicated to the public (see Johnson & Johnston Fed Cir (2002)).

  75. mmm pins it: where is the public policy reason to excuse poor drafting?

    Even without the Doctrine of Equivalents, litigators require drafters to obfuscate what the invention is. The courts should not condone such a de facto situation. On the contrary, the signal they should be beaming out to patent lawyers is that claim drafting is work on an intellectually higher plane than what mere patent litigators do. Competent drafting is possible, they should aver, and nothing less than that will serve.

    Why? Industry needs to know, alone from what the PTO publishes, whether it infringes a duly issued claim or not.

    There need not be a Doctrine of Equivalents to deliver a fair result to patent owners. Check out how England does it objectively, with purposive construction and the question “What was the inventor using the language of the claim to mean?”. Once a Doctrine of Equivalents is allowed in to the proceedings, sadly straight out of the window goes any predictability in claim construction.

  76. Toss the whole doctrine. It adds confusion and unnecessarily ties up the resources of the court. In essence, this amounts to a huge, unknowable other bite at the apple. If there was no meaningful reason to include a limitation (e.g., location of capacitor) then that’s bad patent drafting and that’s on the patentee. If there is a meaningful reason, then the alternative can’t infringe.

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