Doctrine of Equivalents: What Elements Are you Narrowing?

Capture2Millipore v. AllPure (Fed. Cir. 2014)

Patent cases are incredibly expensive to litigate.  However, in a series of recent cases courts have appeared more willing to dismiss cases on summary judgment or even on the pleadings.  This case follows that trend with a holding that the defendant does not infringe the asserted patent claims — neither directly nor under the doctrine of equivalents.  In a prior generation patentees could typically get to a jury with an allegation of infringement doctrine of equivalents. However, the court has simultaneously tightened the rules for DOE infringement and loosened the rules summary judgment — result being that infringement under the doctrine of equivalents is now regularly a summary judgment issue.

Millipore’s U.S. Patent No. 6,032,543 covers an aseptic system designed to add & remove fluid from a container without contamination.  The asserted claims require, inter alia, a “removable, replaceable transfer member . . . comprising a holder, a seal for sealing said aperture, a hypodermic needle . . . wherein the seal has a first [bellows-shaped] end . . . and a second [self sealing membrane] end.” Now, it turns out that the accused AllPure TAKEone industrial aseptic sampling system has all these elements – a holder, a seal with the bellow and membrane ends, and the needle.  In addition all of these parts are removable and replaceable.

Capture

AllPure’s key difference from the patented claim is that the collection of these parts are not removable as a unit but rather may only be removed by dis-assembly.  In construing the claims, the district court wrote: ““the [remove] implies movement or separation of something as a whole, whereas [disassemble] implies deconstruction. . . What Millipore characterizes as removal of a transfer member from the magazine part is, in fact, disassembly of a transfer member.”  Based upon that characterization of the patent and the accused device, District Court Judge Woodlock (D. Mass) found that the claims were not infringed.

On appeal, the Federal Circuit has affirmed — finding that the claimed “removable” transfer member requires that the transfer member be removable as a unit.

We agree with AllPure and the district court. If a transfer member does not exist when the device is disassembled, as even Millipore’s counsel admitted, then there is no genuine issue of material fact over whether the TAKEONE device contains a “removable, replaceable  transfer member” as is literally required by claim 1.

Doctrine of Equivalents: Section 271 of the patent act identifies an infringer as someone who “without authority makes, uses, offers to sell, or sells any patented invention.”  Although the “patented invention” is defined by patent claims, courts have long allowed patentees to enforce their exclusive rights to stop activity that is just-outside the literal scope of the claims. This doctrine of equivalents (DOE) has been with us for over 150 years  See Winans v. Denmead, 56 U.S. 330 (1853)(‘The exclusive right to the thing patented is not secured, if the public are at liberty to make substantial copies of it, varying its form or proportions.’).  However, the doctrine has been substantially limited by the all-elements-rule, Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997), prosecution history estoppel, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), and the doctrine of vitiation. see Wright Medical Technology, Inc. v. Osteonics Corp., 122 F.3d 1440 (Fed. Cir. 1997).

Narrowing Amendment Estoppel: In this case (as in most patents), the applicant had amended its claims during prosecution following a rejection by the patent office examiner to specify the portions of the seal (bellow-shaped and membrane ends).  Although at the time the applicant also made a broadening amendment, this particular amendment was seen as narrowing and designed to recite limitations not found in the prior art.  In particular, following the amendment the patentee argued that “none of the references show or disclose a seal formed like the present one.”  A narrowing amendment is seen as a no-no for the doctrine of equivalents since allowing DOE would essentially allow the patentee to regain patent scope that had been given-up during the prosecution process.  Under Festo, a narrowing amendment during prosecution creates a rebuttable presumption of prosecution history estoppel (PHE) with the result of estopping the patentee from claiming equivalents (DOE) to recapture the narrowed scope.  Here, the appellate panel found that presumption had not been overcome and thus that the patentee was estopped from claiming equivalents.

Narrowing of Sub-Assembly = Narrowing of Whole Assembly: A problem with the defendant’s argument here (and what Judge Prost failed to explain) is the linkage between the narrowing amendment and the asserted equivalents.  In particular, the narrowing amendment added limitations to the definition of the seal sub-assembly but the claimed equivalent was focused on the nature of the whole accused assembly as being disassemblable rather than removable as claimed. The only clue offered by the court is one phrase indicating that the amendment “narrows the seal limitation, which in turn narrows the transfer member limitation.”

Hierarchy of Elements: The battle over a hierarchy of limitations is common in modern doctrine of equivalents. Typically, the battle plays out in terms of the all-elements rule that requires the accused infringer practice each element of the asserted claim either literally or by equivalent.  For patentees, this type of equivalents is typically easier to prove when each “element” is seen as a grouping of limitations – such as the “removable, replaceable transfer member” – and defendants typically look to further granularize the invention so that the “removable” limitation itself would be an element that must satisfy the function-way-result test.   In this case – involving prosecution history estoppel – the patentee would have been better off with the more granularized framework in order to logically separate the “removable” limitation from the narrowed seal limitations.  However, the appellate court glosses-over all of this analysis in its short decision with the unfortunate result of leaving district courts to do the same.

54 thoughts on “Doctrine of Equivalents: What Elements Are you Narrowing?

  1. 8

    I don’t get it. Prosecution estoppel is presumed whenever the language of the claim is changed. But estoppel is an equitable defense, it should NEVER be presumed (just as an injunction should not be presumably awarded when there is an infringement). To me, there has to be obvious change during the prosecution to avoid an examiner’s objection. This should have been submitted to a jury.

    By the way, a stronger doctrine of equivalents is a way to save software patents.

    1. 8.1

      J,

      In what way do you see DoE being stringer than what it is today?

      I would posit that a baseline of understanding already saves software. If I can understand the jump that you envision, I will be in a better position to understand why it is that you think the doctrine needs to be stringer than what it already is.

      Thanks.

      1. 8.1.2

        The DoE would work great if judges would show restraint in using P.H. estopppel and the all elements rule.

        1. 8.1.2.1

          Is this in accord with what I said at comment number 1 below?

          If so, I was hoping for something more – something that would tie into your thought here about “saving software.”

          1. 8.1.2.1.1

            It is in accord with your comment.

            Let me expand my thought a little. DoE will never save a software patent that is not patent eligible, but let’s say the software is an improvement of the computer itself, then a patentee can claim the code and substantial equivalents.

            I think means plus function should be loosened up, too.

            1. 8.1.2.1.1.1

              Thanks J.

              I would add to your comment about loosening up 112(f) to make the observation that the use of functional claim language is not limited to 112(f) (See In re Orthokinetics). Often the “discussions” here make the mistake of thinking that purely objective physical descriptive claiming is the only type of legitimate claiming, and that 112(f) is the only option available to use functional claim language. Readers of the blog would be wise to recognize that such a desired state does not accord with what the law provides.

              As for saving software, I still struggle with understanding what point you are trying to make. DoE will never save a medical product patent that is not patent eligible either. The fact of such a statement does not help me understand how you view software in relation to DoE.

  2. 7

    I think there is a downside to using the wrapper to construe a claim. If the claim is not clear, it doesn’t matter, for one can always find more clarity by trawling through the wrapper.

    In Europe the claim has to be clear on its face before it can get to issue. Unclear adjectives attract objection. This claim is not clear because “removable, replaceable” has no narrowing effect. Just like everything is “flexible” to some degree, even a diamond, so too is everything removable and replaceable, one way or another. To what degree the claim leaves open, as this litigation reveals but was all too clear already during the prosecution.

    I never did understand the Festo logic about the price of narrowing to avoid the art. That is exactly the process when I draft a patent application for filing at the PTO. What is so different about narrowing the definition of the invention after filing as opposed to before?

    1. 7.1

      “In Europe the claim has to be clear is supposed to be clear on its face before it can get to issue. “

      There, FTFY.

      (Assuming tags work)

      “What is so different about narrowing the definition of the invention after filing as opposed to before?”
      – From a doctrinal and policy standpoint that is a very good question. I believe the only answer is, “We (Court) do not like DOE so we’ll narrow it every which way we can”.

      1. 7.1.1

        Sorry, “(Assuming tags work)” apparently should have said, “(Assuming lack of operator error in tagging process)”.

      2. 7.1.2

        Thanks Mellow, for the observation on DoE. As to clarity, EPC Art 84 makes it mandatory that the claim be “clear” and that the Examining Division is to examine whether the case meets ALL requirements of the EPC, before it allows.

        Of course it is trite that no words purporting to define something as ethereal and abstract as an “inventive concept” can ever be absolutely clear. 100% clarity is an asymptotic limit that no claim can ever reach. So your distinction between “clear” and “supposed to be clear” is not clear to me.

        Unless you are trying to tell me that what you think is “clear” and what an EPO Examining Division thinks is “clear” sometimes differs. Can you be clearer? Is that it?

        1. 7.1.2.1

          “Unless you are trying to tell me that what you think is “clear” and what an EPO Examining Division thinks is “clear” sometimes differs. Can you be clearer? Is that it?”

          What I mean is I have plenty of examples where a claimed invention the ED finds to be sufficiently clearly disclosed (on the one hand) differs significantly from what I, the OD and (if the patentee takes it that far) the TBA (on the other three hands) find to be clear.

          We can quibble about whether we’re talking Art.83 or 84, but in the end, when the claims aren’t clear and it matters to me, I’m going to get it revoked.

          In my art area, I see bad claims granted from the EPO quite nearly as often as I do from the USPTO. I enjoy emailing copies of such claims to my EP firm’s managing director (who’s a friend as well as former colleague) for gentle ribbing, since 12 or so years ago when we began the relationship he used to regale me with anecdotes about how much better the ED is than the USPTO examining corps.

          1. 7.1.2.1.1

            Thanks Mellow. Just help me on one thing will you. Given that the EPO won’t look at clarity after issue, how do you know that the OD and the TBA disagree with the ED on whether any particular duly issued claim meets the requirements of Art 84, EPC?

            If we were debating chem/bio I can see that Art 83 would come up quite a lot in opposition, and that there is a fuzzy interface between 83 and 84. But you say you are in medical devices ie engineering. There, Art 83 (enablement) rarely plays a decisive role.

            You say that if a claim isn’t clear you are “going to get it revoked”. That’s bold of you. And perhaps a little precipitate. What if you fail? Is not the claim then annointed with a higher presumption of validity? And I’m curious. Tell me , how do you do it, when Art 84 is not a ground of revocation?

            1. 7.1.2.1.1.1

              Appears “quibble about whether we’re talking Art.83 or 84” was a good prediction. And you’re right that in purely mechanical cases there’s seldom much fuzziness between 83/84.

              But I’m not a mechanical person despite doing medical device work. Many products registered as medical devices depend on very specific chemistries, and nearly all the cases on my opposition docket are chemical in nature.

              You can repeat that Art.84 is not a proper ground until the cows come home, but if you track oppositions in the chemical arts you’ll see that thinly disguised clarity arguments are frequent and are accepted by the OD.

              As for being bold if not precipitate, I would say not, given an “acceptable result” rate of just under 80%. An acceptable result is revocation, amendment satisfactorily narrowing the claim, free license from the patentee in exchange for withdrawal, or statements made on the record by the patentee which clarify (and thereby narrow) what the claim actually means.

              Hey, since we’re spending all this time discussing oppositions, what is your position on the doctrine of poisonous divisionals?

              1. 7.1.2.1.1.1.1

                Good that we agree Mellow, that chemical practice is very different from engineering. I agree that many Art 84 violations have always been smuggled in under Art 83 but as time goes by the Boards are now sharpening the cutting edge between 83 and 84. I think they can’t stop the sharpening process because it is an artefact of ever more refined caselaw.

                I’m happy you get 80% success. I think the OD’s and TBA’s sense what is a “fair” result and then go and get it, by whatever means comes to hand. If you have a persuasive case, you win, even if not by the legally “correct” reasoning. This is an advantage of the freedom given by the absence of Binding Precedent.

                As to poisonous divisional issue, I agree with the elegant notional splitting theory espoused by the IPKat blog (Darren Smythe, I think) which renders it nugatory. I expect the EBA to adopt it, which will blow the whole issue nicely away. I would give you a Link but i) his Piece was about a year ago and might take me some time to find and, anyway, you might already know what I am adverting to.

                But thanks for asking. It’s a serious scare. If the EBA get it wrong, and fail to get to it soon and stamp it out forcefully, they should all be severely castigated

                1. “I think the OD’s and TBA’s sense what is a “fair” result and then go and get it, by whatever means comes to hand.”

                  In a prior position I dealt primarily with composite materials, and I had several cases before TBA chaired by an engineer who had a personal mission to revoke patents that were claimed heavily in terms of parameters.

                  On the one hand, this was good because many of our competitor patents were claimed almost entirely as a combination of parameters and wishful thinkings about the results sought.

                  On the other hand, this was bad because many of our older cases (those granting in those years) also had claims packed with parameters.

                  “notional splitting theory espoused by the IPKat blog”
                  I remember reading that and thinking it would work, but also thinking that we shouldn’t have to do that. I’d prefer the EBA adopt the position that the entire tactic is simply impermissible as conflicting with the legal right to file divisionals (espoused by Rudi Teschemacher and others).

                2. Mellow, I see your reply and would comment that “notional splitting” works just as well with poisonous priorities. They are just as much of an issue as poisonous divisionals.

                  If you make no changes to the text during the Paris year, so your prio doc and your WO publication are identical, you have no self-inflicted “poison”.

                  The poisonous div/prio doctrine punishes filers who file at the end of the Paris year a complete specification that is an improved or modified description of the Same Invention. But I see no “legal right” to refine your specification during the Paris year, so I’m sceptical about your “legal right” theory.

                  Me, I think it a pity that the drafters of the EPC in 1973 did not find attractive the solution written into the UK Patents Act of 1949. When it comes to using the Paris year to improve and refine disclosure and definition of their Invention, I think filers ought to be encouraged, not deterred by the heavy risk of poisoning their own well.

                  But others differ, thinking it a good thing to have identity between the WO and the prio doc.

                3. I have to commend you two. Yours is the first cordial and informative discussion I’ve seen on this board. Bravo!

    2. 7.2

      MD: I never did understand the Festo logic about the price of narrowing to avoid the art. That is exactly the process when I draft a patent application for filing at the PTO.

      Not everyone is like you.

      What is so different about narrowing the definition of the invention after filing as opposed to before?

      The difference is that the PTO has rejected the claim you presented as too broad and you have agreed to amend your claim in order to obtain the patent. You had a choice about how to amend your claim. As a procedural matter, during litigation of your patent the burden is fairly placed on you to demonstrate that, in spite of the fact that you had an opportunity to re-write your claim in any matter of your choosing, you were unable to write it in such a way that you could literally capture the infringing article or process that inspired you to file your lawsuit.

      Seems pretty reasonable to me.

      1. 7.2.1

        “You had a choice about how to amend your claim… you had an opportunity to re-write your claim in any matter of your choosing, [but] you were unable to write it in such a way that you could literally capture the infringing article”

        Doesn’t that leave us still with Max’s original question?

        Two situations:

        (1), my searcher gets me the very best art so I narrow a relevant claim element accordingly, pre-filing. Patent grants with no amendments as to that element and I am entitled to my reasonable range of equivalents as to that element, despite the fact that I narrowed that element to avoid that prior art.

        (2), my searcher does not find that best piece of art, so that element remains in its original (broader) configuration and we file the case. The examiner does find that best art, and I narrow that claim element in exactly the same fashion as in scenario 1. However, I am not entitled to DOE as to that element because I (publicly) narrowed it to avoid that prior art.

        From a policy standpoint, why should there be opposite outcomes? Does it matter that it was done in public view? Or is it a case of blaming the patentee for failing to have obtained that very best search?

        1. 7.2.1.1

          MaxDrei: a situation when I have no clue what my competitor will bring later to the market

          If your level of skill in the art is so low that you have “no clue” what your competitor will bring to market, why is the US patent system obliged to make it more difficult for those competitors to design around the literal terms of your patent? Is this some sort of intellectual handout to “even the playing field” for unintelligent applicants?

          Mellow Marsher: is it a case of blaming the patentee for failing to have obtained that very best search?

          “Blaming”? Seems more like “not rewarding” lazy or ignorant patentees.

          It’s a rebuttable presumption. It’s not the end of the world. You can still get your equivalents if they are so important to you, assuming you haven’t chucked them away in some other manner (which is even easier to do than in the manner we are discussing).

          1. 7.2.1.1.1

            Question from MM on the DoE: “Is this some sort of intellectual handout to “even the playing field” for unintelligent applicants?

            My answer: Most certainly. It is a fraternal act, a hand-out from one set of ignorant Jurist to another set of ignorant Jurist. Non-specialist patent judges accept that non-specialist patent attorneys cannot draft accurately, cannot draft commensurate with the inventor’s contribution to the field.

            England eschews any DoE. That might be because UK patent attorneys cannot practise till they have passed very tough written examinations in specialist claim drafting, and because UK patent judges are patent specialists. who are not susceptible to having the wool pulled over their eyes. Nobody in England sees the need for such handouts to Applicants who choose bad drafters.

            Malcolm I remain with Mellow, unconvinced by your argument that a DoE for pre-filing claims is OK but one for post-filing amended Claims is not .

        2. 7.2.1.2

          And just so there’s no confusion, I don’t have a problem with getting rid of the DoE entirely or, if it is to be given excessive teeth and pumped full of life, then let’s inflate the “reverse doctrine” as well.

          Most people who buy and use displays and computers should be excused for not foreseeing a patent system that would grant claims to, e.g., “new” displays or “new” computers based on the information displayed or stored thereon.

          1. 7.2.1.2.1

            I do not understand what you mean when you say “if it is to be given excessive teeth.”

            Can you discuss this in more detail?

          2. 7.2.1.2.2

            “If your level of skill in the art is so low that you have “no clue” what your competitor will bring to market”

            I don’t think this is a fair characterization. I do mainly medical devices. I am certain that when we introduce a real market-winner, my competitors will within about 5 years some sort of a “me, too” product approved and into market. Whether they will infringe my patent coverage or not, and exactly how they will do so, is difficult to judge several years into the future.

            That said, my competitors are all large corps and they do try hard (so I believe, and as do we) to not infringe competitor patents. Still, it does happen – even if they have a good faith basis for non-infringement when launching, they could be wrong and sometimes are.

            This seems to be quite different from the technology arts. Some years ago I sat in a CLE next to a guy from a tech company and he was very surprised at how much effort we expend doing clearance work on our products, making sure (to the best of our ability) they don’t infringe. His world view was that it’s impossible in his field, so there’s no sense wasting resources attempting such clearances, outside of obvious known patents. Seeing how pathetic so many of the asserted patents are in his field, I guess I have to agree.

            “It’s a rebuttable presumption. It’s not the end of the world. You can still get your equivalents if they are so important to you”

            Actually, they (equivalents) are not important to me at all, excepting situations where someone could be found not to infringe my claim element stating “and comprising about 5% to about 15% polyvinyl alcohol” by having 4.97% or 15.03% PVA.

            I wish you would avoid ascribing motives and address issues instead. In any event, I would actually be more than happy if DOE were completely DOA, excepting issues like mentioned above.

            Again, my only interest is in discussing what the possible policy objectives may be in treating the patentee in my two scenarios very differently.

            1. 7.2.1.2.2.1

              Actually, they (equivalents) are not important to me at all, excepting situations where someone could be found not to infringe my claim element stating “and comprising about 5% to about 15% polyvinyl alcohol” by having 4.97% or 15.03% PVA.

              Given the evolution of case law on the subject of indefiniteness, the use of a wishy washy claim term like “about” is unwise, absent an express clarifying definition.

              If you are worried about this scenario, your best is to keep a continuation pending with written description and experimental support for the broader claim that you feel that you are entitled to. If you lack such support, then why do you feel that you should be entitled to shut down your competitors who are not infringing your claim?

              my only interest is in discussing what the possible policy objectives may be in treating the patentee in my two scenarios very differently.

              I gave the best answer I could. In a nutshell, the doctrine of equivalents is a gift that is especially kind to those astute and diligent patentees who keenly understand both the art and their innovation and who draft their original claims accordingly. Patentees who insist on “trying for a little bit more” don’t get the same kind of love from the patent system.

              1. 7.2.1.2.2.1.1

                Malcolm that helps. I grant you there is policy advantage in rewarding those who make the effort of formulating even before filing their patent application, their perfect Goldilocks claims, that are just wide enough to cover all they want, while not being that tick wider that results in their falling to obviousness attacks.

                1. If you don’t mind my asking, but where is the authority coming from for the insertion of this policy in patent law?

                  Would not the fact that applicants are not required – AT ALL – to do any type of prior art searching control any such insertion of a policy tied directly to not only searching, but the best possible searching?

      2. 7.2.2

        I could agree with you if my prosecution amendment was made with knowledge of the target infringement. But I was thinking more along the lines of Mellow below, and of a situation when I have no clue what my competitor will bring later to the market. in that Situation I still don’t see the logic of giving A a DoE but not B, purely depending on whether the closest art emerges before or after filing the patent application.

  3. 6

    Did Millipore bring this action to stop an upstart competitor? How much did it cost the upstart to defend against it? Is this cost a normal overhead cost of entering the US market? What is there to stop established players always exhausting upstart competitors by asserting claim after dubious claim against them? Is summary judgement the only thing that will keep the upstart alive?

    1. 6.1

      In this case, it looks like AllPure is a Sartorius AG group company, so not quite the Goliath-on-David action you’re imagining.

  4. 5

    Question re this:

    The asserted claims require, inter alia, a “removable, replaceable transfer member . . . comprising a holder, a seal for sealing said aperture, a hypodermic needle . . . wherein the seal has a first [bellows-shaped] end . . . and a second [self sealing membrane] end.”

    ….

    In this case (as in most patents), the applicant had amended its claims during prosecution following a rejection by the patent office examiner to specify the portions of the seal (bellow-shaped and membrane ends). Although at the time the applicant also made a broadening amendment, this particular amendment was seen as narrowing and designed to recite limitations not found in the prior art. In particular, following the amendment the patentee argued that “none of the references show or disclose a seal formed like the present one.”

    I haven’t picked through the prosecution history in detail but if this seal structure was sufficient to distinguish the claimed “transfer member” over the prior art (as suggested by the quote above), why did the applicant keep the “removable, replaceable” limitations in all of its claims? Was it the combination of these various limitations in the “transfer member” that led to the grant of the patent?

    I’m wondering whether the result here driven primarily by the fact that the prior art taught very similar transfer members that were dissassemble-able (as opposed to “removable”). Could the patentee have obtained a claim that literally covered the infringed device or would such a claim have been deemed obvious in view of the prior art? If that were the case, then it makes sense that the Festo presumption was not rebuttable here.

  5. 4

    Would the DoE result have been the same if the amended claim(s) had instead been cancelled … and new claims written?

    Form over function? Function over form?

    1. 4.1

      Would the DoE result have been the same if the amended claim(s) had instead been cancelled … and new claims written?

      If the cancellation and re-writing of a claim was done to overcome a claim rejection, I am 99.9999% sure that’s still going to be “an amendment for patentability purposes” under Festo. Offhand I’m not sure if the issue has been directly addressed but I do know that the Federal Circuit has held that “the fact that the scope of [a] rewritten claim has remained unchanged will not preclude the application of prosecution history estoppel if, by canceling the original independent claim and rewriting the dependent claims into independent form, the scope of subject matter claimed in the independent claim has been narrowed to secure the patent.” ((Honeywell International Inc. v. Hamilton Sundstrand Corporation, 2004 WL 1202997 (Fed. Cir. 2004)).

      It’s also definitely the case that an argument about the narrower scope of a claim term that is relied upon for patentablity (but that does not result in an amendment) will foreclose the capture of the specific equivalents that were given up in the argument, even if the claims are not amended (Deering Precision Instruments, LLC v. Vector Distrib.   Sys., Inc., 347 F.3d 1314, 1324 (Fed.Cir.2003)) but (for reasons that are not entirely clear) the Federal Circuit has held that Festo does not apply in that instance to presumptively foreclose all other equivalents.

      In general, substance tends to triumph over form when it comes to the application of Festo.

    2. 4.3

      No. It would have required a few additional pages of briefing to show that the claim was narrowed, but it would have no substantive effect.

  6. 3

    Three non-patent judges and non-science judges who have absolutely no idea what they are writing.

      1. 3.1.1

        Said O’MALLEY too, whom I actually like and am amazed at how smart she is usually.

  7. 2

    Do I understand this correctly?

    A claim calls for “something about” X, where X consists of A, B, C, D, E, F and G. I narrow element G, and this implicates something about X?

    I would think that at a minimum, the amendment to G must have something to do with the “something about” X, before Festo would apply.

    This ruling seems harsh, uncalled for, and wrong.

      1. 2.1.3

        We should pause for a moment to note the agreement on this issue between Ned Heller and ‘anon’.

        hahahahahaha!

  8. 1

    The Narrowing Amemdment Estoppel that applies “over enthusiastically” has always been a deterrent to claim amendments. Anything short of the actual claim scope that is affirmatively given up (in light of the written record)** should not be used to ‘punish’ an applicant during prosecution. Cascading the surrender will only serve to create MORE patent profanity and make applications depend MORE on the art of the scriviner.

    This is yet another case of foreseeable ‘unforeseen’ consequences.

    **dont get me wrong – the record should be used and claim scope given up in order to obtain a patent should not be recaptureable – but it should be strictly limited to the scope given up that is necessary to overcome the cited art.

    1. 1.1

      Festo saw a rash of applicants refusing to amend claims that were in clear need of amendment because of this issue. I hope the take-home lesson from this case isn’t going to end up being something similar, although it would be an understandable reaction to having every claim amendment put unrelated equivalents in unpredictable jeopardy.

      On a side note, it seems to me that “removable” and “disassemblable” as defined by the court should by definition not be equivalents. Isn’t it substantially more convenient to be able to remove the device as a unit rather than having to disassemble it (which would seem to inform the function/way/result test)?

      1. 1.1.1

        Organizing your specification, claim drafting and prosecution strategies with the goal of ultimately relying on the doctrine of equivalents is unwise. The doctrine of equivalents is a last resort when the infringer has successfully designed around your patent’s literal scope.

        If you want to minimize your prosecution history — an excellent idea for a wide variety of reasons, including saving money for your client — try to focus on claiming the invention in clear terms that avoid the prior art and be sure to include decent written description support for all of the obvious and most valuable variations of your invention.

      2. 1.1.2

        I agree that these two should not be seen as equivalent in any event. But if DOE is asserted, doesn’t the court first have to assess whether any scope of DOE is permitted, then (if yes, permitted) make the call on whether the alleged equivalent is equivalent?

        (BTW, also agree with your comment that this seems a case of “having every claim amendment put unrelated equivalents in unpredictable jeopardy”.)

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