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Topic: Doctrine of equivalents

In the News (Tue 2 Dec 08)

Damian Green

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Crimson Tide

Tommy Tuberville

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Vilasrao Deshmukh

Wake Forest

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Oklahoma State

	PATENT AMENDMENTS AND PROSECUTION HISTORY ESTOPPEL UNDER FESTO
		Festo examines the interface between the doctrine of prosecution history estoppel and the related principle of infringement under the doctrine of equivalents.
		The doctrine of equivalents is an equitable doctrine established by the courts to protect patented inventions.
		Since the new doctrine of prosecution history estoppel will completely bar the patent owner from asserting infringement under the doctrine of equivalents, there is no way for the patent owner to protect his or her invention.
	www.law.duke.edu /journals/dltr/Articles/2001dltr0011.html (2169 words)

	An Economic Analysis of the Doctrine of Equivalents
		It uses the doctrine of equivalents to hold devices infringing which are not within the literal claim language, but which retain the benefit of the advance bestowed on the public by the patentee.
		Despite the lack of statutory basis for the doctrine of equivalents, one of the writers of the 1952 Patent Act stated that the purpose of the 1952 Patent Act was to codify the existing patent laws in view of recent decisions by the Supreme Court.
		The doctrine of equivalents promotes efficiency in the prosecution of patents by reducing transactions costs to the patentee by giving the patentee that claim area to which he or she is equitably entitled without forcing them to inefficiently expend resources to claim it.
	vjolt.student.virginia.edu /graphics/vol1/vol1_art1.html (9317 words)

	U.S. SUPREME COURT UPHOLDS KEY PATENT LAW DOCTRINE
		The doctrine of equivalents was first defined in the mid nineteenth century, but was made the subject of considerable confusion by a sharply divided twelve-judge en banc Court of Appeals for the Federal Circuit in the Hilton Davis case, with four of the five dissenting judges calling for its abolishment.
		Basically, the doctrine of equivalents holds that an inventor can recover from an alleged infringer of his or her patent even though the patent claims -- the legal definition of the invention in the patent -- are not literally infringed by the accused product or process.
		Insofar as the question under the doctrine of equivalents is whether an accused element is equivalent to a claimed element, the proper time for evaluating equivalency -- and thus knowledge of interchangeability between elements -- is at the time of infringement, not at the time the patent was issued.
	www.oblon.com /Pub/mossinghoff-100.html (1503 words)

	[No title]
		Finally, the Court rejected the argument that the doctrine of equivalents should be limited to those equivalents which were known at the time the patent was issued, or, more strictly, to those that were disclosed within the patent itself.
		If an equivalent was foreseeable at the time of the application then the applicant would have been expected to draft a claim literally encompassing the equivalent, otherwise he cannot rebut the presumption that prosecution history estoppel bars [17] use of the doctrine of equivalence.
		Equivalents utilizing after-arising technology are arguably the only equivalents that could not have been foreseen at the time of the application.
	jip.kentlaw.edu /art/volume3/3-1-1.htm (5684 words)

	Equivalents
		The related doctrine of prosecution history estoppel provides that a patentee may not protect subject matter under the doctrine of equivalents that was surrendered during the prosecution of the patent.
		The doctrine of equivalents is premised on language’s inability to capture the essence of innovation, but a prior application describing the precise element at issue undercuts that premise.
		The equivalent may have been unforeseeable at the time of the application; the rationale underlying the amendment may bear no more than a tangential relation to the equivalents in question; or there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question.
	www.yarbroughlaw.com /Equivalents.htm (1939 words)

	PROTECTING THE NEXT SMALL THING: NANOTECHNOLOGY AND THE REVERSE DOCTRINE OF EQUIVALENTS
		The reverse doctrine of equivalents serves as a possible mechanism to equitably excuse the literal infringement of traditional patents by nanotech inventors in a way that encourages the progress of science.
		The doctrine of equivalents is a double-edged sword because that realism also compels the equitable excuse of literal infringement in a certain subset of situations.
		Merges notes that while the reverse doctrine of equivalents is applied infrequently, the threat alone can force pioneers to lower their terms.
	www.law.duke.edu /journals/dltr/articles/2004dltr0010.html (3506 words)

	IEEE Spectrum Careers
		At stake in Festo was the "doctrine of equivalents," which allows the patent holder to expand a patent beyond its literal terms to cover subject matter it doesn't expressly mention.
		And since substitution of the capacitor is such an insubstantial change, the doctrine of equivalents stretches the corners of the patent to cover it.
		But if the doctrine of equivalents is premised on the unimaginable, and the burden is carried by the party who could have thought of the right words, but didn't, then the beneficiaries of the doctrine will be few.
	www.spectrum.ieee.org /careers/careerstemplate.jsp?ArticleId=i070402 (1630 words)

	VA Bar IP Section NEWSLINE
		The doctrine of equivalents is a well-established concept by which the courts have allowed an expanded scope of protection afforded patents to protect the patentee from the unscrupulous copier, who would copy an invention with only an insubstantial or slight change from the wording of the patent.
		Therefore, application of the doctrine is a question for the fact-finder, either a judge in a bench trial or the jury in a jury case.
		Questions of whether the doctrine of equivalents should be applied by a jury in a jury case and whether the doctrine should always be applied absent literal infringement have been answered with a resounding affirmative.
	www.vsb.org /sections/ip/art5.htm (2719 words)

	Doctrine of equivalents - Wikipedia, the free encyclopedia
		The doctrine of equivalents is a legal rule in most of the world's patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention.
		In Germany, a device is considered to be equivalent if there is identity between the device and the claimed invention with respect to the problem and the effect, but not necessarily the "solution principle" (the manner in which the device operates).
		A doctrine of equivalents analysis must be applied to individual claim limitations, not to the invention as a whole.
	en.wikipedia.org /wiki/Doctrine_of_equivalents (815 words)

	DLA Piper \| US \| Publications \| Supreme Court Issues Eagerly Awaited Festo Decision
		Questions regarding the scope of the doctrine of equivalents have most often arisen when claims were amended to avoid the prior art cited against the patent application during prosecution.
		Festo does not clearly allocate the burden for establishing the second condition of prosecution history estoppel, that the amendment narrowed the claim’s scope.
		Thus, the purpose of the doctrine of equivalents is to correct for the inadequacy of language to capture the essence of the novel invention that is the subject of the claim.
	www.dlapiper.com /us/publications/detail.aspx?pub=718 (2254 words)

	The Doctrine of Equivalents in Patent Infringement
		Since he or she gave up the broader construction to obtain allowance of the claims, the patentee is not permitted to assert that the broader construction is the equivalent of the claim which was finally allowed.
		When a question of equivalency is under study, it is also necessary to know if the patent is a pioneer in a whole new field or if the patent shows only a narrow improvement of a subject that is well known.
		Issues of direct infringement, equivalency, file wrapper estoppel, and limitation of the claims to an invention as disclosed all must be considered before concluding that infringement does or does not exist.
	www.tms.org /pubs/journals/JOM/matters/matters-9005.html (1114 words)

	Baker Botts L.L.P.: Federal Circuit's Application of the Doctrine of Equivalents in View of Supreme Court's Festo ... (Site not responding. Last check: 2007-11-05)
		The Doctrine of Equivalents is an equitable doctrine through which a court may impose liability for infringement on a party even though that party’s product does not literally infringe the claims.
		Hilton Davis Chemical Co., 520 U.S. Thus, as a prerequisite to the application of the Doctrine of Equivalents, all of the limitations of the claim must be present literally or as equivalents in the accused device.
		According to this "all-limitations" rule, the Doctrine of Equivalents may not be used to supply limitations that are wholly missing from an accused device.
	www.imakenews.com /bakerbotts/e_article000148335.cfm?x=a1GJvgr,aWF93mj (862 words)

	United States - Doctrine of Equivalents
		It is true that the doctrine of equivalents renders the scope of patents less certain.
		The equivalent may have been unforeseeable at the time of the application; the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; or there may be some other reason suggesting that the patentee could not reasonably have been expected to have described the insubstantial substitute in question.
		For the time being, therefore, the issue of foreseeability is confined to deciding on the effect of an amendment during prosecution on the application of the doctrine of equivalents; however, we probably have not heard the last of attempts to expand it to the application of the doctrine of equivalents as a whole.
	www.ladas.com /BULLETINS/2002/0802Bulletin/US_DoctrineEquivalents.html (1381 words)

	IEEE-USA Today's Engineer
		This doctrine allows a court to find infringement if the elements of the device in question are "insubstantially" different from those disclosed in the patent.
		The District Court found this difference to be insubstantial, ruling the defendant liable for patent infringement under the doctrine of equivalents.
		All of the pre-Festo application amendments were made based on the assumption that the doctrine of equivalents would be available for equivalents that were not specifically disclaimed by amendments.
	www.todaysengineer.org /archives/pp_archives/nov01/pp1.htm (1261 words)

	US Federal Circuit Appeals Court issues controversial ruling on the application of doctrine of equivalents in patent ... (Site not responding. Last check: 2007-11-05)
		Under US patent law, the doctrine of equivalents is a rule of claim interpretation under which an accused product or process, although not a literal infringement, is still an infringement if it performs substantially the same function in substantially the same way to obtain substantially the same result as the claimed product or process.
		An important limitation on the use of the doctrine of equivalents is that the claims cannot be accorded a construction that would cover the prior art.
		The doctrine of equivalents is a factual issue to be submitted to the jury and not a "matter of equity to be applied at the court's discretion."
	www.wptn.com /pat_010_sep01.htm (1776 words)

	Festo
		The doctrine of equivalents is an equitable doctrine that prevents an accused infringer from avoiding infringement by changing only minor or insubstantial details of a claimed invention, while retaining the invention’s essential identity.
		Although the claim limitation of a screw does not read literally on a rivet, a rivet may nevertheless be found to be an equivalent of a screw, ensuring the infringement of the patent.
		Furthermore, a recognized factor that militates against application of the doctrine of equivalents is the doctrine of prosecution history estoppel.
	www.dryjapat.com /festo.htm (1804 words)

	[No title]
		The doctrine of equivalents arises in the context of an infringement action.
		This is an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements." 41 USPQ2d at 1870.
		Accordingly, decisions involving the doctrine of equivalents should be considered, but should not unduly influence a determination under 35 U.S.C., sixth paragraph, during ex parte examination.
	www.uspto.gov /web/offices/pac/mpep/documents/2100_2186.htm (262 words)

	Doctrine of Equivalents - Still Alive After Amendments - Jaeckle Fleischmann & Mugel, LLP (Site not responding. Last check: 2007-11-05)
		IPC, while conceding that such a computer did not literally infringe, presented a theory of infringement based on the doctrine of equivalents, alleging that Infinite?s panorama file, though not an image obtained directly from a fisheye lens camera, was substantially similar.
		Infinite filed several post-trial motions, including a motion for judgment based on the defense of prosecution history estoppel, and a motion for judgment of noninfringement under the doctrine of equivalents.
		On appeal, the Federal Circuit held that infringement by equivalents is not precluded as a matter of law, and the jury?s verdict of infringement and the award of damages was supported by substantial evidence.
	www.jaeckle.com /Home/Publications/Articles/Articles_156 (1190 words)

	Doctrine of Equivalents: a thorny issue - 2/5/1996 - Design News (Site not responding. Last check: 2007-11-05)
		Recent court decisions attempt to answer these questions, but, it does appear that the Doctrine of Equivalents is to be narrowly interpreted, and the decision to rely on the Doctrine to establish a patent's scope of protection or infringement upon that scope must be well thought out and cautious.
		Generally speaking, the extent to which the Doctrine of Equivalents can broaden a scope of protection depends on the nature of the art in question and the actions of the applicant in obtaining his/her patent, both of which can be used to determine to what extent the Doctrine applies.
		In discussing the Doctrine of Equivalents, I have only brushed the surface; however, one needs to be aware that the Doctrine of Equivalents exists and that conclusions drawn about the Doctrine are complicated and based upon numerous judgments.
	www.designnews.com /article/CA150948.html (760 words)

	Doctrine of Equivalents by IPWatchdog, Inc.
		Shoketsu Kinzoku Kogyo Kabushiki Co., LTD. The Supreme Court vacated and remanded the case, reaffirmed Warner Jenkinson, and perhaps most importantly the Court rejected the complete-bar approach to the doctrine of equivalents adopted by the Federal Circuit in all cases where amendments are made during prosecution of the patent.
		A party who fails to prove literal infringement claim may prove infringement under the doctrine of equivalents when the differences between the claimed invention and the accused device are insubstantial.
		The doctrine of equivalents prevents an accused infringer from avoiding liability for infringement by changing only minor or insubstantial details of a claimed invention while retaining the invention's essential identity.
	www.ipwatchdog.com /doceq.html (971 words)

	8.3 Doctrine of Equivalents
		This case followed a period in which many people felt that the doctrine of equivalents was being over used and that fear that something might be held to be an equivalent to what was claimed was having a chilling effect on investment and innovation.
		The Supreme Court stated that the burden is to be placed on the patentee to establish the reason for an amendment required during patent prosecution as not being required to establish the patentability of the claim.
		The exact scope of protection given by means of the doctrine of equivalents tends to vary depending upon the circumstances.
	www.ladas.com /Patents/Biotechnology/USPharmPatentLaw/USPhar29.html (1392 words)

	NARROW CLAIMING AND THE SCOPE OF EQUIVALENTS
		The doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole.
		There is an inherent conflict between the role of the doctrine of equivalents in preventing a 'fraud on the patent' and the primacy of the claims in defining the scope of a patentee's exclusive rights.
		Baker, Inc. [citation omitted], we explained the contrary principle the "subject matter disclosed in the specification, but not claimed, is dedicated to the public" in determining infringement under the doctrine of equivalents.
	www.oblon.com /Pub/UmbachIPtoday3-01.html (3534 words)

	2003 B
		It is an equitable doctrine meant to protect patentees against devices whose elements perform substantially the same functions, in substantially the same ways, with substantially the same results as the patentee’s claimed elements (the “function-way-result” test).
		Estoppel arises in such situations because a patentee disclaimed an equivalent to obtain its patent; it would be improper to permit the patentee to re-establish rights to the same equivalent through the doctrine of equivalents.
		If the foreseeability rule does not follow from the unforeseeability rule simply by operation of logic, a patent holder could claim equivalency against an asserted equivalent that was reasonably foreseeable to the patentee at the time of amendment.
	www.bc.edu /bc_org/avp/law/st_org/iptf/articles/content/2003103101.html (7247 words)

	SSRN-Substitutes for the Doctrine of Equivalents: A Response to Meurer and Nard by Douglas Lichtman
		SSRN-Substitutes for the Doctrine of Equivalents: A Response to Meurer and Nard by Douglas Lichtman
		Substitutes for the Doctrine of Equivalents: A Response to Meurer and Nard
		The doctrine of equivalents is under attack - by the Federal Circuit, which has in recent years significantly constrained its application through the introduction of more aggressive estoppel and public disclosure rules; and by patent law scholars, who with increasing regularity urge that the doctrine be pared down or even fully repealed.
	papers.ssrn.com /sol3/papers.cfm?abstract_id=726441 (329 words)

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