Infringement & the Doctrine of Equivalents III Class Notes: March 6, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner

03/06/032Law 677 | Spring 2003 Today’s Agenda 1.Prosecution History Estoppel 2.Prior Art Limits on DOE 3.Reverse DOE

03/06/033Law 677 | Spring 2003 Prosecution History Estoppel PHE Illustration Patent ‘123 discloses a lighting system, using colored bulbs; a blue color is given as an examplePatent ‘123 discloses a lighting system, using colored bulbs; a blue color is given as an example The prior art contains very similar systems, including those using red colored bulbsThe prior art contains very similar systems, including those using red colored bulbs Scenario 1:Scenario 2: Original claim:Original claim: A lighting system comprising: A lighting system comprising: … a colored bulb … … a blue light bulb … Amended claim: A lighting system comprising: … a blue light bulb …

03/06/034Law 677 | Spring 2003 Prosecution History Estoppel Scenario 1:Scenario 2: Original claim:Original claim: A lighting system comprising: A lighting system comprising: … a colored bulb … … a blue light bulb … Amended claim: A lighting system comprising: … a blue light bulb … Which of the following are covered (in each scenario) (and, why?): Systems with blue bulbs Systems with red bulbs Systems with green bulbs

03/06/035Law 677 | Spring 2003 Prosecution History Estoppel Festo (USSC 2002): How does the court describe the theory of PHE? What is the goal of the doctrine?How does the court describe the theory of PHE? What is the goal of the doctrine? To what sort of amendments does PHE apply? (Why?)To what sort of amendments does PHE apply? (Why?) When PHE applies, how much of the claim scope is surrendered?When PHE applies, how much of the claim scope is surrendered? A ‘presumption’ of complete surrender… But, cases where surrender is inappropriate: o‘Unforeseeable’ equivalent o‘Tangential’ rationale for amendment oOther ‘unreasonable’ cases

03/06/036Law 677 | Spring 2003 Prosecution History Estoppel Festo, continued … Do you agree with the court that: “the nature of language makes it impossible to capture the essence of a thing in a patent application”? (p. 10) And, do you agree that amended language is unlikely to be any better? (p. 17) Is PHE really about the scope of patents (and the tension between DOE and notice)? Consider: oWho bears the risk/burden/cost of ‘uncertain’ language? oWhat are the incentives that PHE (can) provide? oDid the court miss its chance?

03/06/037Law 677 | Spring 2003 Recap: Limits on the DOE Following Footnote 8… 1.The All-Elements Rule 2.Prosecution History Estoppel 3.Prior art Limitations on DOE

03/06/038Law 677 | Spring 2003 Prior Art Limits on DOE Illustration Original claim A fastening system comprising: A square-headed, stainless steel bolt; and A corresponding nut. The Prior Art Brass hex-headed bolts and nuts. Can you (should you?) get DOE coverage of: Brass, hex headed bolts/nuts Brass, square-headed bolts/nuts

03/06/039Law 677 | Spring 2003 Prior Art Limits on DOE Wilson Sporting Goods (Fed Cir 1990)  WSG invention: golf ball dimple pattern requiring six ‘great circle’ paths without any intersection  Prior art: patterns with six great circle paths, with at least one (and as many as 30 or more) intersections  Accused device: six great circles, with 60 intersections

03/06/0310Law 677 | Spring 2003 Prior Art Limits on DOE Wilson Sporting Goods, continued … Why can there be no infringement, as a matter of law, under DOE?Why can there be no infringement, as a matter of law, under DOE? Court: “a patentee should not be able to obtain, under the DOE, coverage which he could not lawfully have obtained from the PTO by literal claims.” But the Court notes the accused golf balls were not in the public domain -- they differ from the prior art So is the court’s conception broader than it suggests? (How?)

03/06/0311Law 677 | Spring 2003 Prior Art Limits on DOE Wilson Sporting Goods, continued … Hypothetical Claim Analysis Develop a hypothetical claim, similar to patent claim, but that covers the accused device If the hypothetical claim is unpatentable, then no DOE infringement Why might this be a better analytic process?

03/06/0312Law 677 | Spring 2003 The Reverse Doctrine of Equivalents Westinghouse: even if literal infringement is found, if the accused device is “so far changed from the principle of the device” so that the literal claims do not represent “the actual invention,” then there will be no infringement. (The “reverse doctrine of equivalents”.) But … If you propose a claim construction that doesn’t represent your actual invention, what should happen? oDo we need the rDOE? Note: the Federal Circuit has never found rDOE

03/06/0313Law 677 | Spring 2003 Next Class Infringement & the Doctrine of Equivalents IV Class Exercise