1. Infringement & the Doctrine of Equivalents II Class Notes: March 4, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner

2. 03/04/032Law 677 | Spring 2003 Today’s Agenda 1.The All-Elements-Rule 2.The DOE and Means-Plus-Function Claims

3. 03/04/033Law 677 | Spring 2003 Review: Warner-Jenkinson, n.8 With regard to the concern over unreviewability due to black-box jury verdicts.… Where the evidence is such that no reasonable jury could determine two elements to be equivalent, district courts are obliged to grant partial or complete summary judgment.… [U]nder the particular facts of a case, … if a theory of equivalence would entirely vitiate a particular claim element, partial or complete judgment should be rendered by the court, as there would be no further material issue for the jury to resolve.

4. 03/04/034Law 677 | Spring 2003 All-Elements Rule Basics of the All-Elements Rule 1. A chair comprising, a seat at least three legs a back 1.For literal infringement, all elements must be present. 2.For DOE infringement, all elements must be present…though they need only be present “equivalently”

5. 03/04/035Law 677 | Spring 2003 All-Elements Rule Basics of the All-Elements Rule 1. A chair comprising, a seat at least three legs a back For DOE infringement, all elements must be present…though they need only be present “equivalently”. Note: Warner-Jenkinson referred to this rule as one that disallowed “vitiation” of claim language. (Thus, this is sometimes referred to as ‘vitiation’ approach to DOE analysis.) Recall that this had been the rule of the Federal Circuit since 1987.

6. 03/04/036Law 677 | Spring 2003 The All-Elements Rule Dolly v Spaulding & Evenflo (Fed. Cir. 1994) (Rader) Key claim element: “a stable rigid frame…” Evenflo makes a chair that uses the side panels, plus the seat and back panels, as the frame. Consider: Claim construction Why no DOE infringement? What is the ‘rule’ of Dolly?

7. 03/04/037Law 677 | Spring 2003 The All-Elements Rule Weiner v NEC Electronics (Fed. Cir. 1996) (Rader) Claim: required data in ‘columns,’ which was interpreted to require data on the chip to be stored in columns. The accused device stored data in columns, but only on an external data register. Sage Products (Fed. Cir. 1997) (Rader) The claim language required “an elongated slot at the top of the container body” The accused device had a slot (if at all) within the body (not the top). What is the rule of Dolly/Weiner/Sage? Note Ethicon, on page 7-8, ‘limits’ D/W/S to their facts. (What does this mean? Is this helpful? Now what?)

8. 03/04/038Law 677 | Spring 2003 The All-Elements Rule Considering the Vitiation Approach 1.A fastening system comprising A two-inch long bolt A corresponding nut with five sides Wherein the nut includes an insert of plastic material Device A: same system, except bolt is 2.5 inches long. Device A: same system, except bolt is 2.5 inches long. Device B: same system, except the insert is cork Device B: same system, except the insert is cork Do the differences above “vitiate” the element? Or are they “equivalent” to the element?

9. 03/04/039Law 677 | Spring 2003 The All-Elements Rule Considering Vitiation, continued… Which of these claims has more elements/limitations? Which is easier to avoid for infringement purposes? 1. A fastening system comprising: a two-inch long bolt a corresponding nut with five angled sides 1. A fastening system comprising: a bolt, a bolt, said bolt being two inches in length, and a corresponding nut, said nut having five angled sides

10. 03/04/0310Law 677 | Spring 2003 The DOE and Means-Plus-Function Claims 35 USC § 112 ¶ 6 An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 1.What does ‘literal’ (statutory) infringement of a MPF claim element look like? 2.What does DOE infringement look like?

11. 03/04/0311Law 677 | Spring 2003 The DOE and Means-Plus-Function Claims Chiuminatta Concrete Concepts (Fed. Cir. 1998) (Lourie) Means connected to the saw for supporting the surface of the concrete adjacent [to] the leading edge of the cutting blade to inhibit chipping, spalling, or cracking of the concrete surface during cutting. Is this an MPF claim element? (Why?) What is the ‘corresponding structure”?

12. 03/04/0312Law 677 | Spring 2003 The DOE and Means-Plus-Function Claims Chiuminatta, continued… Does the accused device (wheels) infringe literally? Under DOE? How does Chiuminatta distinguish between 112 ¶ 6 equivalents and DOE equivalents?

13. 03/04/0313Law 677 | Spring 2003 The DOE and Means-Plus-Function Claims Odetics v Storage Technology (Fed. Cir. 1999) Claim element: ‘rotary means, rotably mounted…’ What is the corresponding structure? ‘151 Patent Accused Device Bins Bins Axis of Rotation Axis of Rotation Gear Pins A jury found infringement. Why did the district court enter JMOL?

14. 03/04/0314Law 677 | Spring 2003 The DOE and Means-Plus-Function Claims Odetics, continued… How does Odetics distinguish between 112 ¶ 6 and DOE equivalents? Recall the test: oEquivalent function oEquivalent way oEquivalent result What ‘function’ does a 112 ¶ 6 element perform? (Literally? Equivalently?) Why not consider equivalence on a component-by- component basis?

15. 03/04/0315Law 677 | Spring 2003 The DOE and Means-Plus-Function Claims The Chiuminatta and Odetics Approaches

16. 03/04/0316Law 677 | Spring 2003 Next Class Infringement & the Doctrine of Equivalents III Prosecution History Estoppel Prior Art Limits on DOE Reverse DOE