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Author Topic: Four-ish Doctrine of Equivalents questions, even though DoE is all but dead  (Read 1109 times)

MYK

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First, is there any other major caselaw beyond Festo for DoE?  I don't think I've ever heard of a single other case being cited as a precedent related to DoE.

Second, if a limitation is merely moved from one place to another during prosecution (with minor grammatical editing to make it fit in the new location), or is deleted, is there any effect on DoE?

Third, we've occasionally had discussions about how ranges are sometimes construed loosely;  can that happen during infringement hearings, or is that strictly a prosecution-phase risk for rejections?  In particular, can a claim element with "plurality" ever be construed to be infringed by a singleton, because the singleton is "equivalent" to the plurality?  If a claim recites a specific number of items, could a judge during a Markman hearing decide that the numerical limitation is flexible?

Fourth, since Festo, any added limitation to a claim blocks DoE for that limitation.  But how strict is that?  Let's say you have the following:

1. (original) A circuit comprising a vacuum tube, where the grid of the vacuum tube is connected to an oscillator, and BLABLABLAH.

2. (original) The circuit of claim 1, where the vacuum tube is a triode.

You were forced to amend during prosecution to:

1. (currently amended)  A circuit comprising a vacuum tube, where the grid of the vacuum tube is connected to an oscillator, and BLABLABLAH; where the vacuum tube is a triode.

2. (cancelled)

Then someone invents transistors.  Does this mean that you've completely lost DoE for transistors, even though a basic NPN transistor is equivalent to a triode?  I understand that Festo would block you from arguing that a pentode would infringe (because that was the cause of the rejection and amendment) or even one of those four-pin transistors (can't think of the name), and that makes sense, but completely shuttering all equivalents such as a basic 2N2222 NPN seems overly harsh.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

still_learnin

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Ah, an infringement related question, we don't see too many of those :-) A few quick thoughts ...

First, is there any other major caselaw beyond Festo for DoE?  I don't think I've ever heard of a single other case being cited as a precedent related to DoE.

The (somewhat narrow) holding of Festo relates to whether an amendment triggers application of DoE. Therefore, I'd expect other cases to be cited when DoE is implicated. Usually a blurb from the Fed. Cir. about the same way/function/result test.

Third, we've occasionally had discussions about how ranges are sometimes construed loosely;  can that happen during infringement hearings, or is that strictly a prosecution-phase risk for rejections?

Claim construction is always a part of an infringement case, of course, so each party is concerned about a broad/narrow interpretation of the claim terms at issue :-)

In particular, can a claim element with "plurality" ever be construed to be infringed by a singleton, because the singleton is "equivalent" to the plurality?  If a claim recites a specific number of items, could a judge during a Markman hearing decide that the numerical limitation is flexible?

I don't know of any case law on this. Off the top of my head, I'd say DoE should not transform "more than one" into "one" because to do so would vitiate the language "plurality" (where "vitiation" is one of those doctrines used to avoid DoE). 

If a claim recites a specific number of items, could a judge during a Markman hearing decide that the numerical limitation is flexible?

I don't know.

A random google search (for DoE and "vitiation") turned up a write-up on a Fed. Cir. case where "reasonable jury could conclude that the use of a value slightly outside of the range specified in the claim infringed under the doctrine of equivalents, and therefore the limitation would not be vitiated by application of the doctrine." Quote is from the write-up, not the case. Case is U.S. Philips Corp. v. Iwasaki Elec. Co., 505. F.3d 1371 (Fed. Cir. 2007).

I'm not saying that the analysis for a range limitation as in Iwasaki is the same as the analysis for a count / enumeration limitation, I'm just mentioning it as something I saw.

Fourth, since Festo, any added limitation to a claim blocks DoE for that limitation.  But how strict is that?
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Does this mean that you've completely lost DoE for transistors, even though a basic NPN transistor is equivalent to a triode?  I understand that Festo would block you from arguing that a pentode would infringe ... or even one of those four-pin transistors (can't think of the name), and that makes sense, but completely shuttering all equivalents such as a basic 2N2222 NPN seems overly harsh.

As I recall, Festo says amendments (where applicable) lose equivalents "between" the original and the amendment. I'm not familiar with the case law discussing how you decide when a particular something lies in "between."

Sounds like you've got some reading to do :-)
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MYK

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I don't know of any case law on this. Off the top of my head, I'd say DoE should not transform "more than one" into "one" because to do so would vitiate the language "plurality" (where "vitiation" is one of those doctrines used to avoid DoE).
Thanks!  That's the exact word I needed.  Found this one: Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), which looks like a useful launching-off point.  To the Westlawmobile, Learnin!
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

eighteighteight

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I think Eagle v Arrow may be of interest to you. IIRC, it said something along the lines of "one component of an accused device can be equivalent to two distinct components recited in a claim." This would seem to indicate that "more than one" element of a claim can be combined into "one" element of an accused device, and still infringe under DOE.
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