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Author Topic: Doctrine of equivalents question  (Read 514 times)

Patentstudent

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Doctrine of equivalents question
« on: 07-10-18 at 06:22 am »

I am a bit confused with respect to the doctrine of equivalents.
Let's take a hypo in which a transfer system inside a production machine of company A Inc. transports a mechanical component from one machining station to the next using a wagon with wheels that roll over a track with two parallel rail bars. Company A has a granted patent in which the sole independent claim, claim 1, claims that the track comprises two parallel rail bars.     

Can a competitor in principle design around company A's patent by not using a track with two parallel rail bars but by using a 'monorail' for the wagon? Or is the competitor then likely to get into trouble due to the doctrine of equivalents? 

Thank you. 
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Tobmapsatonmi

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Re: Doctrine of equivalents question
« Reply #1 on: 07-10-18 at 12:13 pm »

I am a bit confused with respect to the doctrine of equivalents.
Let's take a hypo in which a transfer system inside a production machine of company A Inc. transports a mechanical component from one machining station to the next using a wagon with wheels that roll over a track with two parallel rail bars. Company A has a granted patent in which the sole independent claim, claim 1, claims that the track comprises two parallel rail bars.     

Can a competitor in principle design around company A's patent by not using a track with two parallel rail bars but by using a 'monorail' for the wagon? Or is the competitor then likely to get into trouble due to the doctrine of equivalents? 

Thank you.


DOE can apply to a supposed infringing article "if it performs substantially the same function in substantially the same way to obtain the same result".

The patentee I would argue is out-of-luck here because he chose to require the two || rail bars, and (IMHO) the monorail fails the "same way" prong.

Others might argue the other end of the stick, of course.

You didn't ask about limitations on DOE but note if the patentee amended his claims in response to a prior art rejection to add the || rails requirement, he has little or (arguably) zero ability to argue equivalents on that feature.
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MYK

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Re: Doctrine of equivalents question
« Reply #2 on: 07-10-18 at 12:16 pm »

The start of the analysis is to look at the claims and prosecution history, and determine whether the applicant was forced to amend that limitation to make it read "two rails".  If so, prosecution history estoppel prevents them from arguing doctrine of equivalents.

If not, then they can try to argue it, but the other side can argue against it, such as by trying to show that this was known in the prior art.
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Patentstudent

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Re: Doctrine of equivalents question
« Reply #3 on: 07-11-18 at 04:43 am »

Tobmapsatonmi and MYK, thank you very much for your replies. :)
Following your remarks, I will look at the prosecution history to check whether the applicant was forced to ammend the claim to include the requirement of two rails.
That seems like the only logical answer to the reason why an applicant would include such a limitation.
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Patentstudent

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Re: Doctrine of equivalents question
« Reply #4 on: 07-11-18 at 06:35 am »

I have checked the history and saw that the two rail track was already included in the main claim of the priority document.
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Toot Aps Esroh

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Re: Doctrine of equivalents question
« Reply #5 on: 07-11-18 at 11:55 am »

I have checked the history and saw that the two rail track was already included in the main claim of the priority document.


Then I'd say you're back at the function/way/result analysis as mentioned above.
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still_learnin

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Re: Doctrine of equivalents question
« Reply #6 on: 07-11-18 at 12:47 pm »

I will look at the prosecution history to check whether the applicant was forced to ammend the claim to include the requirement of two rails.
That seems like the only logical answer to the reason why an applicant would include such a limitation.

Note that the reason you want to look in the prosecution history (for a claim amendment adding this limitation) is that such an amendment means the patentee is no longer entitled to Doctrine of Equivalents on that limitation. If that's true, you don't have to do the Doctrine of Equivalents analysis at all, you just deal with literal infringement.

I will look at the prosecution history to check whether the applicant was forced to amend the claim to include the requirement of two rails.
That seems like the only logical answer to the reason why an applicant would include such a limitation.
I have checked the history and saw that the two rail track was already included in the main claim of the priority document.

Amending in response to a rejection during prosecution is not the "only reason" for a particular limitation in a claim. After all, even an originally filed claim is made up of limitations. We assume that limitations in an original claim were ones that the claim drafter thought necessary to overcome known prior art.
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Patentstudent

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Re: Doctrine of equivalents question
« Reply #7 on: 07-11-18 at 02:49 pm »

Amending in response to a rejection during prosecution is not the "only reason" for a particular limitation in a claim. After all, even an originally filed claim is made up of limitations. We assume that limitations in an original claim were ones that the claim drafter thought necessary to overcome known prior art.

Indeed I can't think of any other reason why a claim drafter would want to limit a claim to this extent if he wasn't forced to do so due to known prior art. 
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MYK

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Re: Doctrine of equivalents question
« Reply #8 on: 07-11-18 at 03:41 pm »

Indeed I can't think of any other reason why a claim drafter would want to limit a claim to this extent if he wasn't forced to do so due to known prior art.
Doesn't matter.  If the limitation is as originally presented, then AFAIK the patentee isn't estopped from trying to go after equivalents during litigation.
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smgsmc

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Re: Doctrine of equivalents question
« Reply #9 on: 07-11-18 at 09:01 pm »

Amending in response to a rejection during prosecution is not the "only reason" for a particular limitation in a claim. After all, even an originally filed claim is made up of limitations. We assume that limitations in an original claim were ones that the claim drafter thought necessary to overcome known prior art.

Indeed I can't think of any other reason why a claim drafter would want to limit a claim to this extent if he wasn't forced to do so due to known prior art.
That's not true.  I've had mucho arguments with applicants who insisted that the claim cover the invention the way they planned to manufacture it, or to claim the optimum configuration.  I explain that the independent claim should have the least limitations possible and that they could always include further limitations to cover specific embodiments in dependent claims.  One inventor was particularly obstinate, and replied to the effect:  "If anyone is stupid enough to design it some other way, he is welcome to do so."  Others were not so obstinate, but were hesitant for claims to cover instances that they considered to be inferior in some way.
« Last Edit: 07-11-18 at 09:05 pm by smgsmc »
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Toot Aps Esroh

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Re: Doctrine of equivalents question
« Reply #10 on: 07-12-18 at 11:03 am »

... applicants who insisted that the claim cover the invention the way they planned to manufacture it, or to claim the optimum configuration.  I explain that the independent claim should have the least limitations possible and that they could always include further limitations to cover specific embodiments in dependent claims.  One inventor was particularly obstinate, and replied to the effect:  "If anyone is stupid enough to design it some other way, he is welcome to do so."  Others were not so obstinate, but were hesitant for claims to cover instances that they considered to be inferior in some way.


This is a good point - engineers can be pretty aspie about their "babies" (and I include myself in this observation).

Also there are situations where drafters are doing flat-fee work where they crank out tons of apps for BigCorp without much opportunity (or even zero opportunity) to ask inventors about alternative embodiments and the like.  I talked to a guy at a conf who did apps for a huge software corp and his marching orders were along the lines of "shut up, don't ask questions, just get each draft done in X hours".
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Robert K S

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Re: Doctrine of equivalents question
« Reply #11 on: 07-12-18 at 11:50 am »

One inventor was particularly obstinate, and replied to the effect:  "If anyone is stupid enough to design it some other way, he is welcome to do so."  Others were not so obstinate, but were hesitant for claims to cover instances that they considered to be inferior in some way.

Along the same lines but in the opposite direction, I've known inventors who demand written descriptions be scrubbed of all detail that could otherwise be used to support valuable dependent claims, apparently under the paranoid misimpression that any teaching in the specification is limiting to the claims.

Sometimes mistrusting inventors can make it very difficult to write robust patent applications.
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Toot Aps Esroh

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Re: Doctrine of equivalents question
« Reply #12 on: 07-12-18 at 12:00 pm »



Along the same lines but in the opposite direction, I've known inventors who demand written descriptions be scrubbed of all detail that could otherwise be used to support valuable dependent claims, apparently under the paranoid misimpression that any teaching in the specification is limiting to the claims.

Sometimes mistrusting inventors can make it very difficult to write robust patent applications.


At one company I've gotten pushback from engineering directors who wanted details scrubbed for trade secret purposes.   One in particular was very insistent on not putting anything in addition over what was required to support the claims and provide best mode (thankfully at least he was a long-term patent committee member, already aware of the requirements and I didn't need to do a tutorial on those). 

But it made downstream prosecution difficult, as you note - there were several times where I could have gotten much broader claims if we'd taught features x, y, or z, but instead had to make a major narrowing amendment to avoid the art.  I showed him some examples of these but he was still happier having protected the TS aspects of their processes.

BTW, I'll display some of my aspie right here and suggest "mistrustful" over "mistrusting".   :D
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Robert K S

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Re: Doctrine of equivalents question
« Reply #13 on: 07-12-18 at 12:07 pm »

Yes, the practice of retaining certain non-essential details as trade secrets is totally understandable, although in the cases I'm thinking about, that was not the issue.

BTW, I'll display some of my aspie right here and suggest "mistrustful" over "mistrusting".   :D

At least according to Google, that distinction, if any, does not appear to be a subject of discussion that would indicate controversial confusion.
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Toot Aps Esroh

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Re: Doctrine of equivalents question
« Reply #14 on: 07-12-18 at 12:14 pm »

Yep - certainly not when looking at the words in isolation. 

But when you string together "mistrusting inventors", this can mean that you did not trust the inventors, or it can mean (which is what I think you mean to convey) that the inventors themselves were lacking in trust.  Whereas "mistrustful inventors" admits of only the second construction.
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