OVERVIEW OF THE DOCTRINE OF EQUIVALENTS AND -112, 6 EQUIVALENTS

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1 CHAPTER 2 OVERVIEW OF THE DOCTRINE OF EQUIVALENTS AND -112, 6 EQUIVALENTS Glen Belvis 2.01 Introduction 2.02 The Doctrine of Equivalents [A] Disclosed but Unclaimed Subject Matter [B] Wilson Sporting Goods and Hypothetical Claims [C] Practicing the Prior Art Defense [D] Reverse Doctrine of Equivalents [E] Claim Terms Having Few or No Equivalents [F] After-Arising Equivalents [G] Local Rules Used to Preclude a Doctrine of Equivalents Argument 2.03 Prosecution History Estoppel [A] The Federal Circuit's en banc Festo Decision [B] The Supreme Court's Festo Decision [C] The Implementation of the Supreme Court's Festo Test [D] Applicability of Estoppel Between Different Applications [E] Argument-Based Estoppel 2.04 Means- and Step-Plus-Function Claims

2 2.01 INTRODUCTION There is perhaps no question more important to the health of patents than the scope and application of the judicially-created doctrine of equivalents. It permeates the entire fabric of patent lain, and appears in virtually every case involving patent enforcement. 1 Although the doctrine of equivalents is a substantially different doctrine from equivalents under 112, 6, these doctrines have been, and will continue to be, intertwined in infringement analyses. The doctrine of equivalents is a judicially created doctrine that is expansive in nature. This doctrine expands the scope of patent protection beyond the Literal words of the claims. On the other hand, equivalents tinder 112, 6 is stalutory and is a narrowing doctrine that restricts the scope of protection afforded the patentee. The Supreme Court in Festo again reaffirmed the continued existence of the doctrine of equivalents. 2 Moreover, in Festo the Court restored the doctrine of equivalents foils full scope by soundly rejecting the Federal Circuit's absolute bar approach to the application of prosecution history estoppel. Prosecution history is used to restrict or limit the scope of protection afforded a patentee by the doctrine of equivalents. In place of the Federal Circuit's absolute bar approach, the Supreme Court has set forth a test that applies rebuttable presumptions to the applicant's actions in obtaining the patent and focuses on the totality of the circumstances surrounding those actions. The Supreme Court's test should go a long way to remedy the unfairness that carne from the Federal Circuit's absolute bar approach. In another major decision an enc banc panel of the Federal Circuit, in Johnson & Johnson Associates Inc., v. R.E. Services Co., 3 held that disclosed but unclaimed subject matter in the patent specification is excluded from being considered as an equivalent. This decision may create as much of a stir as the now debunked Federal Circuit's en banc Festo decision. The Johnson & Johnson decision cannot be reconciled with the Supreme Court's Graver Tank decision, which created the modern doctrine of equivalents. Thus, it is likely that in the not too distant future the Supreme Court will again be addressing a doctrine of equivalents issue. In contrast to the judicially created doctrine of equivalents, 112, 6 equivalents was a legislative response to the Supreme Court's 1946 decision in Halliburton Oil Well Cementing Co. v. Walker, which prohibited functional claiming. 4 In 1952, to partially overrule Halliburton. Congress enacted what has now become 6 of 35 U.S.C. 112, which permits some functional claiming and provides: 1 Litton Systems Inc. v. Honeywel linc., 145 F.3d 1472, 1472, 47 U.S.P.Q.2d 1 f 06, 1107 (Fed 1998) 1998) (Mager J., dissenting from the order declining the suggestion for rehearing en banc). 2 Festo Corp. v. Shokersu Kinzoku Kogyo Kabtishiki (a/k/a SMC Corp.), 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002). 3 Johnson & Johnson Associates Inc, v. R.E Services Co., 285 F.3d 1046, 62 U.S.P.Q.2d 1225 Fed. Cir. 2002)(en banc). 4 Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 71 U.S.P.Q. 175 (1946). 36

3 An element in 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. 5 Unlike the doctrine of equivalents, 112, 6 equivalents is a narrowing doctrine that restricts the scope of protection afforded tile patentee. In Warnrer Jenkinson, the Supreme Court found that applying 112, 6 equivalents was in fact an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements. 6 The Supreme Court went on to find that 112, 6 was enacted as a targeted cure to a specific problem, and... the reference to equivalents [in that paragraph] appears to be no more than a prophylactic against potential side effects of that cure. 7 Thus, 112 equivalents serves to limit the literal scope of the claims to the structures or acts that are specifically disclosed in the specification. The Federal Circuit has described 112, 6 equivalents as the price that must be paid for drafting claims in means- or step-plus-function format. 8 The recent decisions of the Federal Court have continued this trend of viewing 112, 6 equivalents as a narrowing restrictive doctrine THE DOCTRINE OF EQUIVALENTS In Winans v. Denmead, 9 the Supreme Court first ruled that infringement may occur even though the literal language of the claims was avoided. This ruling evolved into the present clay doctrine of equivalents, which was first set out by the Supreme Court in Graver Tank & Mfg. Co. v. Linde Air Products Co. 10 Under this doctrine, an accused article or method that does not literally meet the limitations of a claim may nevertheless infringe. Thus, even if there is no literal infringement, infringement could be found tinder the doctrine of equivalents, if the accused article or method was equivalent to the claimed invention. 11 Determining what counts as an equivalent has been a critical, difficult, and central issue to patent jurisprudence. The doctrine of equivalents has created a tension between two important public policies. One policy focuses on the importance of providing public notice as to what infringes, by requiring clear and distinct claims. 12 The other policy focuses on the need to prevent an infringer from avoiding liability by merely playing 5 This paragraph was originally 3 in 112 and care should be taken in reviewing older case law, which frequently refers to it as such. See 35 U.S.C. 112 (1952); see, e.g., In re Zimmerley, 153 U.S.P.Q. 367, 369 (Pat. Off. Bd. App. 1966). 6 Warner-Jenkinson Co, v. Hilton Davis Chem. Co., 520 U.S. 17, 28, 41 U.S.P.Q.2d 1865, 1870 (1977). 7 Warner-Jenkinson Co, 520 U.S. at U.S.P.Q.2d at O.J. Corp. v. Tekmar Co., 115 F.3d , 42 U.S.P.Q.2d (Fed. Cir. 1997) U.S. 330 (1854) U. S U.S.P.Q.2d 328 (1950). 11 Infringement, both literal and under the doctrine of equivalents. is a question of fact which [the Federal Circuit] review[s] for clear error when tried to the court. Insituform Technologies, Inc. v. Cat Contracting,Inc., 161 F.3d 688, 692, 48 U.S.P.Q.2d 1610, 1615 (Fed. Cir. 1998). 12 See, e.g., 35 U.S.C. 112, 2 (1994) ( The specification shah conclude with one or more claims particularly pointing out and distinctly claiming the subject matter.. : ). 37

4 semantic games or by making only minor changes in the accused article or method to avoid the literal language of the claims. After almost half a decade with no comment on these issues and policy considerations, the Supreme Court has now taken a very active role in shaping the doctrine of equivalents, and in ways that are somewhat at odds with the majority of the judges on the Federal Circuit. This Supreme Court's renewed focus on the doctrine of equivalents began with Warner-Jenkinson Co. v. Hilton Davis Chemical Co. 13 In Warner-Jenkinson, the Court reaffirmed the existence of the doctrine of equivalents, and in light of the public policy tensions associated with this doctrine endeavor[ed] to clarify the proper scope of the doctrine. 14 Quoting its earlier decision in Graver Tank, the Warner-Jenkinson Court held: What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, thins equal to the same thing may not be equal to each other and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was. 15 The Warner-Jenkinson Court then clarified and restricted the application of the doctrine of equivalents, holding that: Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety. 16 rule. 17 This restriction of the doctrine of equivalents is referred to as the all elements The Court, however, rejected other restrictions on the doctrine of equivalents that U.S. 17, 41 U.S.P.Q2d 1865 (1997). 14 Warner-Jenkinson, 520 U.S. at 21, 41 U.S.P.Q.2d at Warner-Jenkinson, 520 U.S. at 24-25, 41 U.S.P.Q.2d at Id. at 29, 41 U.S.P.Q.2d at 1871 (emphasis added). 17 This rule eliminates one of the greatest mischiefs that the doctrine of equivalents can work on the patent law. Prior to ibis rule, although several Federal Circuit panels had adopted and previously applied the all elements rule, see, e.g.,pennwalt Corp. v. Durland-Warland Inc., 833 F.2d , 41 U.S.P.Q.2d, 1737, 1739 (Fed. Cir. 1987), a patent lawyer could attempt to use the doctrine of equivalents to ignore the patent claims. Rather than focusing on the specific claim language and the elements of the claim, the case could be tried based on the claim 38

5 the litigants requested. The Court declined to make the doctrine a purely equitable tool, which would be applied at the discretion of a court after weighing the equities of the case. It declined to recognize independent experimentation as :in equitable defense to the doctrine. Finally, it declined to limit the doctrine to only embodiments disclosed in the patent. 18 The Warner-Jenkinson Court farther held that the equivalence determination is made at the time of the alleged infringement and not at the time the patent issued. 19 The Warner-Jenkinson Court, however, expressly declined to adopt a specific linguistic test for a doctrine of equivalents analysis. 20 Thus, it is on this framework that the Federal Circuit has continued to develop and refine the doctrine of equivalents. The playing field for an infringement analysis has now been clearly and succinctly articulated by the Federal Circuit: Determining whether tin accused process or device infringes a patent claim is a two-step process. The first step is claim construction, which involves ascertaining the scope and meaning of the claims at issue, while the second step involves determining whether the claims as construed read on the accused device. Streamfeeder, LLC v. Sure-Feed Syst. Inc., 175 F.3d 974, 981, 50 USPQ2d 1515, 1519 (Fed. Cir. 1999). Claim construction is a question of law that we review de novo. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1174 (Fed. Cir. 1998) (en banc). Infringement, either literal or under the doctrine of equivalents, is a question of fact that we review for clear error when tried without a jury. See Insinrform Techs., Inc. v. Cat Contracting, Inc., 161 F.3d , 48 USPQ2d 1610, 1614 (Fed. Cir. 1998). Whether an asserted scope of equivalents would impinge on prior art is an issue of law that we review de novo. See Wilson, 904 F.2d at , 14 USPQ2d at as a whole and how the accused device was equivalent to that claim as a whole. As one litigant brazenly asserted to a district court: The question isn't what the claims say, and the question isn't.whether it [the accused product] Looks different. The question is what are the qualitative attributes or characteristics of what they've done and are they the same. Do they capture the heart of the invention Vehicular Technologies Corp. v. Titan Wheel Int'l, Inc., 141 F.3d 1084, 1089, 46 U.S.P.Q.2d 1257, 1260 (Fed. Cir. 1998) (emphasis added). The Supreme Court's adoption of the all elements rule should put an end to this type of chicanery. 18 Warner-Jenkinson, 520 U.S. at 35-40, 41 U.S.P.Q.2d at Id. at 37, 41 U.S.P.Q.2d. at Id. at 39-40, 41 U.S.P.Q.2d at Ultra-Tex Surfaces Inc. v. Hill Brothers Chemical Co., 204 F.3d 1360, 1363, 53 U.S.P.Q.2d 1892, 1895 (Fed. Cir. 2000) (paragraph structure added);. See also Festo, 234 F.3d 558, 585, 56 U.S.P.Q.2d 1865, 1886 (en 39

6 [A] Disclosed but Unclaimed Subject Matter In Johnson & Johnson Associates Inc., v. R..E. Services Co., the Federal Circuit in an en banc decision resolved the conflict within the Federal Circuit that had developed over the situation where part of the accused infringing act or product, was disclosed in the specification but not claimed. 22 This situation can best be explained by way of an example. Suppose a claim to a composition of matter has a claim element calling for compound b. In the specification, however, it is disclosed that compounds x, y, and z may also be used in place of compound b. In that situation it was very likely that elements x, y, and z would be equivalents of b. 23 On the other hand, a different result may have occurred if the specification discloses two embodiments of an invention, and focuses on these as being alternative and different. If only one embodiment is claimed, it is very unlikely that the other will be an equivalent. The conflict in the Federal Circuit began to develop in an unpublished opinion Brunswick Corp. v. The United States. 24 In Brunswick, the court considered a patent relating to camouflage screens and fabric to hide military equipment from sight as well as radar. The claim element at issue related to the resistivity of the camouflage screen, which was important to the ability of the screen to hide an object from radar. The claims had a limitation of between 100 and 1,000 ohms. The specification, however, disclosed two screens that had resistances below the claimed range. 25 The accused screen also had a resistance below the claimed range. The Federal Circuit held that there could be no infringement under the doctrine of equivalents, because the disclosed resistance below the claimed range was dedicated to the public. Specifically, the Federal Circuit held that: In Maxwell, this court cited the age-old rule that subject matter that is disclosed in the specification. but not claimed is dedicated to the public... While the Supreme Court dismissed the argument that equivalents are limited to what is disclosed in the patent, its decision does not grant the banc), reversed on other grounds, 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002) ( Infringement under the doctrine of equivalents is a question of fact. ) Warner-Jenkinson, 520 U.S. at 38. ( We must overturn the jury's finding on a factual issue if it is not supported by substantial evidence or if it is based on an erroneous legal determination. ) Kearns v. Chrysler Corp., 32 F.3d 1541, , 31 U.S.P.Q.2d 1746, 1751 (Fed. Cir. 1994). ( Prosecution history estoppel is a legal question that is subject to de novo review by this court ) LaBounry, 867 F.2d at 1576, 9 U.S.P.Q.2d at ( Thus, when reviewing the jury verdict, we will independently decide the legal question of the application of prosecution history estoppel to the Stoll patent ). 22 Johnson & Johnson Associates Inc., v. R..E. Services Co., 285 F.3d 1046, 62 U.S.P.Q.2d 1225 (Fed. Cir. 2002) (en banc). 23 In fact, this was the very situation that the Supreme Court was faced with in Graver Tank. The missing element that was the subject of the equivalence analysis was disclosed in the specification. In Graver Tank, 339 U.S. 605, 85 U.S. P.Q.2d 329 (1950), the Court affirmed the finding of equivalency U.S.P.Q.2d 1446 (Fed. Cir. 1998). Unpublished opinions may not be used as precedent. They do, however, show the way a particular panel or the court views an issue. 25 Id. at

7 patentee the right to claim as an equivalent that which is disclosed but unclaimed in the patent and therefore dedicated to the public The Brunswick decision substantially expanded the ruling in Maxwell that the disclosed but unclaimed subject matter is not entitled to equivalency, because such subject matter was dedicated to the public. In Maxwell, the unclaimed subject matter was a fully disclosed distinct alternative embodiment of the claimed invention. Moreover, by not claiming that alternative embodiment, the applicant had avoided Patent Office scrutiny of it. 27 It was in that limited situation that the Maxwell language of public dedication was made. Judge Newman dissented from the Brunswick decision, but with a new panel was able to come to an opposite conclusion in a published opinion, YBM Magnex, Inc. v. International Trade Commission. 28 In YBM the court was faced with a fact situation that was virtually identical to that present in Brunswick 29. In YBM, the patent claimed an oxygen content for a magnet in the range of 6,000 to 35,000 ppm. The specification, however, disclosed, but did not claim, magnets having oxygen contents in the range of 5,450 to 6,000 ppm. 30 The accused magnets had an oxygen content in the range of 5,459 to 6,000 ppm. The Commission overruled the finding of the administrative law judge that there was infringement. In doing so, the Commission found that Maxwell had established a new rule of law, and applying that rule found that the disclosed but not claimed range had been dedicated to the public and thus could not be recaptured through the doctrine of equivalents. 31 Judge Newman soundly reversed the Commission, rejecting its assertion that Maxwell had created some new rule of law. In doing so, Judge Newman stated: The Supreme Court's guidance in Warner-Jenkinson,... does not permit the blanket rule that everything disclosed but not claimed is barred from access to the doctrine of equivalents, whatever the facts, circumstances, and evidence.... In Graver Tank, for example, the asserted equivalent, manganese silicate, had itself been disclosed in the specification; the district court relied on this disclosure as supporting equivalency, not negating it. 32 Judge Newman then set forth the general rule for disclosed but unclaimed subject matter: 26 Id. at Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1108, 39 U.S.P.Q.2d 1001, 1007 (Fed. Cir. 1996) F.3d 1317, 467 U.S.P.Q.2d 1843 (Fed. Cir. 1998). Judges Rich and Smith joined with Judge Newman in the YBM opinion. Judge Clevenger authored the Brunswick opinion and was joined by Chief Judge Mayer. 29 Because the Brunswick decision is not published it cannot be cited as precedent and thus the published YBM case would be controlling. 30 YBM, 145 F.3d at , 467 U.S.P.Q.2d at Id. at 1320, 467 US.P.Q.2d at Id. at 1320, 467 U.S.P.Q.2d at

8 Because the [Supreme] Court rejected the proposition that subject matter that is disclosed but not claimed is always deemed dedicated to the public, that position is not available as a general rule of law. Some factual situations may indeed warrant rejection of an asserted equivalent on this ground, as the Federal Circuit held in Maxwell; but to enlarge Maxwell to a broad and new rule of law, as did the Commission, is not only an incorrect reading of Maxwell but would bring it into direct conflict with Supreme Court precedent. 33 Thus, Judge Newman reinstated the findings of the administrative law judge that there was infringement under the doctrine of equivalents. 34 In its en banc decision in Johnson & Johnson, however, the Federal Circuit has rejected Judge Newman's approach in YBM. Instead, as part of what appears to be the majority of the court's intent to vitiate the doctrine of equivalents, the court expanded the rationale of Maxwell to cover all situations where there is disclosed but unclaimed subject matter. The claim element at issue in Johnson &c Johnson called for an aluminum substrate sheet. The specification, however provided that [w]bile aluminum is currently the preferred material for the substrate, other metals, such as stainless steel or nickel alloys, may be used. 35 The accused infringing device used a steel substrate sheet. 36 Over a strong and well-reasoned dissent by Judge Newman, the en banc Federal Circuit held that as a matter of law the steel substrate could not be an equivalent to aluminum. Specifically the court provided: On appeal, RES does not challenge the jury's factual finding of equivalency between the copper-steel and copper-aluminum laminates. Instead, citing Maxwell, RES argues that Johnson did not claim steel substrates, but limited its patent scope to aluminum substrates, thus dedicating to the public this unclaimed subject matter... * * * Having disclosed without claiming the steel substrates, Johnson cannot now invoke the doctrine of equivalents to extend its aluminum limitation to encompass steel. Thus, Johnson cannot assert the doctrine of equivalents to cover the disclosed but unclaimed steel substrate. To the extent that YBM Magnex conflicts with this holding. this en banc court now overrules that case Id. at 1321, 467 U.S.P.Q.2d at Id. at 1322, 467 U.S.P.Q.2d at Johnson & Johnson, 285 F.3d at 1055, 62 U.S.P.Q.2d at Id., 62 U.S.P.Q.2d at Id. at, 62 U.S.P.Q.2d at ,

9 The Johnson & Johnson decision is a low-water point for the doctrine of equivalents and the Federal Circuit. Johnson & Johnson has no basis in patent law and is in direct conflict with the Supreme Court's holding in Graver Tank. Johnson & Johnson cannot be reconciled with the long-standing rule that the inclusion of extra, unclaimed, elements into an infringing device does not avoid infringement, whether those elements are mentioned in the specification or not. 38 Johnson & Johnson also unfairly and retroactively changes the playing field for patentees. It moreover, it does so in spite of the fact that the Supreme Court on two separate occasions has admonished the Federal Circuit against such a practice. Thus, it appears that it will be snore a matter of when, and not whether, this issue reaches the Supreme Court. [B] Wilson Sporting Goods and Hypothetical Claims In a series of cases the Federal Circuit continued to maintain the viability of the Wilson Sporting Goods 39 hypothetical claim analysis. 40 In the hypothetical claim analysis the patent constructs a hypothetical claim that would literally cover the equivalent in question. If that claim is patentable over the prior art, then there would be infringement under the doctrine of equivalents. If that hypothetical claim were not patentable, then there would be no infringement under the doctrine of equivalents because the equivalent in question is within the prior art. Thus, in Interactive Pictures Corp. v. Infinite Pictures Inc., 41 the Federal Circuit ruled: It is well settled law that a patentee cannot assert a range of equivalents that encompasses the prior art. To test this limitation, the notion of a hypothetical claim may be useful. A hypothetical claim may be constructed to literally cover the accused device. If such a claim would be unpatentable under 35 U.S.C. 102 or 103, then the patentee has overreached. and the accused device is noninfringing as a matter of law. The burden of producing evidence of prior art to challenge a hypothetical claim rests with an accused infringer, but the burden of proving patentability of the hypothetical claim rests with the patentee Smith & Nephew lire. v. Ethicon Inc., 276 F.3d 1304, 61 U.S.P.Q.2d 1065, (Fed. Cir. 2001) (declining to apply the rationale of Maxwell to the situation where the accused infringing process performed steps in addition to the steps that were claimed, even though those additional steps were disclosed in the specification); Asyst Technologies Inc. v. Empak Inc., 268 F.3d 1364, 1371, 60 U.S.P.Q.2d 1567, (Fed. Cir. 2001) ( It is well established that 'it is not necessary to claim in a patent every device required to enable the invention to be used.'... An electrical outlet enables a toaster to work, but the outlet is not for that reason considered part of the toaster. ) 39 Wilson Sporting Goods v. David Geoffrey & Assocs., 904 F.2d 677, 14 U.S.P.Q.2d 1942 (Fed. Cir. 1990). 40 See, generally, Marquip Inc. v. Fosber America Inc., 198 F.3d 1363, 1367, 53 U.S.P.Q2d 1015, 1018 (Fed. Cir. 1999) ( Based on the fundamental principle that no one deserves an exclusive right to technology already in the public domain, this court has consistently limited the doctrine of equivalents to prevent its application to ensnare prior art. ) F.3d 1371, 61 U.S.P.Q.2d 1152 (Fed. Cir. 2002). 42 Id. at 1380, 61 U.S.P.Q.2d at 1159 (citations omitted); see also Ultra-Tex Surfaces Inc. v Hill Brothers Client. Co., 204 F.3d 1360, 1364, 53 U.S.P.Q.2d 1892, 1896 (Fed. Cir. 2000) ( while the accused infringer must come forward with evidence that the hypothetical claim reads on the prior art, once the patentee makes out a prima facie case of infringement by equivalence, the ultimate burden of persuasion rests on the patentee to show that the hypothetical claim does not read on the prior art. See id. at , 50 U.S.P.Q.2d at ); Fiskars 43

10 In Abbott Laboratories v. De y L.P., 43 the Federal Circuit emphasized the requirement that the hypothetical claim must be considered as a whole when comparing it to the prior art. The Abbott court overruled a district court s determination that the hypothetical claim covered the prior art, because the district court only focused on one of the limitations in the claim and ignored the other limitations that were not present in the prior art. Thus, the Abbott court held: The district court erred by comparing only the phospholpid limitation of claim 1 to the '301 patent (the only prior art considered by the court), while ignoring other limitations of the claim. The '301 patent describes a phospholpid range of 75.0%-95.5%, which overlaps the hypothetical claim's range of 68.6%-94.5%. The district court therefore concluded that the asserted range of equivalents was too broad because it encompassed the prior art. We disagree because the '301 patent fails to disclose the claim limitation of free fatly acids in the amount of 1.0%-27.7%. 44 The burdens of proof in a hypothetical claim doctrine of equivalents analysis can be summarized as: (i) the patentee has the burden of presenting a prima facie case of infringement under the doctrine of equivalents, i.e., the hypothetical claim covers the accused product; (ii) the accused Infringer then has the burden of corning forward with a showing that the accused device is practicinc the prior art, i.e, the hypothetical claim is unpatentable: and, (iii) the patentee then has the ultimate burden of persuasion to establish that the accused device infringes under the doctrine of equivalents and that the accused device is not practicing the prior art, i.e., the hypothetical claim is both infringed and patentable. Inc. v. Hunt Manufacturing Co., 221 F.3d 1318, 1324, 55 U.S.P.Q.2d 1569, 1573 (Fed. Cir. 2000) ( Hunt [the accused infringer] does not argue that a hypothetical claim embracing its device would not be patentable. Hunt simply argues that Fiskars [the patentee] had the burden of presenting evidence and establishing that Hunt's device was not in the prior art, as part of its burden of proof of infringement. Hunt states that the district court misplaced the burden of proof, thus requiring a new trial. Hunt's theory is incorrect. It is an affirmative defense of the accused infringer to allege and to show that it is practicing the prior art. When the patentee has presented a prima facie case of infringement, the burden shifts to the accused infringer to come forward with evidence to establish this defense. ). 43 Abbott Laboratories v. Dey L.P., 287 F.3d 1097, 62 U.S.P.Q.2d 1545 (Fed. Cir. 2002). 44 Id. at 1106, 62 U.S.P.Q.2d at 1551; see also Ultra-Tex Surfaces Inc., 204 F.3d at 1365, 53 U.S.P.Q.2d at 1896 ( Despite the utility of this methodology, in Streanrfeeder we emphasized that hypothetical claim analysis is not a vehicle for a patentee to freely redraft granted claims by expanding some limitations in order to read on an accused process or device while narrowing other limitations to avoid prior art. See Streamfeeder. 175 F.3d at 983, 50 U.S.P.Q.2d at ). 44

11 [C] Practicing the Prior Art Defense The court also continued to reconcile the all elements rule with the defense of practicing the prior arts. 45 In Tate Floors v. Interface Architectural Resources, however, the Federal Circuit entered a decision that will probably create more smoke than light. 46 In Tate Floors, the Federal Circuit ruled that there is no practicing the prior art defense to literal infringement. 47 A more thorough reading of this opinion, however, shows that the defense of practicing the prior art is alive and well. The Tate Floors court was merely addressing the respective burdens of proof that apply to the practing-the-prior-art-defense. Thus, the Tate Floors court further provided: literal infringement is determined by construing the claims and comparing Them to the accused device, not by comparing the accused device to the prior art. Barter, 49 F.3d at 1583, 34 U.S.P.Q.2d at 1126 * * * Morever, just as the doctrine of equivalents cannot extend so broadly as to ensnare prior art, claim language should generally be construed to preserve validity, if possible Prior art is relevant to literal infringement only to the extent that it affects the construction of ambiguous claims... Consequently, where such claim language clearly reads on the prior art, the patent is invalid. Our law requires patent challenges to prove invalidity by clear and convincing evidence. Where an accused infringer is clearly practicing only that which was in the prior art, and nothing more, and the patentee's proffered construction reads on the accused device, meeting his burden of proof should not prove difficult. Nevertheless, accused infringers are not free to flout the requirement of proving invalidity by clear and convincing evidence by asserting a practicing the prior art defense to literal infringement under the less stringent preponderance of the evidence standard. 48 [D] Reverse Doctrine of Equivalents In Tate Floors, the Federal Circuit also said what every patent lawyer knows there is no chance that a reverse doctrine of equivalents defense will ever be successful. Specifically, characterizing the reverse doctrine of equivalents as an anachronistic exception, long mentioned but rarely applied, the court suggests that this doctrine was legislatively overruled by the 1952 amendments to the Patent Act: 45 See Fiskars Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1323, 55 U.S.P.Q.2d 1569, ( Hunt [the accused infringer] also states that if any individual element of the Hunt device is in the prior art. that element can not be deemed equivalent to any claimed element. That theory is incorrect. A claim to a mechanical device usually recites a combination of several elements, most or all of which may be separately known... That an element of art accused device already exists does not bar equivalency as to that element- ) F.3d 1357, 61 U.S.P.Q.2d ) 1647 (Fed. Cir. 2002). 47 Id. at 1365, 61 U.S.P.Q.2d at Id. at , 61 U.S.P.Q.2d at

12 Not once has this court affirmed a decision finding noninfringement based upon the reverse doctrine of equivalents. And with good reason: when Congress enacted 35 U.S.C. 112, after the decision in Graver Tank, it imposed requirements for the written description, enablement, definiteness, and means-plus-function claims that are co-extensive with the broadest possible reach of the reverse doctrine of equivalents.... [T]he reverse doctrine of equivalents was originally used by courts to reduce the scope of broad means claims to cover only what the inventor discloses and equivalents thereof. 49 [E] Claim Terms Having Few or No Equivalents The Federal Circuit has continued its line of cases that began with Zodiac Pool Care, Inc. v. Hoffinger Industries,Inc. 50 and Moore U.S.A. Inc. v. Standard Register Co., 51 which provided no equivalents to claim terms and specifications that are expressly limited on their face. In Zodiac Pool Care Inc., the Federal Circuit affirmed summary judgment of no infringement under the doctrine of equivalents for a pool vacuum. The claim limitation at issue called for a stop to be located substantially inward of the peripheral edge of the unit. In the accused infringing unit the stop extended to the edge of the unit. In affirming the district court's non-infringement ruling, the Federal Circuit held: First, the language of the limitation itself provides for a stop located substantially inward of the peripheral edge. It defies common usage to suggest that a stop which is substantially inward of an edge could at the same time extend at least to that same edge. Zodiac contends that as long a substantial portion of the stop is in fact inward of the edge, both conditions could be satisfied. This contention, however, ignores that the limitation recites a relationship between the edge and the stop, not a relationship between the edge and a portion of the stop. * * * We conclude that the equivalence issue is resolved by our decision in Sage Products. Because this issued patent contains clear structural limitations, the public has a right to rely on those limits in conducting its business activities. This court will not effectively remove such a limitation under a doctrine designed to prevent fraud on the patent. [Sage Products 126 F.3d] at , 44 USPQ2d at Id. at 1368, 61 U.S.P.Q.2d at , F.3d 1408, 54 U.S.P.Q.2d 1141 (Fed. Cit. 2000) F.3d 1091, 56 U.S.P.Q.2d 1225 (Fed. Cit. 2000). 46

13 However. like the patent at issue in Sage Products, the '382 patent contains clear structural limitations, including a limitation that the stop be located substantially inward of the peripheral edge of the disc. Given the proper construction of this limitation. a verdict of infringement under the DOE would reduce the claims to nothing more than functional abstracts, devoid of meaningful structural limitations on which the public could rely. Sage Products, 126 F.3d at 1424, 44 USPQ2d at 1107 (citing Conopco, Inc. v. May v. Dep't Stores Co., 46 F.3d 1556, 1562, 32 USPQ2d 1225, 1228 (Fed. Cir. 1994)). 52 In Moore, the Federal Circuit similarly held that a claim limitation calling for the majority of the length was entitled to zero equivalents. In particular, the court rejected an argument that 48 percent was an insubstantial difference from percent. Significantly, this rationale was not based on prosecution history estoppel. Instead, the court reasoned: We cannot agree with any of Moore's theories on infringernent by equivalents. If our case law on the doctrine of equivalents makes anything clear, it is that all claim limitations are not entitled to an equal scope of equivalents. Whether the result of the All Limitations Rule. see Penntwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, USPQ2d 1737, (Fed. Cir. 1987) (en banc), prosecution history estoppel, see Warner-Jenkinson, 520 U.S. at 33-34, or the inherent narrowness of the claim language, see Sage, 126 F.3d at 1425, 44 USPQ2d at 11, many limitations warrant little, if any, range of equivalents. In this case, we hold that the applicant's use of the term majority is not entitled to a scope of equivalents covering a minority for at least two reasons. First, to allow what is undisputedly a minority (i.e., 47.8%) to be equivalent to a majority would vitiate the requirement that the first and second longitudinal strips of adhesive extend the majority of the lengths of said longitudinal marginal portions. '464 patent, col. 10, 11, If a minority could be equivalent to a majority, this limitation would hardly be necessary, since the immediate)y preceding requirement of a first and second longitudinal strips of adhesive disposed in said first and second longitudinal marginal portions, respectively, of said first face would suffice. Second, it would defy logic to conclude that a minority the very antithesis of a majority could be insubstantially different from a claim limitation requiring a majority, and no reasonable juror could find otherwise Zodiac Pool Care, 206 F.3d at , 54 U.S.P.Q.2d at (Fed. Cir. 2000) (boldface added). 53 Moore, 229 F.3d at 1106, 56 U.S.P.Q 2d at (boldface added). 47

14 Thus, claim terms such as greater than, less than, extending beyond, consisting of, etc., will have no protection under the doctrine of equivalents. 54 This rationale was applied in Cooper Cameron Corp. v. Kvaerner 0ilfield Products lnc., 55 in which the Federal Circuit affirmed the granting of a summary judgment that the claim lens between two plugs was not entitled to any scope of equivalents. Specifically, the Federal Circuit reasoned: in Moore U.S.A. Inc. v. Standard Register Co., 229 F.3d 1091, 1094, 56 USPQ2d 1225, (Fed. Cir. 2000), we held that a claim to a mailing form requiring that strips of adhesive extend to the majority of the lengths of longitudinal margin portions could not be met equivalently by an accused device with strips of adhesive that extended to only 47.8% of the length of the margin because a minority could not be a majority as a matter of law. Similarly, the workover port in Kvaerner's accused device enters the wellhead assembly above the two plugs, which cannot be equivalent to a connection between the two plugs. 56 The Federal Circuit, however, has been careful not to carry this rationale to an extreme. In Abbott Laboratories v. Lie), L.P., the court specifically noted that [t]he fact that a claim recites numeric ranges does not, by itself, preclude Abbott from relying on the doctrine of equivalents. 57 Additionally, it is important to recognize that this rationale, which limits the doctrine of equivalents, is not based on prosecution history estoppel. Instead, it is based on the claim term and the patent specification itself and how one determines equivalency, i.e., similarity. As such, this rationale will not be affected by the Supreme Court's reversal of the Federal Circuit's Festo decision. [F] After-Arising Equivalents In Kraft Foods Inc. v. International Trading Co., 58 the Federal Circuit confirmed that the after-arising equivalents rule set out in Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., 59 did not apply to regular claims, but was limited to means- and step-plus-function claims. In Chiuminatta the court held that for means- and step-plus-function claims the doctrine of equivalents was available only for technology that was developed after the patent issued: 54 See, e g., Vehicular Technologies Corp. v. Titan Wheel Int'l Inc., 212 F.3d 1377, , 54 U.S.P.Q.2d 1841, 1845 (Fed. Cir. 2000) (refusing to allow the patentee to expand the scope of a claim that contained the introductory phrase consisting of to include the presence of additional elements); SciMed Life Sys. Inc- v. Advanced Cardiovascular Sys. Inc., 242 F.3d 1337, 1345, 58 U.S.P.Q.2d 1059, 1066 (Fed. Cir. 2001) (finding that a dual lumen catheter was not equivalent to the claimed coaxial lumen, because the specification criticized and disclaimed the dual lumen embodiment); Fin Control Sys. Pry. v. OAM Inc., 265 F.3d 1311, , 60 U.S.P.Q. 1203, 1210 (Fed. Cir. 2001) (holding that a claim limitation to lateral engagement to a surfboard excluded as equivalents all engagements to the front or rear of the surfboard); Durel Corp. v. Osram Sylvania Inc., 256 F.3d 1298, 59 U.S.P.Q.2d 1238 (Fed. Cir. 2001) F.3d 1317, 62 U.S.P.Q.2d 1846 (Fed. Cir. 2002). 56 Id. at , 62 U.S.P.Q.2d at (Fed. Cir. 2002). 57 Abbott Laboratories v. Dey L.P., 287 F.3d 1097, , 62 U.S.P.Q.2d 1545, 1552 (Fed. Cir. 2002) F.3d 1362, 53 U.S.P.Q.2d 1814 (Fed. Cir. 2000) F.3d 1303, 46 U.S.P.Q (Fed. Cir. 1998). 48

15 where the equivalence issue does not invoke later-developed technologies, but rather involves technology that predates the invention itself. In such a case, a finding of non-equivalence for 112, 6 purposes should preclude a contrary finding under the doctrine of equivalents. 60 The district court in Kraft Foods granted summary judgment of no infringement under the doctrine of equivalents because the technology employed by the accused device was known at the time the patent issued. 61 The Federal Circuit rejected this analysis holding that: We agree with Kraft that the district court incorrectly applied our holding in Chiuminatta and consequently improperly granted summary judgment of noninfringement under the doctrine of equivalents. As Kraft correctly notes, however. Chiuminatta s preclusion of finding of infringement under the doctrine of equivalents for pre-existing technology after an adverse holding of no literal infringement for the same technology applies only to means-plus-function claim limitations.... Thus, for a claim limitation not drafted in means-plus-function language, the mere fact that the asserted equivalent structure was pre-existing technology does not foreclose a finding of infringement under the doctrine of equivalents. 62 The Federal Circuit has now held that the after-arising equivalents rule does not apply to the functional component of a means- or step-plus-function infringement analysis. To establish literal infringement of a means- or step-plus-function claim, the patentee must show that the accused infringer is using an identical function to that which is claimed. Thus, the question has been: if an identical function is not present, could the patentee nevertheless turn to the doctrine of equivalents to establish infringement? In Interactive Pictures Corp. v. Infinite Pictures Inc., 63 the Federal Circuit answered this question affirmatively. Specifically the court held: Interactive responds that this case is distinguishable from Chiuminatta; we agree. In Chiuminatta, we held that a finding that a component of an accused product is not a structural equivalent to the corresponding structure of a means-plus-function limitation for purposes of literal infringement analysis precludes a finding that the same structure is equivalent for purposes of the doctrine of equivalents, unless the component constitutes technology arising after the issuance of the patent. However, when a finding of noninfringement under 35 U.S.C. 112, paragraph 6, is premised on an absence of identity of function, then infringement under the doctrine of equivalents is not thereby automatically precluded. That is because infringement under the doctrine of equivalents may be premised on the accused and the patented 60 Id , 46 U.S.P.Q.2d at Kraft Foods, 203 F.3d at 1366, 53 L1.S.P.Q.2d at Kraft Foods, 203 F.3d at , 53 U.S.P.Q.2d at (bold added) F.3d 1371, 61 U.S.P.Q.2d 1152 (Fed. Cir. 2002). 49

16 component having substantially the same function, whereas structure corresponding to the disclosed limitation in a means-plus-function clause must perform the identical function. 64 [G] Local Rules Used to Preclude a Doctrine of Equivalents Argument In Genernech Inc. v. Amgen Inc., the Federal Circuit affirmed a lower court's ruling that precluded a patentee from relying on the doctrine of equivalents because the patentee had not provided a doctrine of equivalents position in the claims charts required by the local rules. 65 This holding is consistent with the Federal Circuit's strict approach that even a minor failing in the patentee's proofs of infringement under the doctrine of equivalents results in a finding of no equivalents PROSECUTION HISTORY ESTOPPEL Prosecution history estoppel, or file wrapper estoppel, is an important limit to the doctrine of equivalents. In theory, prosecution history estoppel uses the public record of what the patentee did before the Patent Office to restrict a patentee from relying on the doctrine of equivalents. Prosecution history estoppel precludes a patentee froth obtaining under the doctrine of equivalents coverage of subject matter that has been relinquished during the prosecution of its patent application. 67 The Warner-Jenkintson Court relied on the doctrine of prosecution history estoppel as a reason why the doctrine of equivalents did not violate the public notice policy of requiring clear and distinct claims. 68 Thus, as a basis for reaffirming the existence of the doctrine of equivalents, the Warner-Jenkintson Court set forth a framework for the application of the doctrine of prosecution history estoppel. 69 It was the application of this framework and its reconciliation with prior case law that gave rise lo a split in the Federal Circuit, 70 which the en banc decision in Festo Corp. v. Shoketsu Kinozku Kogyo Kabushiki Co., attempted to resolve Interactive Pictures Corp., 274 F.3d at , 61 U.S.P.Q.2d at (citation omitted; emphasis in original) F.3d 761, , 62 U.S.P.Q.2d 1640, 1649 (Fed. Cir. 2002). 66 Speedplay Inc. v. Bebop Inc., 211 F.3d 1245, 1258, 53 U.S.P.Q.2d 1984, 1993 (Fed. Cir. 2000) (the Federal Circuit affirmed a holding of non-infringement because the patentee's expert had failed to address the way prong of the function-way-result test); see also Ultra-Tex Surfaces, 204 F.3d. 1360, 1364, 53 U.S.P.Q.2d 1892, 1895 ( As an initial matter, it is beyond dispute that Ultra-Tex [the patentee] bore the burden of proving the composition of the accused template. While Ultra-Tex argues that Hill Brothers failed to prove the composition of the accused template, it is axiomatic that the patentee bears the burden of proving infringement ). 67 Pharmocia & Upjohn v. Mylan Pharm., 170 F.3d 1373, 1376, 50 U.S.P.Q.2d 1033, 1037 (Fed. Cir. 1999). Whether prosecution history estoppel applies to limit the doctrine of equivalents is a question of law which Jibe Federal Circuit] reviews de novo. Pharmacia & Upjohn, 170 F.3d at 1376, 50 U.S.P.Q.2d at Warner-Jenkintson, 520 U.S. at 34, 41 U.S.P.Q.2d at Id at & n U.S.P.Q.2d at & n The split in the Federal Circuit has resulted in more than a few scathing dissents. For example, Judge Gajarsa viewed the majority opinion in Litton Sys., Inc.v. Honeywell, Inc., 140 F.3d 1449, 46 U.S.P.Q.2d 1321 (Fed. Cir. 1998), as a tortured interpretation of Warner-Jenkinson. Litton Sys., Inc. v. Honeywell, Inc., 145 F.3d 1472, 1476, 47 U.S.P.Q. 1106, 1110 (Fed. Cir. 1998) (emphasis added) (Gajarsa, J. dissenting from denial of a request for rehearing en banc). As Judge Clevenger put it [s]omeone, in this case [Litton] or in another case soon, should explain to the Supreme Court that if this panel is correct in granting a range of equivalents to limitations of claims amended for patentability reasons its Warner-Jenkinson decision had no meaningful 50

17 [A] The Federal Circuit's en banc Festo Decision The en banc decision in Festo answered four of the five questions set out in the order granting the petition for rehearing en banc For the purposes of determining whether an amendment to a claim creates prosecution history estoppel, is a substantial reason related to patentability, Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 33, 117 S.Ct. 1040, 137 L. Ed. 2d 146 (1997), limited to those amendments made to overcome prior art under 102 and 103, or does patentability mean any reason affecting the issuance of a patent? In response to En Banc Question 1, we hold that a substantial reason related to patentability is not limited to overcoming prior art, but includes other reasons related to the statutory requirements for a patent. Therefore, an amendment that narrows the scope of a claim for any reason related to the statutory requirements for a patent will give rise to prosecution history estoppel with respect to the amended claim element. 73 effect at all on the doctrine of equivalents. Litton Sys., Inc. v Honeywell, Inc., 145 F.3d 1472, 1473, 47 U.S.P.Q. 1106, 1107 (Fed. Cir. 1998) (Clevenger, J. dissenting from denial of a request for rehearing en banc). 71 Festo Corp. v. Shoketsu Kinozku Kogyo Kabushiki Co., 234 F.3d 558, 56 U.S.P.Q.2d 1865 (Fed. Cir. 2000) (en banc), reversed, 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002). 1n the earlier decision in the Festo case, which was vacated by the order granting the petition for rehearing, the Federal Circuit applied the rationale of Corning Glass Works v. Sumitomo Elec. U.S.A. Inc., 868 F.2d 1251, 9 U.S.P.Q.2d 1962 (Fed. Cir. 1989), and found infringement under the doctrine of equivalents even though there was not a one-to-one correspondence between the accused device and the claims at issue. In Festo, the claims called for sealing rings (plural) and the accused device had only a single sealing ring. See Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki (a/k/a SMC Corp.), 172 F.3d 1361, 50 U.S.P.Q.2d 1385 (Fed. Cir.1999), withdrawn, 187 F.3d 1381, 51 U.S.P.Q.2d 1959 (Fed. Cir. 1999). That the Supreme Court took the en banc Festo decision for review should have come as no surprise in view of the importance of these issues and the fact that this case was previously before the Supreme Court and was remanded for reconsideration in view of the Supreme Court's Warner-Jenkinson decision. See Shoketsu Kinozku Kogyo Kabushiki Co. v. Festo Corp., 520 U.S (1997). 72 Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki (a/k/a SMC Corp.), 187 Fad 1381, 51 U.S.P.Q.2d 1959 (Fed. Cir. 1999) (granting petition for rehearing en banc). 73 Festo, 234 F.3d 558, , 56 U.S.P.Q.2d 1865, (en banc) (11 of 12 judges joined in the holding on question 1), reversed 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002). In answering question one what does substantially related to patentability mean? the court essentially stated that everything that happens in prosecution is related to patentability and can potentially give rise to prosecution history estoppel. In particular, the court found that an amendment substantially related to patentability is any amendment that is made for the purposes of: novelty; non-obviousness; utility; written description requirement; enablement; best mode: and, definiteness Festo, 234 F.3d 558, , 56 U.S.P.Q.2d 1865, (boldface added) (en banc), reversed, 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002). 51