Chapter 1: COOKBOOK PROCEDURE AND BLUEPRINT FOR DESIGNING AROUND : AVOIDING LITERAL INFRINGEMENT Literal Infringement Generally Claim Construction Under Markman 1. Claim Interpretation Before Markman 2. Markman v. Westview Instruments 3. What Is Standard Of Review On Appeal? It Depends. Cookbook Procedure For Avoiding Literal Infringement 1. Read All Of The Claims In Their Entirety For Limitations That Narrow Otherwise Broad Limitations Or Broaden Otherwise Narrow Limitations 2. Extract From The Patent All Descriptions Of The Components Defined In The Claims and Special Definitions Of The Words In The Claims 3. Identify All Words In The Claims That Have No Ordinary Meaning; No Meaning Outside Of The Specification 4. Find Unclaimed Components That Can Be Read Into The Claims Anyway 5. Extract From The Prosecution History All Descriptions Of The Components Defined In The Claims, And Special Definitions Of The Words In The Claims 6. Find The Best Relevant Dictionary, Treatise, Etc., From Which The Ordinary Meaning Of The Words In The Claims Can Be Obtained 7. Identify The Relevant Ordinary Definitions Of The Words In The Claims 8. Consider Whether Expert Testimony Or Other Extrinsic Evidence Might Narrow The Claims 9. Determine Whether The Dictionary Or Specification Controls Claim Interpretation 10. Use 112(2) Policy To Narrow The Claims 11. Find Essential Elements That Can Invalidate The Claims 12. Consider Whether The Reverse Doctrine Of Equivalents Avoids Infringement 13. Meet With Technical And Marketing People And Identify All Components In The Client's Product That Can Be Changed Or Eliminated To Avoid As Many Claim Limitations As Possible 14. Before Drawing A Conclusion, Consider Whether Each Change Or Eliminated Claim Limitation Avoids Infringement Under The Doctrine Of Equivalents Chapter 2: DOCTRINE OF EQUIVALENTS The Federal Circuit Decision en banc In Hilton Davis The Supreme Court Decision In Warner-Jenkinson 1
Cookbook For Avoiding Infringement By Equivalents 1. Overview 2. Examples Of A Totally Missing Element 3. Examples Of Physically/Chemically Different Element 4. Examples Of Physically/Chemically Changed Elements Chapter 3: PROSECUTION HISTORY ESTOPPEL FROM HUGHES TO FESTO AND BEYOND General Background 1. The Supreme Court s Warner-Jenkinson Decision 2. The Festo Remand Panel Decision (Festo IV) 3. The Supreme Court s Decision In Festo VIII 4. The Second Post-Remand en banc Festo Discussion Festo X 5. Current Summary Of Prosecution History Estoppel Cookbook for Substituted Element Approach for Prosecution History Estoppel Claim Limitations 1. Identify All Claim Limitations That Were Changed During Prosecution, Whether By Amendment, By Re-Writing Claims, By Adding New Claims, Etc. 2. Identify All Arguments Made For Patentability Purposes That Limit The Scope Of The Claims Or Admit That Certain Components Are Not Within The Scope Of The Claims 3. Identify Other Actions Creating Potential Estoppel 4. Eliminate Claim Limitations That Were Not Added Or Changed For Patentability Purposes, i.e., 103, 102, 112, 101, Etc., But Were Only Truly Cosmetic 5. Eliminate Claim Limitations That Were Not Narrowing 6. Identify All Territory Surrendered During Prosecution 7. Meet With Technical And Marketing People And Identify All Equivalent Components That Avoid Literal Infringement Of Each Claim And Can Be Substituted For The Relevant Claim Limitations 8. Identify All Equivalent Substitutes That Are In The Surrendered Territory 9. Choose A Substituted Component In The Surrendered Territory To Produce A Product That Can Best Compete With The Patented Product 10. If Step 9 Is Unsuccessful, Identify All Reasons Given For The Remaining Claim Amendments 11. If Step 10 Is Unsuccessful, Identify Equivalent Substitutes That Are Not In The Expressly Surrendered Territory And Consider The Likelihood That The Second Festo Presumption Can Be Rebutted 12. If The Second Presumption Cannot Be Rebutted, Choose An Equivalent That Can Best Compete With The Patented Product 13. Meet Again With Technical And Marketing People And Design A Competitive Product That Uses The Excluded Subject Matter/Components 14. Obtain A Component Opinion Of Counsel That There Is No Infringement 2
Chapter 4: THE DOCTRINE OF EQUIVALENTS AND ITS LEGAL LIMITATIONS (Other than Prosecution History Estoppel) Chapter 5: Does The Proposed Design Practice The Prior Art Or Obvious Or Trivial Variations Of The Prior Art? Is The Proposed Design Specifically Excluded From The Scope Of The Claim? Would Application Of The Doctrine Of Equivalents Vitiate A Claim Limitation? 1. What Is Vitiation? 2. Alleged Equivalent Is The Antithesis (e.g., Opposite) Of The Claim Limitation 3. Narrow Invention - Claims Drawn To Specific Structure 4. Alleged Equivalent Is Not A Subtle Difference In Degree, But Different In Kind 5. Cases In Which The Vitiation Doctrine Was Not Applied Does The Proposed Design Substantially Fulfill The Role Or Function Of The Claim Limitation? Does The Proposed Design Use A Disclosed, But Unclaimed Embodiment Of The Patent? DESIGNING AROUND MEANS PLUS FUNCTION LIMITATIONS Means-Plus-Function Missing Element Approach 1. List The Claim In Diminishing Order Of Breadth 2. Eliminate The Broadest Claims By Finding Invalidating Prior Art 3. Identify All Means-Plus-Function Claim Limitations 4. Identify The Function Of Each Means-Plus-Function Limitation 5. If A Claimed Function Is Not Needed, Eliminate The Claimed Means And Write An Opinion Relying On Pennwalt 6. Identify The Corresponding Structure, Material Or Acts In The Specification For Each Means-Plus-Function Limitation 7. Consider Whether Disclosure Of Structure And Indefiniteness Render The Claims Invalid 8. With Solely The Broadest Valid Claim Having A Means-Plus-Function Clause In Mind, Consult With Technical And Marketing Experts To List All Possible Substitute Means That Will Perform The Function Of The Means Clause But Which Are Not Shown In The Specification 9. Consider The Range Of Equivalents In Light Of The Prosecution History 10. Consider Whether The Non-Disclosed Structure Is Within The Available Range Of Equivalents Under 112, 6 For Literal Infringement 11. Consider Whether The Non-Disclosed Structures Are Within The Available Range Of Equivalents Under The Doctrine Of Equivalents 12. Select A Non-Disclosed Means Which Looks As Different As Possible 13. Write A Non-Infringement Opinion Relying On Laitram V. Rexnord 3
Chapter 6: Chapter 7: DESIGN AROUND EXERCISES PATENTEE S ANTICIPATORY ANTIDOTES TO DESIGNING AROUND - APPLICATION WRITING, CLAIM DRAFTING, ANDPROSECUTION TECHNIQUES Application Writing And Claim Drafting 1. Antidote To The Missing Element Approach 2. Antidote To The Means-Plus-Function Approach 3. Antidote To The Dependent Claim Approach 4. Correlating Claim Elements To Competitive Success Prosecution Techniques 1. Claim Amendments - Key To Commercial Success 2. Drafting The Remarks Section Of An Amendment 3. Presenting Claims Written To Cover A Competitor s Product 4. Post Issuance Practice Chapter 8: Chapter 9: DESIGN AROUND DEMONSTRATION HOW TO DRAFT NON-INFRINGEMENT AND INFRINGEMENT OPINIONS Non-Infringement Opinions 1. Law Of Willful Infringement 2. Actions To Consider Upon Notice Of Another s Patent 3. Willfulness And Enhanced Damages 4. Significant Cases On Exculpatory Opinions Of Counsel 5. Important Considerations For Drafting Competent Non-Infringement Opinions 6. The Use Of A Non-Infringement Opinion In Litigation 7. Suggested Contents Of The Opinion Infringement Opinions 1. Rule 11, Fed. R. Civ. P. 2. 35 U.S.C. 285 3. General Considerations for Opinions Chapter 10: LITIGATING INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS: TECHNIQUES & STRATEGY Infringement Under The Doctrine Of Equivalents 1. Patentee s Perspective: Developing A Theory Of Infringement 2. Developing Evidence Of Equivalents 3. Defendant s Perspective: Establishing Non-Equivalency 4. Defendant s Perspective: Use Of Prosecution History To Limit Doctrine Of Equivalents 4
5. Defendant s Perspective: Use Of Wilson Sporting Goods Hypothetical Claim To Limit Doctrine Of Equivalents 6. Patentee s Perspective: Meeting An Infringer s Prosecution History And Wilson Sporting Goods Defenses 7. Summary Judgment 8. Jury Case - Particularized Testimony And Linking Argument 9. Jury Trial vs. Bench Trial - Impact On Infringement Issues 10. Use Of Experts - Technical And Legal 11. Use Of Demonstrative Evidence 12. Post-Verdict Remedies 13. Current Developments In Patent Litigation 14. Patent Pilot Program 15. America Invents Act 16. Chief Judge Rader: Improving Patent Litigation 5