2. Doctrine of Equivalents Intro to IP – Prof Merges 1.31.12

3. Topics Today Doctrine of Equivalents Prosecution history estoppel Indirect infringement: inducement

4. Start with the statute 35 U.S.C. § 271 Infringement of patent. (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

5. Equivalents/Literal Claim Scope Literal Claim Scope Range of Equivalents

6. Hughes Satellite – p. 275-78

7. Hughes Aircraft Co. v. United States, 717 F.2d. 1351, 1362-63 (Fed. Cir. 1983). Later developed technology to use onboard computers to control satellite orientation is equivalent to receive signals form the satellite and use the computers on earth to control the orientation of the satellite)

8. Hughes VIII 1998 Because Hughes Aircraft Co. v. United States, 717 F.2d 1351, 219 USPQ 473 (Fed. Cir. 1983) ( Hughes VII ) satisfies the legal requirements announced in Warner-Jenkinson, we affirm.

12. S/E

14. Literal Infringement S/E Doctrine of Equivalents Patent f “means disposed... for receiving... signals g “said valve being coupled to said last- named means and responsive... Claim Elements ?

15. Literal Infringement Doctrine of Equivalents Pioneering Inventions Modest Inventions Patent f “means disposed... for receiving... signals g “said valve being coupled to said last- named means and responsive... Claim Elements

16. Prosecution History Estoppel Festo v. SKK Kabushiki, p. 305

21. Original Claim Scope

22. Narrowed Scope, after amend- ment

23. Accused product: ultra- purifica-tion at 9.5 pH No Infringement under DOE X

24. Accused Product: pH of 5.0 – can Hilton-Davis assert infringement under DOE? ??

25. United States Patent 4,354,125 Stoll October 12, 1982 Magnetically coupled arrangement for a driving and a driven member The invention is concerned with a magnetically coupled arrangement for a driving and a driven member, which arrangement is operable by a pressure medium and is used in a conveying system. A slidable piston (16) within a tube (10) has an arrangement of annular magnets (20) provided at each end with sealing and sliding members (24, 26). A driven assembly (18) slidable on the outer surface of the tube (10) has an arrangement of annular magnets (32) corresponding to the magnets (20) and provided at each end with a sliding ring (44). The members (24, 26, 44) prevent ingress of foreign bodies to the magnet locations, and consequently enable the spacing between the magnets and the tube (10) to be very small. A good magnetic coupling is achieved resulting in effective transmission of power. Several pistons (16) abutting one another can be used for conveying heavy loads. Inventors: Stoll; Kurt (Lenzhalde 72, D-7300 Esslingen, DE) Appl. No.: 153999Filed: May 28, 1980

29. Amendments Two patents – – Stoll, 4,354,125 – Carroll, 3,779,401

30. Prosecution History Amendments What limitations did patentee add during prosecution? Why were they made?

31. How amended? Claims changed to include a new limitation: piston assembly must now include a pair of sealing rings

32. Equivalents and Prosecution History P. 283 “Insubstantial alterations” BUT: Cannot “recapture” an insusbtantial alteration GIVEN UP during prosecution

33. 1 st point: “related to patentability” Claim amendment for any reason can give rise to estoppel Not just prior art-related reasons

34. Presumption arising from claim amendments P. 287

35. 2 nd Point: The 3-Part Test Supreme Court rejects “complete bar” Federal Circuit’s new rule reversed and thrown out

36. Original Claim Scope

37. Narrowed Scope, after amend- ment

38. 2 nd Point: The 3-Part Test P 287 [1] Unforeseeable equivalents [2] Amendment bears “tangential relation” to equivalent [3] “Some other reason” -- ?

39. Doctrinal Sequence FIRST: What is the literal meaning of the claim language? THEN: If the accused product falls outside that language, is it an “equivalent” of the claimed invention?

40. What is the test for equivalence? Is the accused product an “insubstantial alteration” under Warner-Jenkinson and Festo? Even if so, was this trivial variation on the claim “given up” during patent prosecution; in which case, equivalents are “estopped”

41. Equivalents/Literal Claim Scope Literal Claim Scope Range of Equivalents What is a “baffle”? Is the tank “thereon”?

42. Equivalents/Literal Claim Scope Literal Claim Scope Range of Equivalents Is a single sealing ring equivalent to “a pair” of them?

43. Prosecution History Estoppel 1.Warner-Jenkinson: presumption that part of claim coverage is surrendered when applicant amends claim 2.Festo case: 3 Ways to beat the presumption 3.Post-Festo developments: “disclosed but not claimed”/dedicated to the public

44. “Range of Equivalents” Infringement under DOE ? Literal Claim Scope

45. Warner-Jenkinson DOE Survives challenge Presumption in cases of claim amendment: amendment made for reasons related to patentability; prosecution history estoppel applies  SO: Presumption of no DOE, you are limited to your literal claim language

46. Original Claim Scope

47. Narrowed Scope, after amend- ment

48. Direct vs. Indirect Infringement Direct: one party makes, uses, or sells an entire patented invention – a thing that meets all the elements of the claim Indirect infringement: a party assists another party in making or using or selling; does something to further an act of infringement

49. Various types of indirect infringement Contributory infringement – Making or selling a thing that someone else adds to or finishes, to make an infringing embodiment Inducement – Instructing, guiding or directing someone so that an infringing thing results

50. § 271 (b) Whoever actively induces infringement of a patent shall be liable as an infringer. (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine... constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

51. Global-Tech Appliances v. SEB Inducement 131 S. Ct. 2060 (2011)

52. Facts SEB – French company with innovative deep fryer technology US Patent 4,995,312 Sunbeam  Pentalpha/Global-Tech [Outsourced design of competitive product]

55. Infringement law/strategy Why sue a party who is not a direct infringer? – Business reasons: Don’t offend customers/distributors – Foreign bias concerns How does inducement/contributory infringement come into play? – Must decide under case law whether adding non- direct infringers leaves a viable case

56. Pentalpha/Global-Tech Product Clearance Procedure Pentalpha did not tell lawyer that it had copied directly from SEB design Attorney failed to find SEB patent in search prior to issuing opinion letter Willful infringement relevance

57. Infringement theories Direct infringement: Pentalpha itself made, used and perhaps sold some infrginging copies of the SEB design Indirect: Pentalpha induced its contractual partners/branded buyers (Sunbeam, Fingerhut, Montgomery-Ward) to use and sell infringing copies

58. Inducement standard Some level of knowledge (scienter) is required for indirect infringement The specific act of the accused party is attenuated, not directly listed among the prohibited menu of activities; so to even out the analysis some knowledge is required (“I know my acts will lead you to infringe.”)

59. Federal Circuit standard Court should find infringement where defendant “deliberately disregarded a known risk that SEB had a protective patent.”

60. Conflicting precedent In Aro II, a majority held that a violator of § 271(c) must know “that the combination for which his component was especially designed was both patented and infringing,” 377 U.S., at 488, and as we explain below, that conclusion compels this same knowledge for liability under § 271(b).

61. Holding [W]e agree that deliberate indifference to a known risk that a patent exists is not the appropriate standard under § 271(b). We nevertheless affirm the judgment of the Court of Appeals because the evidence in this case was plainly sufficient to support a finding of Pentalpha’s knowledge under the doctrine of willful blindness.