Day 7 Self Study Course:
summarized by Tatsuo Yabe
Hi All, how are you doing?
Hope you are doing all right!
About Yabe-juku reading
assignment for the July 31, 2009 there were some
voices that the case laws were
tough to digest. If you feel the case laws, Lockheed
and Festo are tough to digest, I believe you are on the right track. If you do not think this way, then I think you are extremely
or you are more or less just
surfing on these case laws.
I would suggest try understanding
the flow of the three case laws without
trying to deeply understand the
technologies and the rationales to reach the
decision. In order to ease your reading, I am happy to provide you
my summary of the assigned
readings, pgs 432 to 466 for your reference:
Initially, the patentee has the
burden of proving infringement by preponderous evidence. Once
it is done, then the accused infringer may want to set forth a counter-argument based on the following limitations against the finding of infringement:
All element Rule; --
Lockeed v. SSL (Fed. Cir. 2003)
Prosecution history Estoppel;
-- W-J (
Rebutting PHE by "unforseeability" -- Festo (Fed Cir 2007)
Rebutting PHE by "tangential relation"; -- Insituform v. Cat
(Fed Cir 2004)
Prior Art preclusion;
-- Wilson Sporting v. David (Fed. Cir. 1990)
Disclosed but unclaimed subject matter; -- Johnson &
-- YBM Magnex
v. ITC (Fed Cir. 1998); Maxwell v. Baker (Fed.Cir. 1996)
Advantage rule/Spec based estoppel; -- Vehicular Tech v. Titan Wheel (Fed. Cir. 1998)
Limited prior use rights.
-- 35USC273 (1999) only for B-Model Patents
For July 31 (Fri), we will be
covering the defense by the accused infringer based on the above
(1) and (2) limitations.
All Element Rule:
This rule was first embraced by
Pennwalt (Fed Cir en banc decision: 1987) and confirmed
by Warner-Jenkinson (Sup Court: 1997).
Lockeed Martin Corp. v. Space
System Inc. (Fed Cir. 2003)
This case has been remanded to
the Fed Cir because of the Supreme Court's
Decision on Festo case.
Lockheed is the assignee of
USP'772 about an apparatus and method for steering a satellite. SSL is the
The element of claim 1 (USP'772)
in question has a term, expressed in "means plus function" form.
How the analysis was done?
Do you remember? see Chiuminatta decision (1998)!
At Markman hearing, intrinsic
evidence (Phillips v. AWH: 2005) was primarily reviewed to find out the
structure and equivalents thereof
with respect to the means plus function element for the literal
infringement analysis. For the "equivalent" analysis under
112(6), the test is to ask whether
that the accused device has the
element which performs the identical function in a substantially
the same way to achieve the
substantially the same result as the claimed element.
For the DOE analysis, the test
was to see if the element of the accused device performs substantially the same function in substantially the same way to
the same result as that of the
claimed element. (Graver Tank 1950 and W-J 1997)
It was found out that the accused
device (SSL) in question did not have
an element corresponding to the
means plus function term of claim 1 of USP'772 because
the element in question (SSL) does not have a sign generator and wheel
whose amplitude varies
sinusoidally. In other words, the element in question (SSL) did not
pass through zero (no meeting the claimed element "varies
Under the all element rule, there
can be no infringement under DOE if even one limitation of a claim or its equivalent is not present in the accused device.
d) ... -missing
No matter how insignificant the
element (d) is, no infringement under DOE.
1. What is an element?
- Corning Glass (Fed Cir 1989)
denied the Sumitomo's argument that every term in the claim was an element for
the purpose of the all element rule.
(however, there are some other
case laws that do not quite agree...!)
2. The specific exclusion rule:
- In Dolly v. Spalding (Fed Cir
1994), the patentee cannot argue that her claim covers a
structure that is pacifically excluded by the claims under the DOE.
(Ex) A portable adjustable child
play chair with
a) a stable,
b) a seat
c) a back
The accused device which had a
seat and a back panel which fit together to form a stable
rigid frame was not equivalent.
3. Pioneering inventions;
do not worry about it!
4. Later-developed technologies:
Sage Prod v. Devon (Fed Cir
1997), Does this mean the all elements rule can be ignored
when after-arising technologies no longer need to include one of the claimed limitations in order to practice the invention?
In W-J (1997), the
(1) If no reason for amendment is
given, there arises the presumption that
the amendment was done for the
reason for patentability (W-J: 1997). Then
PHE (no DOE applies) arises.
(2) If the patentee successfully
rebut the presumption, then PHE is not applied to the amended element.
--> possibility of application of DOE!
PHE arises when
(i) there is a narrowing
(ii) the narrowing amendment is
for the reason for patentability;
then PHE applies (no DOE
However, even if the above
conditions (i) and (ii) are met, there is still possibility
of rebutting the presumption (PHE):
(1) the equivalent in question
was unforeseeable at the time of application;
(2) the equivalent in question bears
a mere tangential relationship to the amendment; or
(3) some other reason that
the patentee could not have reasonably be expected to have described the
equivalent in question.
1. What is a narrowing
- adding a limitation to the
claim or clarifying an existing limitation, that results in less claim
coverage. For instance, "board" to -- a wooden board --.
- how about rewriting an existing
dependent claim in independent form?
all the limitations of claim 1 into the existing dependent claim 2?
- Under Honeywell
v. Hamilton (Fed Cir
2004), doing so would constitute "a narrowing amendment".
2. What is the amendment for
reasons related to patentability?
- when no explanation is given,
then it is presumed that the amendment
was done for the patentability
reason (W-J: 1997).
- A reason related to
patentability is not limited to amendments to avoid the prior art (102 and 103)
but includes changes made to overcome 101 and 112 as well (Festo). Note W-J
(1997) was not clear about this issue.
- However, a truly cosmetic
amendment under 112 is excusable (Festo).
(EX) Change 'th' to --the-- or
'sad' to --said--.
- How about a voluntary amendment
before receipt of the rejections?
- How about a broadening
(EX) Change 'a coil spring' to --
a spring --?
(EX) Change 'a steel plate' to --
a plate --?
the Festo Presumption:
Festo v. Shoketsu (Fed Cir 2007)
Festo: Patentee of USP4354125
Shoketsu: Accused Infringer.
The case raises the question of
whether an equivalent in question is foreseeable within
the meaning of
Festo argues that the languages
of Festo VIII (en banc 2003) says that the foreseeability must be determined in the context of the invention, i.e., the equivalent must be
under the F/W/R test at the time
of the amendment.
Conclusion: Fed Cir concludes
that use of an aluminum alloy sleeve was foreseeable at the
time of amendment because the pertinent prior art disclosed a no-magnetizable
Festo could have claimed use of a
non-magnetizable sleeve but did not do so. Accordingly, we find that the equivalent was surrendered by amendment.
Judge NEWMAN: dissenting.
Insituform Technologies v. Cat
Contracting Inc. (Fed Cir 2004)
Patentee: Insituform (
Accused Infringer: Cat
The issue is whether the amended
claim (reciting "a window" in an impermeable outer layer
of the tube) of Insituform encompasses a Cat's method which forms a
under DOE? In other words,
the added term "a window" invokes PHE (no DOE application)?
The patent relates to an
underground pipe and Claims of USP4366012 (Insituform) relates to a method
for performing pipe repair without removing the damaged pipe from
the ground. The method involves installing a liner into the pipe.
claims a process for impregnating
a flexible tube liner with resin prior to insertion
of the liner into a damaged pipe. The liner has an impermeable film on
the outside and a
resin-absorbent, felt layer on the inside. A vacuum is applied to
the inside of the liner by cutting a window into the outer, impermeable firm, applying a cup (a vacuum cup) to the outside of the window and connecting
other end of the cup to a vacuum
source. (see pg 462 for more details)
The accused product employs multiple
cups over the resin.
The original claim 1 was rejected
over Everson (USP4182262), which discloses both the use
of a continuous vacuum and the creation of that vacuum from only a single vacuum source at the far end of the tube opposite the resin source.
In order to distinguish
from Everson, Insituform amended
claim 1 to include all the limitations of claims 2 to 4.
claim 1 of the ‘012 patent was asserted at trial.
A method of impregnating with a curable resin an inner layer of resin absorbent
material disposed in an elongate flexible tube having an outer layer formed by
an impermeable film, the method comprising the steps of
introducing into one end of the elongate tube a mass of the curable resin
sufficient to impregnate the entire resin absorbent inner layer of the tube,
forming a window in
the impermeable outer layer of the tube at a distance from said one end of the
drawing through the window
a vacuum in the interior of the tube downstream of said one end by disposing
over the window
a cup connected by a flexible hose to a vacuum source which cup prevents ingress
of air into the interior of the tube while the tube is being evacuated, the
outer layer of the tube being substantially impermeable to air,
beginning at or near the end at which the curable resin mass was introduced,
passing the tube between squeezing members which force the resin to flow towards
the region of vacuum application as the tube progresses through the squeezing
when the resin reaches the vicinity of the region of vacuum application,
removing the cup and sealing the window,
providing another window in the
impermeable layer of the tube downstream of the
previously formed window,
drawing through the new window
a vacuum in the interior of the tube while progressively moving the tube
through the squeezing members to force the resin to flow toward the new region
of vacuum application, and
repeating steps 5, 6, and 7, where necessary to impregnate the entire resin
absorbent inner layer of the flexible tube.
Insituform pointed out in the
file history that the problem with Everson was that Everson's method
was ineffective when dealing with a long length of tube because it required an
large suction compressor.
Insituform solved the problem by
placing the suction source closer to the resin front, thus allowing
the use of a smaller suction compressor.
Insituform has rebutted the Festo
presumption. The prosecution history and the discussion at Fed Cir compel the conclusion that the amendment limiting the literal
scope of claim 1 to a single cup process bears "only tangential
relation," to the equivalent in question (a multiple cups). Insituform made it clear that the difference between its
process and Everson process was that
its process did not have the disadvantage of Everson's process (use of a large compressor at the end of the liner). There is no indication in the PH
of any relationship
between the narrowing amendment
and a multiple cup process (the alleged equivalent).
1. Estoppel as to the same
limitation in unamended claims.
- Under Deering Precision v.
Vector Distribution Sys (2003), the presumption (PHE) applies to all claims
containing the limitation, regardless of whether the claim was or
was not amended during the prosecution.