Day 8 Self Study Course:
Aug 28, 2009 (Fri)
summarized by Tatsuo Yabe
Prior Art preclusion;
Accused Infringer -- DGA (and
USP'168 is about a certain
configuration of dimples on a golf ball cover. The critical feature of the
claim is locations of the dimples on the ball. The object is to create a
more symmetrical distribution of dimples.
The issue is how the prior art
limits the coverage under DOE. More specific issue is whether the accused
product that may be within the range of DOE be excluded from the DOE
scope when there is the prior art which is close to the structure of
the accused product. In other words, the specific issue is whether
Theory of HYPOTHETICAL CLAIM ANALYSIS:
In order to determine if the
prior art limit the range of DOE to exclude the accused product, the following
steps to be exercised:
(i) Write a hypothetical claim that literally cover the accused
(ii) Determine whether the
hypothetical claim could have been allowed by PTO over the prior art?
(iii-A) If the hypothetical claim
could NOT have been allowed, then it would be improper to permit the patentee to
obtain that coverage under DOE.
(iii-B) If the hypothetical claim
could have been allowed, then it would be proper to permit the patentee to
obtain the coverage under DOE.
In short, the above is the test
to see whether the accused product is closer to prior art than to the claim.
The burden is on Wilson (patentee) to prove the range of equivalents which it
seeks. The patent owner always owes the burden of proving infringement.
In order for a hypothetical claim
to literally cover Dunlop's balls, its limitations must permit 60 dimples to
intersect the great circles by at least 9 thousandths of an inch. Then, it
is to be determined if this hypothetical claim could have been patentable in
view of the prior art Uniroyal ball.
The hypothetical claim limitation
reads on any ball which has less than 14% of its dimples intersecting great
circles. Uniroyal ball meets this limitation. There is no principled
difference between the hypothetical claim and the prior art Uniroyal ball.
The Hypothetical claim;
- the use of which is not
practical at all! WHY?
-- No matter how
precisely worded the jury instruction may be, at least in the eyes of a jury, a
hypothetical claim analysis blended together separate issues of (i)
infringement; and (ii) patentability;
-- Most judges are busy
enough to deal with real problems in litigation. Asking the judges to
evaluate patentability of a hypothetical claim, in addition to having them to
rule on the validity of claims, may be too hard!
The Fed Cir itself has stepped back from application of the Hypothetical claim
analysis under Wilson
- With a 40% of reversal of
district court claim construction by the Fed Cir, the district courts will not
be happy to construct a hypothetical claim, construe it, and determine its
patentability over the prior art. In Key Mfg v. Mocrodot (Fed Cir 1991).
- In Key Mfg (Fed Cir 1991),
it is mentioned that
- In General Am. Transp. Co.
v. Cryo-Trans (Fed Cir 1996), the court applied the
Burden of Proof:
- However, in National Presto
Indust., Inc. v. West Bend Co. (Fed Cir 1996), the court suggested that the
infringer has the burden of proving that the accused device is in the prior art:
...When the patentee has made a prima facie case of infringement under the DOE,
the burden shifts to the accused infringer, not to the trial judge, to come
forward with evidence to show that the accused product is in the prior art.
No Defense to Literal Infringement:
- In Wilson Sporting Goods,
the court dealt with a defense of practicing the prior art to an accusation of
infringement under DOE, whereas in Tate Access Floors v. Interface
Architectural (Fed Cir 2002), the Fed Cir dealt with a defense of practicing
the prior art against literal infringement.
- 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. In other words,
there is no requirement that the accused device be non-obvious in light of the
prior art. --> The Def should rely on a defense of invalidity, instead
of relying on the Wilson Sporting Goods when Def is accused of a literal
Can the hypothetical claim add additional limitations to avoid the prior art and
thus permit an assertion of DOE? Nooops!!!
- A hypothetical claim analysis
is not an opportunity to freely redraft granted claims!
- Slight broadening is permitted
but not narrowing!
- Hypothetical claim analysis
cannot be used to redraft granted claims in litigation by narrowing and
broadening a claim at the same time!
Disclosed but unclaimed subject matter;
& Johnston v. R.E. (Fed Cir. en banc 2002)
Patentee: Johnson -- USP5153050
Accused infringer: R.E. Service
The USP'050 relates to the
manufacture of printed circuit boards. Printed circuit boards are composed
of extremely thin sheets of conductive copper foil which is joined to sheets of
a dielectric (non-conductive) resin-impregnated material. In creating
these circuit boards, workers
manually handle the thin sheets of copper foil during the layering process.
In order to prevent the damages during manual handling, the claimed invention
adheres the fragile copper foil to a stiffer substrate sheet of aluminum.
The issue is whether the range of
DOE will be limited by the unclaimed disclosures of the embodiment.
-- YBM Magnex v. ITC (Fed Cir. 1998);
claimed a permanent magnet alloy comprising certain elements, including 6000 to
35000 ppm oxygen. The accused device is a similar magnet alloy with an
oxygen content between 5450 and 6000 ppm, which was allegedly disclosed but not
claimed in the '439 patent of YBM.
The court did
not create a new rule that DOE cannot encompass subject matter which was
disclosed in the spec but not claimed.
-- Maxwell v. Baker (Fed.Cir. 1996)
claimed a system for attaching together a mated pair of shoes. Maxwell
disclosed the inner and outer soles of the attached shoes. Maxwell
disclosed in the spec but did not claim, fastening tabs that could be switched
into a lining seam of the shoes.
recapture unclaimed but disclosed subject matter. Unclaimed subject matter
is dedication to public.
USP'050 describes the composition
of the substrate sheet:
While aluminum is currently the
preferred material for the substrate, other metals, such as stainless steel or
nickel alloys, may be used.
USP'050 specifically limited the
claims to "a sheet of aluminum" and "the aluminum sheet".
Having disclosed without claiming
the steel substrates,
YBM Magnex decision conflicts with this holding,
thus this en banc court overrules that case.
OPINION BY JUDGE NEWMAN
Important so read carefully pages 484 to 486
How is this rule of law likely to impact disclosures in spec?
Is this legal limitation on the DOE necessary?
Does this limitation exclude only those equivalents explicitly listed in the
if claims said "aluminum" and spec said aluminum or steel, and the
accused product uses iron. Under Johnson & Johnston, the patentee
cannot claim that steel and aluminum are equivalents, but how about iron and
example is if the claim says "pH of 6.0 to 9.0, spec says 5.8 to 10.0 pH.
Under Johnson & Johnston, the patentee cannot claim that 5.8 and 6.0
are equivalents. How about the infringing device that uses 5.7 pH?
Can the patentee claim that 5.7 and 6.0 are equivalents?
Sufficiency of the disclosure:
spec discloses a potential embodiment but does not have a sufficient disclosure
to satisfy an enablement requirement under 112(1), and the claim does not claim
such embodiment. For instance, an inventor mentions in the spec that his
system could be potentially used on the internet but does not provide enough
disclosure to enable it when the use of the internet was still in the
developing stage. Under the situation, is it proper to trigger the public
dedication rule with respect to the disclosed but unclaimed subject matter (the
embodiment of the system used on the internet)?
The Fed Cir
twice addresses as to what disclosure is sufficient to trigger this bar to the
DOE ("the disclosure-dedication rule").
Computer v. Foxconn (fed Cir 2004), the court suggested that, to be
dedicated to the public, the embodiment must satisfy the disclosure obligations
In Toro Co.
v. White Consol (Fed Cir 2004), subsequent to the PCS (2004), the
court rejected the PSC and held that "the disclosure-dedication rule"
does not impose a 112(1) requirement on the disclosed but unclaimed subject
matter. The court of Toro applied the public dedication rule even though
the spec did not enable that embodiment.
Do you agree
with Toro that 112(1) should not govern the public dedication rule?
Advantage rule/Spec based estoppel;
Tech (Power Trax) v. Titan Wheel (Tractech); (Fed. Cir. 1998)
Patentee: Power Trax --
Accused Infringer: Tractech
USP'015 is directed to an
improved locking differential with one of major improvement, that is, newly
designed spring assemblies that use 2 concentric coil springs and a pin.
Claim 1 includes biasing means with a spring assembly consisting of two (2)
The written description makes
clear a function of the spring assembly, emphasizing repeatedly the capacity of
the inner spring to serve as a back-up, or replacement, or redundancy for the
outer spring in the event of the failure of the outer spring, as a significant
betterment over the prior art. Similar advantages for having 2 concentric
springs are mentioned in (i) Background of the Invention; (ii) Summary of the
Invention; and (ii) Description of the Preferred Embodiment.
The issue is whether the
advantage mentioned in the spec limits the range of DOE, when the accused
product does not meet the advantage.
The spring-plug structure of the
accused product is entirely incapable of performing the key back up function
(advantage mentioned 'repeatedly' in
the spec), thus strongly suggesting that the spring plug structure of the
accused product is more than insubstantially different from the claimed spring
majority imposes a new rule of law that overrides the facts of equivalency.
In other words, the panel majority bars liability of infringement by an
equivalent device if the equivalent device does not possess the unclaimed
advantages or functions described in the spec. This new rule is contrary
to the law of claim interpretation and it is contrary to the precedent of
majority holds that the advantages mentioned in the spec, although not included
in the claims, must be possessed by the accused device before there can be a
finding of infringement by equivalency.
procedure for determining equivalency as to claim clause , the biasing means,
would be to consider the concentric springs set forth in the claim and the
spring/plug of the accused device, and to determine equivalency on the entire
record of similarities and difference in function, way, and result.
panel possibly fell into error by confusing claim construction with
infringement, because the majority cites Vitronics (Fed Cir 1996) for its
holding that the written description is "the single best guide to the
meaning of a disputed term." However, here in this case, there is no
term meaning in dispute.
- The court
compared this doctrine to prosecution history estoppel (PHE) but explicitly
noted that the case does not involve that issue.
applicants often include language suggesting the benefits of the claimed
invention over the prior art because these disclosures can help inform the
public about the nature of the invention. What incentive do cases like Vehicular
and SciMed create for disclosing information in the spec? If these
cases reduce the incentive to disclose, do these cases undermine the quid pro
quo nature of the patent system?
Reading limitations into the claim?
- Do you think
that the majority panel in Vehicular is improperly reading a limitation of spec
into the claim? In determining whether two items are equivalents under
DOE, is F/W/R test under Graver Tank sufficient?
Equivalence under 112(6).
Limited prior use rights.
(1999) only for B-Model Patents
It codifies a prior user rights
defense to infringement which is limited to business method patents.
It provides a defense to
infringement of a business method patent if the Def:
(1) reduce the
invention to practice more than 1 year before the effective filing date of the
commercially used the subject matter before the effective filing date of the