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Claims III
Patent Law ndash Prof Merges
10282010
Issue PreclusionCollateral Estoppel ndash Patent Claims
bull Is claim interpretation by District Court A binding in separate proceeding with a different party in District Court B
bull Answer sometimes yes
1048708 The issue must be identical to one decided in the prior litigation
1048708 The issue must have been actually litigated in the prior suit
1048708 Resolution of the issue must have been essential to a final judgment in the prior action and
1048708 The party against whom the earlier decision is asserted must have had a full and fair opportunity to litigate the issue in the prior proceeding
SJ or Preliminary Injunction Rulings NOT final
CVIBeta Ventures Inc v Tura LP 112 F3d 1146 1160 n7 (Fed Cir 1997)
This is a ldquoone-sidedrdquo rule
bull Under Blonder-Tongue Labs Inc v Univ Ill Fdn 402 US 313 (1971)
bull Patent invalidity is res judicata in subsequent action on same patent
Prosecution History Estoppel
bull Limit on DOE
bull What is the ldquoprosecution historyrdquo
On Demand
bull Post-Phillips claim construction
ndashRole of spec
ndashldquoDisavowalrdquo
On Demand Mach Corp v Ingram Indus Inc 442 F3d 1331 1343 (Fed Cir 2006)
8 A method of high speed manufacture of a single copy of a book comprising the steps of
[2] storing the text of a plurality of books in a computer
[3] storing sales information relating to said plurality of books in a computer
[4] providing means for a customer to visually review said sales information
[5] commanding a computer to print the text of a selected one of said books in response to a customers selection
[6] retrieving the text of said selected one of said books from a computer
[7] printing the text of said selected one of said books on paper pages
[8] binding said paper pages together to form said selected one of said books
[9] storing graphical information corresponding to the cover of each of said books
[10] commanding a computer to reproduce said graphical information on a book cover and
[11] binding said paper pages together with said cover therearound
442 F3d 1331 1338 ndash p 5
The district court then defined ldquosales informationrdquo as ldquodata stored in a computer which is involved in the promoting and selling of a bookrdquo and that the term is not limited to promotional information but includes descriptive information as well such as price
The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Issue PreclusionCollateral Estoppel ndash Patent Claims
bull Is claim interpretation by District Court A binding in separate proceeding with a different party in District Court B
bull Answer sometimes yes
1048708 The issue must be identical to one decided in the prior litigation
1048708 The issue must have been actually litigated in the prior suit
1048708 Resolution of the issue must have been essential to a final judgment in the prior action and
1048708 The party against whom the earlier decision is asserted must have had a full and fair opportunity to litigate the issue in the prior proceeding
SJ or Preliminary Injunction Rulings NOT final
CVIBeta Ventures Inc v Tura LP 112 F3d 1146 1160 n7 (Fed Cir 1997)
This is a ldquoone-sidedrdquo rule
bull Under Blonder-Tongue Labs Inc v Univ Ill Fdn 402 US 313 (1971)
bull Patent invalidity is res judicata in subsequent action on same patent
Prosecution History Estoppel
bull Limit on DOE
bull What is the ldquoprosecution historyrdquo
On Demand
bull Post-Phillips claim construction
ndashRole of spec
ndashldquoDisavowalrdquo
On Demand Mach Corp v Ingram Indus Inc 442 F3d 1331 1343 (Fed Cir 2006)
8 A method of high speed manufacture of a single copy of a book comprising the steps of
[2] storing the text of a plurality of books in a computer
[3] storing sales information relating to said plurality of books in a computer
[4] providing means for a customer to visually review said sales information
[5] commanding a computer to print the text of a selected one of said books in response to a customers selection
[6] retrieving the text of said selected one of said books from a computer
[7] printing the text of said selected one of said books on paper pages
[8] binding said paper pages together to form said selected one of said books
[9] storing graphical information corresponding to the cover of each of said books
[10] commanding a computer to reproduce said graphical information on a book cover and
[11] binding said paper pages together with said cover therearound
442 F3d 1331 1338 ndash p 5
The district court then defined ldquosales informationrdquo as ldquodata stored in a computer which is involved in the promoting and selling of a bookrdquo and that the term is not limited to promotional information but includes descriptive information as well such as price
The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
1048708 The issue must be identical to one decided in the prior litigation
1048708 The issue must have been actually litigated in the prior suit
1048708 Resolution of the issue must have been essential to a final judgment in the prior action and
1048708 The party against whom the earlier decision is asserted must have had a full and fair opportunity to litigate the issue in the prior proceeding
SJ or Preliminary Injunction Rulings NOT final
CVIBeta Ventures Inc v Tura LP 112 F3d 1146 1160 n7 (Fed Cir 1997)
This is a ldquoone-sidedrdquo rule
bull Under Blonder-Tongue Labs Inc v Univ Ill Fdn 402 US 313 (1971)
bull Patent invalidity is res judicata in subsequent action on same patent
Prosecution History Estoppel
bull Limit on DOE
bull What is the ldquoprosecution historyrdquo
On Demand
bull Post-Phillips claim construction
ndashRole of spec
ndashldquoDisavowalrdquo
On Demand Mach Corp v Ingram Indus Inc 442 F3d 1331 1343 (Fed Cir 2006)
8 A method of high speed manufacture of a single copy of a book comprising the steps of
[2] storing the text of a plurality of books in a computer
[3] storing sales information relating to said plurality of books in a computer
[4] providing means for a customer to visually review said sales information
[5] commanding a computer to print the text of a selected one of said books in response to a customers selection
[6] retrieving the text of said selected one of said books from a computer
[7] printing the text of said selected one of said books on paper pages
[8] binding said paper pages together to form said selected one of said books
[9] storing graphical information corresponding to the cover of each of said books
[10] commanding a computer to reproduce said graphical information on a book cover and
[11] binding said paper pages together with said cover therearound
442 F3d 1331 1338 ndash p 5
The district court then defined ldquosales informationrdquo as ldquodata stored in a computer which is involved in the promoting and selling of a bookrdquo and that the term is not limited to promotional information but includes descriptive information as well such as price
The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
SJ or Preliminary Injunction Rulings NOT final
CVIBeta Ventures Inc v Tura LP 112 F3d 1146 1160 n7 (Fed Cir 1997)
This is a ldquoone-sidedrdquo rule
bull Under Blonder-Tongue Labs Inc v Univ Ill Fdn 402 US 313 (1971)
bull Patent invalidity is res judicata in subsequent action on same patent
Prosecution History Estoppel
bull Limit on DOE
bull What is the ldquoprosecution historyrdquo
On Demand
bull Post-Phillips claim construction
ndashRole of spec
ndashldquoDisavowalrdquo
On Demand Mach Corp v Ingram Indus Inc 442 F3d 1331 1343 (Fed Cir 2006)
8 A method of high speed manufacture of a single copy of a book comprising the steps of
[2] storing the text of a plurality of books in a computer
[3] storing sales information relating to said plurality of books in a computer
[4] providing means for a customer to visually review said sales information
[5] commanding a computer to print the text of a selected one of said books in response to a customers selection
[6] retrieving the text of said selected one of said books from a computer
[7] printing the text of said selected one of said books on paper pages
[8] binding said paper pages together to form said selected one of said books
[9] storing graphical information corresponding to the cover of each of said books
[10] commanding a computer to reproduce said graphical information on a book cover and
[11] binding said paper pages together with said cover therearound
442 F3d 1331 1338 ndash p 5
The district court then defined ldquosales informationrdquo as ldquodata stored in a computer which is involved in the promoting and selling of a bookrdquo and that the term is not limited to promotional information but includes descriptive information as well such as price
The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
This is a ldquoone-sidedrdquo rule
bull Under Blonder-Tongue Labs Inc v Univ Ill Fdn 402 US 313 (1971)
bull Patent invalidity is res judicata in subsequent action on same patent
Prosecution History Estoppel
bull Limit on DOE
bull What is the ldquoprosecution historyrdquo
On Demand
bull Post-Phillips claim construction
ndashRole of spec
ndashldquoDisavowalrdquo
On Demand Mach Corp v Ingram Indus Inc 442 F3d 1331 1343 (Fed Cir 2006)
8 A method of high speed manufacture of a single copy of a book comprising the steps of
[2] storing the text of a plurality of books in a computer
[3] storing sales information relating to said plurality of books in a computer
[4] providing means for a customer to visually review said sales information
[5] commanding a computer to print the text of a selected one of said books in response to a customers selection
[6] retrieving the text of said selected one of said books from a computer
[7] printing the text of said selected one of said books on paper pages
[8] binding said paper pages together to form said selected one of said books
[9] storing graphical information corresponding to the cover of each of said books
[10] commanding a computer to reproduce said graphical information on a book cover and
[11] binding said paper pages together with said cover therearound
442 F3d 1331 1338 ndash p 5
The district court then defined ldquosales informationrdquo as ldquodata stored in a computer which is involved in the promoting and selling of a bookrdquo and that the term is not limited to promotional information but includes descriptive information as well such as price
The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Prosecution History Estoppel
bull Limit on DOE
bull What is the ldquoprosecution historyrdquo
On Demand
bull Post-Phillips claim construction
ndashRole of spec
ndashldquoDisavowalrdquo
On Demand Mach Corp v Ingram Indus Inc 442 F3d 1331 1343 (Fed Cir 2006)
8 A method of high speed manufacture of a single copy of a book comprising the steps of
[2] storing the text of a plurality of books in a computer
[3] storing sales information relating to said plurality of books in a computer
[4] providing means for a customer to visually review said sales information
[5] commanding a computer to print the text of a selected one of said books in response to a customers selection
[6] retrieving the text of said selected one of said books from a computer
[7] printing the text of said selected one of said books on paper pages
[8] binding said paper pages together to form said selected one of said books
[9] storing graphical information corresponding to the cover of each of said books
[10] commanding a computer to reproduce said graphical information on a book cover and
[11] binding said paper pages together with said cover therearound
442 F3d 1331 1338 ndash p 5
The district court then defined ldquosales informationrdquo as ldquodata stored in a computer which is involved in the promoting and selling of a bookrdquo and that the term is not limited to promotional information but includes descriptive information as well such as price
The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
On Demand
bull Post-Phillips claim construction
ndashRole of spec
ndashldquoDisavowalrdquo
On Demand Mach Corp v Ingram Indus Inc 442 F3d 1331 1343 (Fed Cir 2006)
8 A method of high speed manufacture of a single copy of a book comprising the steps of
[2] storing the text of a plurality of books in a computer
[3] storing sales information relating to said plurality of books in a computer
[4] providing means for a customer to visually review said sales information
[5] commanding a computer to print the text of a selected one of said books in response to a customers selection
[6] retrieving the text of said selected one of said books from a computer
[7] printing the text of said selected one of said books on paper pages
[8] binding said paper pages together to form said selected one of said books
[9] storing graphical information corresponding to the cover of each of said books
[10] commanding a computer to reproduce said graphical information on a book cover and
[11] binding said paper pages together with said cover therearound
442 F3d 1331 1338 ndash p 5
The district court then defined ldquosales informationrdquo as ldquodata stored in a computer which is involved in the promoting and selling of a bookrdquo and that the term is not limited to promotional information but includes descriptive information as well such as price
The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
On Demand Mach Corp v Ingram Indus Inc 442 F3d 1331 1343 (Fed Cir 2006)
8 A method of high speed manufacture of a single copy of a book comprising the steps of
[2] storing the text of a plurality of books in a computer
[3] storing sales information relating to said plurality of books in a computer
[4] providing means for a customer to visually review said sales information
[5] commanding a computer to print the text of a selected one of said books in response to a customers selection
[6] retrieving the text of said selected one of said books from a computer
[7] printing the text of said selected one of said books on paper pages
[8] binding said paper pages together to form said selected one of said books
[9] storing graphical information corresponding to the cover of each of said books
[10] commanding a computer to reproduce said graphical information on a book cover and
[11] binding said paper pages together with said cover therearound
442 F3d 1331 1338 ndash p 5
The district court then defined ldquosales informationrdquo as ldquodata stored in a computer which is involved in the promoting and selling of a bookrdquo and that the term is not limited to promotional information but includes descriptive information as well such as price
The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
8 A method of high speed manufacture of a single copy of a book comprising the steps of
[2] storing the text of a plurality of books in a computer
[3] storing sales information relating to said plurality of books in a computer
[4] providing means for a customer to visually review said sales information
[5] commanding a computer to print the text of a selected one of said books in response to a customers selection
[6] retrieving the text of said selected one of said books from a computer
[7] printing the text of said selected one of said books on paper pages
[8] binding said paper pages together to form said selected one of said books
[9] storing graphical information corresponding to the cover of each of said books
[10] commanding a computer to reproduce said graphical information on a book cover and
[11] binding said paper pages together with said cover therearound
442 F3d 1331 1338 ndash p 5
The district court then defined ldquosales informationrdquo as ldquodata stored in a computer which is involved in the promoting and selling of a bookrdquo and that the term is not limited to promotional information but includes descriptive information as well such as price
The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
[6] retrieving the text of said selected one of said books from a computer
[7] printing the text of said selected one of said books on paper pages
[8] binding said paper pages together to form said selected one of said books
[9] storing graphical information corresponding to the cover of each of said books
[10] commanding a computer to reproduce said graphical information on a book cover and
[11] binding said paper pages together with said cover therearound
442 F3d 1331 1338 ndash p 5
The district court then defined ldquosales informationrdquo as ldquodata stored in a computer which is involved in the promoting and selling of a bookrdquo and that the term is not limited to promotional information but includes descriptive information as well such as price
The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
[10] commanding a computer to reproduce said graphical information on a book cover and
[11] binding said paper pages together with said cover therearound
442 F3d 1331 1338 ndash p 5
The district court then defined ldquosales informationrdquo as ldquodata stored in a computer which is involved in the promoting and selling of a bookrdquo and that the term is not limited to promotional information but includes descriptive information as well such as price
The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
442 F3d 1331 1338 ndash p 5
The district court then defined ldquosales informationrdquo as ldquodata stored in a computer which is involved in the promoting and selling of a bookrdquo and that the term is not limited to promotional information but includes descriptive information as well such as price
The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
The defendants argue that the district court construed and instructed the jury on ldquosales informationrdquo too broadly They argue that the patent specification and prosecution history require that ldquosales informationrdquo always includes information that is promotional in nature and that the term is not met by the provision of only price and identifying information such as title or ISBN
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
ldquoIt is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase and facilitate the high speed manufacture of a single copy helliprdquo -- Ross patent spec
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
We agree with the defendants that the prosecution history requires this claim construction for the inclusion of promotional information was a material distinction from the prior art Mr Ross stressed that in his invention a customer can browse among books based on information concerning the substantive content of the book
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
The defendants argue that ODMC disavowed this interpretation in order to obtain the patent and represented to the patent examiner that the inclusion of promotional material is what distinguishes this invention from the prior art
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Disavowal Rambus Inc v Hynix Semiconductor Inc569 FSupp2d 946 (NDCal2008)
Rambuss references to the specification show that a DRAM SRAM or ROM may be a memory device but the specification does not clearly limit the term ldquomemory devicerdquo to a single chip Because the specification does not clearly limit the scope of the invention to a single chip the court declines to read the phrase ldquomemory devicerdquo so narrowly Accordingly the court adopts the Manufacturers construction A ldquomemory devicerdquo is ldquoa device in which information can be stored and retrieved electronicallyrdquo It need not be on a single chip
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer Although we agree with the district court that the Ross invention does not concern itself with whether the ldquocustomerrdquo reads the book or obtains it for resale the focus of the Ross patent is immediate single-copy printing and binding initiated by the customer and conducted at the customers site -- p 8
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
ldquoCustomerrdquo
hellip
[5] commanding a computer to print the text of
a selected one of said books in response to a customers selection
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
The Ross specification repeatedly reinforces its usage of the term ldquocustomerrdquo as the retail consumer See col 7 lines 24-25 (ldquoAll customer actions are conducted within customer console 103rdquo) col 15 lines 59-60 (ldquothe customer seats himself or herself in front of computer screen 157rdquo as depicted in Fig 2) col 2 lines 8-12
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
(ldquoif the consumer wishes to purchase a book he may either pay for the book through a store clerk or the consumer may enter his credit card into the systemrdquo) The specification distinguishes ldquogeneral purpose machines not specifically designed to be consumer operated for the on demand automatic manufacturing of a single book at the point of salerdquo
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
The district courts definition of ldquocustomerrdquo cannot eliminate these constraints in order to embrace the remote large-scale production of books for publishers and retailers
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
ldquoProviding Means for a Customer to Visually Reviewrdquo Clause [4] of
Claim 8
bull Includes providing a computer or kiosk to the ldquocustomerrdquo
bull None of the defendants do this
bull Again look to the specification
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
442 F3d 1331 1340 ndash p 7ODMC argues that the patentee did not disavow
the standard dictionary meaning of ldquocustomerrdquo and that the Ross invention is not limited to any specific kind of customer However when the scope of the invention is clearly stated in the specification and is described as the advantage and distinction of the invention it is not necessary to disavow explicitly a different scope
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Reading in limitations (bad) vs interpreting (good)
ldquoMeans for a customer to visually reviewrdquo does not include elements in the patent specification which are referred to as being preferable [but not essential] and thus a customer seat and ambient light are not included
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Disavowal
Astrazeneca AB v Mut Pharm Co 384 F3d 1333 1339-40 (Fed Cir 2004)
Where the general summary or description of the invention describes a feature of the invention (here micelles formed by the solubilizer) and criticizes other products (here other solubilizers including co-solvents) that lack that
same feature this operates as a clear disavowal of these other products
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
From ldquodisavowalrdquo to prosecution history estoppel
bullWarner-Jenkinson and (most importantly) Festo in the Supreme Court
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
The Doctrine of Equivalents
bull Distinguish from ldquoliteral infringementrdquo
bull Distinguish from section 112 par 6 ldquomeans plus functionrdquo equivalents common law doctrine
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Warner-Jenkinson arguments in Sup Ct
bull What did petitioner W-J argue
ndash DOE Dead
ndash DOE should be narrowed
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
1952 Act and the DOE
bull Peripheral claiming
bull Reissue
bull PTO role
bull Sec 112 Par 6 ndash ldquomeans plus functionrdquo claims
ndash Specific provision implies repeal of general DOE
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Proper Scope of DOE
bull ldquoOverall equivalentrdquo vs ldquoelement-by-elementrdquo analysis
bull Judge Nies dissent key
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
What does this mean ndash element-by-element
bullWhat exactly is an element
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
What does this mean ndash element-by-element
ldquosubjecting an aqueous solution to ultrafiltration [1] through a membrane having a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90rdquo
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Hypothetical accused product
bull Completely new type of ldquoaqueous solutionrdquo that promotes separationpurification
ndash Lower hydrostatic pressure needed
ndash Broader pH range permissible
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Some cases said
bull ldquoAs a wholerdquo standard
ndashAccused product might infringe
bull Other casesNies dissent
ndashNo infringement inder DOE here
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Prosecution History Estoppelbull Limit on DOE
bull Topic for Festo tomorrow
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
United States Patent 4189380 Booth et al February 19 1980 Salt addition in ultrafiltration purification of solutions of polymeric colorants
The ultrafiltration purification of aqueous solutions of polymeric colorants wherein low molecular weight impurities are removed in an ultrafiltrate leaving a purified polymeric colorant-bearing retentate is carried out with improved efficiency when during at least two diavolumes of ultrafiltration the salt content of the retentate is maintained above about 1 by weight
bull Inventors Booth Robin G (Palo Alto CA) Cooper Anthony R (Los Altos CA) Assignee Dynapol (Palo Alto CA) Filed November 18 1976
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Original Claim ndash Rebhahn Application
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approx 200-400 psig to thereby cause separation of said impurities from said dye
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Amendment
Added this phrase (claim limitation) to the claim
at a pH from approximately 60 to 90
Booth reference pH Above 90
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
In a process for the purification of a dye the improvement which comprises subjecting an aqueous solution to ultrafiltration through a membrane having [1] a nominal pore diameter of 5-15 Angstroms [2] under a hydrostatic pressure of approx 200-400 psig [3] at a pH from approximately 60 to 90 to thereby cause separation of said impurities from said dye
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Original Claim Scope
Narrowed Scope after amend-ment
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Accused product ultra-purifica-tion at 95 pH
No Infringement under DOE
X
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Accused Product pH of 50 ndash can Hilton-Davis assert infringement under DOE
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
bull United States Patent 4354125 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
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Prosecution History
bull Amendments ndash p 944
bull What limitations did they add
bull Why were they made
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Fed Cir opinion
bull Two aspects
ndash Prosecution history estoppel (PHE) applies to all amendments whatever the basis
ndash PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Federal Circuit opinion
bull 11 ndash 1 on amendment rationale issue
bull 8-4 on ldquocomplete barrdquo approach
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
1st point ldquorelated to patentabilityrdquo
bull Enablement estoppel is now a reality
bull P 949
ndash What would a ldquotruly cosmeticrdquo amendment look like
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
2nd Point The 3-Part Test
bull Supreme Court rejects ldquocomplete barrdquo
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Original Claim Scope
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Original Claim Scope
Narrowed Scope after amend-ment
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Original Claim Scope
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Narrowed Scope after amend-ment
X
Embodi-ment ldquoXrdquo Can DOE cover
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
ldquoEstoppelrdquo idea
bull Who is estopped from what
bull Why
bull Like other legal instances of estoppel concept
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
2nd Point The 3-Part Test
bull P 952
bull [1] Unforeseeable equivalents
bull [2] Amendment bears ldquotangential relationrdquo to equivalent
bull [3] ldquoSome other reasonrdquo -- expectations
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
Is the DOE dying
bull Allison John R and Lemley Mark A The (Unnoticed) Demise of the Doctrine of Equivalents Stanford Law Review Vol 59 2007
bull The doctrine of equivalents was already near death by the late 1990s That became even more true after 2000 Reason Markman
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles
On the Decline of the Doctrine of Equivalents
Cardozo Law Review Vol 31 No 4 2010Loyola-LA Legal Studies Paper 2010-25LEE PETHERBRIDGE Loyola Law School
Los Angeles