DOE I

4.5.04

Patent Law

Non-Literal Infringement

Rotating handle at end of bar

Cutting Elementattached to bar

Base, withpassageway

U-shapedbarClaimed

Invention

Metal wire

Fishing Line

“AccusedDevice”

INFRIN

GING

UNDER DOE?

United States Patent 4,560,746 Rebhahn ,   et al. December 24, 1985 Ultrafiltration process for purification of dyes useful in foodstuffs

The disodium salt of [Compound A], the disodium salt of [(FD and C Yellow 6)], the trisodium salt of [(FD and C Red 2)], the disodium salt of [Compound D] and the sodium salt of [(D and C Yellow 10)] are prepared and purified in high yield and in a high state of purity by subjecting their aqueous reaction mixtures to ultrafiltration through a membrane of such structure and under such conditions that the impurities are separated from the reaction mixtures, and the products are concentrated in high purity concentrates from which the products can be isolated directly by evaporation of the solvent.

Inventors: Rebhahn; Robert W. J. (Berkley, MA); Cook; Wayne L. (Cincinnati, OH) Assignee: The Hilton-Davis Chemical Co. (Cincinnati, OH) Appl. No.: 677118Filed: November 30, 1984

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 p.s.i.g. at a pH from approximately 6.0 to 9.0, to thereby cause separation of said impurities from said dye . . .

Graver Tank v. Linde Air ProductsUnionmelt electric welding flux

Patented Compositioncalcium & magnesium silicates

Alleged Infringercalcium and manganese silicates

Are these equivalent?

1952 Act and the DOE – p. 928

• Peripheral claiming?

• Reissue?

• PTO role?

• Sec. 112 Par. 6 – “means plus function” claims

– Specific provision implies repeal of general DOE?

Proper Scope of DOE

• P 930

• “Overall equivalent” vs. “element-by-element” analysis

• Judge Nies dissent key

United States Patent 4,189,380 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.

• Inventors: Booth; Robin G. (Palo Alto, CA); Cooper; Anthony R. (Los Altos, CA) Assignee: Dynapol (Palo Alto, CA) Filed: November 18, 1976

Original Claim – 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 p.s.i.g. to thereby cause separation of said impurities from said dye . . .

Amendment

Added this phrase (claim limitation) to the claim:

. . . at a pH from approximately 6.0 to 9.0 . . .

Booth reference: pH Above 9.0

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 p.s.i.g. [3] at a pH from approximately 6.0 to 9.0, 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 9.5 pH

No Infringement under DOE

X

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

??

Evolution of the Doctrine

“If it performs substantially the same function in substantially the same way to obtain the same “result” Graver Tank, 339 U.S. 605, 608 (1950). – P. 927

Test of Equivalency (Hilton Davis (1997)):

• Equivalency of Elements

• Afterarising Art Considered

•Updated 1997: Warner-Jenkinson Co., Inc. v. Hilton Davis Chem Co., 117 S. Ct. 1040 (1997).

•“All elements of a claim must be present in accused device for infringement under DOE”• Presumption that claim amendments made during prosecution were made to escape prior art: Prosecution history estoppel applies.