Claim term construed by construing different term in specification deleted from claim

In a decision last week, the Federal Circuit affirmed-in-part and vacated-in-part a district court's summary judgment of noninfringement based on a revised claim construction of two claim terms.  The court, in somewhat of a departure from its typical practice, also construed one additional term that appeared likely to be relevant on remand, but which did not form the basis for the summary judgment ruling.

While the Federal Circuit modified the construction of both terms that formed the basis of the summary judgment ruling, the court nevertheless found that summary judgment was still proper for one of the two groups of defendants under the broader revised construction.  The court remanded with respect to the other group of defendants, as the record was unclear whether summary judgment was appropriate.

Judge Linn dissented, and would have construed the term that formed the basis for the partial affirmance more broadly.  He asserted the majority unduly narrowed the claim based on passages in the specification relating to a term not even used in the claim itself, and would therefore have construed the claim more broadly.

More detail of Decisioning.com, Inc. v. Federated Dep't Stores, Inc. after the jump.

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District court's claim construction too narrow, but noninfringement finding affirmed anyway

In a decision yesterday, the Federal Circuit held that a district court construed a claim limitation too narrowly.  However, even under the broader construction, summary judgment was still appropriate, because there was no genuine issue of fact that the accused method still did not practice that element, either literally or under the doctrine of equivalents.

More detail of PSN Ill., Inc. v. Ivoclar Vivadent, Inc. after the jump.

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Application of doctrine of equivalents to range limitation in claim does not vitiate the limitation

In a decision Friday, the Federal Circuit affirmed a district court's claim construction, but reversed its rulings regarding the sufficiency of notice of infringement and the applicability of the doctrine of equivalents.

Regarding sufficiency of notice under 35 U.S.C. 287(a), the court held that while the patentee did not mark its products, its notice of infringement via letter was sufficient where the patent holder's identity is accurately noted on the patent included with a notification letter, even if not included in the text of the letter itself.

The court also held that the doctrine of claim vitiation does not necessarily preclude application of the doctrine of equivalents when the claim language includes a range of values. The fact that the equivalent would fall outside the range specified in the claim does not necessarily mean the limitation would be vitiated.

More detail of U.S. Philips Corp. v. Iwasaki Elec. Co. after the jump.

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Federal Circuit issues short opinion on claim construction, even shorter mention of claim vitiation

The Federal Circuit today issued a brief, five-page opinion regarding claim construction and infringement issues relating to a patent on insulated shipping containers.  The court affirmed the lower court's claim construction and, as a result, affirmed the summary judgment of noninfringement.

The court also dispensed with the doctrine of equivalents in a single sentence, making indirect reference to claim vitiation via a case cite, rather than discussing the issue directly.

More details of the case after the jump.

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"Critical" ratio in claim does not get the benefit of the doctrine of equivalents

Today's lesson from the Federal Circuit: be careful not to make a claim limitation "critical," or you may lose the benefit of the doctrine of equivalents for that element. The court found that the claimed weight ratio of two drugs was critical in part because other claims recited a range of ratios, but the claim at issue simply recited a specific ratio, "about 1:5." The court stated that permitting infringement of the about 1:5 range under the doctrine of equivalents would vitiate the limitation, and thus no range of equivalents was available for this element. As a result, the court affirmed the grant of summary judgment of noninfringement for the defendant.

More details of the case after the jump.

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Showing a strong Spine, the Federal Circuit addresses the Doctrine of Equivalents

            In DuPuy Spin, Inc. v. Medtronic Sofamor Danek, Inc., the Federal Circuit concluded that the district court erred in granting summary judgment of non-infringement on Medtronics Vertex® model with regards to U.S. Patent No. 5,207,678 (the '678 patent).  Additionally, the Federal Circuit concluded that the district court's judgment of non-infringement for Medtronics bottom-loaded screw device was proper and that the district court was correct in determining the Medtronic was not entitled to judgment as a matter of law on the issues of non-infringement or lost profit damages for Medtronic's MAS polyaxial pedicle screws.  Thus, the Federal Circuit affirmed-in-part, reversed-in-part, and remanded the case.

 

            The '678 patent, owned by DePuy, involve pedicle screws and receiver members used in spinal surgeries.  Pedicle screws are implanted into the vertebrae during surgery.  The head of each pedicle screw is connected to a receiver portion, and a threaded rod connects the receiver portion of several screws.  Together, the screws, receiver portions, and rods are used to stabilize spinal column segments.  On January 26, 2001, DePuy filed suit against Medtroni asserting infringement of the '678 patent based on Medtronic's MAS, Vertex®, M8, M10, and Sextant models of polyaxial pedicle screws.

 

            In the decision, the Federal Circuit had the opportunity to address the Doctrine of Equivalents.  Under the doctrine of equivalents, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is 'equivalence' between the elements of the accused product or process and the claimed elements of the patented invention.  The Federal Circuit then cited the Festo Corp decision stating that:

 

The language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty.  If patents were always interpreted by their literal terms, their language would be greatly diminished.  Unimportant and insubstantial substitutes for certain elements could defeat the patent, and its value to inventors could be destroyed by simple acts of copying.

 

The Federal Circuit then explained that there are limitations on the doctrine of equivalents, specifically the "all elements" rule.  The "all elements" rule informs a doctrine of equivalents analysis by requiring that equivalence be assessed on a limitation-by-limitation basis, rather than from the perspective of the invention as a whole, and that no limitation be read completely out of the claim.  The Federal Circuit then determined in the present case that there was no support for the district court's conclusion that applying the doctrine of equivalents would vitiate or read out one of the limitations of the claims.

 

To read a complete decision, click here.

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