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Category: Doctrine of equivalents


New and Useful - April 23, 2013
April 23, 2013
Post by Blog Staff
· InK-Tech Telecoms v. Time Warner Cable, the Federal Circuit confirmed that the standard for evaluating the adequacy of complaints alleging direct patent infringement remains Form 18 of the Appendix of Forms to the Federal Rules of Civil Procedure ("Form 18"). K-Tech filed separate complaints against Direct TV and Time Warner Cable (“TWC”) on the same day, alleging infringeme.......
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Patented method of traffic detection not infringed
March 02, 2010
Post by Blog Staff
In an opinion released in July last year, the Court of Appeals for the Federal Circuit issued a ruling in the case of Wavetronix v. EIS Electronic Integrated Systems. This case involved a traffic monitoring system that had been patented by Wavetronix, and EIS had received summary judgment for noninfringement of the Wavetronix patent at the district court. Wavetronix appealed the noninfringement summary .......
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Estoppel applies to all added limitations in claims, including when present in unamended claims
April 15, 2009
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court's grant of summary of no literal infringement and that prosecution history estoppel barred application of the doctrine of equivalents. During prosecution of the patent, a total of three limitations from two different dependent claims were added to the asserted claim in separate amendments, although only two of the limitations were addressed .......
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Reliance on initial expert for rebuttal sufficient to defeat summary judgment
March 20, 2009
Post by Blog Staff
In a decision Tuesday, the Federal Circuit reversed grants of summary judgment in favor of both parties. The defendant was granted summary judgment of noninfringement, and the plaintiff (and counterclaim defendant) was granted summary judgment on the grounds of no marking under 35 U.S.C. § 287. Both parties appealed.The Federal Circuit determined there was a genuine issue of fact regarding infringement unde.......
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Irreparable harm to exclusive licensee cannot support injunction; willfulness vacated post-Seagate
August 20, 2008
Post by Blog Staff
In a decision Monday, the Federal Circuit addressed a range of issues and ultimately affirmed a district court's denial of injunctive relief and, in light of the intervening Seagate decision, vacated and remanded the case for reconsideration regarding willfulness. The court also affirmed the district court's finding of no invalidity and the infringement of some claims under the doctrine of equivalents. .......
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Claim construction and finding of noninfringement affirmed
June 20, 2008
Post by Blog Staff
In a decision Wednesday, the Federal Circuit affirmed a district court's claim construction and grant of summary judgment of non-infringement. The patent holder's proposed claim interpretation relied heavily on means-plus-function language and an embodiment in the specification not covered by the claim construction. The Federal Circuit found that the failure to use clear "means-plus-function languag.......
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Claim construction and noninfringement affirmed on one patent, vacated on another
May 13, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit vacated a district court's grant of summary judgment of noninfringement of one patent and affirmed summary judgment of noninfringement of another. The determinations turned on the construction of one claim element in each patent.In the first patent, the court held that there was sufficient disclosure in the specification to permit the broader construction of the c.......
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District court's claim construction too narrow, but noninfringement finding affirmed anyway
May 07, 2008
Post by Blog Staff
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. PSN Illinois (PSN) owns a patent relating to a method .......
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Patentee could not rebut presumption of estoppel; noninfringement finding affirmed
April 21, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court decision holding that application of the doctrine of equivalents was barred as the Festo presumptions had not been rebutted. The court noted that the patentee did not show that the alleged equivalent was unforeseeable at the time of making the narrowing amendment (which was the cancellation of an independent claim and rewriting a dependent claim.......
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If ordinary meaning of claim term does not resolve disputed construction, court must construe term
April 10, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit vacated and remanded a jury's finding of willful infringement case back to a district court, based on errors in claim construction and application of the doctrine of equivalents. The district court's original Markman hearing determined that no construction was necessary for a particular claim term, "only if," whose scope was disputed by the parties. .......
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Dependent claim can be construed to be broader than independent claim based on prosecution history
March 03, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit held a district court construed 1 of 2 claim terms correctly, and incorrectly concluded that prosecution history estoppel barred application of the doctrine of equivalents to a third claim term because the narrowing amendment was only tangentially related to the equivalent at issue. As a result, the court affirmed in part, reversed in part, and remanded.One of the cla.......
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Request to stay injunction pending appeal may also be considered notice of appeal; estoppel bars DOE
February 12, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit reversed a jury's verdict of infringement under the doctrine of equivalents. The court had previously vacated-in-part and reversed-in-part the district court's earlier summary judgment of infringement, the result of which was the jury trial conducted by the district court. The combination of the Federal Circuit's mandate in the earlier appeal and applicat.......
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Claims requiring an "insert" do not cover products with similar structure not "inserted"
February 08, 2008
Post by Blog Staff
In a decision Wednesday, the Federal Circuit affirmed a district court ruling granting summary judgment of non-infringement. At the outset, the court noted the patent at issue had been before the court multiple times, and the claim terms at issue in this appeal had already been construed by the court in earlier cases.As the district court applied the Federal Circuit's earlier construction, the court had litt.......
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Pre-KSR obviousness instruction does not result in plain error post-KSR
January 10, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit affirmed findings of infringement of two patents by two defendants. The court also reversed an invalidity ruling of one of one claim that had been the subject of reexamination, but remanded the case to the district court for a determination of the obviousness of one claim based on a revised claim construction and for a determination of damages.While the case went to t.......
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Triangular opening not equivalent to vertical slit; summary judgment of no infringement affirmed
November 28, 2007
Post by Blog Staff
Today the Federal Circuit affirmed a district court's determination that the patent claim term "closeable vertical opening" required a slit-like shape that is perpendicular to the pan of the horizon instead of simply an opening with a shape that is taller than it is wide. Further, the court found that an accused product which creates a triangle-flap opening did not operate in a substantially simila.......
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Application of doctrine of equivalents to range limitation in claim does not vitiate the limitation
November 05, 2007
Post by Blog Staff
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.......
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Infringement finding and denial of permanent injunction in favor of ongoing royalty affirmed
October 18, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a jury verdict finding infringement under the doctrine of equivalents of a patent relating to hybrid engines used in motor vehicles. The court also affirmed the district court's denial of a permanent injunction and its award of an ongoing royalty on infringing vehicles, rejecting the argument that the "compulsory license" would prevent the patent ho.......
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Patentee need not join in appeal for exclusive licensee to retain standing
October 14, 2007
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court decision that prosecution history estoppel barred application of the doctrine of equivalents, and accordingly affirmed the district court's summary judgment of no infringement.The court also held, as a matter of first impression, that when joinder of the patent owner is required before the district court for an exclusive licensee to have pru.......
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"Comprised of" means the same as "comprising," judgment of noninfringement affirmed
September 27, 2007
Post by Blog Staff
Today, the Federal Circuit addressed how to interpret the phrase "comprised of" in a patent claim. In holding that the phrase should be construed in the same open-ended way the term "comprising" is traditionally construed, the court disagreed with the district court's finding that the phrase was closed-ended and excluded the presence of all elements beyond those presented. However, the d.......
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Claim construction and noninfringement finding affirmed; prosecution history estoppel bars DOE
September 12, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a district court's grant of summary judgment of noninfringement of a patent relating to a "gutter guard" designed to keep debris out of gutters. The court found the district court's claim construction correct, as it properly considered dictionary definitions when the specification provided no additional guidance on the meaning of the term "w.......
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Statements in specification lead to narrower claim construction and noninfringement
August 06, 2007
Post by Blog Staff
In a decision on Friday, the Federal Circuit affirmed a district court decision granting summary judgment of noninfringement. The only claim at issue required motors to apply a "pushing" force. The defendant's motors applied a "pulling" force that was, through intermediate apparatus, translated to a "pushing" force, but the court held that the patentee had disclaimed such devic.......
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Equivalent can be "foreseeable" and thus barred under Festo even when equivalence unknown in the art
July 05, 2007
Post by Blog Staff
Today, the Federal Circuit rendered the latest decision in the nearly 20 year saga of Festo. The court refined the rules set forth by the Supreme Court in its Festo decision, specifically when an equivalent is unforeseeable, and thus not barred by prosecution history estoppel. The majority of the panel held that:an alternative is foreseeable if it is disclosed in the pertinent prior art in the field of the inve.......
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Federal Circuit finds disclosure not public use because invention not actually "used"
May 29, 2007
Post by Blog Staff
In a decision today, the Federal Circuit reversed a district court's finding of invalidity of two patents based on the public use bar of 35 U.S.C. § 102(b). A product capable of embodying the claimed inventions was disclosed to several individuals, including potential investors, before the critical date of the patents. The court nevertheless found no public use because the product, an ergonomic keyboar.......
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Federal Circuit issues short opinion on claim construction, even shorter mention of claim vitiation
May 02, 2007
Post by Blog Staff
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 vitia.......
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Same terms, same meanings, unless specification indicates otherwise
April 27, 2007
Post by Blog Staff
In an appeal by Porta Stor, Inc. of a judgment in favor of PODS, Inc. for, among other things, patent and copyright infringement, the Federal Circuit reversed the judgment of patent infringement finding no literal infringement and finding that infringement under the doctrine of equivalents was barred by prosecution history estoppel. The court also reversed the grant of judgment as a matter of law on copyright .......
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Equivalent not tangentially related to amendment, doctrine of equivalents unavailable
March 20, 2007
Post by Blog Staff
In a case coming before the Federal Circuit for the second time, the court reversed a finding of infringement under the doctrine of equivalents because of prosecution history estoppel. The court rejected the patentee's argument that the amendment was only tangentially related to the equivalent, thus the Festo presumption of surrender of equivalents was not rebutted, and not infringement was found. Judge Rade.......
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Comparison of Commercial Products not the vehicle to analyze equivalence
February 27, 2007
Post by Blog Staff
In a second appearance before the Federal Circuit, AquaTex again appealed a decision of the District Court that Techniche Solutions' Cooling Apparel did not infringe their U.S. Patent No. 6,371,977 for a protective multi-layered liquid retaining composition. The Federal Circuit had previously affirmed the lower court's finding of no literal infringement while remanding the case back to the District Court for furt.......
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"Critical" ratio in claim does not get the benefit of the doctrine of equivalents
January 19, 2007
Post by Blog Staff
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.......
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Showing a strong Spine, the Federal Circuit addresses the Doctrine of Equivalents
November 21, 2006
Post by Blog Staff
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.......
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Federal Circuit reverses claim construction but affirms infringement
November 16, 2006
Post by Blog Staff
Abraxis Bioscience (formerly AstraZeneca) is the holder of three patents on an improved formulation of an anesthetic, DIPRIVAN?. Prior formulations had the problem of increasing postoperative infections. The inventors discovered that by adding disodium edetate as an antimicrobial agent. This addition allowed DIPRIVAN? to be administered for up to 24 hours without a significant increased risk of infection. .......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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