Continued Vitiation of The Doctrine of Equivalents

Wleklinski (dba Comfort Strapp) v. Targus (Fed. Cir. 2007) (Non-Precedential).

PatentLawPic128In March, 2007, the Central District of California dismissed Comfort Strapp’s complaint on summary judgment — finding no proof of infringement.  Comfort Strapp’s patent relates to a comfortable shoulder strap for luggage.

The fight was over the construction of an “auxiliary strap means” limitation that requires the strap’s end sections be “made of a relatively non-stretchable material” and the strap’s center section be “made of [stretchable] material.”  Because the Targus auxiliary strap was made of a single material, the CAFC agreed that it could not literally infringe.

Doctrine of Equivalents: Accused products that exhibit only ‘insubstantial differences’ from the claimed patent may also be considered infringing under the doctrine of equivalents. (DOE). However, the DOE cannot apply where it would vitiate a claim limitation.

Here, the Federal Circuit panel agreed that as a matter of law, the doctrine of equivalents does not allow a claimed two-material strap to encompass a strap made of only one material. According to the appellate panel, such a reading would be “the fundamental opposite of the claimed invention.” Citing Freedman Seating.

Notes: Although the court’s trend to limit the doctrine of equivalents began well before the Supreme Court’s KSR ruling. The bulked-up nonobviousness test naturally reduces the scope of the doctrine of equivalents as the DOE cannot extend to cover variations that would have been obvious at the time of patenting.

39 thoughts on “Continued Vitiation of The Doctrine of Equivalents

  1. 38

    David French writes:

    “the DOE cannot extend to cover variations that would have been obvious at the time of patenting.”

    The total opposite is true in Canada and the United Kingdom. In those territories, the functional equivalent of the doctrine of equivalents can only extend to cover variations that would have been obvious at the time that the patent/application document first became published.

    See Kirin-Amgen, Inc. v Hoechst Marion Roussel Ltd link to en.wikipedia.org

    Ironic!

  2. 37

    Lionel,

    You hit the nail right on the head about what “vitiate” means and without the long explanation I provided. The one problem I’ve got with the Federal Circuit’s opinion is that they should have started with whether the All Elements/All Limitations Rule was satisfied. (The Federal Circuit isn’t alone in being inconsistent here.) I call this using the proper order of analysis to determine both literal infringement and DOE infringement.

    Under AER/ALR, it becomes apparent that the “made from X material” limitation in the claim is missing (or potentially missing) from the alleged infringing item, and that if you ignore that limitation, you vitiate (subtract from) the claim language. In fact, AER/ALR should let you recognize quickly whether there’s a missing element/limitation and whether there is anything in the alleged infringing item that could be the potential equivalent (under DOE) of that claim element/limitation.

    My additional 2 cents for what it’s worth.

  3. 36

    “Lesson: If you’ve gotta rely on the DOE to sue, don’t bother.”

    No kidding. Perhaps Dennis can give us some stats on (1) DOE cases in which the Feds actually affirmed infringement under DOE where that was available versus (2) cases where the Feds reversed a DOE finding or affirmed non-infringement under DOE.

    I recall one this year or last year where the plaintiff survived summary judgment of no DOE, but I don’t recall any actual DOE finding being affirmed this year. Does anyone recall any DOE successes this year?

  4. 35

    “It seems that you agree with me and not SF …”

    Actually, I too believe the vitiation is a matter of framing (“The take home message is that, if you’re a defendant, try to cast your device as being the ‘opposite’ of what is claimed because that seems to be fairly persuasive to Federal Circuit panels.”)

    I just believe that such framing can be attempted in every DOE case because some “element” is not literally present and thus “vitiated.” That said, where a term has an opposite (e.g., majority/minority) it surely is easier to succeed at that attempt than where there is no clear opposite (e.g., MM’s red example — what’s the opposite of red? I’d have to ask some Nebraska fans, I guess.]). The problem is that, as TJ noted, we’re really left at the court’s whim as to whether it will accept the defendant’s framing or not. (It’s no surprise that TJ, the champion for the notice function of claims, would take issue with the “vitiation” rule, which serves to compound the already fuzzy DOE.)

  5. 34

    Regardless, it certainly sounds like this claim would have failed application of the DOE post Warner-Jenkinson for not having an equivalent for each limitation.

  6. 33

    Without reading the case and assuming Dennis’s summary is correct, would the decision of this court been different 15 years ago? If so, then the DOE needed vitiating.

    The DOE should be for where an inventor claims too specifically and there was nothing in the file history to suggest the level of specificity that the inventor used was needed.

    However, if the claim recites one relatively stretchable material and one relatively non-stretchable material, then how could use of a single material possibly be equivalent.

    Unless this is a pro se inventor essentially writing a picture claim to what s/he invented, I would not have believed the infringing strap to be infringing under the DOE.

  7. 31

    Michael Risch,

    Thanks for your clarification of what “vitate” means which is I what meant as well. What you told your students is absolutely on point.

  8. 30

    “I don’t think anyone’s suggested that the result was wrong. But what does it mean to ‘vitiate’ an element?”

    I’ve understood it to mean reading the claim limitation out of the infringement analysis. At least, that’s what I told my students this semester.

    In other words, if finding an accused element equivalent requires you to eliminate an express limitation, then you can’t find equivalence.

    Of course, there is a fine line in some cases (primarily measurements), but this one was easy.

  9. 28

    I don’t think anyone’s suggested that the result was wrong. But what does it mean to “vitiate” an element?

  10. 27

    After reading the opinion, I find no fault with where the Federal Circuit and the district court came out. The patentee (Comfort Strapp) based their argument on functionality of the elements (first and second separate sections and center section), but the claim recites instead the functionality of the material that these elements (sections) are made of. The Federal Circuit was to correct to say that to ignore this limitation would “vitiate” the claims and violate AER/ALR by, in essence, deleting the recited limitation from the claim. If the claim had recited simply the functionality of these end and center sections (and not characterized that functionality based on the material these sections were made of), the result might well have been different.

  11. 26

    Maybe it’s because I’m an academic, but this decision seems to be a no brainer to me. Forget about vitiation of an element, etc. – when the accused is not equivalent there can be no liability under DOE.

    The strap must be partially stretchable and partially non-stretchable.

    If the accused strap is made of a single material, absent evidence that the material is stretchable in one portion and non-stretchable in the other, then the strap as a matter of law cannot be equivalent.

  12. 25

    as the DOE cannot extend to cover variations that would have been obvious at the time of patenting

    I take it you mean that DOE cannot extend to things that would have been obvious in light of the prior art at the time of patenting. OTOH, if DOE is meant to cover things that would have been obvious in light of the described embodiments and/or the claims of the patent itself, then KSR’s expansive view of obviousness might be argued to extend DOE.

  13. 24

    “The argument can be made with a straight face that it does. It would probably focus on the use of a very specific shade of red as a claim term instead of just “red.”

    I agree that the argument *can* be made. It would be especially compelling if carmine was discussed as a key non-obvious feature of the invention. But in the absence of any prosecution history or other teaching to that effect … I think a vitiation argument would be a much harder sell.

    By the way, I just noticed that Pillsbury got a patent on a method of helping their clients. Evidently the money made billing the client for their work was not enough compensation for their efforts so they got themselves a patent to “protect” their extraordinary effort and creativity. Think they will spend much money trying to enforce it against other law firms who have serious IP practices? Would anyone advise Pillsbury to start sueing other such firms who practice their business method?

    Let the games begin, “gentlemen.”

  14. 23

    “The argument can be made with a straight face that it does. It would probably focus on the use of a very specific shade of red as a claim term instead of just “red.”

    I agree that the argument *can* be made. It would be especially compelling if carmine was discussed as a key non-obvious feature of the invention. But in the absence of any prosecution history or other teaching to that effect … I think a vitiation argument would be a much harder sell.

    By the way, I just noticed that Pillsbury got a patent on a method of helping their clients. Evidently the money made billing the client for their work was not enough compensation for their efforts so they got themselves a patent to “protect” their extraordinary effort and creativity. Think they will spend much money trying to enforce it against other law firms who have serious IP practices? Would anyone advise Pillsbury to start sueing other such firms who practice their business method?

    Let the games begin, “gentlemen.”

  15. 22

    “Does crimson vitiate carmine? I don’t think so.”

    The argument can be made with a straight face that it does. It would probably focus on the use of a very specific shade of red as a claim term instead of just “red.”

  16. 21

    MM

    –a single picture claim right off the bat .. and a minimal specification — and you will be able to acquire narrow minimal protection for your client, a patent which can be easily designed around

  17. 20

    “Going from 49 to 51 doesn’t sound very substantial. Going from “minority” to “majority” sounds more substantial. This is just switching the axis. Lawyers know this as “framing the issue.””
    —-

    Well, yes. That’s a key part of the art of claim construction and it’s a part I’m happy to live with. I know that if I put “majority” in a claim, I ain’t getting “minority” under the DOE.

    But let’s face it: in spite of Festo, most folks still submit broad obvious non-enabled claims with a ton of worthless boilerplate rather than drafting a single picture claim right off the bat (i.e., “a vector encoding the nucleic acid sequence of SEQ ID No.1”) and a minimal specification, watching it sail through, and letting attorneys decide what the proper scope of the DOE is under those circumstnaces.

    “Whether there is “vitiation” is simply a result of framing.”

    It seems that you agree with me and not SF …

  18. 19

    This is so weird, I am agreeing with SF over Mooney. But the current DOE operates that when a judge deems something “too far” different from the claim limitation, it “vitiates” the limitation as a matter of law. The uncertainty comes from the fact that we have neither an axis to measure, nor a definition of what is “too far” within that axis.

    Going from 49 to 51 doesn’t sound very substantial. Going from “minority” to “majority” sounds more substantial. This is just switching the axis. Lawyers know this as “framing the issue.”

    The Federal Circuit doesn’t inter the DOE because it can’t. What it can do within its judicial discretion is to choose the axis of measurement that is most unfavorable to a DOE argument. And because DOE always involves at least one element being missing, the difference can always be played up or down depending on framing. Whether there is “vitiation” is simply a result of framing. If I draw the axis not as the entire spectrum of color but just between crimson versus carmine, such that crimson is the polar opposite of carmine on my specially defined axis, then crimson would vitiate carmine just as black would vitiate white. If the axis is drawn as transparent versus non-transparent, then black and white would be equivalent. Since most patents have no self-defining axis, there is almost always a way to spin the DOE argument.

  19. 18

    Thanks EG. I don’t recall the All Athletics case, but do recall reading the other two cases. I’ll be surprised if any of these cases provide a clear definition (as opposed to mere examples) of what an element/limitation is, but, what the heck, I’ll read them anyway!

  20. 17

    SF,

    Here some of the Federal Circuit cases I’m aware that define and explain how AER/ALR works:

    All Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1582 (Fed. Cir. 2005); Lockheed Martin Corp. v. Space Systems/Loral Inc., 324 F.3d. 1308, 1318 (Fed Cir. 2003); Hoffer v. Microsoft Corp., 405 F.3d. 1326, 1330 (Fed Cir. 2005).

    From looking at these cases, it looks like the court construes what an “element” or “limitation” is in the context of what appears in the specific claim alleged to be infringed, and what is or might correspond to that “element” or “limitation” in the alleged infringing item. Frankly, the best Rule of Thumb is that any language in the claim might be construed to be a an “element” or “limitation” under AER/ALR because AER/ALR is part of the “notice requirement” for patent claims and is thus a curb against simply ignoring language in the the claim because it is considered “irrelevant” (usually as argued by the patentee).

    Hope this helps.

  21. 16

    he problem is that the doctrine of equivalents necessarily vitiates at least one term not literally present.

    I disagree.

    Does crimson vitiate carmine? I don’t think so. They are not literally the same. But I can imagine scenarios where they are not substantially different such that the DOE would be appropriate.

  22. 15

    EG: The All Elements/All Limitations Rule (AER/ALR) won’t be helpful until the court defines what an element or limitation is. To some, a paragraphed phrase is an element. To others (like the panel in this case), an adjective like “separate” is an element. If an adjective is an element for the purpose of “all elements,” there is effectively no DOE left.

    Have you seen a clear definition in the caselaw for what constitutes an element/limitation?

  23. 14

    Paul: Foreseeability may be an unarticulated factor in “vitiation” and other cases in which DOE is denied. I believe the broader, unarticulated thought process is this: The patentee was free to draft claims that could have read on the accused product (e.g., because of foreseeability). It didn’t draft claims that were literally infringed and therefore should have to live with its mistakes. (See, e.g., Alan McDonald | Dec 19, 2007 at 03:35 PM comment above)

  24. 13

    In the first sentence of the second paragraph of my previous post, I meant “you don’t have literal infringement.” Sorry, the TypePad filter was giving me fits.

  25. 12

    Whenever you talk about DOE, you must also consider concurrently whether the All Elements/All Limitations Rule (AER/ALR) has been satisfied. This is not only overlooked by some practitioners, but also by some district courts.

    Unless AER/ALR is satisfied, you don’t have no literal infringement, and you also have no DOE because there one or more elements/limitations missing for which there can be no DOE. If AER/ALR is satisfied, but one or more of elements/limitations in the Claims aren’t exactly in the alleged infringing device, there’s no literal infringement, but then you consider whether the element(s) that doesn’t exactly correspond might be an equivalend under the “same function-way-result” test. For example, if the Claim says “bolt” but the alleged infringing device uses a “screw”, there would be no literal infringement, but there might be infringement under DOE because the “screw” is the functional equivalent of the “bolt.”

    The SCOTUS language about “unforeseeability” in the Festo case as providing a basis for avoiding PHE still mystifies and annoys me to no end. If the patent specification doesn’t make this equivalent “foreseeable” (possibly because it didn’t exist until after the patent was filed), and thus the claim would have no 112 support for this “unforeseeable” equivalent, then how can there be DOE if there is not literal infringement? But then again, there are many nonsensical rhetorical phrases from SCOTUS about patent law (like the improbability of finding patentability in a combination of old elements) that mystify and annoy me.

  26. 11

    The whole point of Festo is foreseability. If the claim language is too narrow and it is foreseeable that it can be designed around, then the courts are unlikely to help.

    The time to think about and include mention of equivalents is when the specification is drafted.

  27. 10

    The whole point of Festo is foreseability. If the claim language is too narrow and it is foreseeable that it can be designed around, then the courts are unlikely to help.

    The time to think about and include mention of equivalents is when the specification is drafted.

  28. 9

    The whole point of Festo is foreseability. If the claim language is too narrow and it is foreseeable that it can be designed around, then the courts are unlikely to help.

    The time to think about and include mention of equivalents is when the specification is drafted.

  29. 8

    DOE was a dead letter once claim construction allowed literal infringement to become a broad ticket to encompass all sorts of things not contemplated by the inventor. If they aren’t going to narrow literal infringement and expand DOE, they should just kill it explicitly.

  30. 6

    “This case could also be read to say that those seeking to design around a patent can actually rely on what the claim states to define the scope of the claim, otherwise called the notice purpose of a claim.”

    BREAKING NEWS: DOE lessens notice!! Applicants could have drafted better claims!!

    If the Feds effectively kill off DOE, they should “at least to give it decent public burial.” Lear, Inc. v. Adkins, 395 U.S. 653 (1969) (quoting MacGregor v. Westinghouse Electric & Manufacturing Co., 329 U.S. 402, 416 (1947) (J. Frankfurter dissenting)).

  31. 5

    This case could also be read to say that those seeking to design around a patent can actually rely on what the claim states to define the scope of the claim, otherwise called the notice purpose of a claim.

    How hard would it have been for the applicant to include a line in the specification and a claim that the material of the ends and main portion could be formed from the same material? Or were there art issues or utility issues in the inventor’s mind that required that limitation?

  32. 4

    DOE doctrine has always been a little strange. The CAFC has tried a bunch of different things to try to rein it in or at least make it more predictable, but I don’t think it’s been very successful.

    Perhaps someone who understands this better can enlighten me: aren’t “vitiation” and “specific exclusion” just general arguments against the doctrine of equivalents?

    As SF notes, just about any DOE coverage “vitiates” a claim limitation. In Winans v. Denmead, through DOE coverage the Supreme Court expanded the reach of the term “in the form of a frustum of a cone” to include a device “in the form of a frustum of a pyramid with an octagonal base.” How does that not vitiate the “cone” limitation?

    It seems to me that DOE is often little more than a gut check by the judges. DOE is supposedly an equitable doctrine, so that’s not wrong per se, but if I’m right about that then the judges should just admit that they’re doing squishy fuzzy equity and not pretend that they’re applying straightforward principles when they use terms like “vitiation” and “specific exclusion” in their orders and opinions.

    As I said, though, I’m probably missing something important.

  33. 3

    Once again, the court latches onto what it perceives as a black-and-white limitation, in this case “separate,” and then concludes that the doctrine of equivalents cannot vitiate that black-and-white claim limitation by permitting the “opposite” of that term to infringe. (Remember the case where the court said “majority” could not read on its opposite “minority” — makes you wonder what would have happened if the claim had recited at least 50%.)

    The problem is that the doctrine of equivalents necessarily vitiates at least one term not literally present. So why should this analysis of opposites and vitiation matter?

    The take home message is that, if you’re a defendant, try to cast your device as being the “opposite” of what is claimed because that seems to be fairly persuasive to Federal Circuit panels.

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