Continued Vitiation of The Doctrine of Equivalents

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 Cir. 2007) (Non-Precedential).

In 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.

CAFC: Meaning of "About"

Ortho-McNeil Pharm. v. Caraco Pharm. (Fed. Cir. 2006).

Ortho’s patent covers a pain-relief combo of tramadol and acetaminophen with a ratio of “about 1:5.” Caraco’s drug has a ratio of 1:8.67.  The lower court construed the claims and found no infringement.

Claim Construction: On appeal, the Federal Circuit construed the term “about 1:5” by first looking at the intrinsic evidence.  In the patent and claims, Ortho had used the term “about” repeatedly: disclosed ratios included about 1:1, about 1:5, about 1:19 to about 1:5, and about 1:1600. 

The court reasoned that the term must have a narrow meaning in this patent because a broad meaning would leave other claimed ratios meaningless. The court also noted that the literal meaning of the term should be narrowly construed because Ortho “could have easily claimed a [broader] range of ratios”

An expert testified that the statistical range should be 1:3.6 to 1:7.1 based on a confidence interval constructed from the data in the patent, and the Federal Circuit agreed. (The patent discussed the importance of 95% CI).

Literal Infringement: The Federal Circuit found that there could be no literal infringement because the upper claimed bound for the ratio was 1:7.1 while Caraco’s ratio was 1:8.67.

Doctrine of Equivalents: No DOE because Ortho cancelled claims with broader range during reissue. Interestingly, the Court made this ruling based on vitiation rather than prosecution history estoppel:

[I]t cancelled the broader "comprising" claims, except for claim 6. In sum, having so distinctly claimed the "about 1:5" ratio, Ortho cannot now argue that the parameter is broad enough to encompass, through the doctrine of equivalents, ratios outside of the confidence intervals expressly identified in the patent. We agree with the district court that to do so would eviscerate the limitation.

Summary judgment of noninfringement affirmed

Even under DOE, "predetermined" combo must be determined beforehand

Planet Bingo v. Gametech (Fed. Cir. 2006).

Planet Bingo is the exclusive licensee of two patents covering a way to play bingo.  This game combines the numbers with an indicator (such as the color red) to give enhanced awards. The patent claims a “predetermined” winning combination, and that is where the dispute lies.

In the accused game of “rainbow bingo,” the color of the first ball chosen serves as the indicator.  Since that color is not known before the game begins, the court found it was not “predetermined.” as required by the claims.

Planet Bingo, however, asserted infringement under the DOE. Although the defendant’s indicator color is not known before the game begins, it is known immediately after the first bingo ball is drawn — something that is equivalent.  The CAFC disagreed, finding that under Warner-Jenkinson, a color that is “predetermined” cannot, as a matter of law, be equivalent to a color that is selected immediately after the game starts.

Here, the court focused particular attention on foreseeability of the asserted equivalent — apparently assuming that most variations in the bingo-arts would be foreseeable.