Cara's HW 4/4
Doctrine of Equivalence
United States Court of Appeals, Federal Circuit
Jerome H. Lemelson v. General Mills, Inc.
June 30, 1992
United States District Court for Northern District of Illinois found in favor of plaintiff. The United States Court of Appeals reversed.
Lemelson issued a patent for "Toy Track and Vehicle Therefor" (June 24, 1969).
Matel (Defendent-Appellant) began independent track development (1967). Researched the prior art (Lemelson's patent did not yet exist) and concluded that a few features of the track may be patentable. Patented features of Hot Wheels but not the actual track.
The suit was filed December 1977 but Lemelson was granted a stay of litigation for the pending reissue of his patent. Reissued on April 8, 1986.
The case went to trial in the Northern District of Illinois in October of 1989 and ruled in favor of Lemelson.
The United States Court of Appeals reversed this judgment:
- Lemelson failed to demonstrate that the Hot Wheels track included every claim limitation or its equivalent
- Hot Wheels track was determined to be basically the same as the prior art (by Gardiol)
- only two points of Lemelson's claims differed from Gardiol significantly and the Hot Wheels track was not show to have elements infringing this
Key takeaways: In order to be infringement by the doctrine of equivalents the track needed to be proved to infringe every claim limitation either directly or by equivalents.