Difference between revisions of "Doctrine of Equivalents Case List"
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Revision as of 01:43, 4 April 2011
Add your case to the list with a one-paragraph (approximately 250 words) summary of the facts at issues, i.e., "an umbrella is or is not equivalent to a parasol because..."
Please put the cases in chronological order. If two are from the same year, then put them in alphabetical order. Also put your name, your login name or NDID number with your case. Use the following for a template.
- Goodwine v. Batill, 123 US 4567 (1066)
This case concerned a patent for an iPad and the patentee sued the maker of an iPod for infringement. The important part of the claim was "a device for playing music and other media comprising a touch screen..." The court held that iPod infringed the iPad patent because the ... was equivalent to the ... because ...
- Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)
This case was discussed in class and presented by another student, but I read it as well. This case concerned a patent for a gyroscope owned by Adkins, the inventor of an improved gyroscope, and Lear, the company that sells gyroscopes. Lear and Adkins had a written agreement that allowed Lear to sell Adkin’s patented invention, where Adkins received a small percentage of the net sales price as royalties. In 1957, Lear refused to pay royalties to Adkins with the claim that they were selling gyroscopes that differed from Adkin’s invention. However, the “new” gyroscopes differed only in “size, form, and shape,” but “contain[ed] the same elements.” The essential elements were the same between Adkin’s patent and Lear’s other steel gyroscopes, but the scale and exact assembly was different. Since those did not constitute a substantial difference, the jury of the Supreme Court of California held Adkins in favor and required Lear to pay royalties to Adkins for the sales price of the other gyroscopes sold. This case is an example of clear infringement.
- Adkins v. Lear, Inc. (1968)(67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)
I am the other student^^^(see case above). Other items of note in the case, aside from the summary above, include that the court ruled that infringing the doctrine of equivalence is a matter of fact and that the jury should be the one to establish it. This brings up an interesting qualification, as it seems almost every other case considered with respect to the doctrine of equivalence was decided by judges, not juries.
- AMEC Liquidating Trust v. IVAC Corporation, 885 F.2d 1574 (1989)
AMEC had a patent for a thermometer with a plastic cover held on by a hooking type mechanism. IVAC created a thermometer with a cover held on by a ring that created a friction lock. The CAFC held the IVAC invention was non-infringing on the AMEC patent because under the doctrine of equivalents, it did not perform the same function in the same way. The AMEC thermometer cover used an inscription fit, which created deep scratches in the cover. The IVAC thermometer used a friction fit, which only created superficial scratches in the cover. The CAFC found that the superficial scratches did not constitute an inscription fit. Also, the CAFC decided that AMEC did not present any evidence proving that the ring in the IVAC patent was equivalent to the “hook” in the AMEC patent. Because of this, the patent was non-infringing under the doctrine of equivalents.
- Johnston v. IVAC Corp., 885 F.2d 1574 (1989)
The inventor, Turner, invented a thermometer probe cover that stays on (this was owned by AMEC). It kept the cover on via a sharp metal hook to tear into the cover’s plastic. IVAC developed a thermometer that served a similar purpose of keeping the probe cover on, except that it did so with a ring on the probe (to hold the cover via friction). IVAC intentionally left the probe free of any sharp edge to ease the removal of the probe cover when needed. District Court of Southern California ruled in summary judgment that IVAC’s thermometer probe covers do not infringe AMEC’s. On appeal from AMEC, the Court of Appeals affirmed the judgment. A ring that does not tear the plastic cover is not equivalent to the hook that does. 
- Wilson Sporting Goods Co. v. David Geoffrey & Associates (1990)
Wilson is suing DGA/Dunlop for infringement under the doctrine of equivalents of its patented design for a golf ball. Wilson's patent is for a golf ball modeled as an icosahedron with dimples placed in such a way as to have 6 "great circles" of symmetry instead of the typical 1. The patent specifies where dimples should be placed on the ball and requires that no dimples be placed on the great circles. The accused DGA balls use the same "great circles" design, but with dimples placed on the great circles. DGA's defense is that there is "no principled difference" between its design and a design of the prior art (prior to Wilson's patent). Therefore, allowing Wilson to utilize the doctrine of equivalents would extend protection of claims already in the prior art to Wilson's patent. The CAFC decided that Wilson can only utilize the doctrine of equivalents if it can make a hypothetical claim that literally covers Dunlop's design (in this case, claim a ball with dimples placed on the great circles) and is also nonobvious considering the prior art. Wilson is unable to make such a nonobvious hypothetical claim and therefore no infringement was found.
- Lemelson v. General Mills, Inc., 968 F.2d 1202 (1992)
Lemelson sued Mattel, alleging that Mattel's "Hot Wheels" toy car track infringed on his patented toy track. The U.S. District Court for the Northern District of Illinois found in favor of the plaintiff. Mattel appealed to the CAFC. The Court held that the "Hot Wheels" track did not contain all the limitations of the patent; it was equivalent to the prior art. That is, Lemelson's patent could not be both valid in light of the prior art and infringed upon by Mattel. Furthermore, upon his first application, claim 3 of Lemelson's patent had five clauses. The PTO examiner found the patent to be indistinguishable from the prior art. Lemelson added clauses [f] and [g] and received a patent. The important parts of the claim were, "[f] said guide means include a pair of spaced apart runner portions for defining the pathway of a vehicle moving over said track, [g] said spaced apart runner portions include upwardly extending rails for guiding the wheels of a vehicle." The Court held that "Hot wheels" did not contain any elements equivalent to the clauses [f] and [g]. The Court also noted that the public is entitled to the PTO record to determine the scope and meaning of claims.
- Valmont Industries Inc. v. Reinke Manufacturing Company Inc., 983 F.2d 1039 (1993)
This case concerns an adaption for center-pivot (i.e. rotating) irrigation systems. The adaption (an apparatus that attaches to the main frame of the sprinkler) allows the corners of a field, normally missed by the standard rotating irrigation system, to be watered. The infringement issue relates to the means by which the position of the sprinkler is detected, relative to the field. The patent uses a method of pivot angle encoders, while the "infringing" patent uses buried electromagnetic cables to guide the sprinkler around the field.
The CAFC ruled that the second device was not infringing, reversing the decision of the district court. The district court argued that the means of controlling the system were equivalent. The CAFC's argument was that while the two irrigation systems performed substantially the same overall function to obtain substantially the same overall result as the claimed invention, the way those results were achieved was substantially different. "Comparison of these two control means compels the conclusion that the claimed control means and Reinke's control means are not structurally equivalent.[...][E]ven though both the control means in the specification and the control means on Reinke's device use electric signals, the structures generating those signals are strikingly different."
Because the doctrine of equivalence requires that the two devices perform substantially the same function in substantially the same way to achieve substantially the same results, the two control systems were not equivalent under the doctrine of equivalence because they did not meet the "way" requirement of the doctrine of equivalence.
- William Bradshaw and Robert Shepherd v. Igloo Products Corp. 1997 WL 543109 (US District Court, N.D.Ill.)
William Bradshaw sued Igloo Products for infringement of a wheeled cooler. Bradshaw’s patent was for a cooler with a pulling handle and two lifting handles, one of which was connected on the same axle as the pulling handle. The Igloo products in question were the Rolling Kool Locker which had a rotatable lifting hand that can also be used to pull the cooler and the Cool Roller which had separate lifting and pulling handles coupled to separate axles. The court decided that the prior art for the Cool Roller was a different patent, the Mason patent. This patent was for a wheeled cooler with separate lifting and pulling handles. The Mason patent was granted before Bradshaw’s patent. The court ruled that the Cool Roller fell under the Mason patent. Therefore, if Bradshaw’s patent were to be expanded to include the Cool Roller’s handles, it would be an invalid patent as a result of the prior art, the Mason patent. This leads to a method of deciding infringement. If the product in question mimics prior art, then it cannot infringe the patent otherwise that patent would be invalid. In deciding infringement for the Rolling Kool Locker, the court decided that it was up to a jury to decide whether the Kool Lockers handles were equivalent to Bradshaw’s patent, since there was no other glaring evidence.
- Dr. Raymond G. Tronzo v. Biomet Inc. 1998 156 F.3d 1154 (United States Court of Appeals, Federal Circuit)
In this case Biomet was accused of infringement of an artificial hip prosthesis patented by Dr. Tronzo (patent 4,743,262). The alleged infringement revolved around the shape of the artificial hip socket and the hinge that was inserted into the socket. Patent ‘262 claimed a “generally conical” shape of the hip socket. Biomet’s design contained a strictly hemispherical shape. The court heard evidence in which it was claimed that even though the shapes would have at first glance performed in the same manner, the forces generated on the surface of each implant would be different depending on the shape. Additionally, after hearing expert testimony that suggested any shape would have been equivalent to the conical limitations of the patent claims, the court said that such a ruling would have been impermissible under the all-elements rule of Warner Jenkinson because it would write the “generally conical” shape limitation out of the claims. Therefore, the court held that the accused design did not infringe upon the patent claims under the doctrine of equivalence.
Peter Mitros (901461727)
- Hale Propeller, L.L.C. v Ryan Marine Products Pty., LTD., et al, 151 F. Supp .2d 183 (2001) Connecticut District Court
Ryan owned patent 4411073, issued on 25 October 1983, which concerned devices to measure the pitch of propeller blades. Ryan originally filed the claim on 13 July 1981 it was rejected and then ammended on 4 October 1982. Hale's device called the "Hale Propeller MRI" was developed in 1997. In question are claims 1(b),(c),(f), and 6. A third party, Michigan Wheel Corporation, a distributor of Hale's invention filed for patent invalidity. The important differences between Hale's and Ryan's device are that Hale's does not use gears or worm-drives to rotate the blade and the device does not give direct readouts of the measurements using electric circuits. The issue with claim 1(b) was if a roller was a necessary part of the structure because it prevents skipping of the probe making the measurements more accurate. The court used means-plus-function to rule that the roller was important and Hale did not infringe. The issue with claim 1(c) deals with whether a worm or gear drive is necessary to rotate the blade. Ryan's patent discloses a hand-cranked device, like Hales, but includes a worm-drive. Part of Ryan's ammendment to his claim was to include worm gear to the hand-cranking device and therefore the court used prosecution history estoppel to make their decision because Ryan forfeited that claim (hand-cranked device without worm-drive) in order to get the patent and therefore cannot use doctrine of equivalents to get the claim back. The issue of claim 1(f) was whether the computer in the claim was a special computer needed for the readouts. The court ruled that the claim was not that narrow, but then the court ruled that claim 6 dealt with a computer that receives measurement data from the optical encoder and therefore Hale did not infringe. The patent was also ruled valid using the roller and worm drive to prove that it was non-obvious §103, definitively disclosed §112, and not anticipated by prior art §102(b).
- Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc. Nos. 2010-1145, 2010-117. (2001) United States Court of Appeals, Federal Circuit
This case began as an infringement lawsuit by Siemens Medical Solutions USA, inc. against Saint-Gobain Ceramics and Plastics, Inc. for the alleged infringement of a patent held by Siemens for a scintillator, a part of an x-ray machine that detects radiation. Saint-Gobain owned a patent for a similar device and the circuit court found that this patent infringed on the patent held by Siemens, which was filed earlier. Though the doctrine of equivalents was used to rule infringement, Saint-Gobain was found to have accidentally, rather than willfully infringed and Siemens was awarded 52.3 million dollars.
Siemens filed for patent number 4,958,080 on August 4, 1989. This patent was for a scintillator containing cerium-doped- lutetium oxyorthosilicate. This is a component of a radiation detector that absorbs gamma-ray photons from an x-ray machine and converts them to visible light so the results can be interpreted. Saint-Gobain also produces scintillators, filing patent number 6,6424,420 in 2000 for a cerium-doped lutetium-yttrium orthosilicate. The chemical composition differs from that of the Siemens' patent as %10 of the lutetium is substituted for yttrium. These scintillators were sold by Saint-Gobain to Philips Medical Systems, a competitor of Siemens. The circuit court found that the composition of Saint-Gobain's scintillator preformed largely the same function in the same manner as Siemens' patent, and therefore was infringement under the doctrine of equivalence.
Saint-Gobain filed a motion for a new trail, on the basis that the jury was not told that infringement by the doctrine of equivalence must be proved by clear evidence and argued that damages should be remitted. The Federal Appeals Court did not grant Saint-Gobain a new trial, but did reduces the damages to 44 million.
- Sunbeam Products, Inc. v. Homedics, Inc., Slip Copy, 2010 WL 5230892 (2010)
This case involved a patent for a force-transmitting bearing used with a platform scale. Sunbeam held a patent which specified bearings which were attached to the platform via loose tabs which allowed the bearings to move horizontally. The patent claims required the base of the bearing to be oriented parallel to the platform and remain parallel to the platform at all times. The structure of the accused device was such that the bearings were connection to the platforms using dimples on the lower surface of the platform which the bearings fit into. Sunbeam had criticized prior art which used a similar dimple connection during prosecution beacuse of the potential for unwanted force moments applied by the bearing. The CAFC upheld the District Court's finding of no infringement based on the doctrine of equivalents because bearings which rocked and pivoted, as the accused device did, did not fall within the reach of the patent claims because they did not remain parallel to the platform at all times.
- Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326 (2001)
Kustom Signals held a patent for a multimode traffic radar system which will show either the fastest speed or the strongest signal. Three of the claims used the word "or" in their wording. Kustom claimed that the "or" was a logical operator meaning one, the other, or both. Applied Concepts had designed a radar system which returned both the fastest speed and the strongest signal. The Court held that the word "or" was to hold its traditional, customary meaning as being exclusive, not inclusive, of the two statements.
901 41 7852
- Sage Products, Inc. v. Devon Industries, Inc., 126 F. 3d 1420 (1997)
Sage Products sued Devon Industries for infringement of several patents relating to containers for disposing of hazardous medical waste (needles etc.). Devon counter-sued for infringement of one of its similar patents. The district court held (on summary judgment) that there was no infringement by either party literally or equivalently. The appellate court affirmed.
Devon’s first alleged infringement was of Sage’s container claiming an elongated slot "at the top" of the apparatus for which to deposit waste, and a "barrier over the slot" to prevent contamination. Devon's patent involved a type of elongated slot that was embedded within the container and a hinged element at the opening. The court ruled no literal infringement because the Devon patent did not include the "at the top" and "over" features of the Sage claim. Even though the devices perform the same function the court ruled no equivalent infringement because the hinged element did not "substantially constrict access" to the container, and the slot was not "substantially at the top" of the container. The court was adamant that equivalent function could not negate the “at the top” and “over” limitations of the patent, stating that such power would reduce patent claims to "functional abstracts" devoid of meaningful structure limitations for the public to reference. A second infringement involved in this case resulted in the court ruling that if patent claims specify a function and recite its importance the patentee cannot later accuse an invention devoid of the specified function of infringement.
- Siemens Medical Solutions USA, INC. v. Saint-Gobain Ceramics & Plastics., F.3d, 2011 WL 651790 (2011)
Siemens developed, manufactured, and sold PET scanners which made use of scintillator crystals consisting of cerium-doped lutetium oxyorthosilicate (LSO). Saint-Gobain manufactures and sells scintillator crystals for use in PET scanners which consisted of cerium-doped lutetium-yttrium orthosilicate (LYSO). This is chemically different from LSO in that some of the lutetium is substituted for by yttrium. In Saint-Gobain's crystals, 10% of the lutetium atoms are substituted for by yttrium atoms (crystals are 10% Y LYSO). In April of 2007, Siemens sued Saint-Gobain for infringement of claims 1 and 2 of Siemens '080 patent for LSO scintillator crystals and photodetectors. Saint-Gobain aregued that its LYSO crystals are not equivalent to those claimed in the '080 patent because their crystals are separately claimed by their '420 patent. A jury trial found Saint-Gobain infringing upon the claims held by Siemens. Saint-Gobains appeals, and claims that the district court erred in jury instructions, claiming that in cases where an alleged equivalent is separately patented, a higher burden of evidence is required. Their reasoning was that the jury's finding of infringement effectively invalidated their '420 patent for LYSO crystals as the ruling of equivalence implied a conclusion of obviousness. The Court of Appeals disagrees, stating that it is well established that separate patentability does not avoid equivalency as a matter of law. The Court of Appeals also disagrees that the jury's finding of infringement invalidates the '420 patent; it only finds the level of LYSO used in practice (10%) is equivalent to Siemen's LSO crystals. Other compositions of LYSO could well be non-equivalent. Using the function-way-result test which asks whether an element of the an accused product performs substantially the same function in substantially the same way, the Court of Appeals affirms the juries finding of infringement.
- Sunbeam Products Inc. v. Homedics Products Inc. , US Court of Appeals, District Court of Wisconsin (2010)
This case involved a clear example of non-equivalence relating to the doctrine of equivalence. The patent holder Sunbeam Products brought action against competitor Homedics, alleging infringement of its patent for force-transmitting bearings for a platform scale. This case was decided under the district court of Wisconsin. Sunbeam Products had created platform bearings which translated purely horizontally along a platform which transferred all platform loads into purely vertical loads supported by the bearings. A previous patent, ‘326 patent, encompassed bearings which rocked and pivoted. HoMedics's accused scales all include bearings similar to the bearing disclosed in the ′326 patent. Each of the HoMedics bearings is machined with a nose-like protrusion that fits into a corresponding dimple on the underside of the platform. The trial court noted that the accused bearings all rock and pivot within their corresponding dimples in the underside of the platform. Sunbeam did not dispute that the HoMedics bearings rock and pivot in that manner. Sunbeam's argument was that in addition to rocking and pivoting, the HoMedics bearings were capable of some horizontal movement and therefore infringe the ′420 patent. In light of its claim construction and the undisputed evidence regarding the operation of the bearings in the accused HoMedics products, the district court granted summary judgment of noninfringement. The court determined that no reasonable juror could find that bearings that rock and pivot remain parallel to the underside of the platform; accordingly, it held that the pivoting bearings in all of the accused products do not literally infringe the ′420 patent.
The most important distinction that was made in this case was the following statement. “The doctrine of equivalents is not a license to rewrite the claims to encompass what a patentee believes to be an equivalent structure. That is especially true in a case such as this one, where the accused product is not later-developed technology that is insubstantially different from the claimed invention, but instead embodies disavowed prior art. Thus, the district court correctly held that the accused bearings do not infringe the ′420 patent under the doctrine of equivalents.”
Christine Roetzel - 901425022
- Hughes Aircraft Co. v. U.S. 717 F.2d 1351
NASA and Department of Defense, were trying to build a satellite that would orbit the earth. However, they were unable to do so they had problems with the attitude control. Williams, a man who was working for Hughes Co. was able to figure out the problem. He was able to have lab model on 4/2/60 and it was called "dynamic wheel." Williams presented it to NASA and then Hughes Co and NASA entered an agreement to build the satellite. Williams filed for a patent on 4/18/60 and that became known as "Williams patent." However, the govt started to build these spacecrafts that used the same systems from the satellite and did not give compensation to Williams. It went to court and the govt said that Williams patent was invalid because it infringed McLean's telescope. Williams rewrote his claims and stated “McLean's infrared telescope does not indicate the instantaneous spin angle position of his body with reference to a fixed external coordinate system, and it does not indicate the orientation of the axis with reference to a fixed external coordinate system." The court found Williams patent valid. Then, the court looked at the spacecraft and compared it to Williams satellite. They found the following similarites: "(1) each is spin-stabilized; (2) each contains a jet on the periphery, connected by a valve to a tank containing fluid for expulsion substantially parallel to the spin axis; (3) each employs sun sensors to sense ISA position; (4) each requires knowledge of orientation relative to a fixed external coordinate system; (5) each contains radio equipment for communicating with the ground; (6) each transmits spin rate and sun angle information to a ground crew; and (7) in each, jet firing is synchronized with ISA position to effect controlled precession and thus to achieve a desired orientation." Needless to say the court ruled that govt infringed Williams patent.
- Sage Products, Inc. v. Devon Industries, Inc. 126 F.3d. 1420 (1997)
In this case, Sage Products sued Devon Industries for infringement of two of its patents and Devon countersued Sage for infringement of one of its own patents, all of which relate to the disposal of medical waste products such as needles. In trial and on appeal, the courts held that there was no literal infringement nor infringement by the doctrine of equivalents by any party. Sage claimed that Devon's '251 for a "tortuous path" disposal container infringed on both its '728 patent for a sharps disposal container and its '849 patent for the removal and storage of syringe needles. Devon claimed that Sage's '728 patent infringed on its '592 patent for a disposal container.
- The '728 patent consists of an opening with a curved arc extending above it and another below it (inside the container) with a rotatable L-shaped flap such that waste can be deposited without exposing it again.
- The '849 patent covers a container with notches for removing needles and a "moveable closure" that allows the container to be closed and reopened as needed.
- The '251 patent covers a disposal container with a slotted opening at the top and 2 overlapping but displaced obstructions within the container to prevent accessing material that has been disposed of. It also has a closure that permanently locks once closed.
- The 592 patent covers a container that has a slotted opening and another "baffle" within the container that has another slotted opening horizontally displaced from the first
The courts held that the '251 patent did not infringe on the '728 patent because the patent explicitly described a precise configuration of an opening at the "top of the container" with one obstruction "over said slot" and another below, and that '251 configuration was different. They also held that the '251 patent did not infringe on the '849 patent because there was an important difference between permanent closure and closure that can be reopened. Finally, the '728 patent did not infringe on the '592 patents for similar reasons as the first: the configurations were very different. The '592 patent emphasized a horizontal displacement, which was not part of the '728 patent. The courts held that the use of precise language in patents limited the claims and because disposal containers were reasonably simple and straightforward, different configurations could not be equated.
Julia Potter (jpotter2)
- Kudlacek v. DBC, Inc. 115 F. Supp. 2d 996 (2000)
Owner of Patent No. 5,611,325 for an archery bow stabilizer, Donald Kudlacek, brought an infringement suit against competitor DBC, Inc. DBC counterclaimed, stating that its patent for a peep sight targeting system was being infringed. The claim in question was a "threading" limitation on the stabilizer describing how it is adjusted and secured. The District Court decided that neither Kudlacek's stabilizer nor DBC's peep sight target system were infringed. This was because the accused device, the "Super Stix," was found to not be equivalent to the patented device because it did not infringe all the elements of claim 1. Though the accused device performs, basically, the same function, it does so in a substantially different way; therefore the Doctrine of Equivalents does not apply. Note that the invalidity issue was not settled by finding that the patent was not infringed.
- Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)
Adkins v. Lear discussed the assembly and sale of a certain type of gyroscope. The gyroscope design had originally been borrowed by Lear, from Adkins under the terms that Lear would pay a small percentage of their profits to Adkins since Lear was not the original inventor of the gyroscope mechanical design. Conflicts arose when Lear refused to pay Adkins under the claim that their new gyroscope was a unique design that differed from the original design contracted from Adkins. The judges determined that since the new design was similar to the original in all the necessary inner working components and only differed in the external aesthetic features, the new design infringed on the old since it did not provide any new or useful feature. Based on this judgment Lear was required to pay Adkins for any sales of the new gyroscope.
- Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)
I hate to be repetitive, but I read the same case. I will reiterate, it is a case about a dispute over profit sharing. Adkins invented the gyroscope and required Lear to share profits if he used the design. The dispute arose when Lear made an improvement upon the designed and refused to pay profits on this "new and improved" design. This design was really just the innards reworked into a new shape without altering the size or scale. This was ruled to be equivalent to the original design, reinforcing the underlying ideas of the doctrine of equivalents.