Doctrine of Equivalents Case List
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 ...
Patrick Lane (901431645)
- Union Paper-Bag Machine Company v. Murphy 97 U.S. 120 (1877)
In this case, the patents in question were machines used to make paper bags. The machines are loaded with large rolls of paper and then stamp out the bag pattern, or "blanks," which are then folded and pasted to make a paper bag. Union Paper was granted a patent in 1859 for this type of machine which used a long, straight knife which would move up and down to punch the pattern out of the paper. In 1874, Murphy was granted a patent for a similar device that used a serrated knife which cut the paper from below as the rolls moved over it. Union is suing Murphy for infringement, claiming the devices which cut the paper in each machine are substantially equivalent, and therefore are under protection by Union's 1859 patent. Murphy argued that the serrated knife is an improvement over the straight knife, and that the method of cutting was different enough to constitute patent protection. However, the expert witness explained that the paper is essentially being cut in the same way in each device: a fast moving, sharp edge is slicing through the paper. Even though one knife was serrated, the cutting occurs in the same mechanical fashion, and therefore is equivalent. The court found in favor of Union, stating that the two methods of cutting the blanks were substantially equal because they performed the same function in the same way.
- I had also read this case. The above is a good summary, though perhaps also worth noting is the fact that the court made specific mention of the fact that changing the name of the invention had no bearing on its nonequivalence (though this seems pretty obvious). - Kurt Riester 901425018
- I read this case as well. The decision can be best summed: "Nor can it make any difference that the cutter is made to cut the paper by its own gravity, while the knife is made to cut by the fall of a device which performs no other function than to fall upon the paper at the proper moment, and cause the stationary knife to cut for the same purpose." Because the cutter and the knife accomplish the same purpose in substantially similar ways, they are equivalent. - 901239065
- I also chose to read this case. The summary stated above accurately states what this case is about. My addition to what has already been previously said would be that this case establishes the doctrine of equivalents in saying that "if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape." - 901360293
- Absolute Software Inc. v. Stealth Signal Inc., 731 F.Supp.2d 661
The patents in question deal with security apparatus’ that are used to retrieve lost or stolen electronic devices. Absolute accused Stealth of infringing on their patent, and in effect Stealth filed a counterclaim stating that Absolute infringed on another prior art. Both companies filed for summary judgment stating that neither infringed on any patent. The doctrine of equivalence was used to determine if either company infringed on other patents. Absolute proves that It does not infringe on the prior art because the transmission message to the central site is not done at a semi-random rate. Absolute did not literally infringe, but the doctrine of equivalence was needed to verify. The courts found that since Absolute’s product makes the call to the central site every 24.5 hours, it is not ‘random’ by any means but rather ‘uniformly randomly distributed’. Thus, Absolute does not infringe on its prior art. Stealth was analyzed on in infringing on Absolute by the use of an XTool agent. Doctrine of Equivalence is again applied, finding that Stealth’s invention differed in providing a step at the end of the communication that Absolute does not have. Absolute has written in their claims on their Xtool agent “without signaling the visual or audible user interface.” Therefore, when Stealth created an audible user interface, it made its invention nonequivalent to Absolutes. Thus, Stealth is found to be non-infringing with their patent.
- 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. 
- I also read this case for the assignment and agree with the discussion above. The one thing that I would add, just to give insight into the amount of stretching certain companies due in order to show equivalence is the expert testimony that AMEC presented. AMEC had an engineer look for stratching and indentation on the IVAC device. He did so by using a 20x microscope to find superficial nicks and cuts. Luckily the court saw through this empty analysis and ruled that the IVAC device did not perform the same function as the patented article. - Adam Mahood
- Unitronics Ltd. v. Gharb, 318 Fed.Appx. 902 C.A.Fed. (Dist.Col.) (1989)
This case involved a patent for programmable logic controllers with Global System for Mobile communications. The main issue was infringement based on the capabilities of the programmable logic controllers (PLCs). The court held that alleged infringers PLCs did not contain a “digital recording device having at least one emergency message” or an equivalent. The alleged infringers PLCs also did not have the “data set for transmission to the mobile telephone including alarm information.” The court also ruled that they did not have anything equivalent to either of these claims. Based on the ruling in Warner-Jenkinson the device is not infringing unless it “contains each limitation of the claim, either literally or by an equivalent.” The alleged infringing PLCs did not have a similarity to all of the limitations to the claim and were thus allowed to continue selling their device. []
- 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.
- Wilson Sporting Goods Co. v. David Geoffrey & Associates (1990) 904 F.2d 677
I see that someone else and I did the same case, but I'll summarize in my own words here. This case involved the design of a golf ball, and the placement of the dimples on a golf ball. There are aerodynamic benefits as to where the dimples are placed and how the dimples themselves are shaped. The Wilson golf ball had a design where the face of the golf ball is divided using 6 great circles, creating an equal number of equally sized triangles. Then the midpoints of each leg of the resulting triangles are joined, creating 4 triangles inside each larger triangle. See the patent document as it is better shown than explained. This way of dividing the golf ball is not the novel idea, but rather the placement of the dimples relating to the previously mentioned division is. The Wilson ball left all 6 great circles untouched by dimples. They deemed this an aerodynamic advantage. At the time of the application filing, the prior art had already taught of the great circles, just not leaving them completely intact. The accused infringing ball from Dunlop had the same 6 great circles, but they did not make an effort to leave them uncovered, and rather had a significant number of dimples covering them. The court held that the Dunlop ball could not be considered equivalent to the Wilson ball because the prior art limited Wilson's claims in the first place, and those claims could not now be expanded to enclose the Dunlop ball. The court laid out a framework for deciding doctrine of equivalents cases: First, take the claim that is proposed to enclose the accused infringer, and reword it to literally enclose the infringer. Next, see if that claim would pass in light of the prior art. If yes, then the doctrine of equivalents can be used, if no, then it cannot. In this case, the hypothetical claim would not have passed in light of the prior art, so the doctrine of equivalents could not be used.
901417119 - Bcastel1
- 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.
Anthony Schlehuber 901477539
- Lemelson v. Mattel (1992) 968 F.2d 1202
Lemelson sued Mattel on the grounds that the Hot Wheels car track infringed on his patented track design. In the circuit court Mattel was found to have infringed on Lemelson’s track design. However, in the CAFC, this decision was overturned due to limitations added to the Lemelson patent during the application process to prevent it from infringing on the prior art. Lemelson’s patent claimed a system of vertical track supports to differentiate it from earlier works. Since these claims were needed for Lemelson’s patent to be valid and Mattel’s track did not contain these supports, it was ruled that Mattel had not infringed. 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.
- Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283 C.A.Fed. (Mich.), 2010
Adams Respiratory Therapeutics patented an extended release formulation of expectorant. The patent was for Mucinex and was new in that it allowed the expectorant (an aspect to medicine which promotes the discharge of phlegm or other fluid from the respiratory tract). Adams brought suit, alleging that generic manufacturer's (Perrigo's) proposed production and marketing of generic version of the product would infringe its patent. The United States District Court for the Western District of Michigan, Gordon J. Quist, J., 2010 WL 565195, granted defendant summary judgment of non-infringement. Plaintiff appealed. Within the patent Adams specified an amount of expectorant in the drug using the words "at least." The court found that "at least" did not prevent the use of the doctrine of equivalents and that the doctrine may apply to patents with specific number ranges. Adams patent stated that it would have at least 3500 hr*ng/mL, while Perrigo was using 3494.38 hr*ng/mL (only a 0.189% difference). Adams argued that this number was not substantially different and thus should represent infringement. Perrigo argued that because the claim does not use words of approximation, Adams cannot expand this element to ensnare Perrigo's product. The court found that the fact that the claim does not contain words of approximation does not affect the analysis-“terms like ‘approximately’ serve only to expand the scope of literal infringement, not to enable application of the doctrine of equivalents.” The proper inquiry is whether the accused value is insubstantially different from the claimed value. Because the court found that there was not a substantial difference between the numbers the doctrine of equivalents applied, the order of the district court was vacated and the case was remanded.
- 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.
Lemelson v. Mattel (1992), (968 F.2d 1202)
Lemelson sued Mattel, saying that their hotwheels toys infringed on his patent for a flexible track for toy cars. In the original case, Hotwheels was ruled to have infringed on Lemelson's patent. The history of the patents in the toy race car tracks was important in this case. Before Lemelson received his patent, Giardiol had a patent for a flexible car track with an internal support. Mattel's track was very similar in all aspects of the Giardiol patent, but did not have an internal frame. Lemelson's patent was originally denied as being completely anticipated by Giardiol. However by adding claims to the vertical supports which define the track and keep the car on the track Lemelson was able to distinguish his product and obtain a patent. Therefore, these were ruled as the defining characteristics of Lemelson's patent. In the original case, the jury found that Hotwheels product did not contain these characteristics. Therefore, the Court of Appeals reversed the previous ruling saying that the jury had made a logical error.
- American Piledriving Equipment, Inc. v. Geoquip, Inc., 696 F.Supp.2d 582 (2010)
In this case, American Piledriving Equipment(APE) sued Geopquip over a pile driving device which they claimed infringed upon their patent. In APE's patent, they mentioned as part of the claims that there is, "a cylindrical gear portion and an eccentric weight portion integral with said cylindrical gear portion,” and an “eccentric weight portion having at least one insert-receiving area formed therein.” The purpose of these items was to create a vertica force for pile-driving while balancing each other out in the horizontal direction. The court found that the wording of APE's claims were such that the component was described in terms of structure and function so simply showing that the same function was performed would be insufficient to claim infringement. The portion of Geoquip's device that accomplished this function however, was created of two parts, one being bolted onto the other. Furthermore, APE's specifications state that the metal in the insert receiving area have a melting temperature greater than 328 degrees Celsius. Geoquip's item does contain tungsten (with a melting temperature greater than 328), but not located in what might be the insert area of the eccentric portion. The court decided that APE's claims made a, "clear and unmistakable disavowel," which limited the term "integral" to one-piece counterweights. They were thus not able to now attempt to expand their claims in order to cover the accused infringing device.
- Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., Smc v. Festo Corp. (1997)
Holder of two patents for magnetically coupled rodless cylinders sued infringer who was selling an aluminum alloy cylinder of same purpose. District court found infringement due to doctrine of equivalence and awarded summary judgement in favor of patent holder. Appeal was denied because the court of appeals judge ruled (1) substantial evidence supported the jury’s finding of infringement (2) the holder should not be hindered to argue equivalency and (3) the patent holders lost profits due to infringement provided appropriate assessment of damages.
- SUNBEAM PRODUCTS, INC., (doing business as Jarden Consumer Solutions), Plaintiff-Appellant, v. HOMEDICS, INC., Defendant-Appellee.
The patentee, Sunbeam, brought action against its competitor alleging infrigment for a patent for force-transmitting bearings for a platform scale. Sunbeam’s bearings were attached to the platform by loose tabs which allowed some horizontal displacement and also ensured that the force was transmitted in the vertical direction. Whereas, Homedics’ bearings attached by dimples on the under side of the scale, which allowed some moment forces to occur from the load. Consequently, it was understood that Sunbeam had improved on the prior art by creating a scale that exerted a pure downward force, and this was claimed in their patent. Thus, the Court of Appeals held that Sunbeam’s patent did not cover the rocking and pivoting bearings that were disclosed in prior art. It held that that Homedics’ scale did not infringe under doctrine of equivalents, and that district court could sua sponte grant summary judgement in favor of Homedics.
Bobby Powers (901349446)
- Lemelson v. General Mills, Inc. 968 F.2d 1202 June 30, 1992
Lemelson obtained a patent on "a flexible track upon which toy cars run." He then sued General Mills for patent infringement for their incredibly popular "Hot Wheels" product. The District Court ruled in favor of Lemelson, and General Mills appealed. There was prior art that is referred to as "Gardiol" with extremely similar qualities to the Lemelson patent. The Court of Appeals reversed the Circuit Court's decision, saying "The evidence at trial demonstrated that the Hot Wheels track is basically the same as Gardiol, but without the internal support. Hot Wheels uses external attachments, as does Lemelson, to define the shape of the track for any particular configuration. However, there is no evidence of any other significant difference between Hot Wheels and Gardiol. The evidence at bar pointed to nothing in the Hot Wheels track which is not found in Gardiol. Gardiol differs only in having an extra element-the internal core for structural support... Lemelson failed to demonstrate that the Hot Wheels track included each claim limitation or its equivalent... We therefore conclude that no reasonable jury could read reissue claim 3 both to be valid in view of Gardiol AND infringed by Hot Wheels. When properly placed in the context of the prosecution history and the demonstrated meaning of the several clauses of the claim, these are inherently inconsistent conclusions." Basically, there is no way that Lemelson could be viewed as different than Gardiol under the doctrine of equivalents, and therefore a valid patent, while saying that the "Hot Wheels" product was equivalent to the Lemelson patent. Either "Hot Wheels" infringed, but the patent was invalid due to prior art, or the patent was valid, but "Hot Wheels" did not infringe.
- Haemonetics Corp. v. Baxter Healthcare Corp. 577 F.Supp.2d 482 (2008)
In this case, the patent owner (Haemonetics) filed action against competitor (Baxter) alleging infringement patent claiming centrifugal device used for separating and collecting components in liquid such as blood. Baxter filed motion for partial summary judgment of non-infringement. Haemonetics' patent included two drive units: The first drive unit is the assemblage of components responsible for rotating the tubes at an angular rate of ω and does not include the tubes or vessel; The second drive unit is the assemblage of components responsible for rotating the centrifugal vessel (or centrifugal unit) at an angular rate of 2ω and does not include the tubes or vessel. These drive units are considered two separate elements. Baxter's patent achieves the angular rate of 2ω in a different manner than that taught by Haemonetics' patent (namely, it doesn't use a second drive unit). Haemonetics counters that the accused device infringes their patent under the doctrine of equivalents which the defendant denied. In arriving at the decision that Baxter's patent did not infringe, the court used the doctrine of equivalents, asking "whether the difference between the element of the accused product and the corresponding limitation of the claim in the patented invention is a 'subtle difference in degree' or a 'clear, substantial difference in kind'."
- Jerome H. Lemelson v. General Mills, Inc. 968 F.2d 1202 (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.
901423417 - cnorton
Frontline Placement Technologies, Inc. v. CRS, Inc., 2011 Markman 451,962
Frontline Placement Technologies had a patent on a employee absence system, for which employees could notify the company if they needed a replacement, and replacements could accept the temporary position. It was ruled that CRS infringed on Frontline's patent by the equivalent language used in order to implement the system. A total of 16 similar words were used and in dispute for equilvalency, since CRS system boasted an improvement by having an intermediate step in the absence to replaced process whihc notifies that an acceptance and being accepted are differing meanings in the everyday sense of the word. It was ruled that the current language in the claims infringed, and that clarification which limited the means of ambiguously equivalent words must be stated.
Valmont Industries, Inc v Reinke Mfg. Co. Inc.
Two inventors were reissued a patent that claims a self-propelled irrigation apparatus for watering non-circular areas, such as the corners of a field. The standard center pivot design did not accomplish this task and only watered the parts of the fields that lay in the radius of the rotating arms. The invention uses an electronic signal to a steering motor on a wheel of an extension arm to reach places that the main arm could not.
While applying for the reissue of one of the claims, they were refused the reissue to a different patent that pertained to the extension arm, even though they argued their new invention was completely different from the original design for the extension arm, using electrical signals rather than the electrical conductor.
Reinke was sued by Valmont for infringement of the reissued patent, and the DC found that Reinke had infringed the reissued patent. Reinke used buried electronic cables rather than the signals that Valmont used. The DC applied some form of equivalency analysis to find infringement. They ruled that the Reinke apparatus was subject to infringement because it accomplished the same task that was produced by Valmont's invention. When Congress looked at the decision, they focused on the means-plus-function language and brought the broad claim language more definite. They ruled that although the same task was achieved, the methods were different enough to not induce equivalence.
- Jacob Marmolejo
XCO International Inc. v. Pacific Scientific Company Nos.03-1683,03-1825 and 03-2405 The plaintiff, XCO, owned U.S. and foreign patents on heat-sensitive cables. In 1991 it assigned the patents to the defendant, Pacific, which wanted to use them in making products for fire control and related uses. Pacific agreed to pay XCO $725,000 down, plus $100,000 or 5 percent of Pacific's sales of products utilizing the patented technology. Pacific licensed the patents back to XCO for $100,000 and Pacific would pay for all maintenance fees. Pacific stopped paying for the patents in 1993, ten years before the end of the agreement and several patents lapsed. XCO also filed a patent for a similar cable after the contract was breached. Pacific argued that the patent was equivalent to the ones that XCO had sold to PAcific. However, the court decided the components, proportions, and production methods,differ from those in the patents assigned to Pacific and Pacific did not make a good case saying why those differences are unimportant. XCO was awarded damages for the infringement and breach of contract.
- New Tek Mfg., Inc. v. Beehner
New Tek Mfg sues Beehner (their former attorney) for negligence in permitting the client's (New Tek) patent to expire. The district court ruled in favor of the attorney's estate and law firm, the client appealed, and the supreme court reversed and remanded the judgement because "the estate had not provided prima facie case of noninfringement under the doctrine of equivalents". The district court again ruled in favor of the attorney's estate and law firm because they said that prosecution history estoppel barred New Tek Mfg from application of the doctrine of equivalents. A third party, Orthman Mfg, had manufactured and sold a device that would have been an infringement on the patent owned by New Tek. The infringement would have been due to the doctrine of equivalents. The patent covered a row following guidance device for a tractor-drawn row crop implement that helped farm equipment operators guide their implements through crop fields without destroying the planted crops by accidentally deviating from the crop row. The patent expired because Beehner did not diligently pursue a reissue patent application, nor did he pay the maintenance fees for the original patent. New Tek changed to a different (new) counsel and obtained a patent, but it was invalid because of the expiration of the original patent. The key takeaway is that New Tek could not apply the doctrine of equivalents to assert infringement because of prosecution history estoppel, specifically the fact that amending the patent narrowed the claim.
- Zamora Radio, LLC v. Last.FM, Ltd.
This case concerns an internet radio patent owned by Zamora Radio. The patent claims a process for providing internet radio, with various steps involving the music host (server) and the consumer's personal computer. The relevant claims in this patent deal with two aspects of delivering internet radio. The first is predetermination of the playlist. The patent specifies that one step in the process is for server software to determine an order of music following a series of predetermined steps. The second is some issue related to whether the host or consumer performs these steps. Last.FM does not predetermine a playlist, but rather picks each song as the previous song ends. It also utilizes only the server, and the consumer's PC has no part in determining the playlist. These aspects were determined to not be equivalent under the doctrine of equivalents, and so Zamora lost the case against Last.FM.