Wednesday, February 19, 2014

CAFC analyzes improper application of the doctrine of claim vitiation in Ring & Pinion Service v. Arb

In Ring & Pinion v. Arb , there is discussion of foreseeability in the context of the doctrine of equivalents:

In ruling on the parties’ summary judgment motions, the district court held that “foreseeability at the time of [patent] drafting alone[] is not a formally recognized limitation on the doctrine of equivalents.” Ring & Pinion Serv. Inc. v. ARB Corp., No. 09-586, 2013 WL 414220, at *7 (W.D. Wash. Feb. 1, 2013). R&P argues that the district court erred. Relying principally on Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420 (Fed. Cir. 1997), R&P contends that we have found that the doctrine of equivalents does not apply to equivalents that were foreseeable at the time of the patent application. It argues in the alternative that the doctrine of equivalents has been found to exclude foreseeable equivalents under certain circumstances and that we should extend those exclusions to create a per se foreseeability bar to applica- tion of the doctrine.

We do not agree. There is not, nor has there ever been, a foreseeability limitation on the application of the doctrine of equivalents. It has long been clear that known interchangeability weighs in favor of finding infringement under the doctrine of equivalents. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 36 (1997) (“The known interchangeability of substitutes for an element of a patent is one of the express objective factors . . . bearing upon whether the accused device is substantially the same as the patented invention.”); Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950) (holding that “whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was” is an “important factor” weighing in favor of equivalence); Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc., 467 F.3d 1370, 1382 (Fed. Cir. 2006) (finding that “known interchangeability” is a “factor to consider in a doctrine of equivalents analysis” that “aids the fact-finder in as- sessing the similarities and differences between a claimed and an accused element.”); Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1383 (Fed. Cir. 2001) (holding that “the known interchangeability test looks to the knowledge of a skilled artisan to see whether that artisan would contemplate the interchange as a design choice.”); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1261 (Fed. Cir. 1989) (finding that “the substitution of an ingredient known to be an equivalent to that required by the claim presents a classic example for a finding of infringement under the doctrine of equivalents.”). Excluding equivalents that were fore- seeable at the time of patenting would directly conflict with these holdings that “known interchangeability” supports infringement under the doctrine of equivalents. We conclude that the foreseeability of an equivalent at the time of patenting is not a bar to a finding of infringement under the doctrine of equivalents.
R&P’s reliance on Sage Products to argue that a gen- eral foreseeability bar to the doctrine of equivalents exists is misplaced. Sage Products held that claim vitiation, not foreseeability, prevented the application of the doctrine of equivalents in that case because its application “would have utterly written” express limitations “out of the claim.” Overhead Door Corp. v. Chamberlain Grp., Inc., 194 F.3d 1261, 1271 (Fed. Cir. 1999) (citing 126 F.3d at 1423–25). “[B]ecause the scope of the claim” in Sage Products “was limited in a way that plainly and necessari- ly excluded a structural feature that was the opposite of the one recited in the claim, that different structure could not be brought within the scope of patent protection through the doctrine of equivalents.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1346 (Fed. Cir. 2001) (citing 126 F.3d at 1425).

Chiuminatta is cited:

Relying on our holding in Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303 (Fed. Cir. 1998), R&P argues that there is a foreseeability bar to the application of the doctrine of equivalents for means-plus-function limitations. R&P misstates the law. There is no such foreseeability limit on the doctrine of equivalents, nor did we create one in Chiuminatta.

In Chiuminatta, we explained that there are two dif- ferences between the equivalence determination made for literal infringement purposes under § 112(f) and a doc- trine of equivalents determination for the same limita- tion: timing and function. 145 F.3d at 1310. Equivalence under section 112(f) is evaluated at the time of issuance. Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1320 (Fed. Cir. 1999). Equivalence under the doctrine of equivalents, in contrast, is evaluated at the time of infringement. Id. Hence, an after-arising technology, a technology that did not exist at the time of patenting, can be found to be an equivalent under the doctrine of equivalents even though it cannot be an equivalent under the literal infringement analysis of § 112(f). Id.


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