Chapter 16 Outline

• Jurisdiction: United States

Chapter 16

Comparing the Properly Interpreted Claims to the Accused Device

§16.01 Introduction

§16.02 Literal Infringement

§16.03 Infringement Under the Doctrine of Equivalents

[A] Historical Background and Policy Underpinnings

[B] Tension with the Notice Function of Claims

[C] All-Limitations Rule

[1] Defining a "Limitation"

[2] Federal Circuit Examples

[D] The Fact Question of Equivalence

[1] Function/Way/Result Test

[a] Generally

[b] Adequate Expert Testimony

[c] Inadequate Expert Testimony

[d] Determination of "Function" Not Limited to Intrinsic Evidence

[2] Insubstantial Differences Test

[3] Obviousness as a Test of Equivalency?

[4] Known Interchangeability

[E] After-Arising Technology

§16.04 Reverse Doctrine of Equivalents

§16.05 Legal Limitations on the Doctrine of Equivalents

[A] Overview

[B] Prosecution History Estoppel

[1] Definition

[2] Scope of Estoppel

[3] Presumption of Estoppel Under Warner-Jenkinson (U.S. 1997)

[4] The Festo Decisions

[a] Federal Circuit's Complete Bar Rule of Festo I (2000)

[b] Supreme Court's Presumptive Bar Rule of Festo II (2002)

[c] Federal Circuit's Remand Decision in Festo III (2003)

[5] Applying the Festo Rebuttal Criteria

[a] Mere Tangentialness

[b] Unforeseeability

[c] "Some Other Reason"

[6] What Qualifies as a Narrowing Amendment

[a] Generally

[b] Merely "Clarifying"

[c] Making Explicit an Inherent Characteristic

[d] Contract Overall Scope of Claim

[7] Argument-Based Estoppel

[C] Prior Art

[1] Generally

[2] Not Applicable to Literal Infringement

[3] Hypothetical Claim Analysis/Ensnarement

[a] Generally

[b] Illustrative Cases

[c] Scope of Hypothetical Claim

[i] Does Not Encompass All Possible Equivalents

[ii] Cannot Add Any Narrowing Limitations

[D] Dedication to the Public

[1] Disclosing Without Claiming

[2] Level of Specificity to Work a Dedication

[E] Vitiation of Claim Limitations

[1] Generally

[2] Decisions Finding Vitiation

[3] Decisions Finding No Vitiation

[4] Question of Law or Fact?

§16.06 Infringement of Means-Plus-Function Claim Elements

[A] Literal Infringement

[B] Infringement Under the Judicially-Created Doctrine of Equivalents