Posts Tagged “doctrine of equivalents”

When your patent attorney prepares your patent application he or she is trying to help. But like an inept version of Paladin (Have Gun – Will Travel) sometimes the bullet will end up in your foot.

One of these miss-aimed bullets is the almost catechismal recitation of the weasel words “those having ordinary skill in the art will appreciate that the specific devices and processes described herein are intended as merely illustrative of their more general counterparts” or other similar boilerplate. A similar bullet is the slavish use of “exemplary embodiment” language.

These locutions are intended to arm you to do doctrine-of-equivalents battle against infringers by broadening your claims, but there are times when they can work against you.

In a recent Court of Appeals case, Edward Jung’s patent claim for a circuit that included a “well-charge-level controller” was rejected as being anticipated by an earlier patent. That is, the examiner believed Jung’s claim was broad enough to include the earlier circuit, and so, if allowed, would make the prior art infringing.

Jung, at a late point in the discussion, pointed out that his controller, as described in the specification, was much more complex than the prior art reset controller and, given those complexities, would not turn the prior art circuit into an infringing product. Basically Jung was arguing that he had defined his complex controller in the specification and thus did not have to re-define it in the claim.

And the examiner agreed…up to a point. The examiner, the Board of Appeal, and the Court of Appeals agreed with Jung that a patent on his complex controller would not turn the prior art into an infringing product. But, as the Court of Appeals pointed out:

Jung “had the opportunity to amend the claims to achieve more precise claim coverage, i.e., to limit the claim to the ‘exemplary process’ disclosed in the Specification, but did not do so.” … Because the specification explicitly noted that the examples were merely exemplary and were made only to show how the invention “typically” worked, the Board [properly] determined that the claim language could not be limited to those embodiments. [emphasis added]

The lesson is NOT that you should avoid making clear that your invention is broader than the specific embodiments. The lesson is that your specification should try to describe your invention as separate from its embodiments. The description of the invention should be definitive; its embodiments can be exemplary.

As an aside, you should note that the Jung’s real problem is that he didn’t know when to quit arguing. Long ago a dependent claim that included the complexities of his controller had been allowed but he continued to fight the rejection of his independent claim up to the Court of Appeals for the Federal Circuit.

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Catching a patent infringer is like hunting for rabbits with a snare – not that I’ve ever done that. Make the loop of the snare too small and your prey will not fit in but make it too large and you may catch more than you expected. In the IP world, too limited a claim allows the infringer to design around your patent but enlarging your claim scope with the doctrine of equivalents may ensnare some prior art, invalidating your (enlarged) claim. Both the hunter and the hunted should learn the lesson of prior art ensnarement.

The doctrine of equivalents (DOE) is supposed to help patent holders by expanding the effective scope of a claim beyond the literal words in the claim. Without a DOE, inventors would have to claim every insignificant variation of their invention explicitly to prevent a clever infringer from using a minor substitution of a functionally equivalent part as a work-around of the patent.

Even with the DOE we often see a series of dependent claims enumerating small variations in an element claimed broadly in the independent claim: “…where the light source of claim 1 is a laser”, “where the light source of claim 1 is a light emitting diode”,…”is a incandescent source”, “…is a candle”. Just imagine the burden on the inventor if there were no DOE.

Of course, under the DOE the patent holder must argue to the court why the claim should effectively be broadened and, in doing so, opens the “new”, broader claim to the court’s examination for obviousness or anticipation based on the prior art, some of which may not have been before the patent examiner. During this judicial process the patent holder’s arguments may open the snare so large as to “catch” some prior art and in the process, to mix a metaphor, end up hoisting the patent holder by his own petard.

The lesson for patent holders is to be judicious before asserting the DOE; the lesson for those who want to design around a patent is to start building your prior art defenses as part of your design around.

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Inventors (abetted by their patent attorneys) always seem to want to get a broader patent than their invention deserves. Some inventors think they can achieve this goal by throwing extra words into their patents and hoping those extra words will solidify their infringement suits under the doctrine of equivalents. The DOE has its place, but if you spend time grasping at these last straws you may end up dropping your whole bundle.

I was recently reviewing a patent to see what it probably covered (you never know what a patent really covers until you’re in court and hear the claim construction). The claims were relatively straight forward; the invention was a widget connected to a framish and whosit. The specification, however, was filled with throw-away comments like: “Other designs are possible.” “Other dimensions can also be used.” “Still other methods may be used to provide….” “Still other configurations are possible.”

Even worse, there are statements that say, in effect, the invention may comprise different components and any of the components “can be excluded” or replaced by some other, un-named component. None of these alternatives, all of which might very well affect function, are described in any specificity, nor are they enabled or claimed.

It appears that the inventor is hoping that his otherwise narrow claims will be magically broadened by mentioning that all these alternatives are conceptually possible to implement. However, he may have just put himself between a rock and hard place. Judges are not likely to be swayed by these throw-away comments when doing claim construction, so where is the extra protection going to come from; the only extra protection will come from a continuation.

But if the inventor really believes these alternatives fall under the doctrine of equivalents as being insubstantially different from his claimed invention, then he can’t use a continuation to claim these as unique inventions; if he believes them to be substantial, then he has most likely lost the right to a patent on them under the rule of thumb that described but unclaimed matter is dedicated to the public.

Admittedly, he could claim that the alternatives are substantially different but that they were not adequately disclosed in the specification to support a claim. He could, under that view, have filed a continuation-in-part in which he added the written description and enabled these alternatives… but I’d bet his prior throw-away comments would be the basis of an obviousness objection from today’s patent examiners.

When it comes to all the possible alternatives to your invention, I suggest foregoing the slim, slim advantage you might get under the DOE by including a mere mention of alternatives for the stronger stronger advantage of getting a second patent under the CIP process.

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