NATIONAL LAW UNIVERSITY ODISHA

PROJECT REPORT IN I.P.R.

TOPIC: THE DOCTRINE OF EQUIVALENTS

Submitted by: Anshay Chopra (2015/BBALLB/008), Prince Kumar

(2015/BBALLB/042), Gouresh Patra (2015/BBALLB/21)

Submitted to: Dr. Amrendra Kumar Ajit

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 CONTENTS

INTRODUCTION.................................................................................................................... 4

REVIEW OF LITERATURE ................................................................................................. 6

RESEARCH METHODOLOGY ......................................................................................... 10

RESEARCH OBJECTIVES ................................................................................................. 10

SCOPE AND LIMITATIONS .............................................................................................. 10

RESEARCH QUESTIONS ................................................................................................... 11

HYPOTHESIS........................................................................................................................ 11

APPLICATION AND SCOPE OF THE DOCTRINE ....................................................... 12

1. THE LEGAL TESTS FOR DETERMINATION OF EQUIVALENCE ............... 12

1.1. THE TRIPARTITE TEST (FUNCTION-WAY-RESULT TEST) ................. 12

1.2. THE ALL-ELEMENTS RULE .......................................................................... 12

1.3. THE INSUBSTANTIAL DIFFERENCES TEST ............................................. 13

1.4. THE KNOWN INTERCHANGEABILITY TEST (ADJUNCT TEST) ........ 14

1.5. THE OBVIOUSNESS TEST (MINOR TEST) ................................................. 14

2. THE LEGAL BARS/POSSIBLE DEFENSES TO EQUIVALENCE ................... 15

2.1. PROSECUTION HISTORY ESTOPPEL ........................................................ 15

2.2. PRIOR ART PATENTABILITY ....................................................................... 16

2.3. THE BAR OF NON-OBVIOUSNESS ............................................................... 16

2.4. PUBLIC DEDICATION ..................................................................................... 16

PROBLEMS AND CHALLENGES OF THE DOCTRINE .............................................. 18

1. LACK OF A PRECISE LINGUISTIC FRAMEWORK AND UNPREDICTABLE

RESULTS ........................................................................................................................... 18

2. CAUSATION OF HARM TO THE PUBLIC NOTICE FUNCTION OF CLAIMS

18

3. POSSIBILITY OF COVERING UNCLAIMED SUBJECT MATTER ................ 18

4. POSSIBILITIES OF INAPPROPRIATE RESULTS WITH TESTS WITH

DEVELOPING MODERN TECHNOLOGICAL SOCIETY ....................................... 19

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 5. DIFFICULTY OF WORKABILITY AND APPLICATION ESPECIALLY BY
LOWER COURTS............................................................................................................. 19

6. WASTEFUL LITIGATION IN THE COMPETITIVE MARKET ....................... 19

DEVELOPMENT OF THE LAW IN EUROPEAN UNION, UNITED STATES AND

INDIA ...................................................................................................................................... 21

1. THE EUROPEAN UNION ........................................................................................ 21

2. UNITED STATES....................................................................................................... 22

3. INDIA ........................................................................................................................... 23

CONCLUSION ...................................................................................................................... 25

BIBLIOGRAPHY .................................................................................................................. 26

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 INTRODUCTION

The law of patents provides to the owner the “right to exclude others from making, using or
selling products or performing services that would infringe claims of that patent” 1. To
determine the occurrence of any infringement, the accused device is compared with what is
laid down in these claims and when the same “reads on” the patented invention, it is said that
literal infringement has occurred.

The doctrine of equivalents was developed by Courts when it came to be recognized that a
certain device may infringe a patent invention even though it does not literally “read on” the
claim of the patent invention.2 Under this doctrine, a certain device shall be considered to be
in infringement of a claim if it “performs substantially the same function in substantially the
same way to obtain substantially the same result”3. Thus, with the help of this doctrine, the
scope of protection that a patentee may get for his invention is expanded. The various tests that
Courts have come up with as legal bars to the application of this doctrine ensure that the
doctrine does not end up taking “a life of its own, unbounded by the patent claim”4.

The Court implied the core principle under the doctrine of equivalents, the Court in the famous
case of Winans vs Denmead5. The Court said “because the exclusive right to the thing patented
is not secured, if the public are at liberty to make substantial copies of it, varying its form or
proportions….the patentee, having described his invention, and shown its principles, and
claimed it in that form which most perfectly embodies it, is, in contemplation of law, deemed
to claim every form which his invention may be copied, unless he manifests an intention to
disclaim some of these forms”. Similarly, it was said in Royal Typewriter Co. vs Remington
Rand Inc.6 that the doctrine of equivalents serves to “temper unsparing logic and prevent an
infringer from stealing the benefit of the invention”.

1
Elizabeth Verkey, Law of Patents (1st edn, Eastern Book Company 2005)
2
Matt Fisher, Fundamentals Of Patent Law: Interpretation And Scope Of Protection (1st edn, Hart Publishing
(UK) 2007)
3
Graver Tank & Mfg Co v Linde Air Products Co 339 US 605 (1950)
4
Alan L Durham, Patent Law Essentials: A Concise Guide (4th edn, Praeger 2009)
5
56 US (15 How) 330 (1853). Winans vs Denmead is the first case in which the doctrine was applied.
6
168 F 2d 691 (2d Cir 1948)

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The meaning of “equivalents”

In the much celebrated case of Graver Tank & Manufacturing Co v Linde Air Products Co.7,
it was held that the doctrine of equivalents may be invoked by the patent owner if the accused
device “performs substantially the same function in substantially the same way to obtain the
same result.” The Court also explained the theory on which this is based and said that “the
theory on which it is founded is 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.” In Winans, it was clearly held that “finding of equivalence is a
finding of fact”. In Warner Jenkinson Co. vs Hilton Davis Chemical Co.8, it was propounded
that in coming to a conclusion about equivalency, one must consider the purpose for which
certain ingredients were put to use in a patent, the qualities the patent went on to possess when
combined with them and the intended function. ” In the same case, the Court spoke about proper
time for the determination and held that “the proper time for evaluating equivalency is at the
time of infringement”.

7
339 US 605 (1950)
8
520 US 17 (1997)

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 REVIEW OF LITERATURE

Before beginning to work on this project, the authors reviewed the following literature
including books and articles with respect to the doctrine of equivalents.

1. Cases and Materials on Patent Law by Martin Adelman, Randall Radar and John
Thomas9
In this book, the authors have, in much detail, covered the relevant cases with respect to all the
fundamentally important topics in patent law including infringement, remedies, novelty and
anticipation. Chapter Eleven of this book discusses infringement in much detail and holds an
exhaustive discussion of the landmark cases across both literal and non-literal infringement.
The authors of the present work have consulted Chapter 11 of this book to gain a proper
understanding of non-literal infringement.

2. Fundamentals of Patent Law: Interpretation and Scope of Protection by Matthew

Fisher10
This work provides a detailed but comprehensive discourse on the interpretation of patent
claims in the UK and some other selected countries such as United States, Japan and Germany.
The author has, quite succinctly, covered what claim interpretation is and enables the reader to
not only form an idea about what the law is but also about what the law ought to be. The author
has, quite well, narrated the doctrine of equivalents and how it came to be and develop in
America. This book has helped the author in gaining fresh perspectives on the doctrine of
equivalents.

3. Intellectual Property Law by Jennifer Davis11

In this book, the authors have broadly covered intellectual property law with respect to various
kinds of intellectual properties, mainly including copyright, patent and trademark. The author
has elaborately dealt with relevant aspects with respect to all of these properties including
infringement, remedies, nature of the properties etc. In addition, the author has, quite
succinctly, covered patent infringement and discussed well the law applicable in UK with
respect to non-literal infringement. Purposive approach and cases such as Improver and Kirin

9
Martin J Adelman and Others, Cases and Materials on Patent Law (4th edn, West Academic Publishing 2015)
10
Matt Fisher, Fundamentals Of Patent Law: Interpretation And Scope Of Protection (1st edn, Hart Publishing
(UK) 2007)
11
Jennifer Davis, Intellectual Property Law (4th edn, Oxford University Press 2014)

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Amgen (discussed later) have been discussed quite well by the author.

4. Essentials of Intellectual Property by Alexander I. Poltorak and Paul J. Lerner12

In this work, the author has, in sufficient detail, discussed various nuances with respect to
intellectual property in general such as enforcement of intellectual property rights, whether
putting a value over intellectual property is worth, intellectual property in cyberspace,
confidence and nondisclosure agreement etc. For coming up with the present work, this book
has helped the author in understanding the basics of patent infringement which have been dealt
with in Chapter I of this book.

5. Modern Intellectual Property Law by Catherine Colston and Jonathan Galloway13

This book has helped the author in gaining a comprehensive understanding of purposive
construction, non-literal infringement and the pith and marrow doctrine because of the detailed
and comprehensive understanding that the author has brought in this book. Though the author
has succinctly covered the relevant aspects with respect to trademark, copyright, and patent,
the author has brought original perspectives on patent infringement which have helped the
author in understanding non-literal infringement really well.

6. Law of Patents by Elizabeth Verkey14

In this work, the author Elizabeth Verkey has gone into a detailed discussion of patent law. In
simple language, Verkey has covered complex nuances with respect to patent law such as
novely and anticipation, obviousness, patent prosecution, specification etc. Additionally, the
author has also covered the Indian Litigation Practice with respect to patent law. This work has
helped the author in gaining a fresh understanding of literal infringement and non-literal patent
infringement.

7. Abolishing The Doctrine Of Equivalents And Claiming The Future After Festo by Joshua
D. Sarnof15
In this article, the author has argued for the abolishing of the doctrine of equivalents contending
that the doctrine does more harm than good. The author argues that the doctrine does not have
theoretical justification, repeatedly imposes costs over the society when applied, and in a way,
acts as a bar to innovation. The author argues that non-literal infringement should be done away

12
Alexander I Poltorak and Paul J Lerner, Essentials of Intellectual Property (2nd edn, John Wiley & Sons, Inc
2002)
13
Catherine Colston and Jonathan Galloway, Modern Intellectual Property Law (3rd edn, Routledge 2010)
14
Elizabeth Verkey, Law of Patents (1st edn, Eastern Book Company 2005)
15
Joshua D Sarnoff, 'Abolishing the Doctrine of Equivalents and Claiming the Future after
Festo' [2004] 19(4) Berkeley Technology Law Journal 1157-1226

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with and claims should be literally interpreted at all times. The author proposes that the
Congress or the Supreme Court must make a move towards abolishing the doctrine so that the
aim of patent law is preserved and does not suffer from a stumbling block due to the application
of the doctrine.

8. The Doctrine Of Equivalents In Various Patent Regimes - Does Anybody Have It Right?
by Nicholas Pumfrey, Martin J. Adelman, Shamnad Basheer, Raj S. Dave and Peter
Meier-Beck16
In this work, the authors have explored the different ways in which the doctrine of equivalents
has been applied and interpreted in the jurisdictions of United Kingdom, United States,
Germany and Japan. If not the doctrine of equivalents, the authors have explored how non-
literal infringement has been dealt with by these nations and how the law with respect to non-
literal infringement has developed in these countries. The authors of this work have, thus,
explored how the question of equivalents may be provided an answer to. To the authors of the
present work, this work has helped in understanding how non-literal infringement has been
dealt with by United Kingdom, United States and Germany.

9. Doctrine of Equivalents by Ronald D. Hantman17

In this work, the author has begun with historical introductions of the doctrine of equivalents
starting from the Patent Act of 1970 and gone towards describing the developing of the relevant
law in the United States till about the twentieth century. By citing directly the opinions of
judges at various junctures across a plethora of cases, the author has shown the judicial attitude
with respect to the doctrine in this work. This work has helped the authors of the present work
in understanding the historical introductions of the doctrine.

10. Patent: Doctrine of Equivalents by Aldo Test18

In this article, the author has gone into briefly discussing the key judgements with respect to
the doctrine of equivalents such as Graver Tank and Winans (will be discussed later). The
author has discussed the relevant aspects with respect to these and provided an understanding
of the judicial attitude with respect to the doctrine with the help of these judgements. This has
helped the author of the present work in understanding how these judgements helped in shaping

16
Nicholas Pumfrey and Others, 'The Doctrine Of Equivalents In Various Patent Regimes-Does Anybody Have
It Right?' [2009] 11(1) Yale Journal Law Of Technology 261-308
17
Ronald D Hantman, 'Doctrine of Equivalents' [1988] 70(8) Journal of the Patent and Trademark Office
Society 511-557
18
Aldo Test, 'Patents: Doctrine of Equivalents' [1951] 39(2) California Law Review 302-305

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the doctrine of equivalents.

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 RESEARCH METHODOLOGY

The methodology of research used in this project is doctrinal. Both primary and secondary
sources of data have been consulted for coming up with this work which includes
commentaries, legislations, journals, cases etc. No empirical research was employed for
coming up with this work.

MODE OF CITATION: The mode of citation that has been adopted for the present work is
Oxford University Standard for Citation of Legal Authorities (OSCOLA) (4th edition, 2012).

RESEARCH OBJECTIVES

1. To understand the interpretation and application of the doctrine of equivalents by referring

to relevant case law
2. To gain an understanding of how the doctrine of equivalents operates, the problems
associated with the application of the doctrine and the tests Courts have come up with in
relevance to the doctrine
3. To understand how the Courts have applied efforts towards invoking an equitable
application of the doctrine by coming up with legal bars towards its application and the
developments with respect to the doctrine in United States, European Union and India

SCOPE AND LIMITATIONS

In this work, the authors shall only go on to gain a detailed but broad understanding of the
doctrine of equivalents with reference to the variety of case laws which have added to the
jurisprudence concerning the doctrine. Comparisons with other cases forms of patent
infringement such as literal infringement shall only be made wherever required and the focus
of this work will be on understanding how Courts have taken a balanced view with respect to
this doctrine. For this, the relevant case law shall be discussed only in as much detail as required
and this work cannot be deemed to be exhaustively covering the issues and aspects discussed
in the referred cases. Additionally, this work shall only go on to discuss the development of the
doctrine through landmark cases only in United States, European Union and India and not in
other jurisdictions.

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 RESEARCH QUESTIONS

1) How have Courts balanced the interests of third parties and patent holders by developing
various tests for application of doctrine of equivalents?
2) What are the problems that have been encountered as far as application of the doctrine is
concerned and what are the reasons for its criticism?
3) What is the jurisprudence with respect to the doctrine of equivalents that has developed in
United States of America, European Union and India?

HYPOTHESIS

With the application of the doctrine of equivalents, to a huge extent, the Courts have been able
to achieve an equitable balance with respect to the rights of the third parties and patent holders.

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 APPLICATION AND SCOPE OF THE DOCTRINE

For determining whether an accused device is an equivalent of another and violates the patent
owned by another, a number of tests have been devised. There is no straitjacket formula for the
determination. Therefore, these tests are helpful in coming to the conclusion of whether a
certain device may be the equivalent of another.

1. THE LEGAL TESTS FOR DETERMINATION OF EQUIVALENCE

1.1. The Tripartite Test (Function-Way-Result Test)
The tripartite test is the most traditionally applied test for determination of equivalence19. It
was founded in Graver Tank & Mfg. Co. vs Linde Air Products Co. According to this rule, a
certain accused device is the equivalent of another if it “performs substantially the same
function in substantially the same way to obtain substantially the same result”. In Graver Tank,
the clear question was whether the substitution of manganese by magnesium was a substantial
difference. It was concluded by the Court that the two mixtures operated identically as far as
the weld produced was concerned and that for all practical reasons, manganese could be used
instead of magnesium. The Court, applying this test, held that it was a clear case of
infringement and that the accused device was an equivalent.

1.2. The All-Elements Rule

The All-Elements rule is one of the most important developments in context of the doctrine. In
the case of Warner Jenkinson, the Court stated that “each element contained in a patent claim
is deemed material to defining the scope of the patented invention, and thus the doctrine of
equivalents must be applied to individual elements of the claim, not to the invention as a
whole..” The Court reflected that determining whether infringement under this doctrine has
taken place is a question of fact. It agreed with the opinion of Nies’ J 20 who contended that as
far as assessing whether an accused device is an equivalent is concerned, if the patented claim
is seen on an overall basis, it will lead to unwanted expansion of the claim.21

Thus, for every limitation that the claim has, the accused device should have some element that
“reads on” that limitation equivalently and if this does not happen, it can be said that there is

19
Deborah E Bouchoux, Intellectual Property: The Law of Trademarks, Copyrights, Patents, and Trade Secrets
(4th edn, Delmar Cengage Learning 2012)
20
Catherine Colston and Jonathan Galloway, Modern Intellectual Property Law (3rd edn, Routledge 2010)
21
ibid.

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no infringement. Thus, by prescribing the requirement of the accused device containing
equivalent element or equivalent elements for every claim limitation rather than equivalence
“as a whole”, the all-elements rule increases the amount of notice that potential infringers get
about what can be infringement under this doctrine.22

1.3. The Insubstantial Differences Test

The equivalents doctrine has been designed “to prevent a ‘fraud on the patent’ when an accused
infringer is ‘stealing the benefit of the invention’ by making insubstantial changes that avoid
the literal scope of the claims”.23 Under this test, the main question is how substantial the
differences between the accused device and the patented invention are. In case the differences
are insubstantial, it can be concluded that there is infringement under this doctrine. If the
differences between the patented invention and the accused device are substantial, it can be
concluded that there is no infringement under this doctrine. If this test is combined with the all-
elements rule, the conclusion that we come to is that if the differences between the claim
limitations of the patented invention and the corresponding element of the accused device are
insubstantial, patent infringement may be the case.24

In a case in which this test was considered, in the accused device, the essence of the patented
invention had been incorporated in the accused device and infringement was found. With
respect to the same, Romer J said, “They appear to me to have taken the essence, or what is
sometimes called the pith and marrow of the invention.….and the defendants cannot by
adopting this, when they in all essential matters take and use the plaintiff’s invention, be heard
to say that they are not using that invention or infringing the patent.”

To arrive at the conclusion of what would count as substantial and insubstantial parts, it is
important for Courts to be aware of and determine which are the essential and non-essential
parts. This varies from case to case. However, some authors such as Elizabeth Verkey have
also given their opinions on how to differentiate between the two. Elizabeth mentions taking
into account the following factors to determine substantiality: “1. Whether persons with skill
in the art actually know of the equivalence of the claimed and accused inventions. 2. Whether
a person with skill could have known of the equivalence. 3. Whether he had intended to copy,
or rather, intended to design around, or inadvertently arrived at the same result.”25

22
Aldo Test, 'Patents: Doctrine of Equivalents' [1951] 39(2) California Law Review 302-305
23
EMI Group North America Inc vs Intel Corporation 157 F 3d 887 (Fed Cir 1998)
24
Test (n 22).
25
Verkey (n 1).

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 1.4. The Known Interchangeability Test (Adjunct Test)
This test has generally been applied by Courts in addition to the major tests for determination
of equivalency namely the triple identity test, all elements rule and insubstantial differences
test.26 With time, the Courts came to realize that the triple identity test may not be per se
sufficient for coming to the conclusion of whether equivalency exists or not. Therefore, this
test was introduced to be applied in addition to other tests. Whether this test must be applied
or not depends on a variety of factors including the specific facts of the case.27 It is to be kept
in mind that the known interchangeability test is not an independent test for the determination
of equivalency.

According to this test, known interchangeability of any ingredient/claim limitation of any

patented invention in any accused device will go a long way in indicating whether there the
accused device is an equivalent. To show that this test is successful, one who holds a patent
must show that a certain element that was used in the accused device was known to be
interchangeable with the limitation in the claim of the patented invention.

In the Graver Tank case, the Court ruled that an important factor in drawing the conclusion of
equivalency is determining whether “a person of ordinary skill in the art would have known of
the interchangeability..the known interchangeability of the accused and claimed elements is
potent evidence that one of ordinary skill in the relevant art would have considered the change
insubstantial”. Similarly, in the Pennwalt28 case, the Federal Circuit Court opined that
“interchangeability” would be a major factor in determining the existence of equivalency.

1.5. The Obviousness Test (Minor Test)

In the case of Streamfeeder vs Sure-Feed Systems Inc.29, the Federal Circuit Court, in respect
of the bar with respect to the doctrine of equivalents, stated that “Thus, an accused device or
process cannot infringe under the doctrine of equivalents if it is merely an obvious variation of
prior art inventions.” In essentiality, this test involves applying the test of non-obviousness for
the determination of whether the differences between accused device and the patented
invention are substantial30. Hence, in case the accused device complies with the test of non-
obviousness as far as its elements are concerned, the doctrine of equivalents is not infringed.

26
ibid.
27
Joseph S Cianfrani, ‘An Economic Analysis of the Doctrine of Equivalents’ [1997] 1 Virginia Journal of Law
& Technology 1-26
28
Pennwalt Corp v Durand- Wayland Inc 833 F 2d 931 (Fed Cir 1987)
29
Cianfrani (n 27).
30
ibid.

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On the other hand, if it is proved that the accused device does not pass the test of non-
obviousness, the difference shall be considered to be insubstantial and the accused device shall
be considered to be infringing the patented invention.

2. THE LEGAL BARS/POSSIBLE DEFENSES TO EQUIVALENCE

The tests for equivalence define what is the actual scope of the patent. On the other hand, the
legal bars define areas which are outside the scope of the patented invention. Hence, in the
determination of equivalence, both – the results of tests and application of bars need to be
considered. Generally, following four bars to equivalence have been recognized.

2.1. Prosecution History Estoppel

An applicant’s dealing with Patent Office including any modifications, arguments etc. are
contained as written records as prosecution history. Prosecution history estoppel means that a
patent owner cannot contradict the patent prosecution history by “claiming as an equivalent
subject matter given up during prosecution in order to obtain the patent.”31 Hence, after a
patentee narrowed the scope of patent during prosecution, he cannot later claim the subject
matter that he surrendered during the prosecution as an equivalent.

The case of Brenner vs United States32 is the landmark case in this regard. In this case, the
patentee was estopped because he had given up certain subject matter during prosecution by
choosing word “codable” over “coded”33. When he was told to distinguish his claim from the
existing prior art, it was stressed by him that there was a difference between “codable” and
“coded” and that the material could have been erased after encoding. It was held that the
accused device was not an equivalent since the patentee during prosecution had, quite clearly,
regulated the scope of invention to “codable” material.

Impact of Festo34 on prosecution history estoppel

The famous case of Festo Corp had a certain impact on the existing rule with respect to
prosecution history estoppel. In this case, though the Court recognized that the estoppel may
be applicable at any time when the amendment is done to applicable, it held that the severe
restriction on the application of the doctrine of equivalents when the estoppel applies was not
valid and had to be done away with. It was held that the presumption of bar to some finding of

31
Alan L Durham, Patent Law Essentials: A Concise Guide (4th edn, Praeger 2009)
32
773 F 2d 306 (Fed Cir 1985)
33
ibid.
34
Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd 535 US 722

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equivalence was rebuttable and that for rebutting the same, patentee “must show that at the
time of the amendment one skilled in the art could not be reasonably expected to have drafted
a claim that would have literally encompassed the alleged equivalent.”35 To add to that, it was
said that the patentee should also show that amendment was made not for ensuring patent
granting but also that by the amendment, the equivalent is not surrendered. Therefore, in this
respect, this ruling relaxes the bar on bringing a claim of equivalence when prosecution history
estoppel exists.

2.2. Prior Art Patentability

The presence of prior art significantly limits the number of equivalents possible. If a certain
accused thing is found in the prior art, or is actually obvious considering the prior art, it cannot
be said that the device is infringing of the patented invention under the doctrine of
equivalents.36 This is because this would mean that the patent holder is getting rights over
something over which he could not lawfully claim a right during patent prosecution. Therefore,
while actually applying the bar of prior art patentability, what should be looked at is whether
the product could not have been patented considering the presence of the prior art.37
Henceforth, if something could not have been patented at the time of patent prosecution, the
patentee cannot be allowed to expand the scope of the patent granted to him by considering
equivalency in prior arts.

2.3.The bar of non-obviousness

As has been discussed previously, under the test of obviousness, if a certain accused device
does satisfy the test of non-obviousness, it will be regarded as being substantially different
from the claim limitation prescribed for the patented invention and therefore, will not be
considered to be infringing of the doctrine of equivalents.38 On the other hand, if the accused
device does not satisfy the test of non-obviousness it will be considered that the difference is
insubstantial. This operates both as a bar and as a test since if a certain accused device meets
the test of non-obviousness, the difference will be considered to be insubstantially and
therefore, there will be no infringement.

2.4. Public Dedication

Many times, there may be an embodiment in the patent that was but not claimed. According to

35
ibid.
36
Jennifer Davis, Intellectual Property Law (4th edn, Oxford University Press 2014)
37
ibid.
38
Ronald D Hantman, 'Doctrine of Equivalents' [1988] 70(8) Journal of the Patent and Trademark Office
Society 511-557

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this bar, the doctrine will not apply to such an embodiment. In Maxwell vs J Baker Inc39, the
Federal Circuit Court said, “subject matter disclosed in the specification, but not claimed, is
dedicated to the public”. As a matter of fact, this bar is applicable only for certain specific
factual situations and not all situations. This bar works on the principle that when a certain
subject matter is not claimed, the patentee tells the public that it is outside the patent’s scope.
In this respect, it was again pronounced in Maxwell vs J Baker Inc that capturing subject matter
that was deliberately left not claimed is “contrary to our system of patent examination, in which
a patent is granted following careful examination of that which an applicant claims as her
invention.”

39
875 F Supp 1371 (D Minn 1995)

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 PROBLEMS AND CHALLENGES OF THE DOCTRINE

Following are some of the problems and challenges faced in the application and execution of
the doctrine.

1. LACK OF A PRECISE LINGUISTIC FRAMEWORK AND UNPREDICTABLE RESULTS

In a number of cases included Warner Jenkinson, Graver Tank and Festo, the Courts have said
that neither the insubstantial differences test nor the tripartite test can objectively determine
infringement under this doctrine. In every landmark case including these, US Courts have come
up with a different formulation for determining infringement. At the same time, in other
jurisdictions such as nations of EU, equivalence is interpreted in a drastically different manner.
This lack of a precise linguistic framework leads to unpredictable results which compromise
the aim of patent law – encouraging new inventions while protecting rights of inventors over
their inventions.

2. CAUSATION OF HARM TO THE PUBLIC NOTICE FUNCTION OF CLAIMS

An important function of claims is to make public aware of what is the invention of a particular
patentee so that are aware of which action of their may amount to infringing the patent. When
non-literal infringement/doctrine of equivalents works with unpredictable results, this function
of notice to public is harmed as they cannot determine anymore with certainty what will amount
to infringement and what will not.40 In fact, it may even defeat the public notice function
entirely. “Designing around” the patent is a practice that is encouraged but if the boundaries of
patent are not clear, the function of public notice is significantly harmed. 41 Even in Warner
Jenkinson, the Court said that applying the doctrine in an unbridled manner is against the
“definitional and public notice functions of the statutory claiming requirement”. It was
therefore that element-by-element comparison was proposed but that too has not lead to any
drastically better results.

3. POSSIBILITY OF COVERING UNCLAIMED SUBJECT MATTER

For there’s huge uncertainty attached with respect to operation of the doctrine, there always
lies the possibility that a patentee may be able to claim unclaimed subject matter as a part of

40
Jerry A Riedinger, 'Intellectual Property Law: The Future of the Doctrine of Equivalents' [2003] 20(2) GPSolo
40-41.
41
ibid.

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this invention.42 This, to an extent, defeats the purpose of the doctrine for the doctrine is there
to help a patentee claim patent rights over matter that couldn’t have been literally specified and
not obtain rights over matter that actually was not a part of the specification. Though
prosecution history estoppel and other bars have been successful in preventing this, there
always exist wide possibilities of covering such subject matter.

4. POSSIBILITIES OF INAPPROPRIATE RESULTS WITH TESTS WITH DEVELOPING

MODERN TECHNOLOGICAL SOCIETY

The tests crafted for the doctrine were made to bring some certainty to the working of the
doctrine. However, with developing modern technological society, the tests have begun to
deliver inappropriate results. For example, in 1997, Judge of Federal Appeals Court gave an
example that ibuprofen and aspirin perform the same function, that too in the same way to
deliver the same result. However, the two are not equivalents though when triple identity test
may be applied to them, it may said that they are equivalents. Similarly, often, to apply such
tests is very difficult because patented inventions are complicated and a lot of technicalities go
into determining the boundaries.43

5. DIFFICULTY OF WORKABILITY AND APPLICATION ESPECIALLY BY LOWER

COURTS

In addition to the huge uncertainty with respect to the application of the doctrine, when the
matters of non-literal infringement inviting application of doctrine reach lower Courts, it is
extremely difficult for lower Courts to pronounce judgements considering the technicalities
and complications that happens to come concomitantly. The Court of Appeals for Federal
Circuit (established to bring stability in law of patents) has declared this doctrine to be
“unworkable” due to this reason.44

6. WASTEFUL LITIGATION IN THE COMPETITIVE MARKET

A number of patent litigations brought involving this doctrine have been categorized as
wasteful litigations because competitors, while trying to not infringe and design products, come
up with inventions which at the end, turn out to be infringing. With huge capitals at their ends,
they bring about litigations due to which Courts are loaded all for something that does not have

42
Daniel H. Shulman, ‘Vitiating the Doctrine of Equivalents: A New Patent Law Doctrine’ [2003] 12(3) Federal
Circuit Bar Journal 457-488
43
Lee Petherbridge, ‘On the Decline of the Doctrine of Equivalents’ [2010] 31(4) Cardozo Law Review 1371-
1406
44
ibid.

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certain ends – the application of the doctrine.45 This has come to be seen as a regular
phenomenon. Thus, in a way, the doctrine increases the burden on Courts with wasteful
litigations.

45
ibid.

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 DEVELOPMENT OF THE LAW IN EUROPEAN UNION, UNITED STATES AND
INDIA

The doctrine of equivalents has been thought of and applied differently in different patent
regimes. In this section will be studied the development of the law relating to the
doctrine/patent scope in EU, US and India.

1. THE EUROPEAN UNION

In the European Union, the scope of patent protection has been determined largely by Article
69 of European Patent Convention. Because a huge scope of interpretation of this Article is left
across Europe, no “final” doctrine has been able to be formed.46 Instead, the Courts have
differently understood and handled the issue of non-literal infringement.

Before European Patent Convention came into the picture, Courts in various jurisdictions
handled the issue of non-literal infringement differently. After its coming, Courts in UK have
started to follow Article 6947 and Protocol48 of the European Patent Convention (EPC) for
interpretation of claims. Though Article 69 and Protocol are suggestive of the fact that the
claims may be interpreted beyond what they mean literally, there isn’t any specific guideline
of how interpretation may be done. For clarification of the scope of protection and ensuring
uniformity of Court practice across Europe, a conference was held in Munich in 2000 in which
significance of equivalents was considered and Article 249 was added.

By interpreting Article 69 with the Protocol, we conclude that in cases where the literal
meaning of the words and terms used in claim is unclear, the specifications and drawings must
be referred to for interpretation. When literal meaning is clear but another meaning comes up
when looking at specifications, that interpretation should be taken which emerges from the

46
Martin J Adelman and Others, Cases and Materials on Patent Law (4th edn, West Academic Publishing 2015)
47
Article 69 states that, “The extent of the protection conferred by a European patent or a European patent
application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be
used to interpret the claims.”
48
The Protocol mentions that, “Article 69 should not be interpreted as meaning that the extent of the protection
conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording
used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity
found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual
protection conferred may extend to what, from a consideration of the description and drawings by a person skilled
in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position
between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of
legal certainty for third parties.”
49
Article 2 read as, “For the purpose of determining the extent of protection conferred by a European patent due
account shall be taken of any element which is equivalent to an element specified in the claims.”

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drawings and specifications. It still remains to be seen how the Courts across the Europe will
interpret equivalence.

United Kingdom and Germany: Decisions Illustrating Approach After Advent of EPC

After the arrival of the EPC, countries in EU have moved on to interpret Article 69 and deal
with claims of non-literal infringement directly. However, the approach followed by UK and
Germany seems to be the most important. In In Catnic Components Ltd. vs Hill & Smith Ltd.50
of UK, the ‘purposive construction’ method of interpretation was adopted. In this respect, the
Court said, “The question in each case is whether persons with practical knowledge and
experience of the kind of work in which the invention was intended to be used, would
understand the strict compliance with a particular descriptive word or phrase appearing in a
claim was intended by the patentee to be an essential requirement…” The same approach was
followed in another landmark decision of Improver Corp vs Remington Consumer Products
Ltd.51 Following this, in the landmark case Kirin Amgen vs Hoechst Marion Roussel52, the
concept of purposive construction was again stressed upon. The Court, fully affirming the
Catnic view of purposive interpretation also clarified that the Protocol only mentions the
principles that should be followed in claim interpretation and that one shouldn’t go outside the
claims. It also said that ultimately, the interpretation should be such that reasonable
expectations of neither of the sides must be harmed. In Eli Lilly vs Actavis UK53 in July 2017,
Lord Neurberger has come up with another three question test for the determination. In
Germany, in line with EPC, in the landmark decision of Schneidmesser (Cutting Blade I)54, as
far as non-literal infringement is concerned, a four-question test was laid down.

2. UNITED STATES OF AMERICA

The doctrine of equivalents was the brainchild of the US, and therefore, most of the
jurisprudence with respect to this doctrine lies in cases decided by US Courts. In this complete
work, all cases are those that were decided by US Courts and essentially, potray a picture of
how the law on the doctrine came to be developed in the US. Therefore, under this head, the
authors will, effectively, summarize the landmark judgements with respect to this doctrine.

The first case decided in the US with respect to this doctrine was Winans vs Denmead in which

50
[1982] RPD & TM 183
51
[1990] FSR 181
52
[2005] 1 All E R 667 (HL)
53
[2017] UKSC 48
54
150 BGHZ 149 [33 IIC 873]

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the patent at issue was for a new and improved method for operation of railroad cars. It was in
this case that US Supreme Court explained that if a third-party can just change the form of the
patented invention and escape liability of infringement, the patent would hold no value. The
phrase “doctrine of equivalents” only came to be used in McCormick vs Talcott55 in which the
Court said that colorable imitations of a patented invention will also amount to equivalents.

Finally, in Graver Tank, the Court quite strictly considered non-literal infringement and ruled
that if a certain accused device performs “substantially the same function in substantially the
same way to obtain the same result”, it would be liable for patent infringement. For about 47
years following this, the Supreme Court said nothing with respect to this doctrine until Warner
Jenkinson in which it, noticing the unwanted consequences of overall or “as a whole”
comparison of accused and patented devices gave the all-elements rule of element-by-element
comparison of the devices.

After this case, some jurisprudence on prosecution history estoppel had developed after which
Festo came which contributed immensely and extensively to patent infringement
jurisprudence. In this case, the Court ruled that prosecution history estoppel is applicable for
all claim amendments but a bar to infringement claims is not created under the doctrine. This
case went a lot ahead in the direction of preserving the doctrine when it was on the verge of
elimination because of the uncertainty attached to its application. The decisions after Festo
have been decided in line with all of these key decisions.

3. INDIA
In India, the Courts have had fewer opportunities of dealing with the issue of non-literal
infringement. However, in the few cases that it has dealt with the issue, the method of purposive
construction of claims has been favored by them. It was in the case of Raj Parkash vs Mangat
Ram Chowdhury56 that the Delhi High Court held that,

“It is the pith and marrow of the invention claimed that has to be looked into and not get
bogged down or involved in the detailed specifications and claims made by the parties who
claim to be patentee or alleged violators.”

Similarly, in the case of TVS Motor Company Limited vs Bajaj Auto Limited57, the Madras
High Court held that,

55
61 US 20 How 402 (1857)
56
AIR 1978 Del 1
57
(2008) ILLJ 726 Mad

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“In construing an allegation of infringement, what is to be seen is whether the alleged
infringement has taken the substance of the invention ignoring the fact as to omission of certain
parts or addition of certain parts.”

These cases show that Indian courts have not limited their perspective of infringement to literal
construction of claims and considered non-literal infringement too. Similarly, it was in Rohtas
Industries vs Indian Hume Pipe also that the Patna High Court opined that claims must be read
substantially and not literally to further the aim of law of patents. At the same time, in Lallubhai
Chakubhai vs Chimanlal & Chunilal & Co.58, the Bombay High Court held that,

“The construction of a specification is a matter of law and is for the Court. It must be construed
as a whole. A specification must be construed impartially….the construction must be a
reasonable one.”

It was finally in Ravi Kamal Bali vs Kali Tech59 that the Bombay High Court showed its
inclination towards applying the doctrine and attempted to merge it into the Indian patent
infringement regime. Generally, it is considered that this is the first case with respect to this
doctrine. However, some authors beg to differ though it has been generally accepted that this
is the first Indian case on this doctrine. It was in this case that the plaintiff submitted that Court
must apply the doctrine because, he contended, the triple identity test was applicable. Though
the final ruling was not based on the doctrine, it was influenced by it. The final judgement was
given considering that the accused device and patented invention were same at the level of
usage, nature of material used and principle on basis of which the invention worked. Hence, in
all, this judgement can be seen as the beginning of development of the doctrine’s jurisprudence
in India.

58
AIR 1936 Bom 99
59
2008 (38) PTC 535 (Bom)

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 CONCLUSION

The doctrine of equivalents, at various junctures, has been the subject of much criticism mainly
due to the challenges pointed out above, especially uncertainty. However, the importance of
the doctrine cannot be undermined because if not for literal infringement, patentees would lose
many of their rights and the aim of patent law of encouraging inventions would be
compromised.

In all, it can be concluded that though there are a number of issues with respect to the
application of the doctrine, elimination of the same shall only lead to unwanted results for it
would phase out the possibility of non-literal infringement altogether. Hence, Courts around
the world who handle non-literal infringement must only constantly attempt to use the doctrine
in such a manner that minimum problems and challenges (as highlighted previously are phased
out). This development is happening as, with time, newer cases are striking the Courts and for
the Courts have the responsibility of doing justice to both patent holders and accused infringers,
we can only wait to see how this problems is solved and the doctrine is applied in a manner
that’s least damaging for both patent holders and accused parties.

In India, for there have not been many cases in which Courts have had the possibility of delving
upon the issue of non-literal infringement, we cannot conclusively comment upon what
whether the doctrine would be suitable in the Indian scenario. The case Ravi Kamal Bali only
superficially saw the discussion of the doctrine. Cases in which non-literal infringement issues
are much more complex and invite the doctrine’s application still remain to reach Courts.
Hence, we can only wait to see how the Courts in India apply the doctrine (if at all they do),
handle issues of non-literal infringement and work to do justice to both patentees and accused
infringers in such cases.

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 BIBLIOGRAPHY

INTERNATIONAL LEGAL INSTRUMENTS

 European Patent Convention (Convention on the Grant of European Patents), 1973

 European Patent Convention (Convention on the Grant of European Patents), 2000
 Protocol on the Interpretation of Article 69 of the Convention (Protocol to European Patent
Convention, 2000)
CASES

 Winans vs Denmead [1853] 15 How 330 (US)

 Graver Tank & Mfg Co v Linde Air Products Co 339 US 605 (1950)
 Royal Typewriter Co. vs Remington Rand Inc. [1948] 168 F 2d 691 (US)
 Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd 535 US 722
 Hilton Davis Chemical Co. v Warner- Jenkinson Co Inc 62 F 3d 1512 (Fed Cir 1995)
 Royal Typewriter Co. v Remington Rand Inc 168 F 2d 691 (2d Cir 1948)
 Winans v Denmead 56 US (15 How) 330 (1853)
 Pennwalt Corp v Durand- Wayland Inc 833 F 2d 931 (Fed Cir 1987)
 Roton Barrier Inc v Stanley Works 79 F 3d 1112 (1996)
 Tec Air Inc v Denso Mfg Mich Inc 192 F 3d 1353 (Fed Cir 1999)
 YBM Magnex Inc v US Intl Trade Commn 145 F 3d 1317 (Fed Cir 1998)
 Al- Site Corp v VSL Intl Inc 174 F 3d 1308 (Fed Cir 1999)
 Streamfeeder LLC v Sure- Feed Sys Inc 175 F 3d 974 (Fed Cir 1999)
 Van der Lely NV v Bamford [1963] RPC 61
 Catnic Components Ltd v Hill & Smith Ltd [1982] RPD & TM 183
 Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181
 Kirin- Amgen v Hoechst Marison Roussel [2005] 1 All ER 667 (HL)
 Lallubhai Chakubhai v Chimanlal & Chunilal & Co AIR 1936 Bom 99
 Raj Parkesh v Mangat Ram Chowdhary AIR 1978 Del 1
 Ravi Kamal Bali v Kali Tech 2008 (38) PTC 535 (Bom)
BOOKS

 Matt Fisher, Fundamentals Of Patent Law: Interpretation And Scope Of Protection (1st
edn, Hart Publishing (UK) 2007)

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 Alan L Durham, Patent Law Essentials: A Concise Guide (4th edn, Praeger 2009)
 Elizabeth Verkey, Law of Patents (1st edn, Eastern Book Company 2005)
 Deborah E Bouchoux, Intellectual Property: The Law of Trademarks, Copyrights, Patents,
and Trade Secrets (4th edn, Delmar Cengage Learning 2012)
 Catherine Colston and Jonathan Galloway, Modern Intellectual Property Law (3rd edn,
Routledge 2010)
 Alexander I Poltorak and Paul J Lerner, Essentials of Intellectual Property (2nd edn, John
Wiley & Sons, Inc 2002)
 Jennifer Davis, Intellectual Property Law (4th edn, Oxford University Press 2014)
 Martin J Adelman and Others, Cases and Materials on Patent Law (4th edn, West
Academic Publishing 2015)

ARTICLES

 Aldo Test, 'Patents: Doctrine of Equivalents' [1951] 39(2) California Law Review 302-305

 Joshua D Sarnoff, 'Abolishing the Doctrine of Equivalents and Claiming the Future after
Festo' [2004] 19(4) Berkeley Technology Law Journal 1157-1226

 Nicholas Pumfrey and Others, 'The Doctrine Of Equivalents In Various Patent Regimes-
Does Anybody Have It Right?' [2009] 11(1) Yale Journal Law Of Technology 261-308

 Ronald D Hatman, 'Doctrine of Equivalents' [1988] 70(8) Journal of Patent and Trademark
Society 511-557

 John R Allison and Mark A Lemley, 'The (Unnoticed) Demise of the Doctrine of
Equivalents' [2007] 59(4) Stanford Law Review 955-984.

 Martin J Adelman and Gary L Francione, 'The Doctrine of Equivalents in Patent Law:
Questions That Pennwalt Did Not Answer' [1989] 137(3) University of Pennsylvania Law
Review 673-729.
 Jerry A Riedinger, 'Intellectual Property Law: The Future of the Doctrine of Equivalents'
[2003] 20(2) GPSolo 40-41.

 Ronald D Hantman, 'Doctrine of Equivalents' [1988] 70(8) Journal of the Patent and
Trademark Office Society 511-557

 Darcy August Paul, ‘The Judicial Doctrine of Equivalents’ [2003] 17(1) Harvard Journal

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 of Law & Technology 247-282

 Harold C. Wegner, ‘The Future of the Doctrine of Equivalents’ [1998] 26(3) AIPLA
Quarterly Journals 277-380

 Daniel H. Shulman, ‘Vitiating the Doctrine of Equivalents: A New Patent Law Doctrine’
[2003] 12(3) Federal Circuit Bar Journal 457-488

 Joseph S Cianfrani, ‘An Economic Analysis of the Doctrine of Equivalents’ [1997] 1

Virginia Journal of Law & Technology 1-26

 Lee Petherbridge, ‘On the Decline of the Doctrine of Equivalents’ [2010] 31(4) Cardozo
Law Review 1371-1406

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