INTELLECTUAL PROPERTY LAW: THE FUTURE OF THE DOCTRINE OF EQUIVALENTS

Author(s): Jerry A. Riedinger

Source: GPSolo, Vol. 20, No. 2, The Best Articles Published by the ABA (MARCH 2003), pp.
40-41
Published by: American Bar Association
Stable URL: https://www.jstor.org/stable/23672324
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 THE
THEFUTURE OF THE
FUTURE
DOCTRINE OF EQUIVALENTSOF T

ByBy
Jerry A. Riedinger
Jerry A. Riedinger

rounds the doctrine of invaluable part of the patent trine within relatively narrow limits,
equivalents. The primary owner's offensive. Third, and most significant, panels
question asks what form Procedurally, the doctrine helps hostile to equivalents will use the

A swarm of questions sur- short one, making equivalents an Johnson & Johnston will cage the doc
the doctrine will take. Re- preclude dismissal of an infringe- broad reach of the "all-limitations rule"
lated questions abound: ment claim after an adverse claim to strike the doctrine of equivalents on
Will the Federal Circuit induce the construction. Claim construction, a case-by-case basis,
doctrine's demise once and for all? being an issue of law, is readily de- The "all-limitations rule" will be
Will the Supreme Court, yet again, cided by a court on summary judg- the lead defense to equivalents
reverse Federal Circuit equivalents ment. Because the nature of the claims. The power of the all-limitations
precedent? Will patent owners grow accused product or process is often rule to defeat equivalents assertions
tired of fighting uphill and abandon uncontroverted, summary judg- originates with the breadth of the lan
their efforts to assert equivalents? ment is the grim reaper of patent guage used to describe the rule in Fed
What defense to equivalents will claims. With an equivalents asser- eral Circuit cases. Most cases applying
become the favorite of accused in- tion, however, summary judgment the mle rely on a simple statement of
fringers? of noninfringement is materially the broad principle that infringement
Patent owners will continue to more difficult, because equivalence cannot result from a proposed equiva
assert the doctrine of equivalents. is an issue of fact, not readily re- lent that would "entirely vitiate a claim
Patent owners are likely to assert solved on summary judgment. limitation." Other cases apply a similar
equivalents in virtually every case, Assertion of an equivalents formulation, which says that a pro
despite the marked decline in the doc- claim can also fundamentally posed equivalent is impermissible
trine's value, because the benefits con- change the dynamics of the in- when it would "write [the claim limita
tinue to dramatically outweigh the fringement debate. Without an as- tion at issue] out of the claims" or
drawbacks. The doctrine's benefits are sertion of equivalents, infringement when the patent owner attempts to
direct, uncomplicated, and so sub- arguments often descend into an treat a claim limitation as "irrelevant."
stantial that only the doctrine's out- abyss of hypertechnical word Yet such statements usually appear in
right abolition could halt its near uni- games. With equivalents in play, the Federal Circuit's analyses without
versal assertion. Regardless of the the patentee can focus its jury argu- further elaboration, so that the cases
particular semantic incantation pro- ments on broad equities, with par- provide little guidance regarding just
posed to render the patent "hollow ticular emphasis on the inventor's when a proposed equivalent would
and useless," the doctrine is often the contribution to the art. "vitiate" a claim limitation,
only legal assertion that allows the The Federal Circuit will try to The Federal Circuit has also de
plaintiff's infringement analysis to further narrow the doctrine of scribed frequently a "clear exclu
include common sense as an altema- equivalents. While the Supreme sion" principle to support rejection
tive to the defendant's wooden appli- Court has made clear that the contin- of proposed equivalents, whereby
cation of literal terms. ued existence of the doctrine is "settled "[a] particular structure can be
Many patent owners have been law," various panels of the Federal Cir- deemed outside the reach of the
surprised at the narrow claim inter- cuit will continue to announce narrow doctrine of equivalents because
pretations adopted by the courts in interpretations of the doctrine. At least that structure is clearly excluded
the 1990s. Absent equivalents, three narrowing principles continue to from the claims whether the exclu
such narrow constructions are exist. First, the Federal Circuit will con- sion is express or implied." The cir
often the death knell of the patent tinue to tweak prosecution history cumstances producing a "clear
owner's case. Assertion of the doc- estoppel, and panels hostile to equiva- exclusion" are not well defined. As
trine can give the patent owner a lents will narrowly apply the principles a result, every alleged equivalent
second infringement life, if only a ofFestoand Wamer-Jenkinson, especial- can be argued to have been "clear
——_ ly the "forseeability" factor, to the detri- ly excluded" from the literal lan
JerryA. Riedinger leads the patent ment of patent owners. Second, unless guage of the claim.
litigation group at Perkins Coie, LLP, reversed by the Supreme Coun, the The broad application of the all
in Seattle, Washington. "dedication to the public" principle of limitations rule, and especially the

40 GPSOLO March 2003

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Federal Circuit's apparent willing- point, accept certiorari to rewrite J{|0 power Of the
ness to consider every term (or even the Federal Circuit's application of |j|njfcrtjQus fllle
word) in a patent to be a "limita- the rule. The Court is likely to step
tion," means that the all-limitations in and define when a term or to defeat 6QUival6fltS
rule is a potentially devastating phrase is a limitation that must be aSS6l*tiOI1S Originates
weapon against equivalents. present literally. In anticipation of hrpnrltli nf thp
The Supreme Court will reverse that potential, the Federal Circuit
the Federal Circuit again. Two top- could decide to provide the defini- language USed tO
ics seem likely candidates for futther tion itself, and thereby restrict the d6SClib6 the rule in
Supreme Court review: the Johnson & all-encompassing nature of the all Federal Circuit cases.
Johnston "dedicated to the public" limitations rule. Until then, every
doctrine, and the all-limitations rule. all-limitations decision by the Fed
Of the two, the decision in Johnson & eral Circuit has a higher than usual
FOR MORE INFORMATION
Johnston seems most likely to produce potential for further Supreme
an early Supreme Court review. John- Court reversal, ABOUT THE INTELLECTUAL
son & Johnston resolved the apparent Patents will continue to be draft
PROPERTY LAW SECTION
conflict between two earlier Federal ed with equivalents in mind. As
Circuit decisions, Maxwell and YBM long as the doctrine exists in any form, -This article is an abridged and edited version of

Magnex. Maxwell ruled that subject prosecution counsel will continue try one tbat originally appeared on page 1 of IPL

matter in a patent that is disclosed but ing to optimize their client's rights by Newsletter, Fall 2002 (21:1).

- For more information or to obtain a copy of the

not literally claimed is dedicated to paying careful attention to the doc
periodical in which the full article appears, please call
the public and is therefore not avail- trine. Experienced lawyers also know
the ABA Service Center at 800/285-2221.
able as an equivalent. A year later, that patent law, and the doctrine of
- Website: www.abanet.org/intelprop/.
Maxwell was distinguished in YBM equivalents, has been in continuous
- Periodicals: IPL Chair's Bulletin, a monthly update of
Magnex, which held that Maxwell did flux since the Federal Circuit was cre
not state a broad rule of law and was ated in 1982. That flux means that the Section activities and timely intellectual property issues;

IPL Newsletter, a quarterly newsletter with current

instead limited to its particular facts. trends of today might be reversed in a
developments and Section news; Annual Report, a
The YBM Magnex decision therefore few years, breathing new life into the
comprehensive summary of committee activities.
allowed features that were disclosed doctrine. A failure to take reasonable
- Books and Other Recent Publications:
but not literally claimed to be an efforts to protect potential equivalents
Pamphlet series intended for clients, including
equivalent. Johnson & Johnston claims would not be in the best inter
Marketing Your Invention, Submitting an Idea, What
resolved the apparent conflict by ests of most patent applicants,
Is a Patent?, What is a Trademark?, and What is a
definitively rejecting the view of YBM That efforts will still be made to
Copyright? Extensive course materials in connection
Magnex and holding that a feature that protect equivalents does not, howev
with CLE programs are also available.
is described but not claimed in a er, mean that equivalents will be the
patent has been dedicated to the pub- focus of prosecution strategy Instead,
lie and cannot be an equivalent. elaborate prosecution strategies will mize the potential strength of their
The potential survival of Johnson replace many of the functions per- patents will expand their use of
& Johnston is questionable. Its un- formed by equivalents. Much effort means-plus-function claims to take
derlying reasoning was rejected by will be put into drafting patents with advantage of the greater resiliency of
the Supreme Court in Festo. With claims that are sufficiently broad and statutory equivalents, aitaim
the express adoption of the new sufficiently numerous to make equiv
"forseeability" test by the Supreme alents unnecessary Patent prosecu
Court in Festo, at least a modifica- tion lawyers also will make extensive
tion of the rule of Johnson & John- use of continuation practice, so that
ston seems likely. work can be conducted to develop
The all-limitations rule is also new claims in parallel patents that
an excellent candidate for Supreme clarify the broad literal scope of an in
Court action, if for no other reason vention. Moreover, the Federal Cir
than the rule's ability to eliminate cuit's attempts to narrow or eliminate
all claims based on equivalents. the doctrine of equivalents will neces
The breadth of the past Federal sarily be less effective against means
Circuit decisions applying the rule and step-plus-function claims, which
and the potential for more broad have an express basis in Section 112,
decisions suggests that the paragraph 6 of the patent statute.
Supreme Court might, at some Patent prosecutors seeking to maxi

GPSOLO March 2003 4?

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