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Weekly UpdatesAn article by James L. Harris, Counsel to the Patent, Trademark and Copyright Subcommittee that prepared the drafts of the 1952 Act, similarly stated that "[t]o provide for the proper interpretation of the claims commensurate with the invention, the doctrine of equivalents is specifically mentioned in the section." (46)
Thus, [section] 112, paragraph 6, came into being very shortly after the Graver Tank opinion had reaffirmed the doctrine of equivalents, which was the only form of equivalence in existence at the time. Additionally, the section sought to solve the Halliburton problem by relying on this doctrine. (47) In 1997, even the Supreme Court attributed this role to [section] 112, paragraph 6, stating, "This is an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements." (48)
V. LIFE UNDER TWO DIFFERENT STANDARDS
It is difficult to assess the practical effect of the judicial creation of two different standards of equivalence, one for [section] 112, paragraph 6, and a different one under the traditional doctrine of equivalents. Actually, [section] 112, paragraph 6, has been construed to bring into play two standards, one for literal infringement and another if literal infringement is not established. (49) Also, the doctrine of equivalents rather than [section] 112, paragraph 6, equivalence applies in situations where the accused device does not employ precisely the same function claimed in the patent. (50) One obvious effect of this state of the law is confusion.
It is often a metaphysical exercise to determine whether two elements are "equivalent" in patent law. This is doubly perplexing when there are two different equivalence standards. Moreover, when both standards may apply seriatim to a means-plus-function clause, the fact finder is truly in Wonderland.
The genesis of two different equivalence standards appears to be the Federal Circuit opinion in D.M.I., Inc. v. Deere & Co., (51) where the court stated:
This passage does not identify the factors to be considered in assessing whether the structure in the accused device is equivalent to the corresponding structure under [section] 112, paragraph 6. It does note, however, that this equivalence operates differently from the traditional doctrine of equivalents because the latter is applied to "the entirety of the accused device or process." (53) The Supreme Court had no difficulty, however, in applying the doctrine of equivalents to an individual means in Continental Paper Bag. (54) Also, more recently, the Supreme Court eliminated this difference by holding that the doctrine of equivalents must be applied on an element-by-element basis. (55)
D.M.I. was followed by Palumbo v. Don-Joy Co., (56) where the Federal Circuit noted the proximity in time of the 1952 Act to the Supreme Court's doctrine of equivalents opinion in Graver Tank. (57) The court also noted that both of the Federal Circuit's predecessor courts had applied the Graver Tank concept of equivalents to means-plus-function clauses under [section] 112, paragraph 6, (58) which should have compelled a similar result in the Federal Circuit, absent an en banc ruling to the contrary. (59) The court found, however, that [section] 112, paragraph 6, equivalence differs from the doctrine of equivalents in that [section] 112, paragraph 6, equivalence may lead only to a finding of literal infringement. (60) As previously noted, no support for this reading can be found in the statute.
Thereafter, in Valmont Industries, Inc. v. Reinke Manufacturing Co., (61) the Federal Circuit stated that [section] 112, paragraph 6, and the doctrine of equivalents "have separate origins and purposes," (62) but there is no explanation why the difference in origin and purpose calls for a new mode of equivalence. Nor is there any apparent reason why this should be the case. The court also stated, perhaps as an illustration of the different purposes, that [section] 112, paragraph 6, limits a claim, while the doctrine of equivalents expands it. (63) However, as the Supreme Court discussed in Graver Tank and mentioned in Warner-Jenkinson, these different purposes are both roles of the doctrine of equivalents. (64)
The court followed the same path in Alpex Computer Corp. v. Nintendo, (65) stating that the two forms of equivalence are characterized by separate origins, purposes and applications. (66) Again, no effort was made to demonstrate why these factors might compel a new form of equivalence, rather than the traditional doctrine of equivalents. The only further explanation in Alpex is an observation that [section] 112, paragraph 6, involves a comparison to the structure that corresponds to the claimed means, while the doctrine of equivalents involves a comparison of the entire claim with the accused device. (67) As noted, this difference ignores the Supreme Court's ruling in Continental and has clearly been eliminated by the Supreme Court's ruling in Warner-Jenkinson. (68)
Having embarked on a path of two different equivalence standards, it became necessary to determine not only the meaning of each standard and how the standards differ, but whether the traditional doctrine of equivalents always applies when [section] 112, paragraph 6, equivalence fails. For a statute that was heralded as being clear on its face, it may seem strange that the profession had no idea what tack the courts would take on these basic questions for some forty years. Nor has the tack been a consistent one.
Finally, in 1997, as already noted, the Supreme Court observed in Warner-Jenkinson that [section] 112, paragraph 6, is an application of the doctrine of equivalents. (69) This would appear to require that the doctrine of equivalents be applied to means-plus-function limitations, as well as, when appropriate, to any other limitations in a claim. Rather than simply follow the Supreme Court's view, however, the Federal Circuit cases seem to attempt to reconcile that view with the entrenched Federal Circuit view that equivalence under [section] 112, paragraph 6, is inapplicable when no element in the accused device performs the precise function claimed.
In 1998, in Dawn Equipment, where a jury found equivalence under the doctrine of equivalents after finding no equivalence under [section] 112, paragraph 6, Judge Plager asserted that the difference between the two notions of equivalence defied understanding and questioned whether any juror could sensibly discern the difference. (70) Judge Newman responded that the difference between these equivalences has long been understood by practitioners of patent law, (71) which has not been this author's experience. Judge Michel, in turn, questioned whether adding further protection to a means-plus-function clause through the use of the traditional doctrine of equivalents is not contrary to the intent of [section] 112, paragraph 6. (72) Indeed, a single equivalence standard appears to have been the intent of Congress from the outset, but the standard should be and since 1952 should have been the traditional doctrine of equivalents.
In Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., (73) the Federal Circuit held that only in the case of later-developed technologies should means-plus-function clauses be accorded application of the traditional doctrine of equivalents when they fail to satisfy the equivalence standard under [section] 112, paragraph 6. (74) Then, in Interactive Pictures Corp. v. Infinite Pictures, Inc., (75) the court held that, when literal infringement of a means-plus-function clause is found to be absent based solely on the absence of an identical function, it is appropriate to proceed under the doctrine of equivalents, even though the accused device may not involve after-developed technology. (76)
In Odetics, Inc. v. Storage Technology Corp., (77) the Federal Circuit applied a three-part test, often employed in application of the doctrine of equivalents, to [section] 112, paragraph 6, equivalence after finding identity as to the claimed function. (78) The court stated that equivalence under [section] 112, paragraph 6, is narrower than the doctrine of equivalents, because it requires an identity of function. (79) If, however, the only difference between the standards concerns the identity or non-identity of the functions being compared, then there is no difference. A court would either find identity of the functions and apply the equivalence standard of [section] 112, paragraph 6, or find no such identity and apply the same standard under the doctrine of equivalents.
A later case, IMS Technology, Inc. v. HAAS Automation, Inc., explained that [section] 112, paragraph 6, merely requires that the structure in the patent and the accused structure be equivalent, not that they be "structurally equivalent." (80) According to this ruling, structural equivalence is not the same as equivalence of structure, since it focuses more on the structural aspects than the operational aspects of the structures. (81) The court stated that [section] 112, paragraph 6, "does not mandate an equivalency comparison that necessarily focuses heavily or exclusively on physical structure." (82)
Thus, through many twists and turns, the courts are apparently slowly moving toward a [section] 112, paragraph 6, equivalence that approaches the doctrine of equivalents, but much confusion remains. Moreover, these twists and turns all stemmed from the application of a single sentence that supposedly was and in fact is clear on its face. However, it remains for the courts to disavow the judicially-created appendages that limit this section to a determination of "literal" infringement and that hold its "equivalents" provision applicable only when there is an identity of function. The courts should return to the clear meaning of [section] 112, paragraph 6, and hold that the "equivalents" test in this paragraph is the traditional doctrine of equivalents, as Congress intended. Also, as Congress mandated, this statutory provision must be used to determine how the means-plus-function clauses in patent claims are construed--independently of what the allegedly infringing product may be.
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