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Weekly Updates(65.) Alpex Computer Corp. v. Nintendo Co., 102 F.3d 1214 (Fed. Cir. 1996).
(66.) Id. at 1222.
(67.) Id.
(68.) See 520 U.S. at 27-28.
(69.) Id.
(70.) Dawn Equip. Co. v. Ky. Farms Inc., 140 F.3d 1009, 1020 (Fed. Cir. 1998) (Plager, J., additional views).
(71.) Id. at 1022 (Newman, J., additional views). From 1952 to 1985 the patent bar had no inkling that [section] 112, paragraph 6, meant anything other than the doctrine of equivalents. See supra pp. 7-8. Thereafter until 1997 the nature of the two equivalences was in flux. See supra pp. 9-11. After Warner-Jenkinson, it appeared that there was only one equivalence standard, namely that under the doctrine of equivalents, rather than two standards applied seriatim. See supra pp. 11-12. As such, there would be no need for exploring or considering two standards sequentially, for holding that [section] 112, paragraph 6, concerns only literal infringement, or for holding that a different rule applies when an accused device fails to perform precisely the function claimed. This, however, remains unclear.
(72.) Dawn Equip. Co., 140 F.3d at 1023 (Michel, J., additional views).
(73.) 145 F.3d 1303 (Fed. Cir. 1998).
(74.) See id. at 1310-11.
(75.) 274 F.3d 1371 (Fed. Cir. 2001).
(76.) See id. at 1381-83; see also Utah Med. Prods., Inc. v. Graphic Controls Corp., 350 F.3d 1376, 1383 (Fed. Cir. 2003). The holdings in these cases can have validity, however, only when the technology that was not after-developed was also not foreseeable, since the Supreme Court has precluded resort to the doctrine of equivalents when the accused device was foreseeable at the time the claims were filed. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740-41 (2002).
(77.) 185 F.3d 1259 (Fed. Cir. 1999).
(78.) Id. at 1267. In applying the three-part test, a court considers whether "the 'function, way, or result' of the assertedly substitute structure is substantially different from that described by the claim limiation." Id. (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39-40 (1997)).
(79.) Id.; see also McNulty v. Taser Int'l, Inc., 106 F. App'x 15, 21 (Fed. Cir. 2004) (equivalence under the doctrine differs "only in that the identical function is not required"); Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed. Cir. 2000) ("A key feature that distinguishes 'equivalents' under section 112, paragraph 6 and 'equivalents' under the doctrine of equivalents is that section 112, paragraph 6 equivalents must perform the identical function of the disclosed structure ... while equivalents under the doctrine of equivalents need only perform a substantially similar function." (citations omitted)); Cortland Line Co., v. Orvis Co., 203 F.3d 1351, 1359 (Fed. Cir. 2000); Koenig v. Fugro-McClelland (Southwest), Inc., Nos. 99-1252 & 99-1253, 2000 WL 723826, at *7 (Fed. Cir. June 2, 2000) ("The difference between the analysis of section 112, [paragraph] 6 statutory equivalents and the doctrine of equivalents as applied to section 112, [paragraph] 6 claim elements is simply that section 112, [paragraph] 6 statutory equivalence requires identity of function, while the doctrine of equivalents requires a substantially similar function.").
(80.) 206 F.3d 1422, 1436 (Fed. Cir. 2000). The court restated the view that performing the same function as claimed is required by the statute, but no such requirement appears in the statute. Id.
(81.) Id.
(82.) Id.
(83.) To be sure, applying the doctrine of equivalents rather than a creative version of equivalence will not eliminate all of the mystery that attends a determination of equivalence. It will, however, eliminate some of the confusion that still persists more than fifty years after a seemingly clear provision was enacted by Congress. See 35 U.S.C. [section] 112, para. 6.
(84.) See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 (1997) (referring to Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946)).
(85.) See 35 U.S.C. [section] 112, para. 6.
(86.) See, e.g., In re Fuetterer, 319 F.2d 259, 264 n. 11 (C.C.P.A. 1963).
(87.) Quaere whether construing this application of the doctrine of equivalents, which was adopted by Congress in 1952, would effectively trump the Supreme Court's ruling in Festo Corp. v. Shoketsu Kinzoku Kogvo Kabushiki Co., 535 U.S. 722 (2002), insofar as it holds that the doctrine of equivalents is applicable only to non-foreseeable alternatives.
CHARLES W. BRADLEY, Of Counsel to Rader Fishman & Grauer, PLLC.
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