Wilson Sporting Goods & the Hypothetical Patent Claim
Total Page：16
File Type：pdf, Size：1020Kb
WILSON SPORTING GOODS & THE HYPOTHETICAL PATENT CLAIM: A SORELY NEEDED GUIDELINE THAT SHOULD BE APPLIED WITH DISCRETION I. INTRODUCTION A United States patent represents a limited monopoly over an invention,' to the extent that it prevents others from making, using, or selling the invention in the United States for the patent's term. 2 A patent document 3 consists generally of a description of the inventor's preferred mode of making or using the invention and a set of one or more claims setting forth the invention with a sufficient degree of particularity. 4 When the holder of the patent rights, the patentee, makes a claim of patent infringement, a court will center its infringement determination on the language of the claim.' Patent infringement today takes one of two forms. First, when an accused device includes each and every element of a patent 1. The monopoly granted under United States patent law is a reverse monopoly, in that a patent grant does not give the patentee the exclusive right to affirmatively make, use, or sell his patented invention. Rather, it gives the patentee the right to exclude others from making, using, or selling the invention. 35 U.S.C. § 271 (1988). This effectively means that the United States Patent and Trademark Office does not guarantee the validity of its patent grants. For instance, a prior patent may surface well after a patent has been granted and invalidate or limit the subsequent patent. 35 U.S.C. §§ 301-307 (1988). 2. The patent monopoly is explicitly sanctioned by the Constitution, which provides in part: "Congress shall have the power ... [t]o promote the Progress of Science and Useful Arts, by securing for limited times to Authors and Inventors the exclusive right to their respective Writings and Discoveries." U.S. CONST. art. I, § 8, cl. 8. 3. The requirement of a writing goes back to the first patent act, which generally required a description of the invention with sufficient particularity to allow a person skilled in the art to distinguish the patented invention from related matter. Patent Act of 1790, ch. 7, § 2, 1 Stat. 109-12. 4. 37 C.F.R. § 1.51 (1991). 5. 35 U.S.C. § 271 (1988). THE WAYNE LAW REVIEW [Vol. 39:139 claim, a case for literal infringement is made out.6 Second, if the literal infringement test fails, a claimant may assert infringement under the judicially created Doctrine of Equivalents. Under the Doctrine of Equivalents, a party is entitled to prevent others from making, using, or selling the invention as claimed in the patent at issue and equivalents thereof.7 A point of difficulty in the appli- cation of the Doctrine of Equivalents is the extent that it allows a patentee to expand the scope of his patent. The extent of this expansion, often called the "range of equivalents," must be de- termined "against the context of the patent, the prior art, and the particular circumstances of the case." 8 Recently, in Wilson Sporting Goods Co. v. David Geoffrey & Associates,9 a three judge panel of the Court of Appeals for the Federal Circuit' ° set forth new guidelines for the application of the infringement test under the Doctrine of Equivalents. In general, the court provided a guideline to aid in determining the range of equivalents under the Doctrine, vis-a-vis the prior art." Further- more, the court placed the burden of proof on the patentee to show that its desired range of equivalents would not cover any 6. This is infringement under 35 U.S.C. § 271, which is the only explicit statutory basis for infringement. The accused device may have more elements, or "limitations," than those set forth in the patent and still infringe. This is reflected in the use of the open-ended expression "comprising" or its equivalent in patent claims. For example, the typical patent is described as comprising a number of limitations, which means it includes every one of those limitations, and possibly more. Despite this open-ended terminology, literal infringement of the claims is the exception. More often, if infringement is found, it is under the Doctrine of Equivalents. For a recent decision by the Court of Appeals for the Federal Circuit in which a claim for literal infringement was affirmed, see SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107 (Fed. Cir. 1985) (en banc). 7. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). 8. Id. at 609. 9. 904 F.2d 677 (Fed. Cir. 1990), cert. denied, Ill S. Ct. 537 (1990). 10. The Federal Circuit was created under the Federal Courts Improvement Act of 1982, Pub. L. No. 97-164, 96 Stat. 25 (codified as amended 28 U.S.C. § 41 (1988)), in large part to centrally oversee the federal district courts in patent matters. This special charter of the Federal Circuit, along with the technical nature of most patent cases, substantially discourages United States Supreme Court review of Federal Circuit patent holdings. Accordingly, the Federal Circuit is generally recognized as a central authority over, among other things, the development of the equitable Doctrine of Equivalents. Judge Avern Cohn, Remarks at the Wayne State Univ. Patent Seminar (Jan. 28, 1990). 11. 904 F.2d at 684-85. 19921 HYPOTHETICAL PATENT CLAIMS prior art. 12 After providing the context for the Wilson decision, this Note will describe the court's new approach and show that, if applied judiciously, the analysis can provide valuable insight into a difficult area of patent infringement litigation. II. BACKGROUND The Doctrine of Equivalents finds its roots in early patent case law. Although today the Doctrine is centered on the equivalency of patent claims, the general concept of equivalency between accused and patented matter existed well before the United States Patent and Trademark Office (PTO) even required claims in pat- ents. 13 The term "Doctrine of Equivalents" was coined in the early case McCormick v. Talcott, 4 in which the Court stated that "[the original inventor] will have [the] right to treat as infringers all who make [the machine] operating on the same principle, and perform- ing the same function by analogous means or equivalent combi- nations, even though the infringing machine may be an improvement of the original ...."I' The Doctrine of Equivalents thus enabled a patent monopoly to effectively extend beyond the literal structure disclosed in the patent. Under the Doctrine of Equivalents today, the accused devi,.e must, as a whole, perform substantially the same function to obtain the same result.' 6 These two requirements are, however, i2. Id. at 685. 13. See Evans v. Eaton, 20 U.S. 161, 7 Wheat. 356 (1822). In Evans, the Court for the first time looked into the substantive issues behind the patent laws, the Patent Act of 1790, ch. 7, 1 Stat. 109-12, and the Patent Act of 1793, ch. 11, 1 Stat. 318-23. In that case, the charge to the jury described the test for equivalency between machines as "if the two machines [are] substantially the same, and operate in the same manner, to produce the same result, though they may differ in form, proportions, or utility, they are the same in principle." 20 U.S. at 164, 7 Wheat. at 361. The Supreme Court reaffirmed the principles of the Evans jury charge in Winans v. Denmead, 56 U.S. 349, 15 How. 330 (1853). It was not until the Patent Act of 1836, ch. 357, § 6, 5 Stat. 117, that the principle of "claiming an invention" was introduced into U.S. patent law. Moreover, not until the Patent Act of 1870, ch. 230, 16 Stat. 198-217, and its progeny in the Supreme Court, were claims truly recognized as the principle source for the definition of a Patent's scope. See, e.g., Burns v. Meyer, 100 U.S. 671 (1879); Mahn v. Hardwood, 112 U.S. 354 (1884). 14. 61 U.S. (20 How.) 402 (1857). 15. Id. at 405. 16. Pennwalt Corp. v. Durand-Wayland, 833 F.2d 931, 934 (Fed. Cir. 1987). THE WAYNE LAW REVIEW [Vol. 39:139 not usually at issue in patent infringement litigation.' 7 Typically, a third requirement is the key issue and is most heavily challenged in patent infringement litigation. This requirement is that the accused device perform the function in the same way. The United States Supreme Court clarified this test in the landmark case of Graver Tank & Mfg. Co. v. Linde Air Products Co.' An issue of recent controversy under the tripartite test is the precise level on which to apply the test. To resolve this issue, the Federal Court of Appeals sat en banc in Pennwalt Corp. v. Durand-Wayland.9 The court implied that the "same way" part of the test should fail if, for each claimed element in the patentee's invention, there was not a tripartite test "equivalent" element in the accused device. 20 However, more recent decisions by the Federal Circuit show a retreat from this rule of strict correspondence, stating that individual elements of an accused device may be aggregated so as to be covered by the claimed invention without 2 loss of equivalency. ' A central, yet historically controversial, issue underlying the Doctrine of Equivalents is the breadth or range of allowable equivalents. 22 A popular means for establishing the range of equi- 17. The proximity of the patented and accused devices usually is so close that it would be very difficult to contest that they perform substantially the same function to achieve the same result. For instance, a cursory review of adversaries in infringement litigation shows that a substantial majority of the disputes are between commercial competitors, who make products and processes that perform similar functions to obtain common results.