The Federal Circuit addressed the doctrine of equivalents recently in the case of Adams Respiratory Therapeutics, Inc. et al. v. Perrigo Co. et al., 2010-1246 (Fed. Cir. Aug. 5, 2010). One issue facing the panel was whether the term “at least 3500 hr*ng/mL” can be interpreted under the doctrine of equivalents to be a value less than 3500 hr*ng/mL.
The panel chose to read the language “at least 3500 hr*ng/mL” as the simplest way of expressing a range that is “greater than or equal to 3500 hr*ng/mL.” See Adams at 18. However, one might make the alternative argument that “at least 3500 hr*ng/mL” is actually the simplest way of expressing a range that is “not less than 3500 hr*ng/mL.” Moreover, this would comport with the Patent Office’s preference for avoiding the use of negative limitations in claims. If such an interpretation is adopted for the “at least 3500 hr*ng/mL” language, the “specific exclusion principle” might serve to limit application of the doctrine of equivalents and require a different outcome than that reached by the panel.
For background, the Adams panel concluded:
We previously determined that the doctrine of equivalents may apply to claims containing specific numeric ranges. See Philips, 505 F.3d at 1378 (concluding that “resort to the doctrine of equivalents is not foreclosed with respect to the claimed concentration range”); Abbott, 287 F.3d at 1107-08 (”The fact that a claim recites numeric ranges does not, by itself, preclude Abbott from relying on the doctrine of equivalents.”); Jeneric/Pentron, Inc. v. Dillon Co., 205 F.3d 1377, 1383 (Fed. Cir. 2000) (noting that “the district court will have the opportunity to adjudicate fully the merits of infringement under the doctrine of equivalents” of a claim to composition comprising specific weight percentages of various oxides). In Philips, we addressed a claim requiring the presence of a halogen “in a quantity between 10-6 and 10-4 umol/mm3,” which we construed as “between 1 × 10-6 and 1 × 10-4 umol/mm3.” 505 F.3d at 1376. We rejected the argument that applying the doctrine of equivalents would vitiate this claim limitation because “[a] reasonable juror could make a finding that a quantity of halogen outside that [claimed] range is insubstantially different from a quantity within that range without `ignor[ing] a material limitation’ of the patent claim.” Id. at 1379. We thus concluded that the doctrine of equivalents was not foreclosed with respect to the claimed range. Id. at 1380. Similarly, in Abbott, we concluded that the doctrine of equivalents could apply to a claim requiring a 68.8% to 94.5% by weight of a phospholipid. 287 F.3d at 1107-08. Abbott’s expert testified that 95% phospholipid “would be exactly the same as the claimed phospholipid.” Id. at 1107. We concluded that “[a]lthough this testimony expands the upper limit beyond the range literally recited by the claim, it does not eliminate the upper limit altogether.” Id. We therefore concluded that infringement under the doctrine of equivalents would not eliminate the upper limit of the phospholipid claim. Id. “The fact that a claim recites numeric ranges does not, by itself, preclude Abbott from relying on the doctrine of equivalents.” Id. at 1107-08. Finally, in Jeneric, the district court denied Jeneric’s request for a preliminary injunction, concluding that Jeneric failed to establish a likelihood of success on infringement under the doctrine of equivalents. 205 F.3d at 1383. Although we affirmed the court’s denial of Jeneric’s request for a preliminary injunction, we indicated that the record on infringement under the doctrine of equivalents was premature. Id. at 1384. We noted that the accused composition contained 0.041% of lithium oxide, which fell outside the claimed range of 0.5% to 3%. Id. We concluded that “[a] full record will show whether that difference is insubstantial.” Id. We are bound by these cases which hold that the doctrine of equivalents can apply to a range—a numerical limitation in a claim. The mere existence of a numerical value or range in a claim, absent more limiting language in the intrinsic record, does not preclude application of the doctrine of equivalents.
Adams Respiratory Therapeutics, Inc. et al. v. Perrigo Co. et al., slip op. at 17-18.
This explanation by the panel is logical based on the cases they rely upon. But, other cases would suggest that a different result could also be reached. For example, the panel’s decision does not address the Athletic Alternatives, Inc. v. Prince Mfg., Inc. case. And, the panel’s decision does not address the “specific exclusion principle” that is a corollary to the All Elements Rule.
Athletic Alternatives, Inc. v. Prince Mfg., Inc.
In the Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573 (Fed. Cir. 1996) case, a case that concerned the stringing of tennis racquets, the Federal Circuit construed a claim term to mean “at least three values”:
We conclude that Claim 1 of the ‘097 patent includes the limitation that the splay-creating string end offset distance take on at least three values, i.e., a minimum, a maximum, and at least one intermediate value. We thus affirm the district court’s conclusion that Claim 1 does not literally read on the Vortex racket.
Athletic Alternatives, Inc. v. Prince Mfg., Inc., at 1581.
In applying the doctrine of equivalents to this term, the court indicated that “at least three” specifically excluded two and was thus barred by the doctrine of equivalents:
As a corollary to the “all limitations” rule discussed above, we have held that “the concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims.” Dolly, Inc., 16 F.3d at 400, 29 USPQ2d at 1771. Applying this formulation to the undisputed facts of the instant case, we conclude that the intermediate offset distance required by the properly construed claim cannot have an equivalent in a racket with only two offset distances. In other words, the two-distance splayed string system was “specifically excluded from the scope of the claims.” Id. To hold Prince liable for infringement of Claim 1 of the ‘097 patent for its production and sale of the Vortex racket would thus run afoul of our holding in Dolly, Inc. and the “all limitations” rule from which it derives. As a result, AAI is precluded as a matter of law from successfully asserting that the Vortex racket infringes Claim 1 of the ‘097 patent under the doctrine of equivalents.
Athletic Alternatives, Inc. v. Prince Mfg., Inc., at 1583.
Quite succinctly, the Athletic Alternatives majority concluded that the language “at least three” excluded “at least two.”
The Specific Exclusion Principle
The “specific exclusion principle” was explained in the Scimed v. Advanced Cardiovascular, 242 F.3d 1337 (Fed. Cir. 2001) case:
A particular structure can be deemed outside the reach of the doctrine of equivalents because that structure is clearly excluded from the claims whether the exclusion is express or implied. In Moore, U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091, 56 USPQ2d 1225 (Fed.Cir.2000), for example, the court considered a claim to a mailer-type business form in which the longitudinal strips of adhesive extend “the majority of the lengths” of the longitudinal margins of the form. The patentee argued that the accused form, in which the longitudinal strips of adhesive extended a minority of the length of the longitudinal margin of the form, infringed under the doctrine of equivalents. The court rejected the argument, holding that “it would defy logic to conclude that a minority — the very antithesis of a majority — could be insubstantially different from a claim limitation requiring a majority, and no reasonable juror could find otherwise.” 229 F.3d at 1106, 56 USPQ2d at 1236. Similarly, in Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547, 42 USPQ2d 1737 (Fed.Cir.1997), the patent claimed a process that included crystallizing a particular substance at high temperature “under an inert gas atmosphere.” The patentee argued that certain of the accused processes, which used “heated air” rather than “an inert gas atmosphere” infringed under the doctrine of equivalents. The court rejected that argument, explaining that “the claim language specifically excludes reactive gases — such as `heated air’ — from the scope of the claims” and in light of that specific exclusion, the accused processes could not infringe under the doctrine of equivalents. 114 F.3d at 1561, 42 USPQ2d at 1747. In each of these cases, by defining the claim in a way that clearly excluded certain subject matter, the patent implicitly disclaimed the subject matter that was excluded and thereby barred the patentee from asserting infringement under the doctrine of equivalents.
The court did effectively the same thing in Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420, 44 USPQ2d 1103 (Fed.Cir.1997). In that case, the claim was to a syringe disposal container having an elongated slot at the top of the container body and a “first constriction extending over said slot.” Although those limitations did not literally read on the accused device, the patentee argued that the device infringed under the doctrine of equivalents. The court rejected that argument, noting that the claim
defines a relatively simple structural device. No subtlety of language or complexity of the technology, nor any subsequent change in the state of the art, such as later-developed technology, obfuscated the significance of this limitation at the time of its incorporation into the claim…. If Sage desired broad patent protection for any container that performed a function similar to its claimed container, it could have sought claims with fewer structural encumbrances…. [A]s between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure.
126 F.3d at 1425, 44 USPQ2d at 1107. Thus, the court determined that because the scope of the claim was limited in a way that plainly and necessarily excluded a structural feature that was the opposite of the one recited in the claim, that different structure could not be brought within the scope of patent protection through the doctrine of equivalents. See Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1317, 47 USPQ2d 1272, 1277 (Fed.Cir.1998) (subject matter is “specifically excluded” from coverage under the doctrine of equivalents if its inclusion is “inconsistent with the language of the claim”).
Finally, in Athletic Alternatives, Inc. v. Prince Manufacturing, Inc., 73 F.3d 1573, 37 USPQ2d 1365 (Fed.Cir.1996), the court addressed a claim directed to a system for stringing tennis rackets with splayed strings. The court construed the claim to require that the stringing system produce rackets with at least three different splay-creating offset distances for the strings. Having construed the claim in that manner, the court held that, for purposes of the doctrine of equivalents, “the properly construed claim cannot have an equivalent in a racket with only two offset distances,” i.e., the two-distance splayed string system was “specifically excluded from the scope of the claims.” 73 F.3d at 1582, 37 USPQ2d at 1373 (quoting Dolly, 16 F.3d at 400, 29 USPQ2d at 1771). See also Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d 1408, 1416, 54 USPQ2d 1141, 1147 (Fed.Cir.2000) (”[N]o reasonable jury could find that a stop which extends to the peripheral edge of a disk is equivalent to one that is `substantially inward’ of the very same disk.”); Wiener v. NEC Elecs., Inc., 102 F.3d 534, 541, 41 USPQ2d 1023, 1029 (Fed.Cir.1996) (doctrine of equivalents does not extend to an accused device in which “the required structure is specifically excluded” by the patent).
The principle articulated in these cases is akin to the familiar rule that the doctrine of equivalents cannot be employed in a manner that wholly vitiates a claim limitation. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29-30, 117 S.Ct. 1040, 137 L.Ed.2d 146 1347*1347 (1997); Athletic Alternatives, 73 F.3d at 1582, 37 USPQ2d at 1373 (”specific exclusion” principle is “a corollary to the `all limitations’ rule”). Thus, if a patent states that the claimed device must be “non-metallic,” the patentee cannot assert the patent against a metallic device on the ground that a metallic device is equivalent to a non-metallic device. The unavailability of the doctrine of equivalents could be explained either as the product of an impermissible vitiation of the “non-metallic” claim limitation, or as the product of a clear and binding statement to the public that metallic structures are excluded from the protection of the patent. As the court made clear in Sage, the foreclosure of reliance on the doctrine of equivalents in such a case depends on whether the patent clearly excludes the asserted equivalent structure, either implicitly or explicitly.
In that respect, this case is an even stronger one for not applying the doctrine of equivalents than cases such as Dolly, Sage, Eastman Kodak, Moore, and Athletic Alternatives. Each of the SciMed patents specifically recognized and disclaimed the dual lumen structure, making clear that the patentee regarded the dual lumen configuration as significantly inferior to the coaxial lumen configuration used in the invention. Where such an explicit disclaimer is present, the principles of those cases apply a fortiori, and the patentee cannot be allowed to recapture the excluded subject matter under the doctrine of equivalents without undermining the notice function of the patent. As the court observed in Sage, the patentee had an opportunity to draft the patent in a way that would make clear that dual lumens as well as coaxial lumens were within the scope of the invention, but the patentee did just the opposite, leaving competitors and the public to draw the reasonable conclusion that the patentee was not seeking patent protection for catheters that used a dual lumen configuration. Under these circumstances, the district court was justified in concluding that a reasonable jury could not find that the accused devices infringe the SciMed patents under the doctrine of equivalents.
Scimed at 1345-47.
More recently in Trading Technologies Intl., Inc. v. Espeed et al., 595 F.3d 1340 (Fed. Cir. 2010) the Federal Circuit cited the Scimed case stating:
The all-elements rule requires this court to consider “the totality of circumstances of each case and determine whether the alleged equivalent can be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent limitation meaningless.” Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1359 (Fed.Cir.2005). In other words, this rule empowers a court to perform again the standard “insubstantial variation” test for equivalency, but this time as a question of law. Claim vitiation applies when there is a “clear, substantial difference or a difference in kind” between the claim limitation and the accused product. Id. at 1360. It does not apply when there is a “subtle difference in degree.” Id.
In this case, the trial court considered whether an occasional automatic re-centering of the price axis in Dual Dynamic is equivalent to “never chang[ing] positions unless by manual re-centering or re-positioning.” The court determined that the automatic re-centering would render the claim limitation “static”—synonymous with only manual re-centering—meaningless. The trial court’s construction of the claim limitation “static” specifically excludes any automatic re-centering. See SciMed Life Sys. v. Advanced Cardiovacsular Sys., 242 F.3d 1337, 1347 (Fed.Cir.2001) (”[I]f a patent states that the claimed device must be `non-metallic,’ the patentee cannot assert the patent against a metallic device on the ground that a metallic device is equivalent to a non-metallic device.”).
Thus, if one were to interpret the claim language “at least 3500 hr*ng/mL” to mean “not less than 3500 hr*ng/mL,” the specific exclusion principle would seem to prevent the patent from being expanded under the DOE to cover the range that is less than 3500 hr*ng/mL – just as the Scimed case counsels against interpreting non-metallic to be expanded to include metallic, and the Moore USA case counsels against majority being expanded to include minority, and Eastern Kodak counsels against inert being expanded to include non-inert .
The famous language from Sage Products rings true when applied to the use of the claim language “at least”:
[A]s between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure.