United States v. Univis Lens Co.

316 U.S. 241 (1942)

Facts:

Univis Lens Company, was the owner of patents over multi-focal lenses.
It organized Univis Corporation. The Lens Company then acquired and now holds a majority
of the stock of the corporation.
The Lens Company transferred to it all its interest in the patents and trademarks presently
involved, and the Corporation then proceeded to set up the licensing system assailed.
The relevant features of the system are as follows
Corporation licenses the Lens Company to manufacture lens blanks and to sell them
to designated licensees of the Corporation, upon the Lens Company's payment to the
Corporation of an agreed royalty of 50 cents a pair.
The Corporation also issues three classes of licenses: (1) licenses to wholesalers
authorizing the licensees to purchase the blanks from the Lens Company, to finish
them by grinding and polishing, and to sell them to prescription licensees only at
prices fixed by the Corporation licensor.
(2) licenses to finishing retailers -- who purchase the blanks from the Lens
Company, grind and polish them, and adjust the lenses, in frames or supports, to the
eyes of the consumers -- contain similar provisions. The retailers are licensed to
purchase the blanks of the Lens Company and to sell them to their customers at
prices prescribed by the Corporation licensor.
(3) licenses to prescription retailers, who are without facilities for grinding and
finishing the lenses, but who prescribe and adjust glasses for their customers, are
signed both by the Corporation and a licensor wholesaler, and grant to the retailer a
"franchise to prescribe and fit Univis lenses," in return for which the prescription
retailer agrees to sell finished lenses only to consumers and only at prices
prescribed by the Corporation.
All the licenses to wholesalers and retailers recite the Corporation's ownership of the lens
patents, and no royalties are exacted of any of the licensees other than the 50 cents
collected by the Corporation for each pair of blanks sold by the Lens Company.
"Price-cutters" are not eligible as prescription retailer licensees. Inquiry is made to
ascertain whether prospective licensees advertise prices, and whether they are considered
in their communities to be price-cutters.
Eight patents of Univis relates to the shape, size, composition, and disposition of the pieces
of glass of different refractive power in the blanks into which they are fused.
DISTRICT COURT: the claims of each of these eight patents are for a finished lens, and that,
consequently, the wholesalers and finishing retailers, in grinding and polishing each lens,
practice in part the patent in conformity to which the Lens Company has manufactured the
blanks which it supplies. The court thought that, without the granted license, the final step
in finishing the lens would infringe the patent, and concluded that, for this reason, the
Corporation could condition its licenses upon the maintenance by the licensee of the
prescribed retail price.
GOVERNMENTS ARGUMENT: scope of the patent does not extend beyond the structure of
the lens blanks, and consequently affords no basis for the Corporation's restrictions on the
sale of the finished lenses which the wholesalers and finishing retailers fashion from blanks
purchased from the Lens Company.

Issue: Whether or not the resale provision of the licensing system is valid
Held/Ratio: NO. It is plain that, where the sale of the blank is by the patentee or his licensee -- here,
the Lens Company -- to a finisher, the only use to which it could be put, and the only object of the
sale, is to enable the latter to grind and polish it for use as a lens by the prospective wearer. An
incident to the purchase of any article, whether patented or unpatented, is the right to use and sell
it, and, upon familiar principles, the authorized sale of an article which is capable of use only in
practicing the patent is a relinquishment of the patent monopoly with respect to the article sold.
Sale of a lens blank by the patentee or by his licensee is thus, in itself, both a complete transfer of
ownership of the blank, which is within the protection of the patent law, and a license to practice the
final stage of the patent procedure.

In the present case, the entire consideration and compensation for both is the purchase price paid
by the finishing licensee to the Lens Company. We have no question here of what other stipulations,
for royalties or otherwise, might have been exacted as a part of the entire transaction which do not
seek to control the disposition of the patented article after the sale. The question is whether the
patentee or his licensee, no longer aided by the patent, may lawfully exercise such control.

Patentees monopoly remains so long as he retains the ownership of the patented article. But sale of
it exhausts the monopoly in that article, and the patentee may not thereafter, by virtue of his patent,
control the use or disposition of the article. Hence, the patentee cannot control the resale price of
patented articles which he has sold. He has thus parted with his right to assert the patent monopoly
with respect to it and is no longer free to control the price at which it may be sold, either in its
unfinished or finished form.

No one would doubt that, if the patentee's licensee had sold the blanks to a wholesaler or finishing
retailer, without more, the purchaser would not infringe by grinding and selling them.
 ROCHE PRODUCTS v BOLAR PHARMA

- Roche Products, a large research oriented pharmaceutical company, was the assignee of US
Patent 053 (expiry dateJan 1984), entitled Novel 1 and/or 4substituted alkyl
5aromatic3H1 ,4benzodiazepines and benzodiazepine2ones.One of the chemical
compounds found in said patent is flurazepam hydrochloride, the active ingredient in
Roches successful brand name prescription sleeping pill called Dalmane
- In 1983, Bolar Pharmaceutical Inc became interested in marketing (after the patent expired)
a generic drug equivalent to Dalmane.
- Bolar, however, to ensure commercial success, immediately began its effort to obtain
federal approval to market its generic version of Dalmane (even if patent 053 hasnt
expired yet)
- Mid 1983, Bolar obtained from a foreign manufacturer 5 kg of flurazem Hcl to form into
dosage from capsules, to obtain stability data, dissolution rates, bioequivalency stats, and
blood serum studies necessary for a New Drug Application to the DFA
- July1983, Roche filed a complaint in US District Court New Jersey against 3 parties: 1) Bolar
2) Bolars principal officer and 3) importer of the infringing flurazepam Hcl. Only Bolar
remains a party defendant. Roche sought to enjoin Bolar from using Flurazepam Hcl for any
purpose whatsoever
- Bolar stated during discovery in Aug 1983 that it intended immediately to begin drug
testing. Roche applied for and was granted a TRO.
- [The case was moved to NY]. The court held that Bolar's use of the patented compound for
federally mandated testing was not infringement of the patent in suit because Bolar's use
was de minimis and experimental.

Issue: Does the limited use of a patented drug for testing and investigation strictly related to FDA
Drug approval requirements during the last 6 months of the term of the patent constitute a use
which (unless unlicensed) the patent statute makes actionable?

Ratio:

GR in Sec 271 of Patent Statute is: Whoever without authority 1) makes, 2) uses or 3) sells any
patented invention, within the United States during the term of the patent therefore, infringes the
patent. Performance of only one of the three acts is already patent infringement. It is well
established, in particular, that the use of a patented invention, without either manufacture or sale,
is actionable. The question now in the case is the meaning of the term use.

Bolar says that its intended use of flurazepam Hcl is an exception from the prohibition because 1) of
the liberal interpretation of the traditional experimental use exception, and 2) public policy favors
generic drugs and thus mandates creation of a new exception in order to allow FDA testing.

1) On expermintal use: This started in Whittimore v Cutter where Justice Story said that an
infringer must have an intent to use a pantented invention for profit. The principle evolved. An
experiment with a patented article for the sole purpose of gratifying a philosophical taste, or
curiosity, or for mere amusement was held not an infringement of the rights of the patentee.

Professor Robinson wrote in his famous treatise: There is no act of infringement unless it affects the
pecuniary interest of the owner of the patented invention. The interest to be promoted by the
wrongful employment of the invention must be hostile to the interest of the patentee. The interest
of the patentee is represented by the emoluments which he does or might receive from the practice
of the invention by himself or others. These are of a pecuniary character, and their value is capable
of estimation like other property. Hence acts of infringement must attack the right of the patentee
to these emoluments. An unauthorized sale of the invention is always such an act. But the
manufacture or the use of the invention may be intended only for other purposes, and produce no
pecuniary result. Thus where it is made or
used as an experiment, whether for the gratification of scientific tastes, or for curiosity, or for
amusement, the interests of the patentee are not antagonized, the sole effect being of an intellectual
character in the promotion of the employer's knowledge or the relaxation afforded to his mind. But
if the products of the experiment are sold, or used for the convenience of the experimentor, or if the
experiments are conducted with a view to the adaptation of the invention to the experimentor's
business, the acts of making or of use are violations of the rights of the inventor and infringements of
his patent.

Bolar concedes that its intended use of flurazepam hcl does not fall within the "traditional limits" of
the
experimental use exception. Despite its argument that its tests are "true scientific inquiries" to
which a literal interpretation of the experimental use exception logically should extend, the Court
held that the experimental use exception is narrow and will not be expanded under the present
circumstances.

Tests, demonstrations, and experiments, which are in keeping with the legitimate business
of the alleged infringer are infringements for which experimental use is not a defense.
Bolars intended experimental use is solely for business reasons and not for amusement, to satisfy
idle curiosity, or for strict philosophical inquiry. Bolar's intended use of flurazepam hcl to derive
FDA required test data is thus an infringement of the '053 patent. Bolar may intend to perform
"experiments," but unlicensed experiments conducted with a view to the adaption of the
patented invention to the experimentor's business is a violation of the rights of the patentee
to exclude others from using his patented invention. The experimental use rule cannot be
construed broadly as to allow a violation of the patent laws in the guise of "scientific inquiry," when
that inquiry has definite, cognizable, and not insubstantial commercial purposes.

2) On public policy (not very important but the prof might ask): Bolar argues that even if no
established doctrine exists with which it can escape liability for patent infringement, public policy
requires that a new exception to the use prohibition should be created (in order to resolve a
conflict between the FDA law and the patent statute). The problem with postponing experiments
until a patent expires is that the procedure for the approval of new drugs require a long amount of
time (an average of 7-10 yrs) and hence effectively extending the monopoly of the patentee for such
a long time. The Court disagreed with Bolar and simply said: we must presume Congress was aware
that the FDCA would affect the earning potentiality of a drug patent, and chose to permit it, we note
that during Congress' deliberations on the amendments to the FDCA, it considered the relationship and
interaction of the patent laws with the drug laws. It is the role of Congress to maximize public welfare
through legislation. Congress is well aware of the economic and societal problems which the parties
debate here, and has before it legislation with respect to these issues.
 Graver Tank v Linde Air

Facts:

This is a patent infringement case involving inventions of electric welding compositions. Linde Air
owned a patent for an electric welding process and fluxes to be used therewith. It filed an
infringement case against Lincoln and two Graver companies. The trial court ruled that there was
indeed infringement. The Court of Appeals reversed the trial courts decision and held that there
was no infringement.

The patented composition is called the Unionmelt Grade 20 while the accused composition is called
Lincolnweld 660. Unionmelt is essentially made up of by a combination of alkaline earth metal
silicate (calcium and magnesium) and calcium fluoride. Linconweld, on the other hand, is made up
of by a combination of calcium and manganese, the latter not a metal silicate. In all other respects,
e.g. mechanical methods, operation and output, the two are alike.

Issue:

Whether or not there is an infringement invoking the doctrine of mechanical equivalents.

Held/Ratio:

Yes, there is an infringement.

First, prior art taught that manganese silicate can be used in welding fluxes.

Second, manganese can effectively substitute for magnesium in these inventions without providing
any substantial change as to output and other factors.

As the court mentioned:

It is difficult to conceive of a case more appropriate for application of the doctrine of equivalents. The
disclosures of the prior art made clear that manganese silicate was a useful ingredient in welding
compositions. Specialists familiar with the problems of welding compositions understood that
manganese was equivalent to, and could be substituted for, magnesium in the composition of the
patented flux ,and their observations were confirmed by the literature of chemistry. Without some
explanation or indication that Lincolnweld was developed by independent research, the trial court
could properly infer that the accused flux is the result of imitation, rather than experimentation or
invention. Though infringement was not literal, the changes which avoid literal infringement are
colorable only.
Note: The doctrine of equivalents is founded on the theory that, if two devices do the same work in
substantially the same way and accomplish substantially the same result, they are the same, even
though they differ in name, form or shape
 Godines v CA (2000)

Facts:

Respondent SV Agro acquired a patent of a power tiller.

In 1979, SV Agro had a decline of more than 50% sales in a Zamboanga branch, when they found
similar power tillers being sold by petitioner Godines. They notified Godines of the patent and
demanded him to stop selling the power tillers. No reply, thus this case to RTC for infringement +
Unfair competition.

RTC ruled for SV Agro, affirmed by CA, thus this case. Petitioners defenses are he was not engaged
in the manufacture and sale of the power tillers as he made them only upon the special order of his
customers who gave their own specifications.

Issue:

a) WON petitioner was manufacturing and selling power tillers

b) WON petitioner's product infringe upon the patent of private respondent

RULING:

a) YES. Question of fact ruled by CA. General rule is SC doesnt disturb these.
b) YES.

Tests have been established to determine infringement. These are (a) literal infringement; and (b)
the doctrine of equivalents. In using literal infringement as a test, ". . . resort must be had, in the first
instance, to the words of the claim. If accused matter clearly falls within the claim, infringement is
made out and that is the end of it." 8 To determine whether the particular item falls within the
literal meaning of the patent claims, the court must juxtapose the claims of the patent and the
accused product within the overall context of the claims and specifications, to determine whether
there is exact identity of all material elements. Trial Court noted the similarities. Identical in
appearance, and petitioner also called his power tiller as a floating power tiller.

Recognizing that the logical fallback position of one in the place of defendant is to aver that his
product is different from the patented one, courts have adopted the doctrine of equivalents which
recognizes that minor modifications in a patented invention are sufficient to put the item beyond
the scope of literal infringement. "(a)n infringement also occurs when a device appropriates a prior
invention by incorporating its innovative concept and, albeit with some modification and change,
performs substantially the same function in substantially the same way to achieve substantially the
same result." Reason for such is to limit copying and changing inconsequential parts to avoid
infringement. Trial Court noted that careful examination between the two power tillers will show
that they will operate on the same fundamental principles. And, according to establish
jurisprudence, in infringement of patent, similarities or differences are to be determined, not by the
names of things, but in the light of what elements do, and substantial, rather than technical, identity
in the test. More specifically, it is necessary and sufficient to constitute equivalency that the same
function can be performed in substantially the same way or manner, or by the same or substantially
the same, principle or mode of operation; but where these tests are satisfied, mere differences of
form or name are immaterial.

Thus, such making, using, or selling by any person without the authorization of the Patentee
constitutes infringement of the patent.

Smith Kline Beckman Co. v Court of Appeals and Tryco Pharma GR No. 126627, August 14,
2003

FACTS: Petitioner Smith Kline Beckman Co., licensed to do business in the Philippines, filed on
October 8, 1976 as assignee before the Bureau of Patents an application for patent on its invention
called Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5
Propylthio-2-Benzimidazole Carbanate. A Letters of Patent was issued to the petitioner on
September 24, 1981 for a period of 17 years. The patent provides that the patented invention
consists of Methyl 5 Propylthio-2-Benzimidazole Carbanate used as an active ingredient in treating
gastrointestinal parasites and lung worms in animals. The invention is a means to fight off
gastrointestinal parasites from various cattles and pet animals.

Tryco Pharma is a local corporation engaged in the same business as Smith Kline. The respondent
Tryco Pharma manufactures, distributes and sells veterinary product, one of which is the Impregon,
a drug having Albendazole as its active ingredient effective against gastrointestinal worms in
animals.

Smith Kline sued Tryco Pharma for patent infringement because the latter was selling a veterinary
product called Impregon which contains a drug called Albendazole which fights off gastro-intestinal
roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and goats. Smith
Kiline also sued Tryco for unfair competition for selling as its own the drug that substantially
functions to achieve the same result.

Smith Kline is claiming that Albendazole is covered in their patent because it is substantially the
same as methyl 5 propylthio-2-benzimidazole carbamate covered by its patent since both of them
are meant to combat worm or parasite infestation in animals. And that Albendazole is actually
patented under Smith Kline in the US.

Smith Kline thus invoked the doctrine of equivalents, which implies that the two substances
substantially do the same function in substantially the same way to achieve the same results,
thereby making them truly identical for in spite of the fact that the word Albendazole does not
appear in Tryco Paharmas letters of patent, it has ably shown by evidence its sameness with
methyl 5 propylthio-2-benzimidazole carbamate. It prodded the court to go beyond the literal
words used in the Letter of Patent issued to them to consider that the words Methyl 5 Propylthio-2-
Benzimidazole Carbanate and Albendazole are the same.

Tryco Pharma averred that nowhere in Smith Klines patent does it mention that Albendazole is
present but even if it were, the same is unpatentable. Even if the patent were to include
Albendazole it is unpatentable. They secured approval from the Bureau of Foods and Drugs to
manufacture and market Impregon with the Albendazole as its active ingredients. The petitioner
has no proof that they passed their veterinary products as that of the petitioner.

ISSUE: Whether or not there is patent infringement in this case

HELD: No. Smith Kline failed to prove that Albendazole is a compound inherent in the patented
invention. Nowhere in the patent is the word Albendazole found. When the language of its claims is
clear and distinct, the patentee is bound thereby and may not claim anything beyond them. The
language of the Letter of Patents issued to the petitioner failed to yield anything that it includes
Albendazole. The doctrine of equivalents does not apply in the case at bar because it requires that
for infringement to take place, the device should appropriate a prior invention by incorporating its
innovative concept and although there are some modifications and change they perform
substantially the same results. Further, there was a separate patent for Albendazole given by the US
which implies that Albendazole is indeed separate and distinct from the patented compound here.

A scrutiny of Smith Klines evidence fails to prove the substantial sameness of the patented
compound and Albendazole. While both compounds have the effect of neutralizing parasites in
animals, identity of result does not amount to infringement of patent unless Albendazole operates
in substantially the same way or by substantially the same means as the patented compound, even
though it performs the same function and achieves the same result. In other words, the principle or
mode of operation must be the same or substantially the same.

The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the
patentee having the burden to show that all three components of such equivalency test are met. The
petitioner has the burden to show that it satisfies the function-means-and-result-test required by
the doctrine of equivalents. Nothing has been substantiated on how Albendazole can weed the
parasites out from animals which is similar to the manner used by the petitioner in using their own
patented chemical compound.

Gsell v. Yap-Jue
G.R. No. 4720, January 19, 1909
FACTS:
Henry Gsell has a valid patent over the process for manufacturing of curved handles for
canes, parasols, and umbrellas by means of a lamp or blowpipe fed with mineral oil or
petroleum. He assigned his patent to Carlos Gsell.
Gsell filed an action to enjoin Valeriano Veloso Yap-Jue to cease using the same process in
its manufacture of its curved handles. The action was granted by the court.
Yap-Jue still continued to manufacture the curved handles through a process identical in all
respects with Gsell's patented process, except that he substituted petroleum or mineral oil
with alcohol.
Contempt proceedings were instituted against Yap-Jue.
 Trial court found Yap-Jue not guilty of contempt.

ISSUE:
Whether or not the use of a patented process by a third person, without license or authority
therefore, constitutes an infringement when the alleged infringer has substituted in lieu of some
unessential part of the patented process a well-known mechanical equivalent.
In short: Whether the prohibition against Yap-Jue included the substitution of alcohol for coal or
mineral oil.

HELD/RATIO:
Yes. First, alcohol is a well-known equivalent or substitute of mineral oil or petroleum at the
time the patent was issued. Second, the use of blast lamp or blowpipe fed with petroleum or
mineral oil rather than with alcohol is an unessential part of the patented process.
Using the doctrine of equivalents, the descriptive statement in the patent applies to the
operation of applying heat for the purpose of curving handles for canes and umbrellas by
means of a blast lamp fed with alcohol, as well as by means of a blast lamp fed with
petroleum or mineral oil.
It is not to be disputed that the inventor of an ordinary machine is, by his letters patent,
protected against all mere formal alterations and against the substitution of mere
mechanical equivalents.
A claim for the particular means and mode of operation described in the specification
extends, by operation of law, to the equivalent of such meansnot equivalent simply
because the same result is thereby produced but equivalent as being substantially the
same device in structure, arrangement and mode of operation.
An equivalent device is such as a mechanic of ordinary skill in construction of similar
machinery, having the forms, specifications and machine before him, could substitute in the
place of the mechanism described without the exercise of the inventive faculty.

DECISION: Yap-Jue is guilty of contempt.

 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.

535 U.S. 722 (2002)

DOCTRINE SUMMARY:

This case examined the relationship between the DOCTRINE OF EQUIVALENTS (infringement
through substitution of insubstantial feature or element) and the DOCTRINE OF PROSECUTION
HISTORY ESTOPPEL (a party who makes a change to a patent application to accommodate the
requirements of patent law cannot claim indirect infringement of an element that was narrowed by
that change). SC decided that amendments do not create an absolute bar, but instead must be
examined in light of the reason for the change.

FACTS

1. Festo owns two patents for a magnetic rodless cylinder, a piston-driven device that uses magnets
to move objects in a conveying system.

2. In response to rejection, both patent applications were amended to reference prior art and new
limitations: (1) the inventions are to contain a pair of sealing rings, each having a lip on one side,
and (2) the outer shell of the device, the sleeve, is to be made of a magnetizable material.

3. Shoketsu then brought a similar device to the market that had a single sealing ring with a two-
way lip and a sleeve made of magnetizable alloy.

4. Festo sued for infringement claiming that although there was no literal infringement, Shoketsu's
device infringed under the doctrine of equivalents because the devices were very similar.

5. Shoketsu argued that Festo was stopped from presenting this argument because of the
prosecution history regarding the patents (that it was amended/narrowed in order to attain the
patent).

5. The district court held that Festo's amendments were not made to avoid prior art and did not
result in estoppel.

6. The court of appeals reversed and held that by narrowing a claim to secure a patent, the patentee
surrenders all equivalents to the amended claim element. Prior decisions held that prosecution
history estoppels made a flexible bar, foreclosing some, but not all, claims of equivalence,
depending on the reason for the amendment and the changes in the text. Plaintiff appealed.

ISSUE

1.) WON estoppel can be applied to every amendment made to satisfy the requirements of the
Patent Act and not just to amendments made to avoid preemption by an earlier invention

2.) WON estoppel prevents every suit against every equivalents to the amended claim element
HELD

1.) YES. A narrowing amendment made to satisfy any requirement of the Patent Act might result in
estoppel. The scope of a patent is not limited to its literal terms but instead includes all equivalents
to the claims described. Prosecution history estoppel requires that the claims of a patent be
interpreted in light of the proceedings in the PTO while the application is being processed. When
the patentee narrows a claim regarding subject matter in response to a denied charge of patent
infringement, the patentee may not argue that the surrendered territory was made up of
unforeseen subject matter that should be deemed equivalent to the literal claims of the issued
patent. To give up an appeal of rejection and submit an amended claim is an acknowledgement that
the invention as patented does not reach as far as the original claim. Therefore, the patentee is
giving up certain subject matter as a condition of receiving a patent.

When an amendment is narrowed to satisfy any requirement of the Patent Act, estoppel may result.
Before a patent can issue, there are statutory requirements that must be met. When an amendment
is made to secure a patent and the amendment narrows the scope of the patent, estoppel results. If
an amendment only concerns the form of the application and not the subject matter of the
invention, then it would not narrow the patent"s scope or raise an estoppel. When a patent"s scope
is narrowed by a necessary amendment, estoppel may apply.

2.) YES. The court of appeals was wrong in holding that estoppel prevents the inventor from
claiming infringement against any equivalent to the narrowed element. It was incorrect to adopt a
complete bar. The reach of prosecution estoppel requires an examination of the subject matter
surrendered by the narrowing amendment. Such an inquiry would be avoided by a complete bar.
The narrowing amendment may show what the claim is not, but it may not capture what the claim
is and therefore equivalents may still exist. The amended claim is not so perfect in description that
no one could create an equivalent. The patentee should bear the burden of showing that the
amendment does not give up the specific equivalent in question. In some cases the amendment is
not reasonably viewed as giving up a particular equivalent. The equivalent may not have been
foreseeable at the time of the application or the reasoning underlying the amendment may bear no
more than a comparable relation to the equivalent in question. The patentee must establish that at
the time of the amendment, one skilled in the art could not have reasonably been expected to have
drafted a claim that would have literally included the alleged equivalent. In this case, Plaintiff did
not deny the presumption that estoppel applies, and the equivalents have been surrendered. The
limitations were made following rejection. The question then becomes what territory the
amendments surrendered, or whether they surrendered the equivalents at issue. Vacated and
remanded.
 Warner-Jenkinson Co. v. Hilton Davis Chemical Co. (1997)

(dyes, pH levels and reason for amendments)

Nature of Proceeding: Patent Infringement

Doctrines:

Application of the Doctrine of Equivalents involves determining whether a particular

accused product or process infringes upon the patent claim, where the claim takes the form
of X and its equivalents
The determination of equivalence should be applied as an objective inquiry on an element-
byelement basis.
There is need to reconcile the Doctrine of Equivalents with previous court rulings which
have held that a patent may not be enlarged beyond the scope of its claims: the Doctrine of
Equivalents is applied to each of the individual elements of the claim, rather than to the
accused product or process as a whole.
Where the PTO has limited the scope of an amended claim for a clear reason, then the
patentee may not use the Doctrine of Equivalents to enlarge the scope of the claim.
Where the PTO has not provided for a clear reason for the limits of an amended claim, the
patentee has the burden of supplying a reason that comports with its interpretation of
the claim.
Prosecution History Estoppel bars application of the Doctrine of Equivalents to elements
added by amendments during prosecution. However, where the reason for the change was
not related to avoiding prior art, the change may introduce a new element, and
infringement by equivalents of that element is not necessarily precluded.
Intent plays no role in the application of the Doctrine of Equivalents.
The proper time for evaluating equivalency and the knowledge of interchangeability of
elements is at the time of infringement.

Facts:

1. Petitioner Warner-Jenkinson and respondent Hilton Davis are both manufacturers of dyes. Dyes
have impurities which must be removed.
a. Respondent Hilton Davis already holds a patent (Patent 746), issued in 1985, for an
improved purification process involving ultrafiltration. The original application
encompasses all pH levels.

However, during prosecution, the application was limited to only pH levels 6.0 to 9.0.
It was later shown that the pH level of 9.0 was added to avoid an overlap with a
prior patent (the Booth patent) which covered ultrafiltration for pH levels above 9.0.
There was no reason given why the lower limit of pH level 6.0 was added.
2. In 1986, Petitioner Warner-Jenkinson developed an ultrafiltration process at pH 5.0. When

Respondent Hilton Davis discovered this, it sued Petitioner Warner-Jenkinson for patent
infringement.
 a. Hilton conceded that there was no literal infringement, and relied solely on the Doctrine of
Equivalents in its suit.
b. Petitioner Warner-Jenkinsons primary argument is that the Doctrine of Equivalents, as set
out in the Graver Tank case, is inconsistent with several aspects of the Patent Act. In
particular, petitioner argues that the Doctrine of Equivalents is inconsistent with the
requirement that a patentee specifically claim the invention covered by the patent and also
inconsistent with the primacy of the Patent and Trademark Office in setting the scope of a
patent through the patent prosecution process.
c. Petitioner further presents various arguments that would in effect result to a more
restricted Doctrine of Equivalents. These arguments are as follows:
i. That Graver Tank never sought to supercede the doctrines of prosecution history
estoppel and file wrapper estoppels as limits to nonliteral infringement

According to petitioner, the surrender of subject matter during patent

prosecution, regardless of reason, prohibits recapturing or reusing any part of
that subject matter which was surrendered, even if it is equivalent to such
subject matter
ii. that a judicial exploration of the equities of a case must first be conducted before allowing
application of the Doctrine of Equivalents.

According to petitioner, the benefits of the Doctrine refers to prevention of copying and
piracy and thus seeks to limit the application of the Doctrine wherein copying and piracy
is sought to be prevented
iii. To minimize conflict with the notice function of patent claims, the Doctrine of Equivalents
should be limited to equivalents disclosed within the patent itself, or known at the time
the patent was issued, and should not extend to after-arising equivalents.

Issues:

1. Whether the Doctrine of Equivalents conflicts with the definitional and public-claiming
functions of the statutory claiming requirement.
2. Whether surrendering subject matter during patent prosecution totally, regardless of the
reason for surrender, totally bars the application of the doctrine of equivalents.
3. Whether the equities or justness of the application of the Doctrine of Equivalents should be
limited to the realization of certain benefits only.
4. Whether the Doctrine should be limited to equivalents known at the time the patent was issued.
5. Whether a particular linguistic framework to determine equivalence should be applied

Held: The CA did not consider all the requirements for Prosecution History Estoppel and the
meaning of each element in a claim: therefore the case was remanded for further proceedings
consistent with the opinion as held by the Court.

1. NO.. The Doctrine of Equivalents would only be in conflict with the statutory claiming
requirement when it is applied broadly.
 a. Each element contained in a patent claim is material in defining the scope of the patented
invention. Therefore, the Doctrine of Equivalents must be applied to individual elements of
the claim and not to the invention as a whole. It is important to ensure that the doctrine is
not allowed a broad application so as to effectively eliminate that element in its entirety.
The determination of equivalence should be applied objectively, on an element-by-element
basis.
2. NO. Petitioner reaches too far in arguing that the reason for an amendment during patent
prosecution is irrelevant to any subsequent estoppel.
a. In previous cases before the Supreme Court, the Court probed the reasoning behind the
Patent Offices insistence upon a change. In each instance, a change was demanded because
the claim was not patentable typically because, as originally written, it was encompassed
within prior art.
b. It is undisputed that the upper limit of pH 9.0 was added to distinguish the Hilton patent
from the Booth patent, the reason for adding the lower limit of pH 6.0 was unclear.
c. Where the reason for the change was not related to avoiding prior art, the change may
introduce a new element, on which infringement by equivalents of that element may apply.
(In other words, if change was related to avoiding prior art, the new element may only be
infringed literally. If the change was NOT related to avoiding prior art, the new element may
be infringed even by its equivalents).
d. However, where the record does not reveal the reason for including the limit of pH 6.0, such
absence of reason does not automatically avoid the application of the estoppel, which then
means that the Doctrine of Equivalents may still apply. (Remember that when Prosecution
History Estoppel applies, the Doctrine of Equivalents cannot apply to amendments made.
Therefore, if the Prosecution History Estoppel does not apply, then the Doctrine of
Equivalents may apply to those amendments).
e. Whether or not the estoppel applies depends on the reason for the amendments. The
problem in this case was that there was no reason mentioned for including the lower limit
of pH 6.0. Respondent Hilton has not given a reason. The case was therefore remanded to
the Federal Circuit to determine whether reasons were offered or not and whether further
opportunity to establish such reasons would be proper.
f. Prosecution History Estoppel continues to be available as a defense to infringement. But if
the patent holder demonstrates that an amendment required during prosecution had a
purpose UNRELATED to patentability, the court must consider the purpose in determining
whether estoppel is disallowed (thus the Doctrine of Equivalents will apply). Where the
patent holder is unable to establish such a purpose, a court should presume that the
purpose behind the required amendment is such that Prosecution History Estoppel would
apply (thus the Doctrine of Equivalents will not apply).

3. NO. The essential predicate of the Doctrine is the notion of identity between a patented
invention and its equivalent. There is no basis for treating an infringing equivalent any
differently from a device that infringes the express terms of the patent. Therefore, application of
the Doctrine is like determining literal infringement and should also not require proof of intent.
Intent plays no role in the application of the Doctrine of Equivalents.

4. NO. The proper time for evaluating equivalency and the knowledge of interchangeability of
elements is at the time of infringement. Equivalents need not be known nor be actually
disclosed in the patent in order for such equivalents to infringe upon the patent.

5. Depends on the circumstances of the case.

 a. The triple identity test focuses on the function of a particular element in a claim, the way
that element serves that function and the result obtained by that element. The
Insubstantial Difference test on the other hand is used to determine whether the
difference between the element of the claim and the element of the accused product or
process are so insubstantial so as to be considered equivalents of each other.
b. Both tests are actually less important than determining whether the accused product or
process contain elements identical or equivalent to each claimed element of patented
invention. The different frameworks may be applied to different sets of circumstances but
there must be a focus on individual elements and there must be special vigilance against
allowing the concept of equivalence to eliminate completely any such elements.

Sidenotes:

Known Interchangeability Test whether a person skilled in the art would have known of
the interchangeability between two elements; the known interchangeability of the of
substitutes for an element of a patent bears upon whether the accused device is
substantially the same as the patented invention.
 Wilson Sporting Goods vs David Geoffrey & Associates

Citation. 904 F.2d 677 (Fed. Cir. 1990)

Brief Fact Summary. Wilson (Plaintiff) won an infringement suit regarding the design patent on its
golf balls, and Dunlop (Defendant) and David Geoffrey & Associates (Defendant) appealed.

Synopsis of Rule of Law. There can be no infringement if the scope of equivalency necessary to
find infringement would cover prior art.

Facts. Plaintiff brought suit against both Defendants for infringement on its golf ball patent. The
patent concerned the placement of dimples on the golf ball. The patent divided the ball into an
icosahedrons (20 triangles) and then drew lines between the midpoints of each triangle, making 80
triangles. The 80 dimples were then arranged so no dimple was on a line. Plaintiff"s Claim 1
described this process and the other twenty-six claims were dependent on it. The prior art was the
British Pugh patent and several Uniroyal patents. Both considered dividing the ball into a polygon,
including an icosahedrons, and either subdividing the ball into 320 triangles or placing the dimples
based on the icosahedrons" lines. The jury found for Plaintiff, and both Defendants appealed,
claiming the prior art covered their inventions, and therefore could not infringe.

Issue. Can there be infringement if the scope of equivalency necessary to find infringement would
cover prior art?

Held. (Rich, J.) No. There can be no infringement if the scope of equivalency necessary to find
infringement would cover prior art. Prior art limits what an inventor could have claimed, and
therefore it limits the possible range of allowed equivalents of a claim. To simplify analysis,
imagine a hypothetical patent that literally covers the accused product. The question then becomes
whether the Patent and Trademark Office would have permitted the hypothetical patent over the
prior art. The patent owner, or Plaintiff, bears the burden of proving the range of equivalents it
seeks would not capture the prior art. Given the Uniroyal prior art, the hypothetical claim, similar
to Plaintiff"s Claim 1 but enough to cover the Dunlop (Defendant) balls, would not have been
patentable. Though the dependent claims must be examined separately, neither are they
infringed. Reversed.

Discussion. As a result of Wilson, the burden was clearly put on both patentees to create and prove
the validity of the hypothetical claim. This resulted in widespread criticism, and the Federal Circuit
in Key Manufacturing Group, Inc. v. Microdot, Inc., 925 F.2d 1444, 17 U.S.P.Q.2d 1806 (Fed. Cir.
1991), pointed out the hypothetical claim analysis was not "obligatory" in the determination of
every doctrine of equivalents. The Wilson court had actually only characterized the hypothetical
claim analysis as "helpful," not necessary
CRESER PRECISION v CA

- Private respondent Floro International Corp is a domestic corporation engaged in the

manufacture, production, distribution and sale of military armaments, munitions,
airmunitions, etc. In 1990, It was granted a patent covering an aerial fuze which
was published in the Bureau of Patents Official Gazette
- Sometime in 1993, Floro International through its President Gregory Floro Jr. discovered
that petitioner submitted samples of its patented aerial fuze to the AFP for testing, claiming
the said fuze as its own and planning to bid and manufacture the same commercially
without license or authority from respondent
- Floro International sent a letter to petitioner advising it of the existence of the patent,
warning petitioner of possible court action should it proceed with the scheduled testing
- In response, petitioner filed a complaint for injunction and damages arising from
infringement, alleging that petitioner is the first true and actual inventor of the aerial fuze
which it developed as early as 1981 under AFPs SDRP (Self-Reliance Defense Posture
Program) and that in 1986, it began supplying AFP with said fuze, that respondents fuze is
identical to theirs and the only differences are miniscule and merely cosmetic in nature.
Petitioner prayed for TRO and writ of PI to be issued enjoining resp from manufacturing,
marketing, and profiting from the said fuze.
- RTC issued the TRO. Resp later submitted its memorandum alleging that petitioner has no
cause of action to file a complaint of infringement because it has no patent for the aerial fuze
which it claims and that its remedy is to file a petition for cancellation of patent before the
Bureau.
- RTC issued a writ of prelim inj against private respondent. Resps MR wsa denied. RTC says
that the Sec 42 qualified by Sec 10 of RA 165 (the provision relied upon by respondent to
say that petitioner has no cause of action) merely enumerates the persons who may have an
invention patented which does not necessarily limit the persons who have a right to
institute an infringement action.
- CA reversed. Hence the present petition.

Issue: Can petitioner bring the action for infringement? NO.

Petitioners contention is that under Sec 421 of the Patent law, it can file an action for
infringement not as a patentee but as an entity in possession of a right, title, or interest in and
to the patented invention. It advances the theory that while the absence of a patent may prevent
one from lawfully suing another for infringement of said patent, such absenc does not bar the
first and true inventor of the patented invention from suing another who was granted a patent
in suit for declaratory or injunctive relief.

No. under Sec 42 (read provision in footnote) only the patentee or his successors-in-interest
may file an action for infringement. The phrase anyone possessing any right, title or interest in
and to the patented invention upon which petitioner maintains its present suit, refers only to
the patentees successors-in-interest, assignees or grantees since actions for
infringement of patent may be brought in the name of the person or persons interested,
whether as patentee, assignees or grantees, of the exclusive right. Moreover, there can be no
infringement of a patent until a patent has been issued, since whatever right one has to
1
Civil action for infringement. Any patentee, or anyone possessing any right, title or interest in and to the patented
invention, whose rights have been infringed, may bring a civil action before the proper Court of First Instance (now
Regional Trial court), to recover from the infringer damages sustained by reason of the infringement and to secure
an injunction for the protection of his righ
the invention covered by the patent arises alone from the grant of patent. In short, a
person or entity who has not been granted letters patent over an invention and has not
acquired any right or title thereto either as assignee or as licensee, has no cause of action
for infringement because the right to maintain an infringement suit depends on the
existence of the patent.

Petitioner admits it has no patent over its aerial fuze. Therefore, it has no legal basis or cause of
action to institute the petition for injunction and damages arising from the alleged infringement
by private respondent. While petitioner claims to be the first inventor of the aerial fuze, still it
has no right of property over the same upon which it can maintain a suit unless it obtains a
patent therefor.

Also, the remedy of declaratory judgment or injunctive suit on patent invalidity relied upon by
petitioner cannot be likened to the civil action for infringement under Section 42 of the Patent
Law. The reason for this is that the said remedy is available only to the patent holder or his
successors-in-interest. Thus, anyone who has no patent over an invention but claims to have a
right or interest thereto cannot file an action for declaratory judgment or injunctive suit which
is not recognized in this jurisdiction.

Said person, however, is not left without any remedy. He can, under Section 28 of the
aforementioned law, file a petition for cancellation of the patent within three (3) years
from the publication of said patent with the Director of Patents and raise as ground
therefor that the person to whom the patent was issued is not the true and actual
inventor. Hence, petitioners remedy is not to file an action for injunction or infringement but to
file a petition for cancellation of private respondent patent. Petitioner however failed to do so.
As such, it can not now assail or impugn the validity of the private respondents letters patent by
claiming that it is the true and actual inventor of the aerial fuze.
 Aro Manufacturing Company v Convertible Top Co.

Facts:

Convertible Top Company is an assignee of a patent originally owned by Automatic Body Research
Corporation. The patent covers a top structure for automobile convertibles. AB allowed General
Motors for the use of such patent from 1952-1954. On the other hand, Ford had no license to use
such patent on the same years up until some time in 1955 when it was able to enter into an
agreement with Automatic Body Research Corporation. Fords manufacture of cars using the said
top structure infringed on ABs patent.

Aro Manufacturing is not licensed by the patent, produces fabric components designed as
replacements for worn-out fabric portions of convertible tops. These are specially tailored for GM
and Ford car models. Aro also included parts for the 1952-1954 car models.

In a previous decision, the court ruled that there was no infringement and that the creation of Aro
of such fabric portions are considered as mere repair.

Issue:

Whether or not Aro is liable for contributory infringement with respect to its manufacture and sale
of replacement fabrics for the Ford cars.

Held/Ratio:

YES. 271(a) of the Patent code states that an infringer is whoever without authority makes, uses or
sells any patented invention Ford does not have any license to make use of the contested patent.
Hence, by selling car models during such period, it has violated the patent. By using the cars sold by
Ford during this period, the buyers has already committed direct infringement.

271(c) of the Patent code states that Whoever sells a component of a patented machine,
manufacture, combination or composition, or a material or apparatus for use in practicing a
patented process, constituting a material part of the invention, knowing the same to be especially
made or especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory
infringer."
Since Aro is not allowed by the patent to make such replacements and that the buyers themselves
are not allowed to use such invention, it is considered that Aro contributed to their infringement.

Bard v Advanced Chemical Systems (1990)

Nature of Proceeding: Patent Infringement

Doctrines:

A person induces infringement under Sec. 271(b) by actively and knowingly aiding and
abetting another's direct infringement

Facts:

3. Defendant ACS was marketing the only perfusion catheter approved by the US Food and Drug
Administration for use in coronary angioplasty. Plaintiff BARD sued ACS for alleged
infringement of 017 Patent which Bard had purchased all rights as of December 31, 1986. The
'017 patent relates to a method for using a catheter in coronary angioplasty.
4. Atherosclerosis may cause coronary arteries to be progressively narrowed (stenosis) by the
formation of plaque within the arteries resulting in coronary artery disease. May lead to heart
attacks.
5. Bypass surgery allows the grafting of a vein to the affected coronary artery to bypass the
stenosis. Percutaneous transluminal coronary angioplasty (PTCA), an alternative procedure,
involves inserting a deflated balloon dilation catheter through the patient's arteries to reach the
stenosis in the coronary artery. The balloon is inflated to dilate the stenosis and then deflated
and removed to restore blood flow to the heart. Difficulty with PTCA is that a prolonged
blockage of blood flow to the heart muscle in the course of the procedure, caused by the inflated
balloon, may itself result in a heart attack.
6. The 017 patent claimed a method for the PTCA, inventor removed all claims to a catheter, and
claimed only a method of administering an angioplasty. "The proximal orifices which admit
blood to the main lumen in the blood catheter [are] 'immediately adjacent said balloon' "
7. ACS catheteris a balloon-type catheter having side openings in the main lumen located near the
proximal end of the balloon. The ACS catheter's main lumen is simply open past the distal end of
the balloon enabling blood to flow through the catheter while the balloon is inflated. Plaintiff
Bard alleges that the ACS catheter is especially adapted for use by a surgeon in the course of
administering a coronary angioplasty in a manner that infringes claim 1 of the '017 patent, that
therefore ACS is a contributory infringer, and that ACS actively induces infringement.
8. ACS denied both charges and challenged the validity of the Bard patent Lower Court
ruled with Bard. NOTE: THIS WAS A SUMMARY JUDGMENT
9. Bard seeks to establish the requisite direct infringement by arguing that there is no evidence
that any angioplasty procedures using the ACS catheter would be noninfringing. Testing this
assertion requires a two step analysis. First is a determination of the scope of the claim at issue.
Second is an examination of the evidence before the court to ascertain whether under Sec.
271(c), use of the ACS catheter would infringe the claim as interpreted.

Issues:
6. Does an individual induce infringement under 35 U.S.C. 271 by actively and knowingly aiding
and abetting another persons direct infringement?

Held: YES. BUT CASE WAS REMANDED

6. Bard argues that the prior art '725 patent teaches the use of the catheter with the inlets (side
openings) where the blood enters the tube placed only in the aorta, whereas the '017 method in
suit involves insertion of the catheter into the coronary artery in such a manner that the
openings "immediately adjacent [the] balloon fluidly connect locations within [the] coronary
artery surrounding [the] proximal and distal portions of [the] tube." Thus, Bard argues, a
surgeon, inserting the ACS catheter into a coronary artery to a point where an inlet at the
catheter's proximal end draws blood from the artery, infringes the '017 patent.
7. There is evidence in the record that 40 to 60 percent of the stenoses that require angioplasty
are located less than three centimeters from the entrance to the coronary artery. ACS argues
that therefore the ACS catheter may be used in such a way that all of the openings are located in
the aorta. A reasonable jury could find that, pursuant to the procedure described in the first of
the fact patterns (a noninfringing procedure), there are substantial noninfringing uses for the
ACS catheter.
8. Whether the ACS catheter "has no use except through practice of the patented method,"
is thus a critical issue to be decided in this case. Whether the ACS catheter "has no use
except through practice of the patented method," is thus a critical issue to be decided in
this case. Viewing the evidence in this case in a light most favorable to the nonmoving
party, and resolving reasonable inferences in ACS's favor, it cannot be said that Bard is
entitled to judgment as a matter of law. The grant of summary judgment finding ACS a
contributory infringer under Sec. 271(c) is not appropriate.
9. A person induces infringement under Sec. 271(b) by actively and knowingly aiding and
abetting another's direct infringement. Bard argues that ACS induced infringement under
Sec. 271(b) by: 1) providing detailed instructions and other literature on how to use its
catheter in a manner which would infringe claim 1; and 2) having positioned the inlets near the
balloon's proximal end so as to allow a user of the ACS catheter to infringe claim.
10. As already discussed, on a motion for summary judgment we view the evidence in a light most
favorable to ACS, the nonmoving party, and draw all reasonable inferences in its favor. The
evidence before the trial judge on the motion for summary judgment was at best ambiguous
regarding the fact pattern or patterns under which the catheter was to be used. Because a
genuine issue of material fact thus exists, a grant of summary judgment finding ACS induced
infringement is also not appropriate.
 Wilson Sporting Goods v. David Geoffrey & Associates
904 F.2d 677 (Fed. Cir. 1990)

Facts:

Wilson is a full-line sporting goods company and is one of about six major competitors in
the golf ball business. Among its well-known balls are the ProStaff and Ultra.
Dunlop is also a major player in the golf ball business. It competes head-to-head with
Wilson by selling the Maxfli Tour Limited and Slazenger balls. It sells the Maxfli Tour
Limited ball to numerous distributors, but sells the Slazenger ball only to DGA, which
distributes the ball to U.S. customers.
Dimples create surface turbulence around a flying ball, lessening drag and increasing lift. In
lay terms, they make the ball fly higher and farther. While this much is clear, "dimple
science" is otherwise quite complicated and inexact: dimples can be numerous or few, and
can vary as to shape, width, depth, location, and more.
Dimples in Wilsons patent are arranged by dividing the cover of a spherical golf ball into
80 imaginary spherical triangles and then placing the dimples (typically several hundred)
into strategic locations in the triangles. The triangles are constructed as follows. First, the
ball is divided into an imaginary "icosahedron." An icosahedral golf ball is completely
covered by 20 imaginary equilateral triangles, 5 of which cover each pole of the ball and ten
of which surround its equator. Second, the midpoints of each of the sides of each of the 20
icosahedral triangles are located. Third, the midpoints are joined, thus subdividing each
icosahedral triangle into four smaller triangles.
The most pertinent prior art is a 1932 British patent to Pugh, which was cited by the
examiner. Pugh teaches that a golf ball can be divided into any regular polyhedron,
including an icosahedron. Pugh also discloses sub-dividing each of the twenty icosahedral
triangles into smaller triangles. Pugh divides each icosahedral triangle into sixteen sub-
triangles, in contrast to the four sub-triangles required by the '168 patent. (The dimples in
Pugh are triangular.) The prior art also includes several patents to Uniroyal and a Uniroyal
golf ball sold in the 1970's. The Uniroyal ball is an icosahedral ball having six great circles
with 30 or more dimples intersecting the great circles by about 12-15 thousandths of an
inch
The Dunlop balls have dimples which are arranged in an icosahedral pattern having six
great circles, but the six great circles are not dimple-free as the claims literally require. The
number of dimples which intersect great circles and the extent of their intersection were
disputed by the parties.
Wilson separately sued Dunlop and DGA for patent infringement in the United States
District Court.
JURY: the asserted claims "valid" (i.e., not proved invalid) and willfully infringed. The only
theory of liability presented to the jury by Wilson was infringement under the doctrine of
equivalents. Dunlop's argument for reversal is straightforward. It contends that there is no
principled difference between the balls which the jury found to infringe and the prior art
Uniroyal ball; thus to allow the patent to reach Dunlop's balls under the doctrine of
equivalents would improperly ensnare the prior art Uniroyal ball as well.

Issue: Whether or not the Wilson patent was infringed.

Held/Ratio:
Infringement may be found under the doctrine of equivalents if an accused product "performs
substantially the same overall function or work, in substantially the same way, to obtain
substantially the same overall result as the claimed invention." Even if this test is met, however, there
can be no infringement if the asserted scope of equivalency of what is literally claimed would
encompass the prior art.

The doctrine of equivalents, by definition, involves going beyond any permissible interpretation of
the claim language; i.e., it involves determining whether the accused product is "equivalent" to what
is described by the claim language.

This distinction raises an interesting question: If the doctrine of equivalents does not involve
expanding the claims, why should the prior art be a limitation on the range of permissible
equivalents? It is not because we construe claims narrowly if necessary to sustain their validity. As
we have said, the doctrine of equivalents does not involve expansion of the claims. Nor is it because
to hold otherwise would allow the patentee to preempt a product that was in the public domain
prior to the invention.

Whether prior art restricts the range of equivalents of what is literally claimed can be a difficult
question to answer. To simplify analysis and bring the issue onto familiar turf, it may be helpful to
conceptualize the limitation on the scope of equivalents by visualizing a hypothetical patent claim,
sufficient in scope to literally cover the accused product. The pertinent question then becomes
whether that hypothetical claim could have been allowed by the PTO over the prior art. If not, then it
would be improper to permit the patentee to obtain that coverage in an infringement suit under the
doctrine of equivalents. If the hypothetical claim could have been allowed, then prior art is not a bar
to infringement under the doctrine of equivalents.

The specific question before us, then, is whether Wilson has proved that a hypothetical claim,
similar to claim 1 but broad enough to literally cover Dunlop's balls, could have been patentable. As
we have explained above, Dunlop's balls are icosahedral balls with six great circles, five of which
are intersected by dimples. The balls contain 432 to 480 dimples, 60 of which intersect great circles
in amounts from 4 to 9 thousandths of an inch. In order for a hypothetical claim to cover Dunlop's
balls, its limitations must permit 60 dimples to intersect the great circles by at least 9 thousandths
of an inch. Thus, the issue is whether a hypothetical claim directed to an icosahedral ball having six
great circles intersected by 60 dimples in amounts up to 9 thousandths of an inch could have been
patentable in view of the prior art Uniroyal ball.

On the Uniroyal ball, the extent to which the dimples intersect the great circles is from 12 to 15
thousandths of an inch. Stated as a percentage of dimple radius, the intersection permitted in the
hypothetical claim is 13% or less, and the dimples on the Uniroyal ball intersect by 17% to 21%.
The number of dimples which intersect the great circles is also similar for the hypothetical claim
and the prior art Uniroyal ball. The pertinent hypothetical claim limitation reads on any ball having
60 or less intersecting dimples. This limitation reads on the prior art Uniroyal ball, which has 30
intersecting dimples. If viewed in relative terms, the hypothetical claim limitation reads on any ball
which has less than 14% of its dimples intersecting great circles. Roughly 12% of the dimples on
the Uniroyal ball intersect great circles.

We hold that these differences are so slight and relatively minor that the hypothetical claim--which
permits twice as many intersecting dimples, but with slightly smaller intersections--viewed as a
whole would have been obvious in view of the Uniroyal ball. As Dunlop puts it, there is simply "no
principled difference" between the hypothetical claim and the prior art Uniroyal ball. Accordingly,
Wilson's claim 1 cannot be given a range of equivalents broad enough to encompass the
accused Dunlop balls.

Before separately analyzing the asserted dependent claims, we should first explain why we are
bothering to do so. This court has stated: "It is axiomatic that dependent claims cannot be found
infringed unless the claims from which they depend have been found to have been infringed."
Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1553 & n. 9, 10 USPQ2d 1201, 1208 & n.
9 (Fed. Cir. 1989). While this proposition is no doubt generally correct, it does not apply in the
circumstances of this case.

Here, we have reversed the judgment of infringement of independent claim 1 solely because the
asserted range of equivalents of the claim limitations would encompass the prior art Uniroyal ball.
The dependent claims, of course, are narrower than claim 1; therefore, it does not automatically
follow that the ranges of equivalents of these narrower claims would encompass the prior art,
because of their added limitations. In contrast, in Wahpeton Canvas the court affirmed the
judgment of noninfringement of the independent claims because the accused products did not
include particular claim limitations or their substantial equivalents. 870 F.2d at 1552, 10 USPQ2d at
1207. Where that is the reason for noninfringement of the independent claim, it follows that, for the
same reason, the dependent claims will not be infringed. But that is not true here and we therefore
turn to the asserted dependent claims, to determine whether they can be infringed under the
doctrine of equivalents.

Implicit in the jury's conclusion that the Dunlop balls infringe the asserted dependent claims is a
finding that the Dunlop balls have, in addition to the features we have described above, the further
limitations of the dependent claims.6 Each dependent claim contains a small variation on the theme
of an icosahedral ball having six great circles. We have considered each asserted dependent claim
and conclude that none could be given a range of equivalents broad enough to encompass Dunlop's
balls because that would extend Wilson's patent protection beyond hypothetical claims it could
lawfully have obtained from the PTO.

The jury found that the central triangles of each Dunlop ball have "the same number of dimples,"
which is the additional limitation of claim 7. This feature, however, is shown in the Pugh patent. See
Figure 6, above. The jury also found, as required by claim 15, that some dimples on each Dunlop ball
reside completely within the apical triangles and some dimples intersect two of the sides of the
apical triangles. This arrangement again is disclosed in the Pugh patent, as well as in Uniroyal
patent 4,141,559 (U.S.), Uniroyal patent 1,402,273 (British), and Uniroyal patent 1,407,730
(British). Necessarily implied in the above findings, the jury found that each Dunlop ball has the
combined features of claims 7 and 15, which is what claim 16 requires. Yet Wilson has failed to
persuade us that the range of equivalents sought for any of these claims could be broad enough to
encompass Dunlop's balls without also encompassing the Uniroyal ball and other cited prior art.

The jury also found that the Dunlop balls (except for the "480" balls, not accused) have a one-fifth
dimple at the apexes of their apical triangles, as required by claim 19. This arrangement, as is the
arrangement in which each apical triangle has some half dimples (claim 20), is again disclosed by
each of the three Uniroyal patents. Wilson has failed to persuade us that the range of equivalents
sought for these claims, as for claims 21 and 22 (which contain further variations on the number
and/or fractions of the dimples in the apical triangles), could be broad enough to encompass
Dunlop's balls without encompassing the Uniroyal ball and other prior art of record.

We need not review the validity of asserted patent claims when we can decide a case on the basis of
noninfringement. See, e.g., Vieau v. Japax, Inc., 823 F.2d 1510, 1517, 3 USPQ2d 1094, 1100 (Fed. Cir.
1987). Accordingly, we vacate the magistrate's judgment that none of the asserted claims was
proved invalid.

CONCLUSION

Dunlop's motion for JNOV on infringement was timely and supported by Dunlop's motion for a
directed verdict. Therefore, the question of whether the magistrate erroneously denied Dunlop's
motion was properly before this court. We conclude that the magistrate erred in denying Dunlop's
motion for JNOV on infringement, because, as a matter of law, a range of equivalents broad enough
to cover Dunlop's balls would also have encompassed the prior art.

Accordingly, in No. 89-1554 we reverse the judgment of infringement by Dunlop and vacate the
judgment that the claims were not proved invalid. In No. 89-1555, we reverse the judgment of
infringement by DGA, which was based upon the doctrine of collateral estoppel and the judgment
against Dunlop in 89-1554, and vacate the judgment that the claims were not proved invalid.

COSTS

No costs.

89-1554 REVERSED IN PART, VACATED IN PART.

89-1555 REVERSED IN PART, VACATED IN PART.