BASICS: To literally infringe a patent, the accused system, method, etc. must include each limitation of a claim. E.g., Southwall (Fed. Cir. 05/10/95) (“A literal infringement analysis requires two separate steps. First, the asserted claims must be interpreted by the court as a matter of law to determine their meaning and scope. In the second step, the trier of fact determines whether the claims as thus construed read on the accused product. To establish literal infringement, every limitation set forth in a claim must be found in an accused product, exactly. Infringement, both literal and under the doctrine of equivalents, is an issue of fact.”) “Merely producing [the] same result [as the claimed method] in a different way does not suffice.” Microsoft (Geotag) (Fed. Cir. 04/01/16) (aff’g Summ. J. no literal infringement). Actions infringe, not articles. Suprema II (Fed. Cir. 08/10/15) (en banc, 6-4).
Complying With A Standard May Be Enough To Show Infringement: “If a district court construes the claims and finds that the reach of the claims includes any device that practices [an industry] standard, then this can be sufficient for a finding of infringement.” Fujitsu (Fed. Cir. 09/20/10); cf.JVC Kenwood (Fed. Cir. 08/17/15) (cannot base infringement on compliance with standards where patents are essential patents licensed to users of standard-compliant products).
Practicing The Prior Art Is Not A Defense To Literal Infringement: The “‘practicing the prior art defense typically refers to the situation where an accused infringer compares the accused infringing behavior to the prior art in an attempt to prove that its conduct is . . . noninfringing . . . because the accused conduct is simply practicing the prior art.’ We have made it ‘unequivocally clear . . . that there is no practicing the prior art defense to literal infringement.’ Therefore, parties are prohibited from arguing that a plaintiff ‘must prove . . . that . . . the accused devices embody all the limitations in the asserted claims, and in addition, [that the] accused devices must not be an adoption of the combined teachings of the prior art.’” ContentGuard (Google) (Fed. Cir. 07/12/17) (non-precedential) (aff’g denial of new trial); Zenith Elecs. (Fed. Cir. 04/16/08) (“mere proof that the prior art is identical, in all material respects, to an allegedly infringing product cannot constitute clear and convincing evidence of invalidity”); Tate Access (Fed. Cir. 02/07/02) (“there is no ‘practicing the prior art’ defense to literal infringement.”) “This does not, however, preclude a litigant from arguing that if a claim term must be broadly interpreted to read on an accused device, then this same broad construction will read on the prior art.” 01 Communique (Fed. Cir. 04/26/18) (aff’g denial of new trial after jury verdict of non-infringement).
Sometimes Designer’s Purpose For A Particular Feature Might Be Relevant To Literal Infringement: CompareProfectus (Fed. Cir. 05/26/16) (2-1) (“mountable” construed as “having a feature for mounting” rather than “capable of mounting,” and aff’g Summ. J. of no infringement because “no evidence that the communication ports are developed as inherent features for mounting the devices on a wall or tabletop” and “the accused devices were conceived apart from external accessories like docking stations” which could be used to mount them) withProfectus (Fed. Cir. 05/26/16) (Moore, J., dissenting op.) (“Apparatus claims ‘recite features of an apparatus either structurally or functionally.’ Intent behind a product design is not an element of direct infringement for an apparatus claim.”)
a) sec. 112(6/f) element
Sec. 112(6/f) Literal Infringement: Relevant structure in accused device must perform identical claim-recited function “and be identical or equivalent” to corresponding structure in patent, e.g., perform claimed function “in substantially the same way to achieve substantially the same result as the structure in the written description.” JVW Enterprises (Fed. Cir. 10/03/05); Pennwalt (Fed. Cir. 11/06/87) (en banc) (must perform identical function). “We apply ‘two articulations of the test for equivalence,’ the function-way-result test and the insubstantial difference test.” Tomita II (Fed. Cir. 03/17/17) (non-precedential) (aff’g judgment of no structural equivalence based on both tests: “evaluating whether the accused product possesses something of significance that is not found in the corresponding structure of the subject patent is precisely what the District Court was required to assess.”).
Sec. 112(6/f) Equivalents: Determining “Way” Patent’s Disclosed Structure Performs Function: “a court cannot require as part of the ‘way’ analysis functions that were not properly identified during claim construction. This does not mean, however, that aspects of the claimed invention beyond those stated in the means-plus-function limitation are necessarily irrelevant to the ‘way’ in which the disclosed structure works.” Applied Med. (Fed. Cir. 02/24/09) (non-precedential) (aff’g denial of new trial after jury verdict of no infringement); cf.Mylan (Fed. Cir. 05/19/17) (modifying preliminary injunction to be based on only one of three patents; substituted chemical compound (manganese dioxide) may perform function in different “way” than claimed compound (silver oxide) in process-of-compound-preparation claims, even though those differences related to unclaimed aspects).
b) product-by-process claim
Product-By-Process Claims: Non-Structural And Non-Functional Process Limits Claims For Infringement But Has No Patentable Weight For Anticipation or Obviousness: “‘Process terms in product-by-process claims serve as limitations in determining infringement.’” Abbott Labs. (Fed. Cir. 05/18/09) (en banc in part) (overruling Scripps Clinic) (Abbott Labs. claim: “X which is obtainable by [method]”) (but not addressing whether the recited process steps must be performed in U.S.).) But, process terms in product-by-process claim cannot distinguish prior art, unless impart novel structure: “For product-by-process claims, that which anticipates if earlier does not necessarily infringe if later.” Amgen (Fed. Cir. 09/15/09); In re Pond (Fed. Cir. 01/18/12) (non-precedential) (“a product-by-process claim does not add a patentable distinction when the claimed product is the same as the cited art’s product.”); Purdue Pharma (Fed. Cir. 02/01/16) (limitation that element be “derived from” a particular source was a process limitation, not a structural or functional limitation, because “source of the 14-hydroxy has no effect on its structure or its removal through hydrogenation,” and therefore could not distinguish prior art in obviousness determination). “For validity purposes, the ‘invention’ in a product-by-process claim is the product.” The Medicines Co. II (Fed. Cir. 07/11/16) (en banc).
c) reverse doctrine of equivalents
Reverse Doctrine Of Equivalents (RDOE) Can Avoid Infringement When There Is Literal Infringement: Although rarely used, “Reverse DOE” (or “equivalents in reverse”) might avoid Summ. J. of “infringement” even if there is “literal infringement,” and thus get the defendant to trial. Graver Tank (U.S. 05/29/1950) (“where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee’s action for infringement.”); Warner-Jenkinson (U.S. 03/03/1997) (unanimous) (“This is an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements. We recognized this type of role for the doctrine of equivalents in Graver Tank.”); Westinghouse (U.S. 05/09/1898) (“The patentee may bring the defendant within the letter of his claims, but if the latter has so far changed the principle of the device that the claims of the patent, literally construed, have ceased to represent his actual invention, he is as little subject to be adjudged an infringer as one who has violated the letter of a statute has to be convicted, when he has done nothing in conflict with its spirit and intent.”); SRI Int’l (Fed. Cir. 10/16/85) (en banc) (rev’g Summ. J. of no infringement under RDOE, ivo genuine disputes of fact, where undisputed that apparatus claim “reads directly, unequivocally, and word-for-word on [accused] structure.”); Roche Palo Alto (Fed. Cir. 07/09/08) (“non-infringement under the reverse doctrine of equivalents is a question of fact;” Court affirmed rejection of RDOE defense because Apotex failed to support the supposed “principle” of the invention, or “equitable scope of the claims” with appropriate references to “the specification, prosecution history, and the prior art.”)
Proving Literal Infringement Shifts Burden Of Production To Accused To Prove Non-Infringement Under RDOE: Proving “literal infringement” does not prove infringement; it merely shifts the burden of production to the accused infringer, who “may undertake the burden of going forward to establish the fact of non-infringement under the reverse doctrine of equivalents.” SRI Int’l (Fed. Cir. 10/16/85) (en banc). SeePatently O post by Prof. Samuel Ernst (03/11/18) (arguing that S. Ct. precedent puts burden on patent owner to show substantial identity to prove infringement).