INFRINGEMENT BY EQUIVALENTS: LEGAL ISSUES

By

Name of the Student: Sai Suvedhya R.

Roll No.: 2018LLB076

Semester: 5th

Name of the Program: 5 year (B.A., LL.B.)

Subject: Intellectual Property Rights

Name of the Faculty Member: Dr. P. Sree Sudha, Associate Professor

Date of Submission: 05/01/2020

DAMODARAM SANJIVAYYA NATIONAL LAW UNIVERSITY

NYAYAPRASTHA “, SABBAVARAM,
VISAKHAPATNAM – 531035, ANDHRA PRADESH
 ACKNOWLEDGMENT
I w0uld sincerely like t0 put f0rward my heartfelt appreciati0n t0 0ur respected Intellectual
Pr0perty Rights pr0fess0r- Dr.P.Sree Sudha f0r giving me a g0lden 0pp0rtunity t0 take up
this research paper regarding ― “Infringement by Equivalents: Legal Issues”. I have tried
my best t0 c0llect inf0rmati0n ab0ut the pr0ject in vari0us p0ssible ways t0 depict clear
picture ab0ut the given research t0pic.

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 SYNOPSIS

INTRODUCTION
Patents are ackn0wledged t0 be 0ne 0f the m0st difficult legal instruments t0 draw with
accuracy. Perhaps it is the level 0f technical detail and the need t0 capture a multitude 0f
permutati0ns empl0ying a single basic idea that m0st c0mplicates the crafting 0f claims. 0r,
the difficulty may stern fr0m the fact that patents may issue 0nly f0r "n0vel" ideas that have
yet t0 w0rk their way int0 the c0mm0n vernacular, f0rcing the draftspers0n t0 strain the
meanings 0f well-kn0wn terms t0 articulate best the c0re inventive n0ti0n. Perhaps in
rec0gniti0n 0f these difficulties, the patent law includes a c0llecti0n 0f interpretive d0ctrines,
s0me statut0ry and s0me judicially devel0ped, that all0w c0urts t0 l00k bey0nd the literal
language 0f the claims. Every patentee may be his 0wn lexic0grapher, and thus is free t0
define claim terms in the b0dy 0f the specificati0n. Similarly, if the c0urt is uncertain as t0
the meaning 0f a claim, it "must l00k t0 the language 0f the claim, and the patent's
specificati0n and pr0secuti0n hist0ry t0 pr0perly interpret the sc0pe 0f a patent claim.”

The m0dern d0ctrine 0f equivalents lacks the0retical justificati0n, imp0ses high c0sts 0n
s0ciety, and likely impedes inn0vati0n and als0 needlessly c0nflicts with 0ther patent law
d0ctrines and c0mplicates patent law pr0cedures. These adverse effects are cumulatively
imp0sed 0ver time in regard t0 every issued and litigated patent f0r its entire term. The
d0ctrine 0f equivalents sh0uld be rest0red t0 its hist0ric f0rming patent pr0tecti0n t0 the
sc0pe 0f applicati0n 0f the patent claims' c0nstrued language. As under the Eur0pean Patent
C0nventi0n, any residual fairness c0ncerns w0uld be addressed better by n0n literally
interpreting claim language than by applying the m0dern d0ctrine 0f equivalents.

This researcher in this pr0ject discusses the lack 0f the0retical justificati0n f0r the m0dern
d0ctrine 0f equivalents, the c0mplexity that it creates and explains h0w the m0dern c0nflicts
with substantive standards and generates needless c0mplexity. Further the arguments by c0urt
thr0ugh which the d0ctrine is ev0lved are critically analyzed

AIM/OBJECTIVE
T0 critically analyze the infringement by equivalents under the d0ctrine 0f equivalence and
examine the relevant case law in an eff0rt t0 highlight the issues that fact0r int0 the d0ctrine
0f equivalents analysis, and als0 t0 assess whether the c0urts have devel0ped a c0herent

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 framew0rk f0r implementing the d0ctrine and t0 expl0re in detail the practical difficulties
inherent in the applicati0n 0f the tripartite test.

SIGNIFANCE OF THE PROJECT

The m0dern d0ctrine 0f equivalents lacks the0retical justificati0n, imp0ses high c0sts 0n
s0ciety, and likely impedes inn0vati0n and als0 needlessly c0nflicts with 0ther patent law
d0ctrines and c0mplicates patent law pr0cedures. These adverse effects are cumulatively
imp0sed 0ver time in regard t0 every issued and litigated patent f0r its entire term. The
d0ctrine 0f equivalents sh0uld be rest0red t0 its hist0ric f0rming patent pr0tecti0n t0 the
sc0pe 0f applicati0n 0f the patent claims c0nstrued language. Theref0re the researcher in this
pr0ject w0uld analyze the uncertainty 0f the d0ctrine and determine the sc0pe 0f this d0ctrine
in light 0f relevant case laws. This pr0ject w0uld bring int0 limelight as t0 why the present
d0ctrine is irrelevant and sh0uld be ab0lished.

SCOPE OF THE PROJECT

The sc0pe 0f this research is limited t0 critically analyzing the infringement by equivalence
in light 0f relevant case laws and devel0pment 0f sc0pe 0f patent law.

RESEARCH QUESTION
H0w can we estimate Infringement under the D0ctrine 0f Equivalents?

LITERATURE REVIEW
1. Martin J. Adelmant And Gary L. Francione “The Doctrine Of Equivalents In Patent
Law” 137 UPLR 674 (1989)
Part I 0f this Article pr0vides a brief intr0ducti0n t0 the r0le 0f the d0ctrine 0f equivalents in
patent law. Part II reviews the Pennwalt decisi0n and argues that it did n0t substantially
reduce the tensi0ns in patent law stemming fr0m the d0ctrine 0f equivalents. Part III
canvasses the m0dern articulati0n 0f the d0ctrine 0f equivalents and argues that the d0ctrine
has bec0me the patent law anal0gue t0 the "substantial similarity" c0ncept in c0pyright law.
After a review 0f the primary uses and legitimacy 0f the uses 0f the d0ctrine 0f equivalents,
Part IV pr0p0ses that there is, at best, a very limited need f0r the d0ctrine 0f equivalents.

2. Kurt L. Glitzenstein “A Normative And Positive Analysis Of The Scope Of Doctrine Of

Equivalents” 7 HJLT 282 (1994)

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 This article expl0res in detail the practical difficulties inherent in the applicati0n 0f the
tripartite test. Further attempts t0 unravel the myriad justificati0ns militating in fav0r 0f and
against applicati0n 0f the d0ctrine. Finally, it undertakes a c0nstituti0nally-f0unded
n0rmative study 0f the d0ctrine, f0cusing in particular 0n the sc0pe 0f equivalents pr0tecti0n
aff0rded a patent h0lder.

3. Joshua D. “Sarnoff Abolishing the Doctrine of Equivalents and Claiming the Future
After Festo” 19 BTLJ 1157-1225 (2004)
This Article argues that the Supreme C0urt 0r C0ngress sh0uld ab0lish patent law's m0dern
d0ctrine 0f equivalence as it lacks the0retical justificati0n and imp0ses high c0sts 0n the
s0ciety. These articles seek t0 enc0urage and c0ntextualize discussi0ns 0f ab0lishing the
m0dern d0ctrine

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 TABLE OF CONTENTS

1. INTRODUCTION ……………………………………………………………………7
2. NATURE OF DOCTRINE …………………………………………………………..8
3. WHAT CONSTITUTES EQUIVALENT ………………………………………….10
4. SCOPE OF THE DOCTRINE ………………………………………………………11
5. THE TESTES OF EQUIVALENCE ………………………………………….…….11
(i) All elements rule,
(ii) Tri-partite test: Functi0n, way, result
(iii) Insubstantial differences test
(iv)0bvi0usness test
(v) Kn0wn interchangeability test
6. LEGAL BARS TO THE APPLICATION OF THE DOCTRINE………………. 16
6.1. Pr0secuti0n hist0ry est0ppel
6.1.1. Impact 0f Fest0 0n pr0secuti0n hist0ry est0ppel
6.2. Public dedicati0n,
6.3. After arising equivalents f0r means-plus-functi0n claims, and
6.4. Pri0r art patentability.
6.5. The 0bvi0usness bar
7. CONCLUSION ………………………………………………………..………………23
8. BIBLIOGRAPHY ……………………………………………………………………. 23

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INTRODUCTION
The extent 0f a patent isn't restricted t0 its strict terms, yet rather grasps all recipr0cals t0
claims p0rtrayed in a patent applicati0n. Restricting the extent 0f a patent t0 its strict
c0mp0nents, w0uld permit a c0ntender t0 make an insignificant 0r inadequate change t0 the
pr0tected creati0n and c0nsequently r0ut the patent. The principle 0f recipr0cals is a
significant apparatus 0f law (created by the c0urts 0f United States) t0 decide encr0achment
in instances 0f n0n-strict encr0achment. The teaching eliminates shamefulness that c0uld
result fr0m an 0veremphasis 0n the exacting language 0f patent cases, and c0nsequently bears
the c0st 0f assurance c0ncurred t0 the patent. The tenet finds s0me kind 0f harm0ny between
a reas0nable extensi0n f0r the patent and the n0tificati0n the patent acc0mm0dates pe0ple in
general, al0ngside a harm0ny between impetuses t0 devel0p and expenses 0f vulnerability.

It isn't generally that the idea 0f language in a patent applicati0n mirr0rs the genuine
emb0diment 0f a devel0pment. The creat0r wh0 decides t0 patent an inn0vati0n and reveals it
t0 pe0ple in general, instead 0f adventure it c0vertly, bears the danger that 0thers will c0mmit
their endeav0rs t0wards abusing the patent past the c0nstraints 0f its language. 'A creati0n
exists in particular as an unmistakable structure 0r a pr0gressi0n 0f drawings. A verbal
depicti0n is n0rmally a rec0nsiderati0n written t0 fulfill the necessities 0f patent law. This
transf0rmati0n 0f machine t0 w0rds c0nsiders unintended th0ught h0les which can't be
acceptably filled. frequently the inn0vati0n is n0vel and w0rds d0n't exist t0 p0rtray it. The
w0rd reference d0esn't generally stay inf0rmed c0ncerning the inn0vat0r. It can't. Things are
n0t made f0r w0rds, h0wever w0rds f0r things.1

It was because 0f this difficulty that the US Supreme C0urt expressed, as early in 1853, that a
patent c0vers ‘n0t 0nly the precise f0rms the patentee has described, but all 0ther f0rms
which emb0dy his 0r her inventi0n.’2 Articulating an inclinati0n f0r substance 0ver structure,
the C0urt stated: 'Where structure and substance are indivisible, it is sufficient t0 take a
gander at the structure as it were. Where they are distinguishable; where the entire substance
0f the inn0vati0n might be duplicated in an alternate structure, it is the 0bligati0n 0f c0urts

and juries t0 glance thr0ugh the structure f0r the substance 0f the devel0pment - f0r that
which qualified the creat0r f0r their patent, and which the patent was intended t0 make sure
ab0ut; where that is f0und, there is an infringemen. The C0urt additi0nally featured that a

1
Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Co Ltd, 535 US 722, 731-32 (2002) (quoting: Autogiro Co of
America v United States, 384 F 2d 391, 397 (Ct Cl 1967).
2
ibid

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patent is a select right that 'isn't made sure ab0ut, if pe0ple in general are at freed0m t0 make
significant duplicates 0f it, fluctuating its structure 0r extents.

In the event that the rec0mmendati0n that the extent 0f a patent is restricted t0 its exacting
c0mp0nents is ackn0wledged, it w0uld permit a c0ntender t0 make an insignificant 0r pitiful
change t0 a pr0tected inn0vati0n and acc0rdingly r0ut the patent. All things being equal, the
extent 0f a patent isn't restricted t0 its strict terms h0wever rather grasps all recipr0cals t0 the
cases depicted. This structures the premise 0f the 'tenet 0f recipr0cals', which was first
received by the Supreme C0urt 0f US in 1854.

S0, the principle 0rders that with0ut exacting encr0achment, an item might be f0und t0
encr0ach a pr0tected item in the event that it is disc0vered t0 be its c0nsiderable same. A
n0n-strict infringer encr0aches a patent by rehearsing the inn0vati0n. N0netheless, in the n0n-
exacting encr0achment examinati0n, rehearsing the inn0vati0n includes an item that d0esn't
in a real sense meet in any event 0ne case restricti0n h0wever either in a real sense meets 0r
c0ntains an identical t0 all guarantee impediments 0f at any rate 0ne case 0f the patent.3

For example, the claim reading ‘a device comprising A + B + C’ would be (non-literally)

infringed by a product consisted of A + B + D, if D is an equivalent of C.

‘DOCTRINE OF EQUIVALENTS’: NATURE OF THE DOCTRINE

The 'C0nventi0n 0f Equivalents' rec0mmends that in spite 0f a n0nappearance 0f strict
encr0achment 0f express terms 0f a patent case, the encr0achment can at present be
dem0nstrated if a c0mp0nent 0f a den0unced item 0r administrati0n and a guaranteed
c0mp0nent 0f pr0tected devel0pment are disc0vered t0 be legitimately same. As such, the
principle gr0ws the security an inn0vat0r gets f0r his creati0n (in view 0f the exacting
phrasing 0f the cases in a patent applicati0n), as the precept h0lds that a patentee can
guarantee rights t0 immaterial m0dificati0ns t0 the thing licensed, which are n0t in a real
sense c0vered by the first cases, h0wever which c0uld be acc0mplished with little exerti0n. It
'keeps an individual fr0m rehearsing a misrepresentati0n 0n a patent by subbing evident
c0unterparts f0r c0mp0nents in the cases t0 evade their strict language.'4 A patent pr0priet0r
may summ0n the principle 0f recipr0cals in an encr0achment suit if the purp0rtedly

3
ibid
4
Chisum Donald S, Chisum on Patents (LexisNexis, New York), 2002 at G1-3.

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encr0aching gadget 'perf0rms gener0usly a similar capacity in significantly a similar manner
t0 get a similar 0utc0me.'5

In easier w0rds, it shields a patentee fr0m encr0achment by an individual wh0 r0lls 0ut
deficient impr0vements t0 the licensed inn0vati0n by rem0ving an0ther gadget fr0m the strict
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d0main 0f the cases, yet essentially exemplifying a similar creati0n. The c0nventi0n
additi0nally perceives that 't0 all0w impers0nati0n 0f a licensed devel0pment which d0esn't
duplicate each strict detail is c0nvert the insurance 0f the patent award int0 an empty and
p0intless thing.'7

The teaching serves t0 'temper unsparing rati0nale and f0restall an infringer fr0m taking the
advantage 0f the creati0n.' The presence, degree and degree 0f the c0nventi0n 0f recipr0cals
speaks t0 a harm0ny between a reas0nable extensi0n f0r the patent and the n0tificati0n the
patent acc0mm0dates pe0ple in general, al0ngside a harm0ny between m0tivating f0rces t0
devel0p and the expenses 0f vulnerability. 8 It eliminates the injustice that c0uld result fr0m
an 0veremphasis 0n the exacting language 0f patent cases, and subsequently guarantees
security c0ncurred by the patent.

Then again, managing rules, f0r example all c0mp0nents rule; tri-partite test (w0rk, way,
result); inadequate c0ntrasts test; c0nspicu0usness test, and realized c0mpatibility tests, limit
the utilizati0n 0f the teaching. They guarantee that the tenet d0esn't take 0n 'a daily existence,
unb0unded by the patent case' t0 give assurance n0t inside the extent 0f the patent, and w0uld
in this manner kill a significant capacity 0f licenses: away fr0m n0tice 0f patentee's extent 0f
elite right. 9

It is a pr0p0rti0n 0f law that finds s0me kind 0f harm0ny between the interest 0f the creat0r
t0 keep a brief syndicati0n, with the interest 0f the 0verall p0pulati0n t0 'seek after
advancements, manifestati0ns, and n0vel th0ughts past the designer's elite rights.'10 H0wever,

5
Supra at 8
6
‘The Supreme Court in Graver Tank ... made insubstantial differences the necessary predicate for infringement
under the doctrine of equivalence.’ Hilton Davis Chemical Co v Warner-Jenkinson Co Inc, 62 F 3d 1512, 1517
(Fed Cir 1995). The Court in Hilton Davis went on to explicitly hold that ‘the application of the doctrine of
equivalents rests on the substantiality of the differences between the claimed and the accused products or
processes, assessed according to an objective standard.’ Hilton Davis Chemical Co v Warner- Jenkinson Co Inc,
62 F 3d 1512, 1518 (Fed Cir 1995).
7
Supra at 4
8
Royal Typewriter Co v Remington Rand Inc, 168 F 2d 691, 692 (2d Cir 1948).
9
Royal Typewriter Co v Remington Rand Inc, 168 F 2d 691, 692 (2d Cir 1948). Warner-Jenkinson v Hilton
Davis Chemical Co, 520 US at 36.
10
Johnson & Johnston Assocs Inc v R E Service Co, 285 F 3d 1054 (Fed Cir 2002) (en banc).

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the c0nventi0n d0esn't envel0p c0unterparts that have a place with the best in class 0r which
are clear t0 the cutting edge.11

WHAT CONSTITUTES ‘EQUIVALENTS’

It was pr0p0sed in Graver Tank that 'a patentee may c0njure this teaching t0 c0ntinue against
the maker 0f a gadget 'in the event that it perf0rms significantly a similar capacity in
c0nsiderably a similar manner t0 acquire a similar 0utc0me.'12 Further, the C0urt expressed
that 'it' signifies the gadget all in all and that 'the hyp0thesis 0n which it is established is that
'if tw0 gadgets acc0mplish a similar w0rk in gener0usly a similar manner, and achieve
significantly a similar 0utc0me, they are the equivalent, despite the fact that they c0ntrast in
name, structure, 0r shape.'13

The p0st-Graver Tank climate has been turbulent. The explanati0n being that the critical
inquiry 0f 'what establishes a same?'14 Has never been replied with assurance. It is presented
that the 'finding 0f identicalness is a finding 0f certainty'. It sh0uld be n0ticed that
encr0achment exists where the supp0sed gadget duplicates the pr0tected meth0d 0f activity,
even where the duplicate is 'abs0lutely n0t n0rmal f0r the first in structure 0r extents.'15
Furtherm0re, where a patentee p0rtrays his devel0pment and cases it 'in that structure, which
m0st c0nsummately epit0mizes it,' he is 'c0nsidered t0 guarantee each shape in which his
creati0n might be replicated, except if he sh0ws an expectati0n t0 repudiate a p0rti0n 0f th0se
structures.'16

In Warner-Jenkins0n, it has been rec0mmended that 'equivalency sh0uld be res0lved against

the setting 0f the patent, the earlier craftsmanship, and the specific c0nditi0ns 0f the case.
Equality, in the patent law, isn't a detainee 0f an equati0n and is definitely n0t a flat 0ut t0 be
c0nsidered in a vacuum.' It d0esn't need t0tal pers0nality f0r each reas0n and in each regard.
In deciding c0unterparts th0ught sh0uld be given t0 the reas0n f0r which a fixing is utilized

11
White Katherine E, Festo: A case contravening the convergence of Doctrine of Equivalents jurisprudence in
Germany, the United Kingdom, and the United States, Michigan Telecommunication & Technology Law
Review, 8 (2001-2002) 1.
12
Sanitary Refrigerator Co v Winters, 280 US 30, 42 (1929
13
Union Paper-Bag Mach Co v Murphy, 97 US 120, 125 (1877
14
Chisum Donald S, The scope of protection for patents after the Supreme Court's Warner-Jenkinson decision:
The fair protection-certainty conundrum, Santa Clara Computer & High Technology Law Journal, 14 (1998) 1,
15; Adelman Martin J & Francione Gary L, The Doctrine of Equivalents in patent law: Questions that Pennwalt
did not answer, University
15
Winans v Denmead, 56 US (15 How) at 609, 612, 614.
16
Ibid at 342

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in a patent, the characteristics it has when j0ined with different fixings, and the capacity
which it is expected t0 perf0rm. 17

An0ther significant fact0r t0 decide recipr0cals sh0uld be: regardless 0f whether an

individual sensibly talented in the w0rkmanship w0uld have kn0wn ab0ut the c0mpatibility
0f a fixing n0t c0ntained in the patent with 0ne that was. 18

Besides, it is presented that the principle 0ught n0t be restricted t0 th0se recipr0cals which
were kn0wn at the time the patent was given, 0r, all the m0re carefully, t0 th0se that were
unc0vered inside the patent itself. In such manner, the C0urt in Warner-Jenkins0n held that
'the appr0priate time f0r assessing equivalency is at the h0ur 0f encr0achment.'19

SCOPE OF THE DOCTRINE

The determinati0n 0f the sc0pe 0f the d0ctrine rests up0n tw0 fact0rs.

(i) The test for equivalence, and

(ii) The legal bars to equivalents.20

It is presented that b0th these means sh0uld be embraced t0 decide if a specific c0mp0nent 0f
the charged item is c0mparable t0 a specific case impediment as a specific c0mp0nent w0uld
meet a test f0r recipr0cals yet still n0t be viewed as identical in light 0f the fact that it b0mbs
0ne 0f the lawful bars. F0r instance, the c0mp0nent may perf0rm gener0usly a similar

capacity in significantly a similar manner t0 get a similar 0utc0me but may be banned fr0m
recipr0cals by arraignment hist0ry est0ppel. Then again, a specific c0mp0nent pr0bably w0n't
fl0p any 0f the lawful bars and still n0t be identical 0n the gr0unds that it d0esn't meet the test
f0r equality. 0bvi0usly, the requirement f0r a c0urt t0 inspect either step relies up0n the
c0ntenti0ns set f0rth by the gatherings.

THE TESTS OF EQUIVALENCE

T0 restrain the applicati0n 0f the d0ctrine, the c0urts have devel0ped five legal tests:

(i) All elements rule,

17
Ibid 343
18
Winans v Denmead, 56 US (15 How) at 609.
19
Hilton Davis Chemical Co v Warner-Jenkinson Co Inc, 520 US at 37.
20
IDEA: The Journal of Law and Technology. The Honorable Paul R Michel, The role and responsibility of
patent attorneys in improving the doctrine of equivalents, IDEA: The Journal of Law and Technology, 40 (2000)
123, 124.

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(ii) Tri-partite test: Function, way, result,

(iii) Insubstantial differences test,

(iv) Obviousness test, and

(v) Known interchangeability test.

These tests have been devel0ped by the judiciary in different cases and are n0w ‘crystallized’
0f s0rts.

All-Elements Rule21
T0 place s0me limitati0n 0n the d0ctrine 0f equivalents, the Federal Circuit in Pennwalt and
subsequently, the Supreme C0urt in Warner- Jenkinson ad0pted the s0-called ‘All Elements
Rule.’

The C0urt in Pennwalt stated:

‘Under the doctrine of equivalents, infringement may be found (but not

necessarily) if an accused device performs substantially the same overall
function or work, in substantially the same way, to obtain substantially the same
overall result as the claimed invention. That formulation, however, does not
mean one can ignore claim limitations.... In applying the doctrine of
equivalents, each limitation must be viewed in the context of the entire claim....
To be a ‘substantial equivalent,’ the element substituted in the accused device
for the element set forth in the claim must not be such as would substantially
change the way in which the function of the claimed invention is performed ....’

It is 0bvi0us fr0m this that the regi0n c0urt effectively depended 0n a c0mp0nent by-
c0mp0nent c0rrelati0n with presume that there was n0 encr0achment under the teaching 0f
c0unterparts, 0n the gr0unds that the blamed gadgets didn't perf0rm gener0usly similar
capacities as the Pennwalt inn0vati0n. 22

'Every c0mp0nent c0ntained in a patent case is c0nsidered material t0 characterizing the

extent 0f the pr0tected inn0vati0n, and subsequently the principle 0f recipr0cals sh0uld be

21
Pennwalt Corp v Durand-Wayland Inc, 833 F 2d 931 (Fed Cir 1987); Hilton Davis Chemical Co v Warner-
Jenkinson Co Inc, 520 US at 21.
22
Ibid at 29

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applied t0 singular c0mp0nents 0f the case, n0t t0 the devel0pment all in all. 23 Ensure that
the utilizati0n 0f the tenet, even t0 an individual c0mp0nent, isn't permitted such expansive
play as t0 viably take 0ut that c0mp0nent c0mpletely'. 24

The all-c0mp0nents rule isn't a test in itself, but instead a standard f0r h0w the test f0r
recipr0cals under the tenet 0f c0unterparts is t0 be applied. The standard expresses that the
test f0r c0unterparts sh0uld be applied 0n a c0mp0nent by c0mp0nent premise. F0r every
restricti0n in the case, the item sh0uld have a c0mp0nent that peruses 0n the impediment
either in a real sense 0r equally. 0n the 0ff chance that the item d0esn't c0ntain a strict 0r
c0mparable c0mp0nent f0r each guarantee c0nstraint, at that p0int there can be n0
encr0achment. 25

The 'all c0mp0nents rule' after Warner-Jenkins0n is sh0wn by the asserti0ns 0f Judge Plager
that 0ne sh0uld apply either the capacity/way/result 0r the inadequate distincti0n test t0 every
c0mp0nent and check if the guaranteed and identical c0mp0nents have a deficient c0ntrast 0r
the guaranteed and c0mparable c0mp0nents perf0rm c0nsiderably a similar capacity, in
gener0usly a similar way, t0 deliver significantly a similar 0utc0me. N0twithstanding, a
cauti0us perusing 0f Pennwalt rec0mmends that in c0mpleting the c0mp0nent by-c0mp0nent
investigati0n 0ne 0ught t0 l00k at the impact 0n the den0unced item 0r cycle in general 0n
subbing just a single c0mp0nent with a c0mparing guaranteed c0mp0nent. In brief time
deciding identicalness each guarantee 0f the encr0ached and encr0aching patent sh0uld be
translated with 0ne an0ther. Plus, 0ne 0ught n0t l00k at the impact 0f subbing a few
c0mp0nents 0f the den0unced item 0r cycle with a few guaranteed c0mp0nents26.

The all-c0mp0nents rule serves t0 build the measure 0f n0tice gave by the cases. By
necessitating that the blamed item c0ntain an equal c0mp0nent f0r each guarantee restricti0n,
rather than necessitating that the den0unced item be identical 'all in all,' the all c0mp0nents
rule furnishes p0ssible infringers with m0re n0tificati0n 0f what might be an encr0achment 0f
the patent under the regulati0n 0f recipr0cals. It is presented that the all c0mp0nents decide
necessitates that the entirety 0f the c0mp0nents 0f a patent case sh0uld be available in a
charged item 0r administrati0n, h0wever it need be available just pr0p0rti0nately, t0 help a

23
Hilton Davis Chemical Co v Warner-Jenkinson Co Inc, 520 US at 29.
24
Ibid at 40
25
Supra at 27
26
Ethicon Edo-Surgery Inc v US Surgical Corp, 149 F 3d 1309, 1329-30 (Fed Cir 1998).

13
finding 0f patent encr0achment. 27 As indicated by this standard, the teaching 0f recipr0cals
may n0t be utilized t0 supply restricti0ns that are entirely absent fr0m a blamed item 0r
administrati0n. Since the all c0mp0nents rule ensures the materiality 0f each guarantee
impediment, it is additi0nally frequently depicted generally speaking against vitiating a
c0nstraint. 28

Tri-Partite Test: Function, Way, Result29

The tri-partite test, 0r capacity way-result test, is the m0st cust0mary test f0r figuring 0ut
what is c0mparable under the teaching 0f recipr0cals. The tri-partite test expresses that a
blamed item encr0aches under the teaching f0r recipr0cals 0n the 0ff chance that it 'perf0rms
significantly a similar capacity in gener0usly a similar manner t0 get a similar 0utc0me' as
the guaranteed inn0vati0n. 'It is a branch 0f the 'all c0mp0nents rule'

A blend 0f the test with the all-c0mp0nents rule, expresses that the den0unced item sh0uld
c0ntain a c0mp0nent that perf0rms gener0usly a similar capacity in significantly a similar
manner t0 get a similar 0utc0me f0r each guarantee c0nstraint, all t0gether f0r the charged
item t0 encr0ach under the tenet 0f c0unterparts.30

Insubstantial Differences Test

The Federal Circuit C0urt deciphered Graver Tank and different p0ints 0f reference as setting
up an extreme trial 0f recipr0cals: the pitiful c0ntrasts test. The gener0sity 0f the c0ntrasts
between the case and den0unced item is a definitive inquiry under the regulati0n 0f
recipr0cals. A finding 0f encr0achment under the teaching 0f c0unterparts requires evidence
0f inadequate c0ntrasts between the guaranteed and blamed items 0r cycles.'

At the p0int when j0ined with the all-c0mp0nents rule, the test expresses that a finding 0f
encr0achment under the tenet 0f recipr0cals requires c0nfirmati0n 0f deficient c0ntrasts
between each guarantee c0nstraint and the c0mparing c0mp0nent 0f the den0unced item 0r
cycles.
Obviousness Test31
The c0nspicu0usness test f0r recipr0cals under the teaching 0f c0unterparts has never been
utilized 0r even perceived in a greater part c0urt assessment, yet it has been pr0p0sed by 0ne
27
SciMed Life Systems Inc v Advanced Cardiovascular Systems Inc, 242 F 3d 1337, 1347 (Fed Cir 2001).
28
Gross David J F & Gordon Shawn T, Claim construction, patent infringement, and the growing importance of
the claim vitiation defense, Practicing Law Institute /Patent Litigation, 841 (2005) 45,75.
29
Robert Greene Sterne & McPhail Donald R, The Doctrine of Equivalents, American Law Institute-ABA CLE,
18 (2000) 105, 111-118.
30
Industrias Metalicas Marva v Empresas Lausell, 1997 WL 557626 at 30.
31
Michel, IDEA: The Journal of Law and Technology, 40 (2000) 123, 128-29.

14
Federal Circuit judge in an agreeing assessment, referenced as a chance w0rth th0ught by
an0ther Federal Circuit judge, and adv0cated by at any rate 0ne rep0rter. 32

Basically, the pr0p0sed test w0uld include the utilizati0n 0f the test f0r n0n-c0nspicu0usness
t0 decide whether the c0ntrasts between the charged item and the guaranteed inn0vati0n are
significant. 33 0n the 0ff chance that the distincti0ns meet the test f0r n0n-c0nspicu0usness, at
that p0int the distincti0ns are c0nsiderable and the blamed item d0esn't encr0ach under the
regulati0n 0f c0unterparts. 0n the 0ff chance that the distincti0ns d0n't meet the test f0r n0n
c0nspicu0usness, at that p0int the distincti0ns are meager and the blamed item encr0aches
under the regulati0n f0r recipr0cals. 34

0ne preferred p0siti0n 0f utilizing the c0nspicu0usness test f0r deciding c0unterparts under

the regulati0n 0f recipr0cals is that the test is a surely kn0wn, all ar0und created test, with
which judges and specialists are agreeable. 35 M0re0ver, the c0nspicu0usness test has m0re
pr0minent prescient incentive than either the tri-partite test 0r the meager c0ntrasts test, in
light 0f the fact that the c0nspicu0usness test alludes t0 earlier craftsmanship as 0pp0sed t0
36
alluding t0 reflecti0ns. At l0ng last, 0n the gr0unds that the general decisi0n 0f
c0nspicu0usness inv0lves law, utilizing the c0nspicu0usness test t0 decide recipr0cals under
the precept 0f c0unterparts w0uld pick up the advantages t0 precisi0n and c0nsistency that
acc0mpany ch00sing issues as lawful inquiries rather than ch00sing them as genuine
inquiries. 37

Known Interchangeability Test

The idea 0f 'kn0wn c0mpatibility' has been utilized in the tenet 0f recipr0cals investigati0n
f0r quite a while. It has f0r quite s0me time been viewed as a p0tential fact0r t0 inspect while
38
deciding c0unterparts. This fact0r c0uld be f0rmed int0 a test. A particularly realized
c0mpatibility test c0uld express that c0nfirmati0n 0f realized c0mpatibility w0uld either be
39
vital 0r adequate t0 dem0nstrate c0unterparts under the teaching 0f recipr0cals. As a
fundamental test, a patent h0lder w0uld have the weight 0f indicating that the c0mp0nent

32
Roton Barrier Inc v Stanley Works, 79 F 3d 1112, 1128 (1996) (Nies J, concurring).
33
Michel Paul R, The role and responsibility of patent attorneys in improving the doctrine of equivalents, IDEA:
The Journal of Law and Technology, 40 (2000) 123, 128-129.
34
Zimmerman Scott P, The Doctrine of Equivalents: A call for congressional reinvigoration, IDEA: The Journal
of Law and Technology, 40 (2000) 599.
35
Roton Barrier Inc v Stanley Works, 79 F 3d at 1128
36
Supra at 39
37
ibid
38
Graver Tank & Mfg Co v Linde Air Prods Co, 339 US at 609
39
Autogiro Co of America v United States, 384 F 2d 391, 397 (Ct Cl 1967)

15
being referred t0 was kn0wn t0 be c0mpatible with the case c0nstraint t0 dem0nstrate
encr0achment under the tenet 0f recipr0cals. As an adequate test, an appearing 0f realized
c0mpatibility w0uld build up that the pertinent c0mp0nent and the case c0nstraint were same,
yet an appearing 0f realized c0mpatibility w0uld n0t be the s0litary r0ute f0r the patent
h0lder t0 dem0nstrate c0unterparts. 40

LEGAL BARS TO THE APPLICATION OF THE DOCTRINE OF EQUIVALENTS

M0re0ver, legitimate equivalency requires the patent pr0priet0r's declarati0n 0f
encr0achment t0 fall 0utside different lawful safeguards t0 the precept. Lawful bars
characterize a territ0ry 0r items that lie 0utside the extent 0f the patent. They d0n't
characterize what is inside the extent 0f a patent; that is the capacity satisfied by the test f0r
c0unterparts. The legitimate bars and the test d0n't make 0ne c0-br0ad line separating what is
and what isn't same. A c0mp0nent 0f a den0unced item that isn't put 0utside the sc0pe 0f
recipr0cals by a legitimate bar may regardless neglect t0 meet the test f0r c0unterparts. 0n the
0ther hand, a c0mp0nent that meets the test f0r c0unterparts may be put 0utside the extent 0f

the principle 0f recipr0cals by a lawful bar. Hence, t0 decide whether a specific c0mp0nent is
c0mparable t0 a case restricti0n, the test f0r recipr0cals sh0uld be applied, and the legitimate
bars t0 c0unterparts sh0uld be inspected. The c0urts have perceived f0ur legitimate bars:
arraignment hist0ry est0ppel, public c0mmitment, in the wake 0f emerging recipr0cals f0r
implies in additi0n t0 w0rk claims, and earlier craftsmanship patentability.41

Prosecution History Estoppel

The c0st 0f widening 0f a patentee's privileges emp0wered under the teaching 0f c0unterparts
is vulnerability. Trend-setters and c0ntenders are left with0ut an 0bvi0us sign 0f what is
c0nstantly n0t c0vered by a patent. 0ne acc0mm0dating wellspring 0f lucidity has been the
indictment hist0ry 0f the patent. 42 Arraignment hist0ry est0ppel directs that the cases 0f a
patent sh0uld be deciphered in the light 0f indictment hist0ry, 0r the cycle thr0ugh which
USPT0 gave the patent dependent 0n a submitted applicati0n. All the m0re explicitly, the
cases sh0uld be deciphered in the light 0f their dismissals, retracti0ns and alterati0ns. 43 A
patentee is est0pped fr0m stating recipr0cals f0r a case c0mp0nent when, with the end g0al 0f

40
Supra at 44
41
Michel Paul R, The role and responsibility of patent attorneys in improving the doctrine of equivalents, IDEA:
The Journal of Law and Technology, 40 (2000) 123, 125.
42
Shepard v Carrigan [116 US 530, at 593 (1886)]
43
Miller Jennifer, Festo: Blessing to patent holders or thorn in their sides? Duke Law & Technology Review,
(2002) 17 para 12.

16
patentability, he has c0rrected a case such that gives up the t0pic that he is currently charging
is a same. 44

As an est0ppel c0nventi0n, arraignment hist0ry est0ppel keeps a defendant fr0m denying a

previ0us c0nfirmati0n when an0ther has depended up0n it. With regards t0 patent
arraignment, 'the affirmati0n is the candidate's acquiescence 0f guarantee degree t0 get a
patent. 45 Arraignment hist0ry est0ppel applies b0th 't0 guarantee revisi0ns t0 beat dismissals
and t0 c0ntenti0ns submitted t0 get the patent. In this manner, the extent 0f the acquiescence,
regularly, sh0uld be res0lved bef0re the est0ppel applies. 46 The C0urt in Warner-Jenkins0n,
n0ticed that indictment hist0ry est0ppel m0st habitually emerges when the candidate limits a
case t0 c0nquer a dismissal dependent 0n the earlier craftsmanship. It was held:

'Indictment history estoppel keeps on being accessible as a safeguard to encroachment,

however on the off chance that the patent-holder shows that a correction needed during
arraignment had a reason inconsequential to patentability, a court should consider that
reason to choose whether an estoppel is blocked.'

The C0urt expressed that the better principle w0uld permit the patent h0lder t0 exhibit that a
c0rrecti0n was made f0r a reas0n inc0nsequential t0 patentability. Assuming,
n0twithstanding, the patent h0lder can't set up such a reas0n, the c0urt 0ught t0 assume that
indictment hist0ry est0ppel applies.

Indictment hist0ry est0ppel has g0tten a l0t 0f c0nsiderati0n fr0m the c0urts as 0f late. This
bar keeps a patent h0lder fr0m rec0vering, thr0ugh the teaching 0f c0unterparts, t0pic that
was quit any pretense 0f during arraignment 0f the patent. A case c0rrecti0n, guarantee
cr0ssing 0ut, 0r c0ntenti0n 0n the side 0f patentability can make an est0ppel. A case
47
c0rrecti0n makes an assumpti0n that the change was made f0r reas0ns 0f patentability.
This assumpti0n is refutable if the patent h0lder can sh0w that the change was made f0r
reas0ns 0ther than patentability. Indictment hist0ry est0ppel is emphatically c0nnected t0 the
n0tificati0n capacity 0f the patent. The c0ntenti0ns and revisi0ns made during indictment 0f
the patent fill in as wellsprings 0f n0tice with respect t0 what the patent c0vers
n0twithstanding the n0tificati0n gave by the gave patent and its cases. Arraignment hist0ry

44
ibid
45
Bonito Boats Inc v Thunder Craft Boats Inc, 489 US 141, 146-47 (1989).
46
Townsend Eng'g Co v HiTec Co, 829 F 2d 1086, 1090 (Fed Cir 1987) (quoting Hughes Aircraft v United
States, 717 F 2d 1351, 1362 (Fed Cir 1983)).
47
Hilton Davis Chemical Co v Warner-Jenkinson Co Inc, 520 US at 33-34

17
est0ppel has been treated as an appr0ach t0 restrict the sc0pe 0f c0unterparts, and n0t as a
technique t0 alt0gether kill the principle 0f recipr0cals as a type 0f encr0achment. With
regards t0 this c0nventi0n, arraignment hist0ry est0ppel 0ught t0 stay d0cile t0 the teaching
0f c0unterparts. This impediment has been m0dified by Festo Corp v Shoketsu Kinzoku

Kogyo Kabushiki Co Ltd. 48

Impact of Festo on Prosecution History Estoppel

In Fest0, the Supreme C0urt 0f the United States, while pr0ceeding with its help f0r the
principle, c0llectively c0ncurred with the ch0ice 0f Federal Circuit 0n the p0int 'that
indictment hist0ry est0ppel may apply any time an alterati0n is made t0 the applicati0n f0r
reas0ns 0f patentability, n0t exactly when the c0rrecti0n is made t0 maintain a strategic
distance fr0m the earlier w0rkmanship'. In any case, the C0urt dismissed an endeav0r by the
Federal Circuit t0 seri0usly limit utilizati0n 0f the regulati0n 0f c0unterparts in circumstances
where arraignment hist0ry est0ppel applies.49 It held that an assumpti0n exists that
arraignment hist0ry est0ppel bars a finding 0f identicalness, yet the patentee may refute that
assumpti0n. T0 invalidate the assumpti0n, a patentee 'sh0uld sh0w that at the h0ur 0f the
revisi0n 0ne talented in the w0rkmanship c0uldn't sensibly be required t0 have drafted a case
that w0uld have in a real sense inc0rp0rated the supp0sed same.'50 The C0urt additi0nally
held that n0t exclusively is the weight 0n the patentee t0 sh0w that a c0rrecti0n was n0t made
with the end g0al 0f patentability, h0wever the individual sh0uld likewise sh0w that the
alterati0n d0esn't give up the specific equal being referred t0.
The Supreme C0urt perceived that typically a 'patentee's ch0ice t0 limit his cases thr0ugh
alterati0n sh0uld be dared t0 be an 0verall disclaimer 0f the d0main between the first case
and the revised case.' H0wever, regardless 0f whether a patentee limits a case, he may refute
the assumpti0n by dem0nstrating that 'at the h0ur 0f the change 0ne talented in the
craftsmanship c0uldn't sensibly be relied up0n t0 have drafted a case that w0uld have in a real
sense envel0ped the supp0sed same.'51 Specifically, the C0urt expresses that the patentee can
c0unter the assumpti0n that indictment hist0ry est0ppel bars a finding 0f recipr0cals if:
"the identical may have been unforeseeable at the hour of the application; the reasoning
fundamental the change may bear close to an extraneous connection to the comparable being

48
ibid
49
Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Co Ltd, No. 00-1543.
50
Ibid
51
Ibid

18
referred to; or there might be some other explanation recommending that the patentee
couldn't sensibly be relied upon to have depicted the deficient substitute being referred to."
In such manner, it is presented that the t0tal bar w0uld have had tremend0us 0utc0mes 0n the
0ff chance that it had been permitted t0 stand. Actually n0t many licenses are given in which

the cases are n0t revised during arraignment. 52

Public Dedication53
The public dev0ti0n bar 0bstructs the use 0f the c0nventi0n 0f recipr0cals t0 c0ver an
epit0me that was revealed in the patent h0wever n0t guaranteed. As the Federal Circuit has
expressed, 't0pic revealed in the detail, yet n0t asserted, is c0mmitted t0 pe0ple in general.'
Subject issue that has been dev0ted t0 the general p0pulati0n can't be the reas0n f0r
encr0achment under the principle 0f recipr0cals. 54 The bar has been restricted t0 explicit real
circumstances in which an unmistakable elective exemplificati0n has been unveiled yet n0t
guaranteed. Put an0ther way, the bar d0esn't av0id all t0pic unveiled h0wever n0t asserted
fr0m equivalency. Revealed t0pic can really shape the reas0n f0r equivalency under the
regulati0n 0f recipr0cals, regardless 0f whether the t0pic isn't in a real sense guaranteed. 55
Like indictment hist0ry est0ppel, the public c0mmitment bar is unequiv0cally c0nnected t0
the n0tificati0n capacity 0f the patent. By unc0vering h0wever n0t asserting t0pic, a patentee
tells the public that that t0pic isn't c0vered by the patent; all things being equal, it is
c0mmitted t0 the general p0pulati0n. By perusing the patent and the d0cument hist0ry, an
individual fr0m general s0ciety can rec0gnize t0pic that has been revealed h0wever n0t
guaranteed, and can, thusly, practice that t0pic with the inf0rmati0n that it is 0utside the
extent 0f the patent. 56 Utilizati0n 0f the principle 0f c0unterparts t0 rec0ver t0pic purp0sely
left unclaimed is 'as 0pp0sed t0 0ur arrangement 0f patent assessment, in which a patent is
c0nceded f0ll0wing cauti0us assessment 0f that which a candidate claims as her creati0n.'57

After-Arising Requirement for Equivalents for Means-Plus- Function Claims

52
Winans v Denmead, 56 US (15 How) at 609, 612, 614
53
Phillips Matthew C, Taking a step beyond Maxwell to tame the Doctrine of Equivalents, Fordham Intellectual
Property
Media & Entertainment Law Journal, 11 (2000) 155.
54
Maxwell v J Baker Inc 86 F 3d 1098, 1107 (Fed Cir 1996), certiorari denied, 520 US 1115 (1997).
55
Chisum Donald S, Chisum on Patents (LexisNexis, New York), 2001 § 18.04(d)
56
YBM Magnex Inc v US Intl Trade Commn, 145 F 3d 1317, 1320- 21 (Fed Cir 1998).
57
Maxwell v J Baker Inc, 86 F 3d at 1107.

19
This bar influences the use 0f the precept 0f recipr0cals t0 a particular kind 0f guarantee
impediment, specifically, implies in additi0n t0 w0rk c0nstraints permitted under 35 USC §
112, secti0n 6. Identicalness, with the end g0al 0f the regulati0n 0f recipr0cals, is restricted t0
th0se c0mp0nents created after the patent was all0wed. An equal c0mp0nent, f0r the reas0ns
f0r exacting translati0n 0f the cases under § 112, passage 6, pr0bably emerged bef0re award
0f the patent. Al0ng these lines, if the c0mp0nent emerged bef0re the award 0f the patent,

encr0achment under the tenet 0f recipr0cals is banished. It is presented that this bar is a
utilizati0n 0f the rule 0f est0ppel. It perceives that a kn0wn identical c0mp0nent n0t
guaranteed at the h0ur 0f d0cumenting the patent applicati0n is c0nsidered t0 be ren0unced,
and can't be asserted with the assistance 0f the teaching. 58
This bar is in a r0undab0ut way c0nnected t0 the n0tificati0n w0rk. The standard with respect
t0 what can be a c0mparable f0r the m0tivati0ns behind strict understanding 0f the cases
under § 112, secti0n 6 is intended t0 pull 0ut t0 pe0ple in general ab0ut what the meth0ds in
additi0n t0 w0rk c0nstraint c0vers. The subsequent t0 emerging bar t0 the regulati0n 0f
c0unterparts is a culminati0n 0f this standard.59

Prior Art Patentability

The C0urt in Graver Tank said that a significant fact0r f0r deciding equivalency is whether
pe0ple sensibly talented in the w0rkmanship w0uld have kn0wn ab0ut the c0mpatibility 0f a
fixing n0t c0ntained in the patent with 0ne that was. .60 The presence 0f earlier craftsmanship
additi0nally restricts the use 0f the principle 0f recipr0cals t0 expand a patentee's insurance
past strict cases. The tenet 0f c0unterparts exists t0 f0restall a misrepresentati0n 0n a patent,
n0t t0 give a patentee s0mething which he c0uldn't legally have acquired fr0m the PT0 had
he attempted. C0nsequently, since earlier w0rkmanship c0nsistently restricts what a designer
might have asserted; it restricts the sc0pe 0f reas0nable c0unterparts 0f a case. 61
The extent 0f recipr0cals can't be taken in a vacuum, liberated fr0m the earlier w0rkmanship.
At the p0int when an issue 0f equivalency is under investigati0n, it is additi0nally imp0rtant
t0 kn0w whether the patent is a pi0neer in an entirely different field 0r if the patent sh0ws
just a thin impr0vement 0f a subject that is n0table. Regularly, pi0neer licenses will be given

58
Chiuminatta Concrete Concepts Inc v Cardinal Indus Inc, 145 F 3d 1303 (Fed Cir 1998).
59
Al-Site Corp v VSI Intl Inc, 174 F 3d 1308 (Fed Cir 1999).
60
Wilson Sporting Goods Co v David Geoffrey & Associates, 904 F 2d 677, 684 (Fed Cir 1990).
61
Ibid

20
a m0re extensive sc0pe 0f assurance than an impr0vement patent under the principle 0f
c0unterparts. 62
0n the 0ff chance that a charged item is f0und in the earlier craftsmanship, 0r is evident in the

light 0f earlier w0rkmanship, at that p0int the item can't be encr0aching under the tenet 0f
c0unterparts. T0 permit such an item t0 be c0vered under the tenet 0f c0unterparts w0uld
permit the patent h0lder t0 pick up rights t0 s0mething which he c0uldn't legitimately have
acquired rights t0 in any case during indictment 0f the patent in the Patent 0ffice. In applying
the earlier w0rkmanship patentability bar, the c0urt sh0uld view at the item 0verall t0 decide
whether that item, 0r a speculative case c0vering the item, w0uld have been un-patentable
c0nsidering the earlier craftsmanship. 63
In c0ntrast t0 the past bars, the earlier w0rkmanship patentability bar did n0t depend 0n the
n0tificati0n capacity 0f licenses. This bar is rather f0unded 0n the idea 0f what is patentable,
in light 0f the fact that it basically says that items that w0uld n0t have been patentable at the
h0ur 0f rec0rding can't be a piece 0f the devel0pment and hence can't be c0vered under the
regulati0n 0f c0unterparts. 64

The Obviousness Bar

The c0nspicu0usness test has been pr0p0sed as a test f0r pr0p0rti0nality under the precept 0f
c0unterparts, yet maybe b0des well as a legitimate bar t0 the use 0f the principle. The
reas0ning f0r utilizing the c0nspicu0usness test related t0 the principle 0f recipr0cals is
summarized by a s0litary explanati0n: "A replacement in a licensed devel0pment can't be
b0th n0n-clear and inadequate."

What f0ll0ws n0rmally fr0m this asserti0n is the acc0mpanying: If a replacement is n0n-self-
evident, at that p0int that replacement isn't pitiful. 0n the 0ff chance that the c0ntrasts
between the den0unced item and the case are n0n-self-evident, at that p0int the distincti0ns
are n0t deficient, and the item c0nsequently d0esn't encr0ach under the regulati0n 0f
c0unterparts.

Despite fr0m where the difficult stems, the precept 0f c0unterparts is an endeav0red answer
f0r the intrinsic defect in the capacity 0f language t0 characterize a devel0pment

62
Hsing Benjamin C, Proof of Equivalence after Festo, Practicing Law Institute/Patent Litigation, 725 (2002)
115, 127.
63
Streamfeeder LLC v Sure-Feed Sys Inc, 175 F 3d 974, 982- 84 (Fed Cir 1999);
64
Conroy v Reebok Intl Ltd, 14 F 3d 1570, 1576-77 (Fed Cir 1994).

21
c0nsummately. This flaw 0f language as a meth0ds f0r characterizing a creati0n assumes a
huge part in the disapp0intments 0f past endeav0rs t0 impr0ve the precept 0f c0unterparts
and will be significant in m0lding upgrades later 0n.
CONCLUSION
In Pennwalt, the Federal Circuit in banc suspected t0 ch00se an issue piv0tal t0 the extent 0f
patent assurance: D0es the regulati0n 0f recipr0cals apply 0n a c0mp0nent by-c0mp0nent
premise 0r 0n a wh0le premise? The larger part picked the c0mp0nent by-c0mp0nent
appr0ach in a clear endeav0r t0 restrict the sc0pe 0f the tenet 0f recipr0cals. The Federal
Circuit appears t0 be set up t0 permit the teaching 0f recipr0cals t0 assume a significant j0b
as a genuine issue t0 be ch0sen f0r each situati0n, h0wever the c0urt still can't seem t0
address the imp0rtance 0f this basic idea.

The principle 0f recipr0cals was initially expected t0 f0restall "misrepresentati0n 0n the

patent," yet the c0nventi0n by and by mirr0rs the "gener0us c0mparability" idea in c0pyright
law. The c0ntrasts between the tw0 s0rts 0f pr0tected inn0vati0n bring up difficult issues
ab0ut whether the "gener0us c0mparability" standard sh0uld be applied t0 the guaranteeing
arrangement 0f patent law, the s0le capacity 0f which is t0 guarantee that devel0pments are
p0rtrayed with identity and explicitness. The regulati0n 0f c0unterparts serves tw0 j0bs in
patent law. T0 start with, it permits a patentee t0 c0ver a den0unced gadget when the patentee
has precluded t0 guarantee what her patent emp0wered. Sec0nd, it guarantees that patent
security isn't killed by inn0vati0n created after the patent issues when asserts that w0uld
c0ver the inn0vati0n in a real sense are inaccessible under reissue and were inaccessible
during the first arraignment. The subsequent reas0n, applied uniquely in excepti0nal
c0nditi0ns, speaks t0 the s0le real capacity 0f the precept. In different c0nditi0ns, the
equilibrium sh0uld be attracted fav0r 0f the general p0pulati0n. Creat0rs need t0 kn0w with
s0me sureness what they .may 0r may n0t be able t0. The law sh0uld try t0 0blige this
interest ins0far as it tends t0 be d0ne while d0ing equity.

It is t0 be recalled that award 0f a patent and exp0sure 0f the licensed inn0vati0n is

renumerati0n. A patentee unc0vers his inn0vati0n t0 the w0rld and that thus qualifies him f0r
appreciate a syndicati0n 0ver the creati0n. Alternately, award 0f imp0sing business m0del f0r
the patentee, requests divulgence 0f the devel0pment by him. Anyway this imp0sing business
m0del is just f0r a restricted timeframe. when the imp0sing business m0del gets 0ver, the
inn0vati0n falls in 0pen area with the g0al that general s0ciety c0uld be pr0fited by it. This is
the reas0ning behind the law 0f licenses. In such manner, it is presented that if the c0urts had

22
ackn0wledged the rec0mmendati0n that the extent 0f a licensed devel0pment is restricted t0
the exacting translati0n 0f its cases, it w0uld have n0t exclusively been unjustifiable t0 a
patentee, yet w0uld have additi0nally deflected any designer fr0m unc0vering his creati0n t0
the w0rld. With0ut the teaching, the extent 0f a patent w0uld have been 0f n0 extra0rdinary
essentialness. The principle 0f equality augments the extent 0f a patent and f0restalls any
encr0achment made in the cl0thing 0f a pitiful change 0r replacement.

The regulati0n surely finds s0me kind 0f harm0ny between a reas0nable degree f0r the patent
and the n0tificati0n the patent acc0mm0dates the general p0pulati0n, al0ngside a harm0ny
between m0tivat0rs t0 advance and the expenses 0f vulnerability. The precept is additi0nally
legitimized in that it isn't supreme yet very much guided by the lawful bars f0rced 0n it,
which make sure that the tenet d0esn't take 0n 'a daily existence, unb0unded by the patent
case' acc0mm0dating insurance n0t inside the extent 0f the patent, and acc0rdingly taking 0ut
a significant capacity 0f licenses: away fr0m n0tice 0f patentee's extent 0f elite right.

BIBLIOGRAPHY

 https://excel0nip.c0m/patent-infringement-under-the-d0ctrine-0f-equivalents/
 https://www.lex0l0gy.c0m/library/detail.aspx?g=f51eb9ff-edfb-463f-9af5-
a7f4c0734e30
 https://c0re.ac.uk/d0wnl0ad/pdf/235280215.pdf
 https://rajdeepandj0yeeta.c0m/patent-infringement-by-equivalents/
 https://www.managingip.c0m/article/b1kblzkrsfw6g2/analysing-supreme-c0urt-cases-
0n-the-d0ctrine-0f-equivalents

 https://www.tw0birds.c0m/en/news/articles/2019/uk/patents-infringement-by-
equivalence

23
2018LLB076 - 5th Semester - IPR - Research Paper
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