Transcript Doctrine of Equivalents

Intellectual Property
Boston College Law School
March 10, 2008
Patent – Infringement 3
Doctrine of Equivalents
• Limitations
– Claim on prior art
– Prosecution history estoppel
– Disclosed but not claimed
Problem 3-11
• “1. A pocket toothbrush having an exterior
structure resembling a traditional fountain pen
case comprising
– a. a removable cylindrical end cap cover,
– b. a main cylindrical body shaft over at least one end of
which said end cap cover fits …,
– c. said cylindrical body shaft having one end which
contains toothbrush bristles …,
– d. said cylindrical body shaft including an interior passage
extending into said bristle end and having at least one
termination opening in the area at the base of said bristles,
– e. a movable plunger extending into said cylindrical body
shaft in said main cylindrical body shaft,
– f. said body shaft including an interior space for the
accommodation of a charge of toothpaste to be fed to said
bristles by operation of said movable plunger …”
Means Plus Function Claims
• 35 U.S.C. 112
– “An element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
material, or acts in support thereof, and such claim shall
be construed to cover the corresponding structure,
material, or acts described in the specification and
equivalents thereof.”
Contributory Infringement
• Elements
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(1) Sale of a product
(2) Material part of patented invention/process
(3) Knowledge
(4) Specially made or adapted for infr. use
(5) Not a staple article of commerce
(6) No substantial non-infringing use
Foreign Activity
• 35 U.S.C. 271(f)(1)
– “Whoever … supplies or causes to be supplied
in or from the United States all or a
substantial portion of the components of a
patented invention … in such manner as to
actively induce the combination of such
components outside the United States …shall
be liable.”
Administrative
• Assignment for next class
– Read IV.D – Defenses