It is possible to identify infringements using the doctrine of equivalents even when none exist. The doctrine of equivalents can be used to demonstrate infringement when a new invention is substantially similar to one with a patent but does not technically infringe on the patent’s claims.
In these situations, the court will consider whether the infringing product serves the same function as the original product or is intended for the same use. The patent holder will prevail in their claim if it is determined that the product is identical in these ways.
The new invention must substantially incorporate the same elements as the previous invention.
As a result, they pass the triple identity test’s requirements. If one of the components is absent, the remaining components will only be identical if the infringing device differs slightly.
Only after a claim has been made should equivalency be investigated. The patenting of innovation shouldn’t take place. The nature of fundamental components may change due to new technology created after patenting.
What Situations Fall Under the Equivalents Doctrine?
When a patent holder establishes that an invention violates their patent by serving the same purpose, the doctrine of equivalents comes into play.
How Can the Doctrine of Equivalents Be Used to Establish Infringement?
Using the doctrine of equivalents, you must demonstrate two types of equivalence to establish infringement:
- Element-by-element equivalency: Every component of the patented invention must either be present in the new invention or have an equivalent. This is known as an element-by-element equivalency.
- Overall equivalence: The invention must accomplish the same purpose in essentially the same way to violate a patented innovation.
The doctrine of equivalents prevents infringement when an innovation possesses element-by-element equivalent but does not carry out a similar function or does so differently.
Similarly, if a new invention appears to serve the same purpose as a claimed invention but lacks all of the ingredients or their equivalents, it is unlikely that an infringement claim will be made against it.
What Does the Term “Equivalent Element” Mean?
An element is equivalent if, to a person with ordinary competence in the relevant field, the difference between it and the patented invention would be negligible.
The vitiation rule is a concept found in the DOE. When two elements are completely at odds with one another, this rule is a typical defense against a DOE claim.
Vitiation stops the DOE from being utilized to invalidate a claim term.
When a jury could not determine that two elements are equal, vitiation would apply. Without consulting a jury, the judge would reach a final or partial judgment on this case.
No matter how different two pieces are built, as long as they function similarly, it doesn’t matter.
The constituents must be dissimilar for vitiation to apply and equivalence to be possible. The jury will decide if something is equivalent if the judge cannot.
Vitiation accusations are making a comeback in several ways. The Federal Circuit has put the responsibility on patent holders, which is why this is the case.
A patent frequently issues with different claims than the ones with which it was originally filed. Patents may be refused more than once. Claims must be modified to be more specific and to include more illustrative information.
The applicant cannot make larger claims if they modify their claims to avoid previous art after a patent application is rejected due to prior art. They forfeited the broader claim to allow the lesser claims to be approved. As a result, they cannot assert that the limited claims are comparable to the broad claims.
In a file kept by the USPTO, your claims’ rejection and amendment history are documented.
This history will be kept in a substantial paper envelope known as a “file wrapper.” This is why rejecting a claim, limiting it, and resubmitting it with a limiting modification is known as a “file wrapper estoppel.”
The Need for the Doctrine of Equivalents
Typical components of patents include the following:
- Illustrations for the innovation
- A description
- A claim or claims
The patent claims are the sole part that matter in a case of infringement. Each patent claim will be examined for infringement and contrasted with the alleged product. Most of the time, infringement is obvious.
Sometimes, though, this isn’t the case. To prevent infringement, a person could occasionally add changes to their creation. The DOE aims to clarify infringement, which these little variations can cause.
DOE compares inventions in great detail, which is why it is a powerful tool for defending patents. DOE assesses an invention’s functionality, not its aesthetics. This enables the court to detect violations by looking past cosmetic changes.
The idea may appear straightforward, but putting it into practice is frequently really difficult. For instance, both parties will frequently call an expert witness in a DOE case. This could make the idea of equivalence unclear. An element that applies to one function but not another may not be equal. Due to this, it may be exceedingly difficult for a patent owner to make their case.
The process used to grant a patent presents another challenge. A patent applicant may occasionally need to refine their claims to receive approval. Due to this restriction, they cannot use more expansive claims in a DOE lawsuit. The patent holder can make far more expansive claims if they are a pioneer in their industry.
The “reverse notion of equivalents” is another concept. In a reverse DOE case, the defendant’s invention may have undergone significant modification to the point where it performs the same task entirely differently. It would be extremely difficult for the patent owners to demonstrate infringement in this situation.
Is Design Important?
No. Design is irrelevant in a DOE case; only function counts. DOE applies, and infringement is likely to have occurred if two devices carry out the same task identically and provide the same outcome.
Are there Protections Against DOE?
Yes. Vitiation is the most typical kind of defense. The defendant asserts that a jury could not rationally determine equivalency. Vitiation does not imply the absence of a single element because there may still be an equivalent for a missing component.
The Doctrine of Equivalents: Are There Any Restrictions?
The most frequent exception to the law of equivalents is when an inventor reduces the range of the claims in his patent during the application process to meet the requirements for patentability.
In this instance, the inventor cannot later widen the scope of the claims he had condensed to get a patent by using the law of equivalents. Prosecution history estoppel is the legal term for this restriction.
Should I Work with a Patent Lawyer?
As you can see, cases using the doctrine of equivalents are very challenging. They demand a heavy burden of proof and in-depth information. You should speak with a local patent attorney near you if you think you may have violated someone else’s patent or that they have violated your patent under the doctrine of equivalents.
A patent lawyer can assist you in determining whether any infringement has occurred and, if necessary, can represent you in court if any disputes arise regarding your rights.