More details: In an earlier post (here), I discussed the claim construction opinion for this same infringement suit. Several independent claims included "circuitry" elements: "call progress detector circuitry for detecting [a first or second call waiting signal];" and "circuitry to recognize a first signal [indicative of the first or second call waiting signal." As noted in my earlier post, the District Court construed the term "circuitry" in both elements to include software-based implementations, i.e., a processor performing the claimed function.
The accused device ("Catch-a-Call") implemented both the detecting and the recognizing functions with code executing on a processor. On Summary Judgment, the court found that the Catch-a-Call did not literally infringe because it "uses a single element - an Atmel brand microprocessor running a software program developed by [the manufacturer defendant] ... while the [patent in suit] claims two discrete elements to accomplish these functions."
The court further explained that this situation does not preclude a finding of infringement through the doctrine of equivalents, citing to Eagle Comtronics, Inc. v. Arrow Comm'n Lab's, 305 F.3d 1030, 1317 (Fed. Cir.2002). However, in this particular case the Plaintiff only asserted doctrine of equivalents for one of the disputed means, and did not even develop particularized evidence during discovery with respect to the other.
My two cents: Using one element instead of two to perform a function is precisely why we have the Doctrine of Equivalents. I'm no expert on the function-way-result test, but my gut feeling is that an accused infringer using one processor instead of two would be covered by Doctrine of Equivalents. I have no idea why the patentee did not pursue a Doctrine of Equivalents theory.
That said, I'm not so sure the one-is-different-than-two rule from Unique Concepts is appropriate in the software context. The reasoning used by Unique Concepts was that A and B must be construed differently than A and A, because otherwise reciting both types (A and B) is redundant. That makes sense when A and B are "linear border piece" and "right angle piece" — A and B really are different. But I think Kernius is really a case of A ("circuitry") and A ("circuitry"), not A ("circuitry for X") and B ("circuitry for Y").
Under Kernius, do you need five claim permutations to get literal coverage of a software implementation of functions A, B, and C?
- first processor doing A, B, and C;
- first processor doing A and B and second processor doing C;
- first processor doing A and second processor doing B and C;
- first processor doing A and C and second processor doing B;
- first processor doing A, second processor doing B, and third processor doing C;
"Using one element instead of two to perform a function is precisely why we have the Doctrine of Equivalents."
ReplyDeletePerhaps, but Fhe federal circuits "no vitiated claim elements" doctrine might well prevent the DOE from applying in many such situations. Finding that a single processor is equivalent to a first and second processor may be found to "vitiate" the recitation of two processors in the claimn.
An alternate DOE argument might be that the "circuitry" is software plus cpu/other stuff, and that two different hardware/software combinations are being used for doing A and B even though the same cpu is involved.
Of course that ignores the possibility that Festo or some other thing made the DOE unavailable.
This seems ridiculous to me. So, for example, technology is at a point where you need one processor to perform one function and another processor to perform another function and you claim it that way. Then when technology advances and the licensee can combine the two processors into one, the licensee no longer infringe the claim (of course as noted DOE could apply, but with all its exclusions). Additionally, as long as the claims don't call out first circuitry and second circuitry, the circuitry can be the same circuitry that just performs two different functions. I've often gotten rejections based on this notion and have been forced by examiners to amend to a first widget and a second widget, the second widget being different from the first widget. These are the kinds of decisions that really frustrate me.
ReplyDelete>Finding that a single processor is equivalent
ReplyDelete>to a first and second processor may be found to
>"vitiate" the recitation of two processors in
>the claim.
Agreed that it's likely the accused infringer will try to avoid DoE by bringing up vitiation.
But the Fed Cir statement in Eagle Comtronics suggests that vitiation would *not* be found with Kernius facts:
whether or not a limitation is deemed to be vitiated must take into account that when two elements of the accused device perform a single function of the patented invention, or **when separate claim limitations are combined into a single element of the accused device,** a claim limitation is not necessarily vitiated, and the doctrine of equivalents may still apply if the differences are insubstantial.
Now, that doesn't answer the question on equivalence. It only means that the question of insubstantial diffs goes to a jury.
>that ignores the possibility that Festo or some
ReplyDelete>other thing made the DOE unavailable.
Sure. But surely we're OK with Festo precluding DoE coverage if the patentee made an amendment from a single processor doing A and B to a processor doing A and a processor doing B. I mean, in such a situation, the patentee doesn't "deserve" equivalence, right?
>the licensee can combine the two processors
ReplyDelete>into one, the licensee no longer
>[literally] infringe the claim
I agree that it's ridiculous that the infringer escapes completely.
So you think the Kernius claim is literally infringed? How do you distinguish Unique Concepts?
As I noted in my post, the two-is-different-than-one reasoning of Unique Concepts seems inappropriate in the case of claims that are basically functional. Yet I'm not sure how to articulate the distinction.
I do think that infringement situations like Kernius perfectly illustrate the policy reasons for having DoE. But it seems like the usefulness of DoE has been eroded over the years. So that while DoE "should" cover this situation, perhaps it doesn't under current case law.
>have been forced by examiners to amend to a
ReplyDelete>first widget and a second widget, the second
>widget being different from the first widget.
In many cases, the claim drafter probably does intend "different" when using first and second. I'm thinking of something like:
comparing a field to a first address;
comparing the field to a second address;
I would amend to "second address different than the first" in this situation to make the Examiner happy. Because "different" was implicit in my claim, and I'm not giving up any infringers with this amendment.
Not so for "a processor" -> "a first processor and a second processor". In that situation, you are giving up scope. And you've lost DoE to Festo, right?