tag:blogger.com,1999:blog-6733236595417664807.post9127441835110150620..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Two "circuitry" elements not infringed by processor performing both functionsKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger6125tag:blogger.com,1999:blog-6733236595417664807.post-80159964414799160742010-03-17T11:22:51.173-04:002010-03-17T11:22:51.173-04:00>have been forced by examiners to amend to a
&...>have been forced by examiners to amend to a <br />>first widget and a second widget, the second <br />>widget being different from the first widget. <br /><br />In many cases, the claim drafter probably does intend "different" when using first and second. I'm thinking of something like:<br /><br />comparing a field to a first address;<br />comparing the field to a second address; <br /><br />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. <br /><br />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?Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-12086000760646920142010-03-17T11:17:59.997-04:002010-03-17T11:17:59.997-04:00>the licensee can combine the two processors
&...>the licensee can combine the two processors <br />>into one, the licensee no longer <br />>[literally] infringe the claim <br /><br />I agree that it's ridiculous that the infringer escapes completely. <br /><br />So you think the Kernius claim is literally infringed? How do you distinguish Unique Concepts? <br /><br />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. <br /><br />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.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-3664248141688651742010-03-17T11:11:30.907-04:002010-03-17T11:11:30.907-04:00>that ignores the possibility that Festo or som...>that ignores the possibility that Festo or some <br />>other thing made the DOE unavailable.<br /><br />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?Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-18779488532883912752010-03-17T11:07:44.631-04:002010-03-17T11:07:44.631-04:00>Finding that a single processor is equivalent ...>Finding that a single processor is equivalent <br />>to a first and second processor may be found to <br />>"vitiate" the recitation of two processors in <br />>the claim.<br /><br />Agreed that it's likely the accused infringer will try to avoid DoE by bringing up vitiation. <br /><br />But the Fed Cir statement in Eagle Comtronics suggests that vitiation would *not* be found with Kernius facts:<br /><br />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.<br /><br />Now, that doesn't answer the question on equivalence. It only means that the question of insubstantial diffs goes to a jury.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-54536293775075292372010-03-17T09:55:52.929-04:002010-03-17T09:55:52.929-04:00This seems ridiculous to me. So, for example, tec...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.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-17823991256712865912010-03-16T14:28:08.352-04:002010-03-16T14:28:08.352-04:00"Using one element instead of two to perform ..."Using one element instead of two to perform a function is precisely why we have the Doctrine of Equivalents."<br /><br />Perhaps, 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.<br /><br />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. <br /><br />Of course that ignores the possibility that Festo or some other thing made the DOE unavailable.Anonymousnoreply@blogger.com