Doctrine of Equivalents Must Be Applied on Element-By-Element Basis
Client Alert | 1 min read | 02.14.08
A Federal Circuit panel, in Miken Composites v. Wilson Sporting Goods Co. (No. 2006-1628; February 6, 2008), affirms a district court’s summary judgment determination that certain softball and baseball bats did not infringe a patent related to an improved bat design. The panel reviews and affirms the district court's claim construction as well as the determination of non-infringement.
In the patented bat design, a tubular insert is suspended within the impact portion of the tubular frame of the bat, yielding leaf-spring characteristics. One of the disputed claim terms was "insert", which had previously been construed to have its plain meaning of "something inserted or intended for insertion." The patentee (Wilson) argued that the district court erred in its construction because, it contended, the district court was importing a process limitation into claims for a product. The panel disagreed, finding that even though the meaning of the claim term has functional attributes, it nonetheless recites a structural component.
The panel affirms a finding of no literal infringement with respect to both Miken's carbon and non-carbon bats. Next, the panel reviews the district court's finding that the carbon bats do not infringe under the doctrine of equivalents. The panel concludes that Wilson had shown, at most, “the equivalency of the accused products as a whole.” In order to infringe under the doctrine of equivalents, however, the panel states that an objective inquiry must be made on an element-by-element basis. Therefore, non-infringement under the doctrine of equivalents is affirmed.
Insights
Client Alert | 2 min read | 05.27.25
Federal Circuit Resolves Circuit Split on Scope of IPR Estoppel
As part of the 2012 America Invents Act, statutory estoppel was included to balance the interests of patent owners and patent challengers following an inter partes review (“IPR”). Estoppel prevents an IPR petitioner from later asserting in court that a claim “is invalid on any ground that the petitioner raised or reasonably could have raised” during the IPR. 35 U.S.C. § 315(e)(2). As applied, estoppel prevents petitioners from later relying in district court or in ITC proceedings on most patents or printed publications – the limited bases upon which petitioner can rely in an IPR. But a question remained, and contradictory district court decisions arose, as to whether petitioners would be estopped from relying on a prior art commercial product (known as “device art,” which could not itself have been raised in the IPR) even if a printed publication describing the product (i.e. a patent or technical manual) was available and presumably could have been raised.
Client Alert | 6 min read | 05.27.25
U.S. Departments of State and Treasury Issue Immediate Sanctions Relief for Syria
Client Alert | 3 min read | 05.23.25
Executive Order Seeks Most-Favored-Nation Drug Pricing and HHS Announces Price Targets
Client Alert | 4 min read | 05.22.25
Opportunities for Procurement on the Horizon as UK Concludes Free Trade Agreement With India