Academic journal article Santa Clara High Technology Law Journal

Sec. 112,6 Claim Interpretation and the Doctrine of Equivalents: An Invitation to Confused Thinking

Academic journal article Santa Clara High Technology Law Journal

Sec. 112,6 Claim Interpretation and the Doctrine of Equivalents: An Invitation to Confused Thinking

Article excerpt

I. INTRODUCTION

Intellectual property is an asset and commodity of expanding value and importance in our increasingly technology-driven economy. (2) The patent system seeks to stimulate technological advances and encourage research and development by providing financial rewards that make research and development profitable. One of the challenges that the patent system faces in meeting the goals of stimulating the technological economy is to provide a predictable body of law in a field in which the vagaries and inadequacies of language create impediments to the accurate description of intellectual property rights. Lack of certainty as to the metes and bounds of a property right decreases the value and fungibility of the right and drains the economy of resources by diverting energy toward sorting out ownership rights.

The interpretation of a patent's claims is at the heart of the ownership right. Although 35 U.S.C [section] 112, [paragraph] 6 authorizes claims written in functional terms, the law surrounding the interpretation of [section] 112, [paragraph] 6 claims is conflicted. In some instances a [section] 112, [paragraph] 6 claim has a smaller scope than if the claim described the structure of the device. A more uniform law of interpretation is necessary in order to direct focus on the import of the language of the claim and less on its form. "Since the law is to benefit the inventor's genius and not the scrivener's talents," (3) secondary considerations should be analyzed in determining the scope of a claim.

II. BACKGROUND

The 1952 revision of the Patent Act added what is now [paragraph] 6 of [section] 112, allowing patent claims to be drafted that describe an invention by the function performed by its components (i.e., drafted in means-plus-function language):

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. (4)

This section clarified that functional claim language was valid, at a time when courts had formed various opinions on the subject and a 1946 Supreme Court case, Halliburton Oil Well Cementing Co., v. Walker, (5) had prohibited the use of means-plus-function language to describe the most crucial element of a combination claim. The interpretation to be given to the statutory mandate, "such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof," (6) is currently a source of controversy in the Federal Circuit.

It has been argued that the judicially created doctrine of equivalents is codified in [section] 112, [paragraph] 6. If an accused infringer has changed the invention in an insubstantial way and the properly interpreted claims of a patent do not literally cover the accused device, the accused device still may infringe the patent under the doctrine of equivalents. To give no remedy against an infringer who has changed the invention in an insubstantial way would leave the patent-holder with an essentially valueless patent. (7)

In general, patent claims are interpreted with reference to the specification, the prosecution history (8) of the application, if in evidence and, only if necessary, extrinsic sources such as scientific treatises or expert testimony. (9) A resort to the prosecution history and/or extrinsic evidence to determine the extent of the invention serves the notice function in a less than ideal manner, but this non-ideality is outweighed by the equitable need to accommodate the inherent difficulty of adequately describing an invention with words. The inherent difficulty of adequate description is exacerbated in cases of complex or technologically novel inventions. …

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