NON LITERAL INFRINGEMENT

(Project Report)

Submitted to

Ms. Kuhu Tiwari

Faculty IPR - Patent (Hons. II)

By

NAVEEN SIHARE
B. A. LL. B. (Hons.) Student,
Semester – VIII, Roll No. 97

Hidayatullah National Law University

Uparwara Post, Abhanpur, New Raipur – 493661 (C.G.)

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 ACKNOWLEDGEMENTS

I would like to take this opportunity to express my deep sense of gratitude towards my course teacher,
Ms. Kuhu Tiwari, for giving me constant guidance and encouragement throughout the course of the
project.

I would also like to thank the University for providing me the internet and library facilities which were
indispensable for getting relevant content on the subject, as well as subscriptions to online databases and
journals, which were instrumental in writing relevant text.

NAVEEN SIHARE

Semester – VIII,

Roll no. 97

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 TABLE OF CONTENTS

1. Acknowledgements 2
2. Introduction 4
3. Objectives 5
4. Research methodology 5
5. Literal and non literal 6
6. Doctrine of equivalents 10
7. A comparison between the US and the UK 15
8. Conclusion 19
9. Bibliography 19

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 Introduction

Patent infringement generally falls into two categories: literal infringement and infringement
under the doctrine of equivalents. The term "literal infringement" means that each and every
element recited in a claim has identical correspondence in the allegedly infringing device or
process. However, even if there is no literal infringement, a claim may be infringed under the
doctrine of equivalents if some other element of the accused device or process performs
substantially the same function, in substantially the same way, to achieve substantially the same
result. This "expansion" of claim coverage permitted by the doctrine of equivalents, however, is
not unbounded. Instead, the scope of coverage which is afforded the patent owner is limited by
(i) the doctrine of "prosecution history estoppel" and (ii) the prior art.

An infringement analysis determines whether a claim in a patent literally "reads on" an accused
infringer's device or process, or covers the allegedly infringing device under the doctrine of
equivalents. The steps in the analysis are:

1. Construe the scope of the "literal" language of the claims.

2. Compare the claims, as properly construed, with the accused device or process, to determine
whether there is literal infringement.

3. If there is no literal infringement, construe the scope of the claims under the doctrine of
equivalents.

The doctrine of equivalents is an equitable doctrine which effectively expands the scope of the
claims beyond their literal language to the true scope of the inventor's contribution to the art.
However, there are limits on the scope of equivalents to which the patent owner is entitled.

In order to determine the scope of equivalents to which the patent owner is entitled, the doctrine
of prosecution history estoppel must be considered. Prosecution history estoppel limits the scope
under the doctrine of equivalents by preventing a patent owner from recapturing during litigation
that which was given up during prosecution of the patent to avoid prior art and obtain a patent.
This portion of the analysis is performed by obtaining and studying the patent application file.

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Also, the scope of equivalents to which the patent owner is entitled is bounded by the prior art.
The patent owner cannot expand the claims for purposes of finding infringement if the scope of
equivalency sought would ensnare the prior art. Therefore, if infringement under the doctrine of
equivalents is found, a prior art search should be performed to determine if the scope of
equivalency ensnares the prior art.

OBJECTIVES

 To Study of literal and non literal infringement.

 To study about The doctrine of equivalents.

RESEARCH METHODOLOGY

The project is descriptive and analytical in nature. Secondary and Electronic have been largely
used to gather information and data about the topic. Books and other references as guided by the
Faculty have been primary helpful. Websites have also been referred.

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Chapter 1 – literal and non literal comparison

Creating the Same Product as Shown in the Patent Drawings

This might come as a surprise to some people, but a patent is not necessarily infringed if the
offending product looks like the product depicted in the patent drawings. The scope of the patent
- i.e. the type of product which is actually protected by the patent - is defined by the claims of the
patent, not the drawings. The claims literally define what specifically has to be included in the
product to constitute patent infringement. Those features may, or may not, be clearly discernible
from the drawings; therefore, it is quite possible that a product which looks like the product
depicted in the patent drawings may, in fact, not infringe. Conversely, it is quite possible for a
product which looks very different from the product illustrated in the patent may, in fact, fall
within the scope of the patent claims and infringe the patent.

Creating the Same Product that the Patent Owner Sells

Patent owners are not required to sell the products they patent. While it's often the case that a
patented invention will be found in the patent owner's inventory of products, there are numerous
examples where the patent owner does not in fact sell or manufacture the patented invention.
Conversely, if the offender copies a product which the patent owner produces, this does not
necessarily mean that the offender infringes any patents. From a patent infringement perspective,
it is completely irrelevant what products the patent owner sells. Again, the scope of the patent is
defined in the claims of the patent, not in the patent owner's product inventory.

Creating the Same Product that is Described in the Patent

It may sound counter-intuitive, but the description of the invention does not, in itself, define what
the invention is and therefore cannot, by operation of law, define what does and does not infringe
the patent. Again, only the claims of the patent actually define what the invention is and what
does and does not constitute patent infringement. So now that we know what does not constitute
patent infringement, lets take a close look at what actually does determine whether a patent has
been infringed.

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Patent Claims

The invention is literally defined by the exact wording of the patent claims. Roughly speaking,
each and every claim in a patent is essentially a check list of the features which the offending
product has to include in order to "pass" the test of infringement. Think of a claim as a numbered
list of features, and if the offending product has all of the features listed in the claim, then the
offending product "infringes" that claim in the patent. This is what is generally referred to in
patent circles as "literal infringement". If there is more than one claim (and there usually is), then
the total number of claims infringed does not matter. Infringing one claim or infringing all of
them makes no difference from a legal point of view.

Let's consider this principle of literal patent infringement with a hypothetical example. Let's
assume the patent owner has a patent for a desk lamp having seven specific features, namely:

1. a magnetic base;
2. a flexible goose neck mounted to the base;
3. a reflector mounted on the end of the goose neck;
4. an LED bulb mounted to the reflector;
5. a manual on and off turn switch for turning the LED bulb on or off;
6. a control circuit that turns on the LED bulb whenever any portion of the lamp is touched,
and
7. the control circuit keeping the LED bulb lit for 30 minutes before automatically turning it
off.

A first offending product up for consideration is a lamp and has all of the features (1) through (6)
but it does not have feature (7), the control circuit for automatically turning the lamp off after 30
minutes. In this example the first offending product does not literally infringe the claim because
it is missing a listed feature. However, a second offending product which does have all the
features listed would be considered infringing. If the offending product has other features in
addition to features (1) through (7), such a dimmer switch, then it is still considered to infringe
the claim. Generally, claims are written with inclusive language so that patent infringement is not
avoided by the addition of non-listed features.

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Non-Literal Infringement

Now, let's consider a third offending product - one which has all of the listed features except for
the LED bulb. Instead of an LED bulb, the third offending product has an incandescent bulb.
Does this third product still infringe? From a literal infringement point of view, no it does not
since the claim specifies an LED bulb. However, many jurisdictions, including the United States
and Canada, have additional legal doctrines which, when applied, would render this third
offending product as also infringing. In the United States it is quite likely that the third offending
device would be considered to infringe the patent because while the offending device does not
have an LED bulb, it does have something which works in substantially the same way to give
substantially the same result. Both LED bulbs and incandescent bulbs are "functional
equivalents" because they both work in substantially the same way to give substantially the same
results. They both turn electricity into light. Therefore, it is quite likely that a court in the United
States would view the third offending product as infringing. The law in Canada, while not
exactly the same, is similar and would likely yield a similar result.

Now let's stretch this reasoning a little further and consider the case of a fourth offending
product, a lamp with all of the claimed features except for the auto shut off feature. In place of
the auto shut off circuit, this fourth lamp has a circuit which is designed to shut the lamp on or
off simply by touching. If the lamp is off, touching it will turn it on; however, if the lamp is
already on, touching it will shut it off. This "improved" lamp does away with the auto shut off
feature by providing an extended touch feature.

Applying the analysis of "functional equivalents" we can agree that the "extended touch feature"
is not a functional equivalent to the auto shut off timer. The fourth offending lamp would remain
on all night long provided it was not touched again. Therefore we can say with some confidence
that the fourth offending product does not infringe the claim under the US doctrine of
equivalents.

The above example illustrates the possible difficulty if applying the United States principle of
"functional equivalence" (and the Canadian tests of "substantive infringement" and "purposive
construction"). Whether or not two features are considered "functional equivalents" largely

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depends on the relative importance of the missing feature. In the above examples, the LED bulb,
while important to the lamp over all, is essentially the same thing as an incandescent bulb.
Essentially, these legal doctrines boil down to extending patent protection to situations where a
relatively minor and unimportant feature of a claim is missing in the offending product being
considered.

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Chapter 2 - Doctrine of Equivalents In Patents

The doctrine of equivalents permits a finding of infringement even if the accused device or
method does not literally fall within the scope of the construed patent claims. Instead, a device or
method may infringe under the doctrine of equivalents if it performs “substantially the same
function in substantially the same way to obtain the same result” as the patented invention. Thus,
the doctrine of equivalents permits an expansion of patent rights beyond the literal scope of the
patent claims. One purpose of the doctrine of equivalents is to protect patentees from those who
seek “to evade liability for infringement by making only insubstantial changes to a patented
invention.

POSITION IN THE UNITED STATES

The doctrine of equivalents is a legal rule that allows a court to hold a party liable for patent
infringement even though the infringing device or process does not fall within the literal scope of
a patent claim, but nevertheless is equivalent to the claimed invention.

Graver Tank & Mfg. Co., Inc. Et Al. V. Linde Air Products Co

Linde Air Products Co., owner of the Jones patent for an electric welding process and for fluxes
to be used therewith, brought an action for infringement against Lincoln and the two Graver
companies. The single issue was whether the trial court's holding that the four flux claims have
been infringed will be sustained. Any issue as to the validity of these claims was unanimously
determined by the previous decision in the Supreme Court and attack on their validity cannot be
renewed then by reason of limitation on grant of rehearing. The disclosure, the claims, and the
prior art have been adequately described in our former opinion and in the opinions of the courts
below.

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The doctrine of equivalents evolved in response to this experience. The essence of the doctrine is
that one may not practice a fraud on a patent. Originating almost a century ago in the case of
Winans v. Denmead it has been consistently applied by the Courts. A patentee may invoke this
doctrine to proceed against the producer of a device "if it performs substantially the same
function in substantially the same way to obtain the same result." Sanitary Refrigerator Co. v.
Winter . The theory on which it is founded is that "if two devices do the same work in
substantially the same way, and accomplish substantially the same result, they are the same, even
though they differ in name, form, or shape." Machine Co. v. Murphy

In its early development, the doctrine was usually applied in cases involving devices where there
was equivalence in mechanical components. Subsequently, however, the same principles were
also applied to compositions, where there was equivalence between chemical ingredients. Today
the doctrine is applied to mechanical or chemical equivalents in compositions or devices.

What constitutes equivalency must be determined against the context of the patent, the prior art,
and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of
a formula and is not an absolute to be considered in a vacuum. It does not require complete
identity for every purpose and in every respect. In determining equivalents, things equal to the
same thing may not be equal to each other and, by the same token, things for most purposes
different may sometimes be equivalents. Consideration must be given to the purpose for which
an ingredient is used in a patent, the qualities it has when combined with the other ingredients,
and the function which it is intended to perform.

The Supreme Court observed that it was difficult to conceive of a case more appropriate for
application of the doctrine of equivalents. The disclosures of the prior art made clear that
manganese silicate was a useful ingredient in welding compositions. Specialists familiar with the
problems of welding compositions understood that manganese was equivalent to and could be
substituted for magnesium in the composition of the patented flux and their observations were
confirmed by the literature of chemistry. Without some explanation or indication that
Lincolnweld was developed by independent research, the trial court could properly infer that the
accused flux is the result of imitation rather than experimentation or invention. Though

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infringement was not literal, the changes which avoid literal infringement are colorable only. The
Supreme Court concluded that the trial court's judgment of infringement respecting the four flux
claims was proper.

POSITION IN THE UNITED KINGDOM

Catnic Components Ltd. v. Hill & Smith Ltd. (1982) R.P.C. 183 House of Lords

Catnic Components had a patent for a lintel, used to provide structural support over a door or
window opening in a brick wall. Part of the specification required a bar to "extend vertically".
Hill created a virtually identical invention that had a bar that extended at an upwards slant, only 6
degrees from being completely vertical. Despite the difference the device worked entirely in the
same way as Catnic's invention.

Catnic sued for patent infringement. At trial, the judge held there was an infringement under the
"pith and marrow" doctrine. The Court of Appeal overturned the ruling as although it held that
the "vertical" requirement was an exact and essential element of the patent, the effect did not
change. The court affirmed the use of purposive construction to patent interpretation and found
an infringement. The House of Lords held that a patent specification is a unilateral statement by
the patentee, in words of his own choosing, addressed to those likely to have a practical interest
in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he
claims to be the essential features of the new product or process for which the letters patent grant
him a monopoly. It is called "pith and marrow" of the claim.

A patent specification should be given a purposive construction rather than a purely literal one
derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often
tempted by their training to indulge. The question in each case is: whether persons with practical
knowledge and experience of the kind of work in which the invention was intended to be used,
would understand that strict compliance with a particular descriptive word or phrase appearing in
a claim was intended by the patentee to be an essential requirement of the invention so that any
variant would fall outside the monopoly claimed, even though it could have no material effect
upon the way the invention worked.

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House of Lords further observed that :

"... both parties to this appeal have tended to treat `textual infringement' and infringement of the
‘pith and marrow’ of an invention as if they were separate causes of action, the existence of the
former to be determined as a matter of construction only and of the latter upon some broader
principle of colourable invasion. There is, in my view, no such dichotomy; there is but a single
cause of action and to treat it otherwise, particularly in cases like that which is the subject of the
instant appeal, is liable to lead to confusion."

There was a debate whether the purposive construction test in the Catnic case in fact complied
with the protocol to Article 69 of the European Patent Convention. The doubt was finally cleared
by the House of Lords in Kirin-Amgen v Hoechst Marion Roussel . It held that the Protocol is a
Protocol for the construction of article 69 and does not expressly lay down any principle for the
construction of claims. It does say what principle should not be followed, namely the old English
literalism, but otherwise it says only that one should not go outside the claims. It does however
say that the object is to combine a fair protection for the patentee with a reasonable degree of
certainty for third parties.

The House of Lords thus declared that the Catnic principle of construction was therefore
precisely in accordance with the Protocol. It is intended to give the patentee the full extent, but
not more than the full extent, of the monopoly which a reasonable person skilled in the art,
reading the claims in context, would think he was intending to claim.

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POSITION IN INDIA

In India, the doctrine of equivalents was discussed in Ravi Kamal Bali vs Kala Tech And
Ors 2008(110)Bom LR 2167, Though the matter was regarding an interim application for
request of submission of additional documents by the defendant, yet in the order the Court
observed that the counsel of the plaintiff submitted that while considering the question of
infringement of patents, the Court ought to apply the doctrine of equivalence by which a device
is set to infringe a claim if it "performs substantially the same function in substantially the same
way to obtain the same result". The test is whether the Defendants product appears to have taken
the essence or what is sometimes called the pith and marrow of the invention. Counsel for the
plaintiff further submitted that even under the Indian Patent Act, 1970 while deciding the
question of infringement of patents, the Court ought to apply the doctrine of equivalence under
which the Court must determine and distinguish the essential and nonessential elements of the
product. He submitted that it is not necessary that the infringing goods must be identical in every
respect to the patented goods and it is sufficient if it is found that what has been taken is the
essence of the invention.

Ravi Kamal Bali, the plaintiff, instituted an infringement suit seeking an interim injunction inter
alia restraining Kala Tech, the defendant, from making, using, selling or distributing tamper
proof locks/seals falling within the scope of the claims of the his patent bearing No. 162675 and
patent of addition No. 178879. Ravi Kamal alleged that the product of Kala Tech has similar
constructional and functional features to his patented invention. Arguing further, Ravi Kamal
contended that Kala Tech’s product do the same work, in substantially the same way and
accomplishes substantially the same result thereby contributing to the infringement. In response,
Kala Tech’s counsel while asserting on the differences in the constructional and functional
structure between the two products, made a counter argument comparing the inventive step
between the plaintiff’s patent and the patent of addition and the patents of plaintiff and
defendant, and submitted that when the only difference between the plaintiff’s patent and the
patent of addition is the addition of ‘vanes’ in the patent of addition then the defendant’s
invention would also constitute a new invention qua the invention that is patented as the
difference between the defendants invention and the plaintiff’s patented invention is greater than
the difference between the patent of addition and the patent itself.

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The submission above equated a patent with a patent of addition which was found erroneous by
the Court on the ground that this would obliterate the rights of a patentee. The patent holders of
the main invention and the patent of addition being different in the instance of the patent over the
main invention being revoked may see the patent of addition continuing for the remainder of the
term for the patent of the main invention, unless also applied for and revoked simultaneously.
However, the Court denied the relief of an interim injunction justifying it on the plaintiff’s act of
seeking an ad interim injunction on a representation which was incorrect in material aspect.
This case is important as it discusses Doctrine of equivalents, an important legal principle under
the patent law regime covering indirect infringement. In addition to literal infringement which is
direct and unambiguous, an indirect infringement takes place when insubstantial or minor
changes made to the patented product or process causes it to fall outside the declared scope of
the patent i.e. patent claims, but, which in practical terms, remains a duplicate of the patented
product/process.

A comparison between the US and the UK

Similarities and differences

After the comprehensive study developed in the two previous chapters on both the American and
the English patent systems, it is now possible to address the legal comparison.

First of all, the Doctrine of Equivalents appears to be quite an advanced and independent theory,
which provides general criteria for solving cases of infringement under equivalence. On the
contrary, the English Catnic/Improver Test, as influenced by the Protocol on the European Patent
Convention, focuses on the claims interpretation in case of infringement, by offering general
principles to apply and adapt specifically for equivalents. Indeed, the British rule addresses
whether there isnon-literal infringement of a claim feature, but this may not be as different as
determining whether a claim equivalent falls within the scope, although in some cases the variant
and equivalent may be the same.

Secondly, regarding the content of these two rules, the Catnic/Improver Test is made up of three
questions, mostly characterised by the role played by a person skilled in the art in understanding
whether the patentee intended the claims in the sense of a strict compliance with their literal

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meaning. The first Catnic question asks whether the variant has the same effect and purpose as
the claim feature in question, while U.S. Courts emphasize the equivalence between them by
means of the triple test (FWR test)1 that concentrates on the differences in terms of functions,
ways to obtain it and technical results achieved between the patented invention and the alleged
device. The two rules are sometimes considered quite similar: the FWR test, coupled with the
requirement of substantiality, would have the same meaning as the first and second
Catnic/Improver questions because the way in which the invention worked represents the main
feature of the FWR test and the obviousness determined by a person skilled in the art can
complete the analysis. Instead, in my opinion those approaches differ, particularly on whether the
prosecution history should be used to bar the application of the American doctrine or to discover
the patentee's intentions concerning the English claims. The British rule completely avoids the
investigation of patent prosecutions that is fundamental in the "prosecution history estoppel"
doctrine. Courts refuse to investigate patent application since this research is often difficult,
costly and inconclusive.2' Besides, the measure of equivalents is based on different parameters in
term of time: in the U.S. the time of infringement is considered, on the other hand in the U.K. the
priority date counts.

In addition, the DOE is enriched by some mitigations with respect to uncertainty toward third
parties, such as the "prosecution history estoppel", the "all-element rule", the "reverse doctrine of
equivalents" and the recent criteria introduced in the Festo Supreme Court's decision (for
instance the foreseeable bar). On the contrary, neither the English Patent Act nor the European
Patent Convention contain any similar moderations: they only rely on a general reference to the
third parties' certainty.

Particularly, the Festo foreseeable bar test investigates whether the equivalent could not have
been literally included within the claim scope at the time of the application; in the positive case
the bar prevents equivalents. On the contrary, the Catnic/Improver Test does not exclude the
possibility that the applicant did not include within the claim scope a variant, which could have
been foreseen but this fact may complicate the proof concerning the third question. Consequently

1
The FWR test refers to function, way and result.
2
See Cornish (2000, 245).

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the Catnic/Improver Test seems to be more generous and open, although it offers no general
mitigations.

The application of the DOE is based on the patentee's proof that the equivalent was foreseeable
at the time of infringement but not of application, while the second Improver question stresses
whether it was obvious to substitute the variant at the date of publication of the application.
Therefore, at the publication date, the variant must be foreseeable under the Catnic/Improver, but
at the date of filing the same feature may be required to have been unforeseeable under the Festo
foreseeable bar test. In other words, the two rules differ completely as the Catnic/Improver
questions focus on the extension of claim features to non-literal variants, which the skilled
person in the art would understand as clearly being within the scope of the claim feature. The
U.S. approach, instead, requires that the skilled person could not have foreseen the equivalent.
As a result, a modification can be held foreseeable at the date of publication according the
Catnic/Improver rule, but unforeseeable at the date of filing the application within the same
litigation.

The U.S. and the U.K. judiciary systems are also different concerning the role of judges and
juries. In fact, English judges belonging to Patent Courts or the Court of Appeal are generally
competent to decide the infringement cases, while a jury can be sometimes in charge of
determining them in the United States. This may imply a greater predictability of decisions in the
case of judges instead of a jury. This topic is particularly controversial, as in the U.S. the recent
Festo case has just solved the problem in favour of judges.

Both doctrines are affected by a high degree of uncertainty, especially due to the contrasting
opinions between judges. While in the U.S. conflicts are mainly limited between different
sections of the Federal Circuit, the CAFC, and the Supreme Court, the situation is more
complicated in United Kingdom and generally in Europe. The controversial compatibility of the
Catnic/Improver Test with the Protocol on Article 69 is still discussed and only some
commentators have completely accepted it. In addition, the situation has been worsened by the
fact that there are divisions between different national judges, even with respect to the
conclusion on the same case in different countries. Hence, the degree of legal uncertainty is
extremely high, almost unacceptable, and the need of the Community Patent, a unitary title
within the whole European Community, has been strongly emerging.

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By comparison, their purposes apparently coincide: both the Doctrine of Equivalents and the
Catnic/Improver questions emphasize the balance between inventors' and public interests,
although the American system seems to be more effective. Indeed it entitles a quite broad scope
with the consequence of a practise of drafting medium scope claims, while the English one have
traditionally chosen a narrower scope and a greater certainty. In conclusion, the Doctrine of
Equivalents is quite a flexible theory, which is in favour of a broader scope and thus of a
patentee' s strong monopolistic position, although some corrective measures can be applied in
order to balance it case-by-case. On the contrary the English system, according to its tradition,
entitles quite a narrow scope, even slightly extended by the European Patent Convention.

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CONCLUSION

The infringing means are those which reproduce the essential means of the patented invention,
i.e. the new and inventive means which are necessary and sufficient to perform the function of
the invention. Compulsory construction of the claim, in view of the description and of the
drawings (construction of the terms employed and understanding of the substance of the
invention through the problem solved and the essential means of the solution), Additions
prohibited.

In light of the foregoing discussion, it is evident that the Indian courts do not limit the scope of
protection conferred by a claim to the literal language of the claim. The instant position of the
courts is in favor of patent holders who can be optimistic about enforcing their patent rights
against those attempting to work around their patents by making modifications, which may be
within the “substance” of the claim. Nonetheless, claims should be carefully crafted to capture
the “substance” or “crux” of the invention, and should avoid including non-essential elements in
the claim. On the other hand, those attempting to work around a patent claim should not rely on
minor modification to a claimed product/process, which may be inferred to be not going beyond
the “substance” of the target claim.

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BIBLIOGRAPHY

 Intellectual Property Rights In India.

 Law Relating to Intellectual Property, Dr. Raghbir Singh (2nd ed. Universal Law
Publishing Co.)
 Patent Law Manual, Eastern Book company, Lucknow.

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