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SRI v Matsushita: reverse doctrine of equivalents

By Lawrence B. Ebert, Esq.

The defense of "reverse doctrine of equivalents" had prevailed at the district court level, but the CAFC found summary judgment inappropriate:

The question of non-infringement under the reverse doctrine of equivalents, as above indicated, raises in this case a genuine issue of material fact which renders the issued summary judgment inappropriate. See Martin v. Barber, 755 F.2d 1564, 225 USPQ 233 (Fed.Cir.1985).(6) Conclusion

The genuine and material fact question of whether MEI's filter and camera are "so far changed in principle" that they "perform the same or a similar function in a substantially different way" being present and disputed, the district court erred in granting summary judgment.

One also finds:

Reliance on a finding that a "novel element", or "essence" (or "gist", or "key") of a structural invention lies in the operation of a specification-described embodiment of the claimed structure would render meaningless the statutory requirement for claiming, 35 U.S.C. Sec. 112, the statutory requirement for treating claims individually, 35 U.S.C. Sec. 282, and the entire examination system centering on the allowance or rejection of claims. Inexplicably, SRI's counsel did not present these statutory considerations firmly to the district court at the April 13, 1984 pretrial conference

(...)

On April 13, 1984, at what proved to be the last pretrial conference and last courtroom event, the court conducted an extended dialogue with SRI's counsel, beginning with the court's demand that counsel state the "essence" of the '633 patent and "the novel element on the basis of which that patent was issued." The court asked SRI's counsel whether the assertions in MEI's brief (claims are limited to filters so operated that the angle difference of the stripes creates different frequencies) stated "the essence of the patent".

Counsel for SRI began correctly by stating the structural limitations of the claims. When the court said the "essence" was "the difference in the angles of the two sets of stripes creates different frequencies for the transmission of red and blue color," counsel said "stripes at an angle to one another and creating different frequencies" was old and that the "novel feature" was the equal width and spacing of the stripes.

Pressed by the court on whether "the basis on which the patent was issued" was "two sets of stripes being at an angle to one another" and "for the purpose of generating different frequencies," SRI's counsel finally, and inexplicably, said, "[t]hat's correct."

Within the "additional views" (Markey, Newman) of SRI v. Matsushita, one finds text about specialty courts:

The call for injection of "expertise" into our jurisprudence can be as alluring, and as fatal, as the sirens' song. Exhibiting no desire to convert our jurisprudence into "juriscience", Congress has repeatedly rejected calls for "specialized" courts limited to decision making solely on technological considerations, see Atari, Inc. v. JS & A Group, Inc., 747 F.2d 1422, 1436, 223 USPQ 1074, 1084 (Fed.Cir.1984), and has cautiously limited reliance on "expertise" to its employment by administrative agencies.9

Those few courts that have referred to a "complexity exception" have pointed to dicta in Ross v. Bernhard, 396 U.S. 531, 90 S.Ct. 733, 24 L.Ed.2d 729 (1970).

See also:

http://ipbiz.blogspot.com/2008/07/no-reverse-doctrine-of-equivalents-in.html

Full post as published by IPBiz on July 10, 2008 (boomark / email).