Federal Circuit Clarifies When a Notice Letter Allows Past Damages and Finds Claims To Ranges Do Not Preclude Application of the Doctrine of Equivalents

In U.S. Philips Corporation v. Iwasaki Electric Company Ltd., Civ. Case No. 2007-1117 (Fed. Cir. November 2, 2007), U.S. Philips owns U.S. Patent No. 5,109,181 (“the ’181 patent”), which is directed to high-pressure mercury vapor discharge lamps filled with a gaseous mixture in which “at least one of the halogens Cl, Br or I is present in a quantity between 10-6 and 10-4 μmol/mm3.”  On June 7, 2000, Mr. Rolfes, an employee of Philips International B.V., sent Iwasaki a letter giving Iwasaki notice of potential infringement of “at least four of our patents and patent applications” by Iwasaki’s product.  The letter gave Iwasaki notice that Rolfes represented Philips International B.V. as “Patent Portfolio Manager.” The ‘181 patent was assigned to U.S. Philips Corporation, an IP holding company on behalf of the overall Philips organization.  U.S. Philips filed suit against Iwasaki for infringement of claim 1 of the ‘181 Patent, which is as follows:

A high-pressure mercury vapor discharge lamp comprising . . . a filling essentially consisting of mercury, a rare gas, and a halogen for maintaining a tungsten transport cycle during lamp operation, characterized in that . . . at least one of the halogens Cl, Br or I is present in a quantity between 10-6 and 10-4 μmol/mm3.

The District Court construed the phrase, “a quantity between 10-6 and 10-4 μmol/mm3” as “a quantity between 1 divided by 1,000,000 and 1 divided by 10,000 micromoles per cubic millimeter,” or, in alternative terms also stated by the district court, “a quantity between 1 × 10-6 and 1 × 10-4 μmol/mm3.” U.S. Philips Corp. v. Iwasaki Electric Co., No. 1:03-CV-172-PKC, slip op. at 9 (S.D.N.Y. Jan. 3, 2006) (“Claim Construction Opinion”).

It is uncontested that Philips did not mark its lamps as permitted by 35 U.S.C. §287(a). 

The District Court concluded that the Rolfes letter was inadequate notice under 35 U.S.C.  §287(a) due to its failure to identify U.S. Philips as the owner of ‘181, and its failure to give notice that Rolfes spoke for the owner, thereby limiting any potential damages to any acts beginning on January 8, 2003 (the date the complaint was filed).  Moreover, to the extent that certain lamps existed prior to the January 2003 date were within the claimed range, it is uncontested that Iwasaki’s lamps beginning on January 8, 2003 have target concentrations outside the claimed range.  As such, the District Court granted summary judgment for noninfringement for both literal infringement and infringement under the doctrine of equivalents.  Specifically, the District Court concluded, that after January 8, 2003, Iwasaki’s entire target concentration range exceeded the range claimed by U.S. Philips. Under the doctrine of equivalents, the District Court concluded that a finding of infringement would conflict with ‘181’s claim of a range, thereby vitiating these terms.  Therefore the doctrine of equivalents was foreclosed as a matter of law. 

On appeal, the Federal Circuit held that the Rolfes letter did provide sufficient notice of alleged infringement to satisfy 35 U.S.C. § 287 (a).  35 U.S.C. §287 requires that, where a patented product is not marked, the patent owner must provide proof an infringer was given affirmative notice of infringement by the patentee in the absence of marking the infringed product. Iwasaki argued that the Rolfes letter was deficient under a previous ruling where the inventor, but not the patent assignee, notified the infringer without identifying the current patent owner. (see Lans v. Digital Equipment Corp., 252 F.3d 1320 (Fed. Cir. 2001)).  As such, Iwasaki argued that since the Rolfes letter did not identify the current patent owner accurately, the notice was deficient. 

The Federal Circuit rejected this argument and distinguished from Lans.  Specifically, the Federal Circuit held that, because U.S. Philips Corporation, the owner of the patent, was identified on the first page of the ‘181 patent which was enclosed in the Rolfes letter, the accused infringer was put on notice of the current patentee’s identity.   According to the Federal Circuit, for purposes of 35 U.S.C. §287, “[a]lthough the assignation printed on the face of a patent is not a conclusive indication of the patent’s current ownership, we hold that when the information printed on the patent is correct, it is enough to put an accused infringer on notice of the patentee’s identity.”

Moreover, while the Rolfes letter did not purport to come from U.S. Philips Corporation, Philips International B.V. is the undisputed representative of U.S. Philips in matters of enforcement and licensing.  Therefore, the Notice provided information on both the current owner of the ‘181 patent, as well as the contact point for licensing of the ‘181 patent in fulfillment of the purposes of the marking requirement under 35 U.S.C. §287 as interpreted under Lans v. Digital Equipment Corp., 252 F.3d 1320 (Fed. Cir. 2001)). Therefore, the Federal Circuit held that the Rolfes letter provided adequate notice to fulfill the requirements of 35 U.S.C. §287, and U.S. Philips can claim potential damages for infringement occurring after the June 2003 date of the Rolfes letter.

On the issue of literal infringement, the Federal Circuit reviewed whether the recited range of “between 10-6 and 10-4 μmol/mm3” express a range of orders of magnitude as opposed to a range of more precise numbers as the District Court found.  The Federal Circuit affirmed the District Court that the recited range was a specific range rather than an order of magnitude.

Philips argued that one of ordinary skill in the art of lamp chemistry would understand 10-4 to mean all values closer to 10-4 than to 10-5 or 10-3.  With the Philips construction of 10-4, the effective range would be 3.2 x 10-7 to 3.2 x 10-4

In rejecting this argument, the Federal Circuit held that specific quantities and not ranges were referenced through out the specification.  For example, in the LAMP 1 embodiment, under the heading “halogen,” the ’181 patent refers to “5 • 10-6 μmol of CH2Br2[/mm3] (10-5 μmol of Br/mm3).” ’ 10-5 is used as a synonym for 1×10-5.  Therefore, the Federal Circuit upheld the District Court’s more specific construction.

On the issue Doctrine of Equivalents, the Federal Circuit held that the doctrine of equivalents was not foreclosed with respect to the claimed concentration range.  The District Court had held that a finding of infringement for other claim ranges outside of the specific claim range would vitiate the claims.  In support of the District Court’s interpretation, Iwasaki argued that previous holdings in Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091(Fed. Cir. 2000), Cooper Cameron Corp. v. Kvaerner Oilfield Products, Inc., 291 F.3d 1317, 1322 (Fed. Cir. 2002), and Elekta Instrument S.A. v. O.U.R. Scientific International, Inc., 214 F.3d 1302 (Fed. Cir. 2000), preclude Philips from relying on the doctrine of equivalents.

In Moore, the claim used the term ‘majority’ as a claim limitation.  The contention was that to allow 47.8% to be equivalent to a majority would vitiate the requirement.  In Moore, allowing even a large minority to be insubstantially different from a ‘majority’ would ‘defy logic’.   In Cooper Cameron, the term ‘between’ was used to describe a spatial relationship among two ‘plugs’ and a ‘workover port’.   However, no reasonable juror could conclude that placing the workover port anywhere other than ‘between’ the two plugs was insubstantially different from a workover port placed between the plugs.

The question of infringement under the doctrine of equivalents was not decided in Elekta

In determining that equivalents might be available, the Federal Circuit turned to Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n.8 (1997)) and Abbott Labs. v. Dey, L.P., 287 F.3d 1097, 1103 (Fed. Cir. 2002)). In both cases, the term “between x and y” was used to enable the application of the doctrine of equivalents for a recited range. As such, the Federal Circuit confirmed that the mere recitation of a claim range does not preclude a range of equivalents outside of that claim range.

Iwasaki’s final argument against the application of the doctrine of equivalents is that the upper limit was included to avoid prior art (The Holmes reference). The Federal Circuit held that there was no amendment which narrowed the claims in a manner suggesting a surrender of scope.  Additionally, to the extent that the claims could be limited through hypothetical claims drafting, the Federal Circuit applied the test outlined in Abbott Labs.  According to the Federal Circuit, this test determines whether a “‘hypothetical claim’ that literally recites the range of equivalents asserted to infringe . . . could have been allowed by the PTO over the prior art.” Abbott Labs., 287 F.3d at 1105 (quoting Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 684 (Fed. Cir. 1990)).  However, since the asserted equivalents have halogen concentrations below the range described in Holmes, Holmes therefore does not foreclose the application of the doctrine of equivalents since there is no evidence that, had the hypothetical claim been submitted to the Examiner, Holmes alone or with other references would have rendered the claimed lamps obvious.  As such, the Federal Circuit reversed the District Court on the issue of Doctrine of Equivalents.

Significance to Patent Owners

U.S. Philips Corporation provides additional evidence that the doctrine of equivalents, while limited, it not dead.  Indeed, even where the accused device is outside of an explicitly recited claim range, the Federal Circuit reminds that, under Warner-Jenkinson, equivalency can still encompass such variations without automatically vitiating the claims.  Further, U.S. Philips Corporation reminds of the importance of marking products covered by patents in order to eliminate, as an issue, whether the proper notice was given when the patent owner also manufacturers devices covered by the asserted patent.



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