f e a t u r e d
What Japan Should Learn from U.S. Experiences: Tests of Equiva-
lence, Means-Plus-Function Claims and Product-By-Process Claims*
By Toshiko Takenaka, Ph.D.
I. Introduction
I
t is a great pleasure and honor for me to
share a podium with Judge Rader, who is
recognized as a patent scholar by United
States patent academics and is reknowned as the
patent judge by United States patent profession-
als. I would like to thank Mr. Yoshida and his staff
for putting together this wonderful conference.
Japan has always been eager to learn from
experiences in foreign countries, particularly the
United States and Germany. When the Japanese
government looked for measures to spur the
economy out of its prolonged deep recession, it
naturally looked to the experiences of the United
States in the 1980s and the 1990s.1 Convinced
that a pro-patent policy and legislation encour-
aging technology transfer were primary reasons
for the United States recovery from recession,
Japans Ministry of Economy, Trade and Indus-
try ( METI) and its agency, Japan Patent Of-
fice ( JPO), led an extensive campaign to re-
structure the Japanese intellectual property sys-
tem to give swift and strong protection to new
technologies.2 These efforts by METI and JPO
persuaded the Supreme Court of Japan to re-
structure the court system with respect to juris-
diction over intellectual property cases.3
These efforts also led to a significant devel-
opment in the case law. In the1998 Ball-Spline
case, 4 the Supreme Court of Japan, for the first
time, found infringement under the doctrine of
equivalents, emphasizing the difficulty of drafting
claims to cover future infringing embodiments and
the necessity of maintaining incentives for inven-
tions. Prior to the Ball-Spline case, Japanese courts
consistently refused to apply the doctrine, stress-
ing the importance of legal certainty.5
Although the Supreme Court set forth five
conditions for applying the doctrine of equiva-
lents, the Court did not give any detailed instruc-
tion as to how to apply the five conditions. Lower
courts therefore struggled to apply the condi-
tions because judges had very little experience in
applying the doctrine of equivalents and the case
law was scarce.6 Because the United States and
Germany have a long history of applying the
doctrine of equivalents and rich case law, Japa-
nese courts and scholars turned to the United
States and Germany to learn from their experi-
ences. Thus, the Institute of Intellectual Prop-
erty invited us to speak about U.S. case law de-
velopments in the three most controversial areas
a r t i c l e
in interpreting patent claims and applying the
doctrine of equivalents, namely, (1) the test of
equivalence under Warner-Jenkinson;7 (2) means-
plus-function claims under 35 U.S.C. Section 112,
Paragraph 6 and (3) product-by-process claims.
Unfortunately, you may learn very little
from U.S. experiences because in my view, U.S.
case law in these three areas is also unclear and
U.S. judges and patent professionals find it diffi-
cult to give straight answers to many of the ques-
tions you posed. For example, you have asked
how the insubstantial difference test for equiva-
lence is refined through the orderly course of case-
by-case determination after Warner-Jenkinson, as
the Supreme Court expected the Federal Circuit to
do.8 In my view, the Federal Circuit sabotages the
expectations of the Supreme Court because it re-
fuses to examine the test of equivalence, and in-
stead has developed doctrines to limit the doctrine
of equivalents and thus created an impossible hurdle
for patentees to overcome to prove infringement
under the doctrine of equivalents. Regarding
means-plus-function claims, the Federal Circuit
introduced much confusion, leading the patent com-
munity to question whether patent applicants
should use such claims at all. Finally, two panel
decisions of the Federal Circuit are in direct con-
flict with respect to the literal scope of product-
by-process claims. Obviously, lower courts do
not know which ruling to follow. I will explain
these confusions and problems.
II. Tests for Equivalence
a. Was the Supreme Court Happy
with the Federal Circuit?
As far as the doctrine of equivalents is con-
cerned, my main concern is that the Federal Cir-
cuit paid little attention to the main point of the
Supreme Courts message in Warner-Jenkinson.
Instead, in subsequent cases, the Federal Circuit
has paid too much attention to clarifying the Su-
preme Courts decision. What was the main point
of the Courts message? Was the Supreme Court
unhappy with the Federal Circuits efforts in
developing the test for the doctrine of equiva-
lents? I believe the answer is NO.
To the contrary, the Supreme Court was
quite happy with the work done by the Federal
Circuit. The Supreme Courts trust was clear from
the following points. First, in Warner-Jenkinson,
the Supreme Court endorsed the Federal Circuits
preservation of protection by equivalents beyond
the literal equivalents under Section 112, Para-
graph 6.9 The Court flatly refused the petitioners
CASRIP Newsletter Winter 2002
argument that the 1952 revision changed the case
law existing before the revision.10 By doing so,
the Court endorsed the Federal Circuits efforts
to develop a test for equivalence under the judi-
cially created doctrine of equivalents and refused
to change the case law developed by the Federal
Circuit. Second, the Supreme Court was so
happy and confident with the Federal Circuits
ability that the Court did not worry about any
uncertainty and non-uniformity that may result
from a jurys determination of equivalents be-
cause the Court was confident that the Federal
Circuit could develop a procedure to remedy such
problems.11 The Supreme Court also refused to
micromanage the Federal Circuits task of refin-
ing the test for equivalents.12 This is because the
Court had no particular objection to the past per-
formance of the Federal Circuit and trusted the
Federal Circuit to continue to refine the test.
The only major disapproval was in regard
to the way that the Federal Circuit handled the
application of prosecution history estoppel. By
rejecting the application of prosecution history
estoppel when no record is produced indicating
why an amendment to the disputed element was
made, the Federal Circuit placed the burden for
triggering the doctrine of equivalents on the ac-
cused infringer. 13 The Supreme Court consid-
ered a balance of conflicting interests, i.e. inter-
ests of inventors and interests of the patent of-
fice and public, and decided that placing the bur-
den on the accused infringer unfairly pits the in-
terests of inventors against the interests of the
patent office and the public. Thus, the Court
shifted the balance by introducing the presump-
tion of placing the burden on the patentee, in-
stead of the infringer. 14
Another disapproval was minor. The Su-
preme Court emphasized that lower courts should
apply the doctrine of equivalents on an element-
by-element basis, instead of an invention-as-a-
whole basis.15 However, the Federal Circuit had
been following such an analysis since the Pennwalt
en banc decision.16 On remand, the court reaf-
firmed its decision with respect to the element-
by-element analysis before remanding the case to
the district court.17 In short, the Federal Circuit
should have been confident about what it devel-
oped and should not have introduced any drastic
changes.
b. Drastic Changes after Warner-
Jenkinson
In spite of the Supreme Courts trust and
endorsement, the Federal Circuits attitude to-
f e a t u r e d
ward the doctrine of equivalents has changed dras-
tically, almost 180 degrees. First, the number of
cases in which there are issues of infringement
under the doctrine of equivalents has dramati-
cally declined. After a finding of no literal in-
fringement, parties disputes have concentrated
on negative doctrines, such as prosecution his-
tory estoppel, to limit the doctrine of equiva-
lents, rather than focusing on equivalence itself.
These negative doctrines often present almost
impossible hurdles for a patentee to prove in-
fringement under the doctrine of equivalents.
Second, tones and nuances of reasoning in Fed-
eral Circuit decisions promote the policy of se-
curing legal certainty. Policy discussions of se-
curing reimbursement and incentives for inven-
tors have become rare. This shift of policy leads
to narrow claim interpretation, which often pre-
cludes a claim of infringement under the doctrine
of equivalents.
Why has the doctine of equivalents come
into disfavor? I believe there are two main rea-
sons. First, since Warner-Jenkinson, the Federal
Circuit has emphasized negative doctrines to bar
the doctrine of equivalents. This is because the
Federal Ciruit interpreted the Supreme Courts
discussion of negative doctrines, i.e., prosecu-
tion history estoppel and element-by-element
analysis, as an indication that more emphasis on
negative doctrines was needed. Further, in
Warner-Jenkinson, the Supreme Court requested
that the Federal Circuit develop a procedure to
remedy the problems resulting from the determi-
nation of equivalents by juries.18 Since the Fed-
eral Circuit already had a well-developed prac-
tice of Markman hearings to determine claim
scope, which was expressly endorsed by the Su-
preme Court,19 the Federal Circuit developed the
practice of dealing with negative doctrines in
Markman hearings.20 If any of these doctrines
apply, courts do not examine infringement under
the doctrine of equivalents. This practice signifi-
cantly reduced claims of infringement under the
doctrine of equivalents.
The second reason for the decline of the
doctrine of equivalents is the Markman deci-
sion.21 In Markman, the Supreme Court empha-
sized the necessity of uniformity and certainty
in infringement analysis.22 In Warner-Jenkinson,
the Court reemphasized the significance of se-
curing legal certainty in the context of claims
definitional and notice function.23 To attain the
goal of certainty, the Federal Circuit began to
distinguish extrinsic evidence from intrinsic evi-
dence and to rely heavily on the specification and
prosecution history in interpreting claim lan-
guage.24 This practice diminished the impor-
tance of the rule that claims must be interpreted
as would be done by those skilled in the art.25
Claim interpretation that relys heavily on intrin-
a r t i c l e
sic evidence often leads to a narrow literal scope
covering only embodiments disclosed in the speci-
fication, which precludes a claim of infringement
under the doctrine of equivalents.
c. Federal Circuit Has Become Pre-
Ball Spline Japanese Courts
This post-Markman practice reminds us a
lot of the practice of Japanese courts in the pre-
Ball-Spline era. During that time, Japanese courts
emphasized the policy of legal certainty and cre-
ated multiple tests to completely bar a claim of
infringement under the doctrine of equivalents.26
In an effort to secure legal certainty, Japanese
courts followed the inventors recognition theory.
Under this theory, what an inventor does not
literally claim is not recognized by the inventor
and thus should not be covered by an exclusive
right.
Japanese courts relied heavily on the speci-
fication in interpreting patent claims.27 This of-
ten resulted in reading limitations from the speci-
fication into claims and gave very little room to
find infringement on variations of disclosed em-
bodiments. Such a narrow interpretation resulted
from a lack of expertise on the bench in the field
of invention and the interpretation was based on
the assumption that a patent claim drafter should
have complete information both about the prior
art and possible variations to produce the same
result. The inventors recognition theory thus
presented an impossible hurdle to overcome in
claiming infringement under the doctrine of
equivalents.
Festo is a very good example of how post
Warner-Jenkinson practice in the United States
is similar to earlier Japanese practice. Like pre-
Ball-Spline Japanese courts, the Federal Circuit
emphasizes the policy of legal certainty to main-
tain room for improvements and further devel-
opments by competitors.28 It is quite surprising
to hear this type of policy discussions from U.S.
judges. Such policy discussions are more often
expected from judges in developing countries,
which need to catch up with the level of technol-
ogy in developed countries.
In addition, as Judge Linn correctly pointed
out, the Festo majority paid little attention to the
difficulty of drafting initial claims and the neces-
sity of amending claims during prosecution.2 9
The majoritys new rule of viewing any narrow-
ing amendment, regardless of whether or not the
reason for the amendment relates to the prior art,
as surrender of any equivalents beyond the literal
scope is based on a view that presumes complete
information about the prior art and variations
during prosecution.30 This reminds Japanese
patent scholars of the practice of Japanese courts
of dismissing a claim of infringement under the
doctrine of equivalents when the disputed claim
CASRIP Newsletter Winter 2002
element was amended during prosecution. Like
early Japanese courts, once the Festo majority
found the presence of a basis to apply one of the
negative doctrines, prosecution history estop-
pel, the majority simply dismissed any claim of
infringement under the doctrine of equivalents
because the premier policy of legal certainty jus-
tified a refusal to extend any protection beyond
the claim language.31
Unfortunately, the new Festo rule will not
bring the high level of legal certainty that the
majority is anticipating without sacrificing fair-
ness. Dissenting judges raised an example of an
unfair situation where an infringer intentionally
avoids infringement by adding an obvious modi-
fication to an amended claim element.32 In
Cantonic Components,33 such a situation was
encountered by the House of Lords, which does
not formally adhere to the doctrine of equiva-
lents. Finding that the claim limitation vertical
was added during prosecution, the infringer de-
signed the disputed back plate to be inclined at a
slight angle to the vertical to avoid literal infringe-
ment. Faced with the dilemma of sacrificing fair-
ness unreasonably, the House of Lords decided
to expand literal infringement.
Even pre-Ball-Spline Japanese courts paid
attention to fairness and gave mercy to those
who could not draft a perfect claim. In the Pulp-
wood Barking Machine case,34 the claim was
drafted very narrowly to cover only the embodi-
ments disclosed in the specification. Because the
claim was narrow, the claim was issued as the
initial form without any amendment. The ac-
cused infringer replaced the piston mechanism in
the claim with a crank mechanism. Both mecha-
nisms were very well known to one skilled in the
art to perform the same function. One skilled
would instantly recognize that one mechanism
could substitute for the other. Instead of relying
on the inventors recognition theory to limit the
claim scope to the embodiment, the Supreme
Court of Japan found that, although the claim did
not literally cover the accused machine, the modi-
fication added by the accused infringer was so
minor that it was infringing.
Unfortunately, the Court did not use the
term equivalents in finding infringement but
was keenly aware of an unfair result had the Court
found no infringement. Thus, in balancing the
policies of legal certainty and fairness, it is inevi-
table that courts will introduce a certain level of
uncertainty when expanding literal language to
maintain fairness.
Moreover, even the new Festo rule cannot
guarantee a high degree of legal certainty. It is
often difficult to determine whether an amend-
ment narrowed the claim scope. In Festo, the
patentee argued that there is no substantial dif-
ference with respect to the claim scope between
f e a t u r e d
the amended claim including structural limitations
from the specification and the original means-
plus-function claims.35 The Federal Circuit ma-
jority rejected the argument, holding that the
amended claim was narrowed because a claim el-
ement recited in the means-plus-function claim
literally encompassed the corresponding struc-
tures in the specification and their equivalents.
After the Festo en banc decision, parties
disputes often focus on the issue of whether an
amendment during the prosecution narrowed the
claim scope.36 In some cases, the Federal Circuit
applies a relatively flexible rule and finds that an
addition of limitations does not necessarily nar-
row the claim scope.37 Accordingly, some may
argue that the new rule does not resolve the un-
certainty problem because the difficulty of de-
termining whether an amendment narrowed the
claim scope results in uncertainty in infringement
analysis under the doctrine of equivalents.38
Another problem that Festo will generate
is a flooding of the patent prosecution system.
Like the old Japanese practice, narrow claim in-
terpretation will bring more patent applications
to secure protection for variations. Judge Plagers
prediction that patent attorneys will draft nar-
row claims and file more applications with dif-
ferent claim scopes to avoid amendments during
prosecution should become a reality.39 To avoid
prosecution history estoppel, more arguments
will be made in prosecution records and more
appeals will be filed. This will significantly in-
crease the administrative burden of the patent
office. Unfortunately, the public will pay the
cost of these burdens because the delay caused
by the administrative burden is remedied by the
extension of the patent term under the 1999
American Inventors Protection Act.40
Because the Federal Circuit now interprets
claims narrowly and denies the doctrine of equiva-
lents as Japanese courts did before the Supreme
Court of Japan handed down the Ball Spline de-
cision, all criticisms from U.S. and European
patent owners of the Japanese courts old prac-
tice apply to the Festo majority analysis.41 It is
very unfortunate for the U.S. patent community
that the Federal Circuit did not learn from Japa-
nese experiences before making this drastic policy
change.
d. What was the Supreme Courts
Main Message in Warner-Jenkinson?
But the ultimate question is: did the Su-
preme Court expect these drastic changes? What
was the main message from the Supreme Court in
Warner-Jenkinson? For German and Japanese
patent scholars and professionals who read U.S.
decisions from a comparative perspective, the
message was clear because many statements and
policies discussed by the United States Supreme
a r t i c l e
Court are common to what was stated by the
Supreme Court of Japan in the Ball-Spline case
and the Supreme Court of Germany in the Curb-
stone (Formstein) case.42
In Warner-Jenkinson, the Court stated, if
the essential predicate of the doctrine of equiva-
lents is the notion of identity between a patented
invention and its equivalents, there is no basis for
treating an infringement equivalent any different
than a device that infringes the express terms of
the patent.43 In other words, the Supreme Court
wants two types of infringement to be treated
the same in terms of the notion of identity. It
instructed lower courts not to discriminate one
from the other. This is what German courts have
been doing. German courts traditionally view
protection by equivalents as an inherent part of
patent protection and do not clearly separate lit-
eral infringement analysis from equivalent analy-
sis.44 In the Ball-Spline case, the Supreme Court
of Japan did not separate the literal protection
from the equivalent protection because it stated
that the substantial value of a patented inven-
tion extends not only to the structure recited in
the claim but also to structures that one skilled in
the art would have readily conceived as substan-
tially identical to the structure recited in the
claim.45
Also, the U.S. Supreme Court instructed
lower courts to analyze infringement from the
perspective of one skilled in the art, stating that
much as the perspective of the hypothetical
reasonable person gives content to concepts
such as negligent behavior, the perspective of a
skilled practitioner provides content to and lim-
its on the concept of equivalence. In so far as
the question under the doctrine of equivalents is
whether an accused element is equivalent to a
claimed element, the proper time for evaluating
equivalency is at the time of infringement.46 In
other words, the perspective of one skilled in the
art as of the time of infringement defines the ex-
tent of patent protection, and the patent claims
function to alert one skilled in the art and impose
a duty of care to avoid infringement not only
literally but also equivalently. The duty of care
imposed on one skilled in the art requires recog-
nizing not only structures expressly identified in
the claim and specification, but also structures
known as interchangeable, and to avoid making
and using them.
The Supreme Court of Japan and the Su-
preme Court of Germany also made the same
points. The Supreme Court of Germany empha-
sized the importance of using the view-point of
one skilled in the art, stating that the scope of the
invention as recognized by a person skilled in the
art is decisive in finding infringement by equiva-
lents, although the Court instructed to use such
perspective as of the filing date, instead of the
CASRIP Newsletter Winter 2002
time of infringment.47 The Supreme Court of
Japan shares the same view as the U.S. Supreme
Court in imposing a duty of care determined from
the perspective of one skilled in the art. In the
Ball-Spline case, the Supreme Court of Japan
imposed a duty to those skilled in the art to an-
ticipate embodiments which one skilled in the art
would have readily conceived as substantially
identical to the structure recited in the claim and
avoid using and making the embodiments.48 Like
the U.S. Supreme Court, the Supreme Court of
Japan instructed lower courts to use the per-
spective as of the time of infringement. Thus, for
German and Japanese patent academics and pro-
fessionals, these are the main points in Warner-
Jenkinson. If one would read three Supreme
Courts instructions in comparative perspective,
he or she should expect harmonization through
case law among three important jurisdictions with
respect to the extent of patent protection.
Unfortunately, U.S. case law did not de-
velop in the right direction. For the Federal Cir-
cuit, the points made to clarify the tests for
equivalence were less important than other points
that the Court made with respect to the element-
by-element test and prosecution history estop-
pel. Despite the Courts instruction to use the
perspective of one skilled in the art, the Festo
majority adopted a new rule to decide the limit
and content of equivalents, regardless of what
one skilled in the art would have viewed as being
surrendered.49 As experiences in the United King-
dom and Japan indicate, it is necessary to expand
protection beyond the scope of literal infringe-
ment to maintain reasonable fairness. The U.S.
Supreme Court instructed the Federal Circuit to
develop a measure for such expansion by refining
the framework for the doctrine of equivalents
through case-by-case application of the doctrine
of equivalents. However, by developing mul-
tiple negative doctrines to completely bar the
doctrine of equivalents, unfortunately, the Fed-
eral Circuit sabotages the instructions given by
the Supreme Court.
e. Lessons from U.S. Experiences
In conclusion, I do not think that the Fed-
eral Circuits current practice reflects the instruc-
tions given by the Supreme Court. In reviewing
Festo, I hope that the Supreme Court will clarify
its own message in Warner-Jenkinson and return
the Federal Circuit back to the right track. At
this moment, there is very little that Japan can
learn from the United States with respect to tests
for equivalence, unless Japan wants to return to
where it was a decade ago.
I understand that the Institute of Intellec-
tual Property is also investigating United King-
dom law and German law. Japan can learn much
more from Germany, which puts substantial ef-
f e a t u r e d
fort into clarifying the test of equivalents. Al-
though German courts analyze infringement un-
der the doctrine of equivalents in the majority
of cases,50 it seems Germans are happy with
the current practice. German courts use tests
similar to the test for inventive step to both
affirm and deny infringement under the doc-
trine of equivalents. 51 This quasi-inventive-
step test brings satisfactory legal certainty.
The United States Governments amicus
brief in Festo proposed to use a test similar to
the nonobviousness test to limit the effect of
estoppel. 52 Although it seems redundant with
the test for limiting the doctrine of equivalents
in Wilson Sporting Goods,53 such a test for
limiting the estoppel effect, using the perspec-
tive of one skilled in the art, is consistent with
the Warner-Jenkinson Courts instruction and
may bring a balance between fairness and legal
certainty that German courts currently enjoy.
Japan also can learn from both Germany and
the U.K. because many European countries,
including these countries, once used or still use
the essential elements test that Japanese courts
currently use to limit the doctrine of equiva-
lents.54
III. Means-Plus-Function Claim
I hope I did not upset Judge Rader very
much because the doctrine of equivalent part
of my presentation condemned the Federal
Circuits interpretation of the Supreme Courts
instruction in Warner-Jenkinson. Unfortu-
nately, my presentation on means-plus-func-
tion claims also concentrates on criticisms of
the current Federal Circuits practice. It ad-
dresses five types of confusion introduced by
the Federal Circuits case law with respect to
the interpretation of means-plus-function
claims and proposes some solutions to the con-
fusion.
a. Confusion 1: When to Apply
The United States Patent Statute, Sec-
tion 112, Paragraph 6, provides a rule for inter-
preting means-plus-function elements.55 This
rule allows U.S. courts to limit the literal cov-
erage of means-plus-function claim elements
to the embodiments disclosed in the specifica-
tions. The literal coverage of a means-plus-
function element is limited to disclosed em-
bodiments and their equivalents.56 This is the
only rule expressly provided in the U.S. Patent
Statute with respect to claim interpretation.
Because the statute refers only to means-plus-
function and step-plus- function elements,
courts apply the rule only to these elements.
However, it turned out to be a difficult
task for U.S. courts to identify whether an el-
a r t i c l e
ement is drafted in the means-plus-function
format. After the enactment of the 1952 Patent
Act that introduced 112, 6, courts often did
not limit the interpretation of means-plus-func-
tion claims to cover only embodiments in the
specification and their equivalents.57 Likewise,
during examination, the USPTO had long re-
fused to follow the statutory rule and gave the
broadest reasonable interpretation to claims.58
Only after the 1994 Donaldson case, USPTO
reluctantly begin to apply the rule.59 The ma-
jority of issued means-plus-function claims
were drafted when courts and the USPTO did
not clearly distinguish means-plus-function el-
ements from other elements. Thus, inventors
did not devote much attention to distinguish-
ing one from the other when they drafted
claims. Claim drafters often mixed functional
limitations with structural limitations and liked
to use the term means only because means-
plus-function claims were once considered the
best and broadest claims possible.60 More-
over, some terms, such as sensors and connec-
tors, indicate both structure and function.
Accordingly, the Federal Circuit created
an analytic framework consisting of a series of
steps to distinguish means-plus-function ele-
ments from other regular claim elements.6 1
Under this framework, a court must first ex-
amine if the term means used in a claim ele-
ment is combined with a function. If the court
answers the question affirmatively, it must
apply a presumption that 112, 6 ap-
plies.62 However, one can successfully rebut
the presumption if the claim recites sufficient
structures, materials and acts for performing
the recited function.63 Even if a court finds no
means term in a claim element, it applies
112, 6 if the claim recites only insufficient
structures, etc., for performing the function.64
Thus, the key to distinguishing means-plus-
function claims is sufficiency of structural,
material or act limitations. Although the bur-
den shifts between the patentee and accused
infringer, depending on the presence of the term
means-for, Section 112, Paragraph 6 is ap-
plicable as long as the disputed element does
not have sufficient structural limitations.
However, the term sufficiency indi-
cates the arbitrary nature of the determination
and involves a great deal of uncertainty. It is
arguable that no one knows if the disputed
claim element includes sufficient structural limi-
tations, unless the Federal Circuit determines
it to be so. In short, although the Federal Cir-
cuit made significant efforts to clarify the ap-
plication of 112, 6, a significant uncertainty
still remains with respect to questions con-
cerning whether 112, 6 is applicable to the
disputed element.
CASRIP Newsletter Winter 2002
b. Confusion 2: Distinction from
Equivalence under the Doctrine of
Equivalents
Another confusion related to 112, 6 is
how courts can distinguish literal equivalents un-
der 112, 6 from equivalents under the judicially
developed doctrine of equivalents. Judge Rader in
the Al-Site case introduced two tests intended to
distinguish 112, 6 equivalents from equivalents
under the doctrine of equivalents.65 One test re-
lates to the three-part test under the doctine of
equivalents, which examines the identity and simi-
larity in function, way and result. With respect to
112, 6 equivalents, an accused product or pro-
cess must perform the identical function of the
product or process disclosed in the specification.
66
For infringement under the doctrine of equiva-
lents, only a substantially similar function is nec-
essary. However, is it really possible to distin-
guish between identical and substantially simi-
lar, which differ only in degree? Thus, like the
jury in the Al-Site case, both juries and judges are
deeply troubled by these very closely related no-
tions of identity.
Another test relates to the timing of deter-
mining equivalents. According to Judge Rader,
112, 6 equivalents should not include after-
arising equivalents.67 Such equivalents must ex-
ist at the time of patent issuance. In contrast, the
judicially created doctrine of equivalents exam-
ines equivalence as of the time of infringement
and encompasses equivalents developed after is-
suance. However, Judge Rader did not give de-
tailed instructions regarding what constitutes an
after-arising equivalent, and thus introduced con-
fusion and uncertainty.
Under the current case law of determining
nonobviousness, any combination of old elements
can still be nonobvious unless there is a sugges-
tion to combine the old elements from the prior
art or from the general knowledge of one skilled
in the art.68 If this rule applies, any equivalent
replacing a recited claim gives rise to an after-
arising technology unless a suggestion to replace
the claimed with the equivalent is available from
the prior art or general knowledge. Accordingly,
the second test does not give an effective tool to
distinguish 112, 6 equivalents from judicially
created equivalents.
c. Confusion 3: Breadth of
Equivalents
The third confusion relates to the literal
coverage of means-plus-function claims. At one
time, means-plus-function claims were consid-
ered to be the best claims because they gave the
broadest possible literal coverage. Contrary to
this notion, recent Federal Circuit cases suggest
that means-plus-function claims are the most re-
f e a t u r e d
strictive claims and thus the least desirable be-
cause they are limited by embodiments in the
specifications.69 As a result, the legal commu-
nity avoided using means-plus-function claims.
However, in Festo, by comparing a means-
plus-function claim with an amended claim that
introduced structural limitations corresponding
to the recited function, the Federal Circuit con-
cluded that the latter is narrower than the
former. 70 This suggests that means-plus-func-
tion claims are still broader than regular claims
having structural limitations. Furthermore, means-
plus-function claims at least guarantee the exten-
sion of protection to equivalents. Therefore, some
suggest that means-plus-function claims are again
the preferred claims. To maximize the chance of
both literal infringement and infringement under
the doctrine of equivalents, U.S. patent attor-
neys are beginning to make sure to include both
means-plus-function claims and regular claims in
a patent application.
d. Confusion 4: Step-for-Function
Elements
The fourth confusion relates to step-plus-
function claims. Section 112, paragraph 6 pro-
vides for both product and method claims. With
respect to method or process claims, a question
as to whether 112, 6 should apply is most
difficult because an action is inherently more dif-
ficult to distinguish from a function.71 To make
sense of the distinction, Judge Rader proposed
that usage of the term step of, instead of step
for, should trigger the application of 112,
6.72 However, when one of my students did a
database search to find claims including step of
he could not find any. Thus, this distinction may
not work well to distinguish step- for function
claims from regular claims.
e. Confusion 5: Element-By-Element
Analysis
The last confusion relates to the analysis
of the equivalent. Following the Supreme Courts
instruction in Warner-Jenkinson, the Federal Cir-
cuit must analyze both 112, 6 literal equiva-
lents, and equivalents under the doctrine of equiva-
lents, on a element-by-element basis. However,
the application of 112, 6 presents a difficult
problem with respect to examination of equiva-
lency on an element-by-element basis. Consider
a situation where an element claims sensing the
light sent by an emitter. If such sensing is done
by a combination of discrete devices, does the
element encompass the combination of these de-
vices or each device? In Odetics Inc.,73 the three-
judge panel faced this difficult question. The
panel was divided with respect to the question of
what constitutes an element: the overall struc-
ture, which produces the function, or individual
a r t i c l e
devices or components jointly, which produce
the result. The majority concluded that the ele-
ment means the overall structure, instead of indi-
vidual components.
f. Lessons from the U.S. Experience
Many of the confusions resulted from the
Federal Circuits practice of distinguishing means-
plus-function claims from regular claims and ap-
plying the interpretation rule in 112, 6 only to
means-plus-function claims. Thus, I would like
to emphasize that Japan should not follow the
U.S. example in interpreting means-plus-func-
tion claims. Instead, Japan should keep the cur-
rent practice of interpreting means-plus function
claims in the same way as regular claims because
there is no reason to discriminate against means-
plus-function claims and the current practice
avoids confusion introduced by the distinction.
U.S. courts often emphasized the unclear
literal scope of means-plus-function claims.7 4
The language of 112, 6 was introduced to
remedy this concern. The literal scope may be
unclear in undeveloped areas of technology where
knowledge in the field is scarce, and thus one
skilled in the art would not know the scope. At
the same time, in a fully mature technological
field, one skilled in the art can perceive both
equivalents that perform the recited function and
the functional limitations. If the subject matter is
in a well-established technological area, there is
no reason to discriminate between means-plus-
function claims and regular claims.
Japan and Europe have adopted this rea- Both types of claims are created to overcome
soning and therefore, Japanese and European ap-
plicants are allowed to use means-plus-function
claims only if one skilled in the art reasonably
would understand what structures are included to
perform the recited function.75 If the literal scope
of means-plus-function claims is unclear, JPO and
EPO reject claims for lack of definiteness. Unfor-
tunately, because 112, 6 makes clear that the
functional term covers at least one embodiment in
the specification, the USPTO may fail to reject
means-plus-function claims for lack of definite-
ness, even if what constitutes equivalents is un-
clear to one skilled in the art. As a result, US
patents may issue on means-plus-function claims,
literal scope of which is unclear and thus it is nec-
essary to apply 112, 6 rule.
In conclusion, there is again very little for
Japan to learn from U.S. experiences. Japan is much
better off to keep the current practice and avoid
confusion resulting from a distinction between regu-
lar claims and means-plus-function claims. It is
unfortunate that the U.S. Congress introduced
112, 6 and expressly provided a claim interpreta-
tion rule with respect to means-plus-function claims.
As indicated from Japanese and European experi-
ences, Congress concern over the uncertainty could
CASRIP Newsletter Winter 2002
have been addressed without introducing the 112,
6 rule. The U.S. patent community did not en-
counter as many problems under the old case law
that did not distinguish means-plus-function claims
from regular claims.
The presence of 112, 6 would not nec-
essarily lead to the practice of discriminating
against means-plus-function claims if 112, 6
were to be viewed as a universal claim interpreta-
tion rule. InEnviro Corp,76 the Federal Circuit
held that the specification is controlling if 112,
6 is applicable, but the specification is only
informing if 112, 6 is not applicable. One
may wonder how much informing is different
from controlling. Even if 112, 6 is not
applicable, in interpreting a claim element in light
of the specification, courts always identify equiva-
lents of disclosed embodiments that fall into the
structural definition of that element. If 112, 6
is applicable, courts identify equivalents of dis-
closed embodiments that fall into the functional
definition. As far as the process of finding equiva-
lents is concerned, there is no basis for treating a
means-plus-function claim element any differ-
ently than a regular element with respect to the
interpretation rule covering disclosed embodi-
ments and their equivalents.
IV. Product-by-Process Claim
Product-by-process claims are similar to
means-plus-function-claims in that both types
of claim do not particularly recite the structural
or physical characteristics of the subject matter.
difficulties in defining the subject matter. Re-
garding means-plus-function claims, the difficulty
is in finding structural terms that describe com-
mon characteristics of a variety of equivalents
that produce the function recited in the claim
element. Regarding product-by-process claims,
the difficulty is lack of knowledge of the struc-
tural characteristics of the end product that in-
ventors want to protect.77 Patentees often adopt
product-by-process claims with the intent to cover
a broad literal scope relative to a disclosure in the
specification. However, are product-by-process
claims what patentees believe them to be? My
presentation on product-by-process claims will
focus on this question.
a. What Are Product-By-Process
Claims?
Product-by-process claims are claims di-
rected to a product but defined in terms of the
way to produce the product.78 In Atlantic Ther-
moplastics, Judge Newman, dissenting from the
denial of an en banc hearing , classified product-
by-process claims into three types: (1) the prod-
uct is new and unobvious, but is not capable of
independent definition; (2) the product is old or
f e a t u r e d
obvious, but the process is new; (3) the product
is new and unobvious, but has a process-based
limitation. 79 Among the three types, the first
type is a true product-by-process claim. Be-
cause a product-by-process claim is a type of
product claim, the product recited in the claim
must be new and nonobvious from the prior art,
independent from the process recited in the
claim.80 Thus, the second type does not qualify
as a true product-by-process claim. The third
type is also not a true product-by-process claim
because it only includes a process-based limita-
tion. Process-based limitations are certain pro-
cess words such as molded or frozen that to use requirement, USPTO guidelines require
are interpreted as structural limitations because
the word is used in an adjective, non-process
sense and thus defines a physical characteristic
of the product.81 Because process-based limita-
tions are interpreted as structural limitations, the
third type is in fact a true product claim.
b. Patentability
Product-by-process claims are difficult to
issue because such claims are more likely to be
rejected on grounds of anticipation and obvious-
ness, and the claims have more difficulty meeting
the disclosure requirements than true product
claims that are defined by physical characteristics.
First, a product-by-process claim must meet the
same standard of novelty and nonobiousness ap-
plicable to a true product claim. Such novelty and
nonobviousness should not depend on the method
by which the product is made.82 Novelty and
nonobviousness are difficult to argue in a product-
by-process claim because an applicant must dis-
tinguish the physical characteristics of the recited
product from the prior art.83 However, a true
product-by-process claim does not recite any
physical characteristics.
At the same time, product-by-process
claims are difficult to examine because they lack a
description of structure. Because the USPTO
does not have facilities to conduct an experiment
and manufacture the product, the USPTO has no
basis to examine a product in terms of physical
characteristics. Recognizing this problem, the
Court of Customs and Patent Appeals (CCPA)
introduced a lesser burden for showing prima-
facie obviousness.84 The USPTO can meet the
burden if it cites a product which reasonably ap-
pears to be either identical to or only slightly
different from a product recited in a product-by-
process claim.85
A product-by-process claim must also
meet the same standard of disclosure applicable
to a true product claim. Section112 paragraph 1
requires three distinct elements in the specifica-
tion: (1) enablement; (2) written description and
(3) best mode. The best mode requirement is not
difficult for a product-by-process claim to meet
a r t i c l e
because it only requires a disclosure of the best describe the sequence.96 Unless the specifica-
mode based on the inventors subjective knowl- tion discloses physical characteristics of the prod-
edge at the time of application.86 If physical uct, a true product-by-process claim very likely
characteristics of the product are unknown to the violates the description requirement for failure to
inventor, a failure to disclose the characteristics disclose precise physical definitions.
do not violate the best mode. Section 112, paragraph 2 applies a disclo-
The enablement requirement includes two sure requirement to the content of claims and
elements. The first element requires that a speci- mandates that claims should particularly point
fication include a disclosure of how to make87 out and distinctively claim the subject matter
and how to use the product recited in the claim.88 which the applicant regards as his invention.97
Since a process of producing the product is re- Product-by-process claims must meet this claim
cited in the claim, the how to make requirement definiteness requirement. Product-by-process
is not difficult to meet. With respect to the how claims are more likely to violate this definiteness
requirement than true product claims if the prod-
disclosure of a utility specific to the product re- uct relates to an unpredictable art.98 If the speci-
cited in the claim.89 Such use must be credible to fication does not identify any structural feature,
one skilled in the art and substantial enough to be it is also doubtful that those skilled in the art
used in the real world.90 As long as the inventor could understand what is claimed, even if the
produces the product by the process recited in claim is read in light of the specification.
the claim and identifies the utility, it would not
be difficult to meet the first element of the c. Infringement
enablement requirement. Despite the higher hurdle to obtain pat-
ents, patentees still want to use product-by-pro-
A more difficult requirement to meet is the
cess claims because they believe that these claims
second element of enablement, which requires
give a broader literal scope than a process claim.
that the invention be described in such clarity as
However, this assumption is very unlikely to be
to enable one skilled in the art to practice the
true. Patentees expect product-by-process
invention. Claims can be rejected as failing the
claims to cover any product, regardless of the
enablement requirement if the invention cannot
process of making it, as long as the product has
be practiced without undue experimentation.91
the same physical characteristics as the product
Claims can also be rejected under the undue
resulting from the recited process. At one time,
breadth doctrine.92 This doctrine relates to the
including product-by-process claims brought ad-
relationship between the claims and the disclo-
ditional protection because the U.S. patent stat-
sure in the specification. In essence, claims should
ute did not extend protection of a process to its
not be so broad as to cover non-enabled embodi-
end product.99 However, enactment of the 1988
ments. If no reasonable correlation exists be-
Process Patent Amendment Act extended pro-
tween the narrow disclosure in the specification
tection to the end product.100 This change made
and the broad claim, the specification does not
it useless to include product-by-process claims
meet the requirements of enablement.93
unless such claims covered products resulting
The first type of a true product-by-pro-
from different processes.
cess claim is considered a generic claim of prod-
With respect to the literal coverage of
ucts resulting from different processes if the claim
product-by-process claims, two panel deci-
is interpreted to cover products resulting from
sions of the Federal Circuit have adopted con-
different processes. Under recent case law that
flicting views. The Scripps court held that a
invoked the enablement requirement to limit claim
product-by-process claim should not be lim-
scope of an unpredictable art, a product-by-pro-
ited to products made by the process recited in
cess claim arguably fails enablement, particularly
the product-by-process claims.101 The court
if the product relates to a highly unpredictable
nevertheless remanded the case for examining
technology.94
infringement under the reverse doctrine of
Another requirement that is difficult to
equivalents. In contrast, the Atlantic Thermo-
meet in product-by-process claims is the written
plastics court reviewed the Supreme Court
description requirement. Recent case law has
cases and held that product-by-process claims
made it very difficult to overcome a rejection
extend only to the end product made by the
under the written description requirement if the
process recited in the product-by-process
structure or physical characteristics are unknown
claims.102 The majority of lower court deci-
and not disclosed in the specification. In the Eli
sions have adopted the Atlantic Thermoplas-
Lilly case, the Federal Circuit required the paten-
tics courts view. 103 However, these conflict-
tee to disclose a precise definition of a DNA
ing panel decisions introduced serious confu-
sequence if the patentee wanted to protect the
sion in lower courts claim interpretation of
sequence.95 A description of a method of pro-
product-by-process claims.104
ducing the DNA sequence was insufficient to
CASRIP Newsletter Winter 2002
f e a t u r e d
Judge Newman, the author of Scripps,
tried to distinguish the claims in Scripps from the
claims in Atlantic Thermoplastics. She viewed
the Scripps product as being a true product-by-
process claim that directs to a new and
nonobvious product independent from the pro-
cess recited in the claim, whereas she viewed the
Atlantic Thermoplastics product as being new and
nonobvious only with respect to the process of
making the product.105
However, the Scripps product is not com-
pletely new and nonobvious as Judge Newman
believes. Scientists had invented a process of
concentrating human factor VIII:C in plasma be-
fore the Scripps invention was made.106 Thus, it
is also arguable that Scripps merely invented a
new less expensive process rather than a com-
pletely new product, and thus the patentability
of the Scripps product also depends on the pro-
cess of making. 107 The Scripps human factor is
distinguishable from the old concentrated human
factor only with respect to purity and activity,
but such distinguishable characteristics were not
recited in the claim because Scripps used a prod-
uct-by-process claim. In short, Judge Newmans
distinction does not work as she expects.
Even adopting Judge Newmans view,
courts still prevent a product-by-process claim
from covering a product that results from a dif-
ferent process. In Scripps, the Federal Circuit
remanded the case for further examination of
infringement under the reverse doctrine of
equivalents because it was very likely that a
new process developed by the infringer resulted
in a product with purity and activity different
from those of the product resulting from the
Scripps process. Accordingly, infringement of
a true product-by-process claim is very likely
to be limited, under the reverse doctrine of equiva-
lents, by physical characteristics that are not
recited in the claim.
The Atlantic Thermoplastics view should
prevail over the Scripps view if examined with
respect to two competing interests: (1) inter-
ests of the inventor who is entitled to a fair
reward and tries to overcome the difficulty of
defining a new and non-obvious product in an
unpredictable technology area; and (2) interests
of the patent office and public with respect to
definitional function and the notice function of
claims. The inventors interest tends to be sup-
ported by the broad scope of protection given
by the Scripps view, whereas in contrast, the
public interest tends to be supported by the
Atlantic Thermoplastics view that secures room
for further developments. As discussed with
respect to the tests for equivalents, recent case
law after Markman and Warner-Jenkinson re-
flects a significant shift away from the inventors
interest and toward the public interest.
a r t i c l e
In addition, many product-by-process
claims are adopted only for convenience and very
little justification remains for allowing inventors
to use product-by-process claims. Particularly,
the Supreme Court emphasized that each ele-
ment in a patent claim is deemed material to de-
fining the scope of the patented invention and
thus forbid lower courts from using the doctrine
of equivalents to effectively eliminate any ele-
ment in its entirely.108 This rule should also ap-
ply to claim interpretation. Accordingly, under
current case law developments, it is very diffi-
cult to justify the Scripps view that undermines
claims notice and definitional functions by ig-
noring process limitations in product claims.
d. What to Learn from the U.S.
Experience
What should Japan learn from these U.S.
experiences? Currently, Japanese courts adopt
the Scripps view and find infringement of a prod-
uct-by-process claim independent from the pro-
cess recited in the claim. However, patentees
almost always fail to show infringement if in-
fringing products are made by different processes
than those recited in the claim because Japanese
courts also apply a doctrine similar to the reverse
doctrine of equivalents and require identity of
physical structures between the claimed prod-
uct and the infringing product.
However, as discussed earlier in compar-
ing Scripps and Atlantic Thermoplastics, the
Scripps view undermines the notice and defini-
tional function of claims. According to Scripps,
competitors will have to produce the product
using the recited process and identify its physi-
cal characteristics to avoid producing an infring-
ing product, albeit by a different process. Al-
though such production does not constitute in-
fringement, because Japanese Patent Law pro-
vides an experimental use exception to the en-
forcement of a patent,109 such practice imposes
an unreasonable burden on competitors to avoid
infringement.
In addition, product-by-process claims
are difficult for the JPO to examine. Japanese
courts and the JPO therefore should discourage
the use of product-by-process claims by mak-
ing such claims difficult to issue and limiting the
protection of patents issued on such claims.
U.S. case law makes it easy for the
USPTO to reject a product-by-process claim
for obviousness. Under the current Federal Cir-
cuit case law and USPTO examination practice
on the disclosure requirement, it is doubtful any
true product-by-process claim can survive pros-
ecution. Because products recited in a true prod-
uct-by-process claim usually relate to an un-
predictable art, such as a chemical or biotech-
nology product, the USPTO imposes strict
CASRIP Newsletter Winter 2002
enablement and written description require-
ments. Moreover, once a patent is issued, it is
likely that the first type of a true product-by-
process claim would be interpreted narrowly to
meet disclosure requirements.110 The second
type of product-by-process claim is also inter-
preted narrowly by making reference to argu-
ments in the prosecution, the specification and
the prior art.111 Applicants argue the novelty
and nonobviousness of the second type claims
with respect to the process of making the prod-
uct; courts interpret the claim according to such
argument. Finally, even if a true product-by-
process claim is interpreted broadly to cover a
product resulting from a different process, the
reverse doctrine of equivalents prevents the pat-
entee from proving infringement on such a prod-
uct.
In short, under current U.S. case law and
USPTO practice, product-by-process claims are
not what patentees believe them to be. The
assumption that product-by-process claims are
helpful in obtaining a patent for products in an
unpredictable art, by overcoming the difficulty
of defining such product, is a myth. In fact,
product-by-process claims make it more diffi-
cult to obtain a patent and give narrower pro-
tection than a true product claim. Japan should
follow the same practice to discourage appli-
cants from using product-by-process claims. Of
the two views on the literal scope of product-
by-process claims, Japan should adopt the view
of Judge Rader in Atlantic Thermoplastics and
limit the literal scope to a product resulting from
the process recited in the claim. Thus, at last, I
am completely in agreement with Judge Rader
with respect to claim interpretation of product-
by-process claims.
V. Conclusion
Overall, U.S. case law is still under transi-
tion in these three controversial areas. However,
Japan can still learn from the United States and
avoid making the same mistakes. Unfortunately,
there is no significant development to clarify the
test for equivalence. Thus, Japan should learn
from Germany where more than two thirds of
infringement cases are resolved through the ap-
plication of the doctrine of equivalents. With
respect to means-plus-function, the Federal
Circuits practice of discriminating against means-
plus-function claims introduced significant con-
fusion. To avoid the confusion, Japan should
keep the current practice and should interpret
means-plus-function claims in the same way as
regular claims. Finally, because of conflicting
Federal Circuit panel decisions, it is not clear
whether a product-by-process claim covers a
product that is produced by a process different
from the process recited in the claim. However,
f e a t u r e d
9 42
a policy based analysis suggests that Japan should
interpret the claim to cover only products result- 10
ing from the process recited in the claim. 11
_________________________________ 12
* This article is based on the presentation given 13
at a seminar organized by the Institute of
Intellectual Property, Research and Study on 14
Patent Claim Interpretation Committee,
Subcommitee on the United States, November 15
19, 2001. . The author revised the speech
note of the presentation reflecting recent 16
Federal Circuit decisions and discussions in the
Festo oral hearing at the Supreme Court. 17
1
Industrial Property Right Committee, Japanese
Patent Office , Tokkyo Hou Tou no Kaisei ni 18
Kansuru Toushin (Invitation of Comments on
the Proposal for Revising Patent Law and
Other Industrial Property Laws)10 (Dec. 16,
19
1997). 20
2
Institute of Intellectual Property Chiteki
Zaisan shinngai ni Taisuru Sonngai Baishou 21
Bassoku no Arikatani Kannsuru Chousa
Houkokusho (Report of Study on the
Appropriate Compensation for Damages and 22
Criminal Sanction against Intellectual Property
23
Infringement) 81 (March, 1998). The survey
indicates that 50% of the industry feels that
the current damages awarded by Japanese 24
courts are insufficient and 50% believes the
current damages are sufficient.
25
3
For a general discussion of civil procedure and
court system for patent litigation, see Ryu
Takabayashi, Practices of Patent Litigation in
26
Japanese Courts, 5-2 CASRIP Newsletter 13
(Center for Advanced Study and Research in 27
Intellectual Property, University of 28
Washington School of Law, Seattle, Spring/
Summer 1998), available on-line at
29
www.law.washington.edu/~casrip/newsletter/
newsv5i2jp2.html; Toshiko Takenaka, 30
Comparison of U.S. and Japanese Court
31
Systems for Patent Litigation: A Special Court
32
or Special Divisions in a General Court?
CASRIP Symposium Publication Series No. 5, 33
47 (2000).
4
Judgment of Supreme Court of Japan, February
24, 1998. Hanrei Jiho No. 1360, 32.An 34
English translation of the decision by this
author is published in 5-1 CASRIP Newsletter
35
12 (Center for Advanced Study and Research in
Intellectual Property, University of
Washington School of Law, Seattle, Winter
1998), available on-line at 36
www.law.washington.edu/~casrip/newsletter/
newsv5i1jp1.html. 37
5
Toshiko Takenaka, Interpreting Patent Claims:
The United States, Germany and Japan, 17 IIC 38
Studies (1995).
6
Toshiko Takenaka, The Doctrine of
Equivalents in Japan, CASRIP Symposium 39
Publication Series No. 6, 125 (2001).
40
7 35 USC 154(b).
Warner-Jenkinson Co. v. Hilton Davis Chem.
41
Co., 520 U.S. 17 (1997).
8
Id. at 40.
CASRIP Newsletter Winter 2002
a r t i c l e
Id. at 28.
Id. at 26.
Id. at 39, n.8.
Id. at 40.
Hilton Davis Chem. Co. v. Warner-Jenkinson
Co., 62 F.3d 1512 (Fed. Cir. 1995).
Warner-Jenkinson Co. v. Hilton Davis Chem.
Co., 520 U.S. 17, 33 (1997)
Id. at 29.
Pennwalt Corp. v. Durand-Wayland, Inc., 833
F.2d 931 (Fed. Cir. 1987).
Hilton Davis Chem. Co. v. Warner-Jenkinson
Co., 114 F.3d 1161 (Fed. Cir. 1997).
Warner-Jenkinson Co. v. Hilton Davis Chem.
Co., 520 U.S. 17, 39, n. 8. (1997).
Id.
KIMBERLY P ACE MOORE ET AL., P ATENT LITIGATION AND
STRATEGY 256 (1999)
Markman v. Westview Instruments, 517 U.S.
370, 134 L. Ed. 2d 577, 38 USPQ2d 1461
(1996).
Id. at 390.
Warner-Jenkinson Co. v. Hilton Davis Chem.
Co., 520 U.S. 17, 33 (1997).
Vitronics Corp.v. Conceptronic, Inc., 90 F.3d
1576 (Fed. Cir. 1996).
Smithkline Diagnostics, Inc. v. Helena
Laboratories Corp. 859 F.2d 878 (Fed. Cir.
1988).
Takenaka, supra note 6, at 243.
Takenaka, supra note 6, at 43.
Festo Corp., v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000).
Id. at 622 (Linn, J., dissenting).
Id. at 566.
Id. at 576.
Id. at 616 (Michel, J., dissenting).
Cantonic Components Ltd, v. Hill and Smith
Ltd., FSR 60, RPC 183 (House of Lords,
1981).
Judgement of the Supreme Court of Japan,
May 29, 1987, (1988) Jurisuto No. 903, 85.
Festo Corp., v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 234 F.3d 558, 589 (Fed. Cir.
2000).
E.g., Interactive Pictures Corp. v. Infinite
Pictures Inc., 274 F.3d 1371 (Fed. Cir. 2001).
Bose Corp., v. JBL, Inc., 274 F.3d 1354 (Fed.
Cir. 2000).
Supreme Court Parties Debate Estoppel of
Equivalent Infringement, 63 Pat. Trademark,
& Copyright J., (no.1555) 226, Jan.11, 2002.
Festo, 234 F.3d at 592 (Plager J., concurring).
United States General Accounting Office,
Intellectual Property Rights: U.S. Companies
Patent Experiences in Japan, July 1993.
Judgment of Federal Supreme Court of
Germany, April 29, 1986, Martin Adelman, et
al., Cases and Materials on Patent Law, 1021
(1998); 18 IIC 795 (1987).
43
Warner-Jenkinson Co. v. Hilton Davis Chem.
Co., 520 U.S. 17, 35 (1997).
44
Takenaka, supra note 6, at 59.
45
Judgement of Supreme Court of Japan, Feb. 24,
1998, Hanrei Jiho No. 1630, at 36.
46
Warner-Jenkinson, 520 U.S. at 37.
47
Judgment of Federal Supreme Court of
Germany, April 29, 1986, Adelman, supra note
45, at 1022.
48
Judgement of Supreme Court of Japan, Feb. 24,
1998, Hanrei Jiho No. 1630, at 36.
49
Festo Corp. v. Shoketsu Kinsoku Kogyo
Kabushiki Co., 234 F.3d 558, 600 (Michel J.,
dissenting).
50
Comments made by Judge Hans Marshall, a
retired Judge of Court of Appeals in Munich,
Germany at 2001 CASRIP Nationwide Patent
Seminar.
51
Mario Franzosi, Equivalency in Europe,
CASRIP Symposium Publication Series No. 3,
62 (1998).
52
Brief of Amici Curiae United States at 26,
Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 121 S. Ct. 2519; 150 L. Ed. 2d
692 (U.S. Sup. Ct.) No. 00-1543
53
Wilson Sporting Goods Co. v. David Geoffrey
& Assocs., 904 F.2d 677 (Fed. Cir. 1990).
54
Jochen Pagenberg, The Scope of Article 69
European Patent Convention: Should Sub-
Combinations Be Protected? A Comparative
Analysis on the Basis of French and German
Law, 24 IIC 313 (1993).
55
35 U.S.C. 112 6.
56
In re Donaldson Co., 16 F.3d 1189 (Fed. Cir.
1994).
57
See e.g., Texas Instruments, Inc. v. U.S. Intl
Trade Com., 846 F.2d 1369 (Fed. Cir. 1988).
58
In re Prater, 415 F.2d 1393 (CCPA 1969).
59
In re Donaldson, 16 F.3d 1189 (Fed. Cir.
1994).
60
See, e.g., Cole v. Kimberly-Clark Corp., 102
F.3d 524 (Fed. Cir. 1996), cert. denied 522 U.S.
812 (1997).
61
Al-Site Corp. v. VSI Intl, Inc., 174 F.3d 1308
(Fed. Cir. 1999).
62
Greenberg v. Ethicon Endo-Surgery, inc., 91
F.3d 1580 (Fed. Cir. 1996).
63
Cole, 102 F.3d 524.
64
Id.
65
Al-Site Corp. v. VSI Intl, Inc., 174 F.3d 1308,
50 USPQ2d 1161(Fed. Cir. 1999).
66
Id. at 1320.
67
Id. at 1320.
68
In re Rauffet, 149 F.3d 1350 (Fed. Cir. 1998).
f e a t u r e d a r t i c l e
69 82 100
Al-Site Corp., 174 F.3d at 1323. In re Pilkington, 411 F.2d 1345 (CCPA 1969). This Act was part of the Omnibus Trade and
70
Festo Corp. v. Shoketsu Kinsoku Kogyo 83
In re Stephens, 345 F.2d 1020 (CCPA 1965). Competitiveness Act of 1988, P.L. 100-418
Kabushiki Co., 234 F.3d 558, 589 (Fed. Cir. 84
(Title IX, Subtitle A, Sections 9001-07), 102
In re Brown, 459 F.2d 531(CCPA 1972). Stat. 1563. For a general discussion, Donald
2000).
85
Id., at 535. Chisum, Chisum on Patents, 16.02[6][d]
71
Seal-Flex, Inc. v. Athletic Track & Court 86 (1978, Supp. 2001).
Constr., 172 F.3d 836 (Fed. Cir. 1999). Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043
101
72
(Fed. Cir. 1995). Scripps Clinic & Research Foundation v.
Seal-Flex, Inc., 172 F.3d at 848. Genentech, Inc., 927 F.2d 1565 (Fed. Cir.
87
Gould v. Hellwarth, 472 F.2d 1383 (CCPA
73
Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1991).
1973).
1259 (Fed. Cir. 1999). 88
102
Atlantic Thermoplastics Co. v. Faytex Corp.,
In re Gardner, Roe and Willey, 427 F.2d 786
74
Halliburton Oil Well Cementing Co. v. Walker, 970 F.2d 834 (Fed. Cir. 1992).
(CCPA 1970).
329 U.S. 1 (1946). 103
Donald Chisum, Chisum on Patents, 8.05
89
64 Fed. Reg. 71440-01 (Dec. 21, 1999),
75
T292/85, 1989 Official Journal of EPO 275; (1978, Supp. 2001); Martin Adelman et. al,
corrected, 65 Fed. Reg. 3425-01 (Jan. 1,
JPOs Examination Standard Office, Kaisetsu: Patent Law Perspective, 2.06[10] (2nd ed.
2000).
Heisei 6 nen Kaisei Tokkyohou no Unyou 1991).
90
(Practices in Examination and Appeals under Id. 104
Trustees of Columbia Univ. v. Roche
the 1994-Revised Patent Act) 132 (1995). 91
In re Wright, 999 F.2d 1557(Fed. Cir. 1993). Diagnostics Gmbh, 126 F. Supp. 2d 16 (D.
76
Envirco Corp. v. Clestra Cleanroom, Inc., 209 92
U.S. Patent & Trademark Office, Manual of Mass. 2000).
F.3d 1360 (Fed. Cir. 2000). Patent Examining Procedure 706.03(z) (3d 105
Atlantic Thermoplastics Co. v. Faytex Corp.,
77
Donald Chisum, Chisum on Patents, 8.05 ed. Rev. 1974). 974 F.2d 1279 (Fed. Cir. 1992).
(1978, Supp. 2001). 93
In re Fisher, 427 F.2d 833 (CCPA 1970) 106
Scripps, 927 F.2d at 1569.
78
Eric Mirabel, Product-by-Process Claims: A 94
Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 107
Scripps, 927 F.2d at 1580.
Practical Perspective, 68 J. of the Pat. & 1362 (Fed. Cir. 1999). 108
Trademark Society, 3 (1986). Warner-Jenkinson Co. v. Hilton Davis Chem.
95
Univ. of California v. Eli Lilly, 119 F.3d 1559 Co., 520 U.S. 17, 29 (1997).
79
Atlantic Thermoplastics Co. v. Faytex Corp (Fed. Cir. 1998). 109
974 F.2d 1279 (Fed. Cir. 1992). Japanese Patent Law article 1, Paragraph 1.
96
Id. at 1567. 110
80
In re Pilkington, 411 F.2d 1345 (CCPA 1969). Gentry Gallery v. Berkline Corp., 134 F.3d
97
Orthokinetics, Inc. v. Safety Travel Chairs, 1473 (Fed. Cir. 1998).
81
Donald Chisum, Chisum on Patents, Inc., 806 F.2d 1565 (Fed. Cir. 1986). 111
8.05[5](1978, Supp. 2001). For a general Atlantic Thermoplastics Co. v. Faytex Corp.,
98
Genentech Inc. v. Wellcome Found., 29 F.3d 974 F.2d 1279, 1284 (Fed. Cir. 1992).
discussion on process based limitations, see
1555 (Fed. Cir. 1994).
Saxe & Levitt, Product by Process Claims and
99
their Current Status in Chemical Patent Office Eli Lilly & Co. v. American Cyanamid Co., 82
Practice, 42 J. of the Pat. & Trademark F.3d 1568 (Fed. Cir. 1996)
Society 528 (1960)

CASRIP Newsletter Winter 2002