The Doctine of Equivalents Can Apply to Claim Ranges

U.S. Philips Corporation v. Iwasaki Electric Co. Ltd., [2007-1117](November 2, 2007) [LINN, Newman, Lourie] The Federal Circuit found that Iwasaki was properly on notice of potential infringement before the filing of the complaint, and reversed the district court’s determination that per-filing notice was inadequate. The Federal Circuit also affirm the district court’s claim construction, and entry of partial summary judgment of no literal infringement, but vacated the partial summary judgment of noninfringement under the doctrine of equivalents, and remanded.
BRIEF: Philips failed to mark its products with the patent number, but Philips parent company sent Iwasaki notice of infringement. Iwasaki contested whether this letter was sufficient, since it was not from the patent owner. The Federal Circuit said when there has been a failure to mark a patented product, 35 U.S.C. § 287(a) forecloses damages for infringement except on proof that the infringer was notified of the infringement. Actual notice under § 287(a) requires the affirmative communication of a specific charge of infringement by a specific accused product or device. Actual notice requirement of § 287(a) also demands notice of the patentee’s identity as well as notice of infringement," and that the notice must arise by "an affirmative act on the part of the patentee which informs the defendant of infringement." The Federal Circuit concluded, however that notice was sufficient because: the front page of the ’181 patent, which was enclosed with the letter, correctly identifies "U.S. Philips Corporation, New York, N.Y." as the assignee. The Federal Circuit conceded that although the assignation printed on the face of a patent is not a conclusive indication of the patent’s current ownership, when the information printed on the patent is correct, it is enough to put an accused infringer on notice of the patentee’s identity. The Federal Circuit was also not concerned that letter did not purport to come from the patentee because it is undisputed that Philips International B.V. had the ultimate responsibility for licensing and enforcement of the ’181 patent.
Philips also challenged the construction of the claim limitation "between 10-6 and 10-4 μmol/mm3", which Philips claimed was merely a range of orders of magnitude, not a range of more-precise numbers. However the Federal Circuit agreed with the district court's interpretation that this meant "between 1 × 10-6 and 1 × 10-4 μmol/mm3." The Federal Circuit said "[a]lthough the upper and lower bounds of the claimed range are expressed as powers of ten, this alone is no reason for treating them as anything other than the ordinary numbers that they are. As the district court observed, the overall phrase—'a quantity between ____ and ____'—is a construction that 'implies a specific range . . . . It does not imply a range between two values which are themselves ranges.'" Philips was in effect arguing that in its exponents it was literally claimed any number that rounded to that number thus 10-4 encompassed 10-3.5. However this was inconsistent with how Philips used other exponents in its specification. The Federal Circuit expressly cautioned against reading too much into the decision:

We emphasize that the claim construction we affirm today should not be read to state the endpoints of the claimed range with greater precision than the claim language warrants. In some scientific contexts, "1" represents a less precise quantity than "1.0," and "1" may encompass values such as 1.1 that "1.0" may not. See Viskase Corp. v. Am. Nat’l Can Co., 261 F.3d 1316, 1320–21 (Fed. Cir. 2001) (discussing distinction between "0.91 g/cm3" and "0.910 g/cm3"). In other words, "1.0" may be said to have more significant digits than "1" with no decimal point. Because "10-6" and "10-4" are simply the numbers 0.000001 and 0.0001 expressed as powers of ten, the claim language provides no basis for inferring any level of precision beyond the single digit "1." The way that power-of-ten quantities are used in the specification, discussed supra, confirms that the quantities of halogen described by the claims are not intended to be more precise.

Finally, the Federal Circuit rejected Iwasaki's argument, and reversed the district court that finding equivalence outside the claimed range would "vitiate" the claim limitation. The Doctrine of Equivalents is available for a claimed range. The Federal Circuit added that terms such as "approximately" in front of the ends of the range may expand the scope for literal infringement, but have nothing to do with whether the doctrine of equivalents applies. The Federal Circuit also rejected limiting the ends of the ranges from equivalence where there is prior art near the ranges, because the claims in this case were not narrowed.