DR.

RAM MANOHAR LOHIYA NATIONAL LAW UNIVERSITY

INTELLECTUAL PROPERTY RIGHTS-II

FINAL DRAFT
TOPIC: DOCTRINES OF EQUIVALENTS

SUBMITTED TO SUBMITTED BY
DR. VIKAS BHATI ASTHA SINGH
(ASSISTANT PROFESSOR) 190101041
SECTION A
 ACKNOWLEGMENT
I want to express uncommon much obliged and appreciation to my educator Dr.
Vikas Bhati, who gave me the brilliant chance to finalize this glorious research
on Doctrine of Equivalent which has helped me pick up a mess of viewpoint
about the development of present day situation. All through the exploration
period, I have been guided by my educator at whatever point I confronted any
obstacles or was in a state of daze not having the capacity to resolve the
intricacies of the subject.

I want to thank my University, Dr. Ram Manohar Lohiya National Law

University, Lucknow, for giving me the opportunity to be a part of a novel
exploration turned educational program which without a doubt helps the
comprehension of the subject.

I likewise want to thank my guardians, guides and well-wishers who have been
a consistent underpin and have sufficient energy and again looked into my work
and have given their experiences on the matter.

-ASTHA SINGH
 TABLE OF CONTENTS

 Introduction
 Concept of claims and Patent Infringement
 Nature and Scope of Doctrine of Equivalents
 Bars to the Doctrine of Equivalents
 Position in India
 Conclusion
 Bibliography

INTRODUCTION
The inventor’s patent application, and the subsequent patent, contains ‘one or
more claims particularly pointing out and distinctly claiming the subject matter
which the applicant regards as his invention.’ The claims describe what is, and
therefore, what is not, protected by the patent. Once a patent has been issued,
the inventor or ‘patentee’ can enforce the patent claims against an alleged
infringer. In doing so, the patentee often asserts that the alleged infringer’s
invention has literally infringed the claims of the patentee’s patent. The other
recourse left to the patentee is the purposive and meaningful interpretation of
the claim/s (in pith and substance) at issue, thereby applying the equity concept
underlined in the doctrine of equivalents. A patent contains several parts—a
specification, usually one or more drawings, and always one or more claims. No
matter how much a questioned machine, manufacture, composition of matter or
process may look like the specification and drawings of a patent, it is only the
claims of the patent which can be infringed. For that reason, if an issue of
infringement arises, it becomes necessary to examine the claims of the patent in
question.

The first step is to “read” each claim of the patent upon the accused structure or
process. Every requirement of each claim must be considered to see if each
thing set out in the claim also appears in the accused practice. If one or more
things set forth in a claim is not present in the practice being reviewed, there is
no infringement of that claim. On the other hand, if each thing which is set out
in even one claim of the patent is present in the accused structure or process,
then there is direct and literal infringement. When literal infringement is found,
that is normally the end of the inquiry.

When the claims of a patent are read against an accused practice, they may be
so close to identical that infringement is clear. Also, the accused practice may
be so remote from the patent that there is no possibility of infringement. Very
often, however, there are some differences, requiring further study. Sometimes,
such differences are incorporated into a design after knowledge of a patent in an
effort to avoid infringement. Then, the question presented is whether the design
is sufficiently different from the patent to be held to be non- infringing. If the
design is too close to the patent, it will infringe. If the design is remote enough,
it will not infringe. The U.S. Supreme Court has stated: “One who seeks to
pirate an invention, like one who seeks to pirate a copyrighted book or play,
may be expected to introduce minor variations to conceal and shelter the
piracy”. Outright and forthright duplication is a dull and very rare form of
infringement.

CONCEPT OF CLAIMS AND PATENT INFRIGEMENT

Patent claims are the statutorily granted rights guaranteed by the State for a
well-defined period of time to the patentee regarding the subject matter of the
patent. These are the exclusive rights to prevent third parties, who do not have
the patentee’s consent, from the act of making, using, offering for sale, selling
or importing that subject matter of patent.

The language of both written description and patent claims are necessary and
most important factors in determining the extent and scope of rights. The claim
legally defines the patent’s scope of protection1. The claim’s meaning delineates
the subject matter that only the patentee may practice. Thus, a patent claim
performs following objectives:

(i) Public notice: A patent claim informs the public of the subject matter
over which the patent provides exclusivity. Law requires every patent
to have claims, and the claim’s preset location at the end of the
specification is statutorily defined.
(ii) Defining patent scope: Patent claims actually establish the scope of
exclusivity afforded to an issued patent. The claim tells the public the
patent’s particular scope of exclusivity by defining the patent grant’s
metes and bounds. This is the most fundamental trait of the modern
patent claim. Through the claim’s words, the patent claim establishes
the primary area of exclusivity the patentee will enjoy because of the
patent grant.

In the case of a patent infringement inquiry, two stages of analysis are normally
performed by courts to investigate the infringement. The first stage is literal
infringement and the second is infringement under the doctrine of equivalents.
Literal infringement examines whether the alleged device falls exactly within
the boundaries of the claims of the patent by comparing the textual meanings of
the claims with the features of the challenger’s device. However, if during the
judicial determination no literal infringement is found, the second step of
analysis adopted by the courts is to apply the doctrine of equivalents. At this
stage, claims are interpreted beyond their strict literal meaning and the scope of
the claims may be extended to the features that are equivalent to those literally
claimed. This suggests that the exclusive rights provided by a patent are based
on, but not exclusively limited to, the language of its claims 2. Notwithstanding
the long-recognized value of clear and certain claims, courts have refused to
confine the infringement inquiry to the precise choice of words.

NATURE AND SCOPE OF EQUIVALENTS

Doctrine of equivalents is an equitable doctrine that may apply in situation
where, despite the absence of literal infringement, there still may be
infringement if the product or service in question has a structure or performs a
function that is an equivalent of an element recited in the claim. ‘Equivalence’
means that a claim element and its counterpart in a product does substantially
the same thing in substantially the same way to achieve substantially the same
result3.

The doctrine of equivalents arose from judicial efforts to stop competitors from
making insignificant modifications and substitutions to the claimed invention,
although adding nothing, in order to avoid literal infringement. While applying
the doctrine of equivalents for patent infringement proceedings, courts have
struggled to balance the competing public policies of protecting the patentee
from fraud and the need for reasonable certainty for the public regarding the
scope of the patentee’s exclusive rights.

____________________________________________________
1
Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Co Ltd, 535 US 722, 731-32 (2002)
2
Mathur Tarun, Patent claim interpretation in technological disputes.
3
Nard Craig Allen, A theory of claim interpretation, Harvard Journal of Law & Technology, 14
(2000) 1-15. The doctrine of equivalents prevents subsequent inventors from stealing the patented
invention by making insignificant changes that avoid infringing the literal language of the claims yet
result in essentially the same invention.
The theory on which the doctrine of equivalents 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 the name, form, or
shape.’ Difference between invention and accused device must be insubstantial
– if the differences are substantial, no equivalence is found even if function-
way-result test is met. Factors relating to substantiality are:

(i) Whether persons with skills in the art actually know of the
equivalence of the claimed and accused inventions.
(ii) Whether a person with skill could have known of the equivalence.
(iii) Whether he had intended to copy, or, rather intended to design around,
or inadvertently arrived at the same result.

Under the doctrine of equivalents, a product or process that does not literally
infringe upon the express terms of a patent claim may nonetheless be found to
infringe if there is ‘equivalence’ between the elements of the accused product
or process and the claimed elements of the patented invention.

Bars to the Doctrine of Equivalents

The concept of doctrine of equivalence is not altogether a flawless concept.
Certain limitations for its application are:

(i) All-limitations rule,

(ii) Obviousness,
(iii) Prosecution history estoppel,
(iv) The rule of Public dedication, and
(v) The ‘means-plus-function’ claims.
 POSITION IN INDIA
It is submitted that we have a poorly analyzed, sloganistic environment of
patent case laws, which are rather poorly and thoughtlessly analysed4. There is
no specific path, which the Courts had laid. The Indian Court’s decisions are
highly influenced by the English Patent Jurisprudence5 . In the case of
Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries6, the
Supreme Court observed, ‘As pointed out in Arnold v Brandbury7 , the proper
way to construe a specification is not to read the claim first and then see what
the full description of the invention is but first to read the description of the
invention, in order that the mind may be prepared for what it is, what is to be
claimed, as the patentee cannot claims more than he desires to patent’. In
Parkinson v Simon8, Lord Esher M R enumerated that as far as possible that
the claim must be so construed as to give an effective meaning of each of them,
but the specification and the claim must be looked at and construed together.

Prior to Patents Act, 1970, the honorable Bombay High Court in the case of
Lallubhai Chakubhai v Chimanlal Chunilal Co.9 , held, ‘Patentee must
particularly describe and ascertain the nature of his invention in the
specification, as the ambit of his invention is circumscribed by the claims. The
construction of a specification is a matter of law and is for the Court. It must be
construed as a whole. A specification must be construed impartially, and the
Court is generally slow to construe it against the patentee. But the construction
must be reasonable one’10. More recently, in the case of Raj Parkesh v Mangat
Ram Chowdhary 11, the Delhi High Court held,

_______________________________________
4
As can be seen in the case of Lintech Electronics (P) Ltd and Anr v Marvel Engineering Co and Anr, 1995 (35) DRJ 11

5
Attorney Ms Ritushka Negi and Anr v Adarsh Pharma and Anr, 2004(29)PTC108(Mad)

6
AIR 1982 SC 1444.

7
(1871) 6 Ch A 706.

8
(1844) 11 RPC 463 (CA).

9
AIR 1936 Bom 99.

10
AIR 1978 Del 1 (6, 7).

11
AIR 1978 Del 1 (6, 7).
 ‘Whether a patent sets out an invention is to be determined by a true and fair
construction of the specifications on the basis of which an inventor claims that
he is the first inventor of an invention which is to be patented. In order to
properly construe the specifications, one should give ordinary meaning to the
words, but where necessary the words must be construed in the sense in which
they are used in a particular trade, a sphere in which the invention is sought to
have been made. The grant of patent, no doubt, creates a monopoly in favors of
the patentee but then law throughout the free world recognizes that an inventor
must first get the benefit of his invention, even if it means creating a monopoly’.

Further the Delhi High Court held, ‘To find out whether the patent has been
infringed the patented article or process has to be compared with the infringing
articles or process and unessential features in the infringing article or process
are of no account and if the infringing goods are made with the same object in
view which is attained by the patented article, then the minor variation does not
mean that there is no piracy and a person is guilty of infringement if he makes
what is in substance the equivalent of the patented article and some trifling and
unessential variations has to be ignored’.
 CONCLUSION
The determination of literal or equivalent infringement is a question of fact and
if literal infringement is absent, the patent owner can establish infringement
under the doctrine of equivalents. It can also be concluded that the doctrine of
equivalents, is a singular exception to patent law. While initially designed to
prevent fraud on a patent, the doctrine of equivalents has become an often-used
second method of proving infringement. An owner of realty cannot assert
trespass onto grounds outside the metes and bounds of property actually owned.

Moreover, the uncertainty of patent equivalency can have side effects.

Competitors are faced with uncertainties as to what is and is not covered by
equivalents under a patent, even though there is no literal infringement. Further,
equivalency hinders the ability for competitors to design around the patent
claims. Thus, it can be said that the doctrine of equivalents is about expanding
the scope of the property right of a patentee. It slightly expands the scope
beyond the literal meaning of the claims.

With reference to India, it can be concluded that so far there have been very few
cases dealing with patent claim infringement. Nevertheless, the pace at which
technological development is taking place, the Indian judiciary is likely to face
similar cases in near future. Moreover, taking into account the Patent Act, 1970,
it is evident that no specific provision exists regarding the patent infringement
and interpretation of patent claims; to fill this lacuna the courts can look into the
principles and tests laid down by the US, UK and Japanese courts. They can
also formulate their own theory based on sound techno-legal reasoning in
striking a balance between conflicting interests of protection and innovation.
However, the emphasis should be on setting a precise parameter regarding the
extent and applicability of patent claims so that there is certainty in the judicial
process.
 BIBLIOGRAPHY
Books:

‘Intellectual Property Rights’ by P Narayana , Third Edition.

Website:

 http://docs.manupatra.in/newsline/articles/Upload/61DFD921-5C67-
4C34 9C6F-FC946AB34821.pdf
 http://www.tms.org/pubs/journals/JOM/matters/matters-9005.html
 http://www.tms.org/pubs/journals/JOM/matters/matters-9005.html