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The doctrine of equivalents took punches over the past 10 years as the U.S. Court of Appeals for the Federal Circuit began to pay homage to the notice function of claims. [FOOTNOTE 1]This trend has culminated in a thrashing referred to as Festo v. Shoketsu. [FOOTNOTE 2] Federal Circuit Judge Alan D. Lourie, one of the more vocal critics of broad equivalents, first shared his concern about the notice function in the 1991 case London v. Carson:[I]f the public comes to believe (or fear) that the language of patent claims can never be relied on, and that the doctrine of equivalents is merely the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims, then claims will cease to serve their intended purpose. Competitors will never know whether their actions infringe a granted patent. [FOOTNOTE 3] What these opinions fail to acknowledge, however, is that, in an indirect way, scaling back the range of equivalents can also impinge on the notice function of claims. To wit, over the long run patent attorneys will react to the narrowing of equivalents by drafting ever more abstract and tortuous claims. And the resulting decrease in readability will mean that competitors will still be unsure whether they will infringe a granted patent. For every action, even outside of physics per se, there is usually an equal and opposite reaction. As the narrowing of equivalents presses in on claim scope, attorneys will try to push it back outward by squeezing the most out of literal claim language. In other words, when patent attorneys can rely on a broad range of equivalents to guard against superficial design changes in the future, they can draft claims straightforwardly. When equivalents are narrow, however, they must rack their brains for all the ways that competitors could potentially get around the literal words of the claims. Patent drafters must scrutinize their claims the way Oliver Wendell Holmes told us to scrutinize laws: “as a bad man, who cares only for the material consequences which such knowledge enables him to predict.” [FOOTNOTE 4] This gamesmanship invariably leads to a higher level of claim abstraction and more unconventional phraseology. PERIPHERAL CLAIMS It is said that U.S. patent claims are peripheral, meaning that they describe the outermost boundaries of the invention as opposed to its essence. This is a half-truth: U.S. claims are simply more peripheral than most countries. [FOOTNOTE 5]Indeed, if U.S. claims were completely peripheral, we never would have had a doctrine of equivalents. The doctrine of equivalents is the safety valve that allows claims to be non-peripheral. Equivalency and peripheral claiming are inversely related. As the range of equivalents expands, the need for peripheral claiming decreases. Conversely, reining in the range of equivalents will make claims more peripheral. The difference between a quasi-peripheral claim (drafted in reliance on the doctrine of equivalents) and a truly peripheral claim is analogous to the difference between a description of the address and acreage of your housing lot and a formal, surveyor-style description of its precise metes and bounds. It is the difference between, say, “1860 Spruce Street, 1.1 acres” and a page-long, block paragraph in a deed or plat that reads, “Beginning at a point located 32.47.11 degrees north by northwest of ….” The lot’s address and acreage are to the lot’s exact metes and bounds as a regular claim for an invention is to a claim directed to the literal, outermost boundaries of that invention. The analogy breaks down, however, in that formal descriptions of land enhance precise understanding much more readily than peripheral descriptions of inventions. Unlike real property, the outermost boundaries of intellectual property are inherently abstract. Therefore, a description of those boundaries will also be abstract. Arguably, truly peripheral claiming is at odds with the requirement under 35 U.S.C. � 112, to “particularly point out and distinctly claim” the invention. [FOOTNOTE 6]“Particular” and “distinct” are almost antonyms of “abstract” and, as further shown, peripheral claiming leads to abstract and tortuous claims. ABSTRACT AND TORTUOUS CLAIMS Imagine that the table has just been invented. Until now, nobody ever thought of fixing a flat top onto vertical legs. The inventor hires a patent lawyer who, tacitly relying on a broad range of equivalents, drafts the following claim. An article of furniture for holding objects for a sitting human, comprising: (a) a sheet of rigid material having sufficient size to accommodate use by a human being for writing and working; (b) a plurality of elongated support members of equal length; (c) said support members being joined perpendicularly to the undersurface of said sheet of rigid material at spaced locations so as to be able to support said rigid material member in a horizontal orientation. [FOOTNOTE 7] This claim is lucid. If there were no doctrine of equivalents, however, it would be vulnerable. The most obvious weakness is the phrase “for writing and working.” Without equivalents (perhaps even with equivalents), the inventor will be helpless when his invention inspires competitors to make dinner tables, picnic tables, display tables, end tables, sofa tables, night tables and coffee tables. Indeed, in a world where claims are taken literally, this claim may not even protect most work tables, but only those on which people both work and write. So the attorney removes this functional language, but at a price in comprehension. The human mind more readily understands something when it knows its function. This is why “whereby clauses,” despite their dangers, remain popular. [FOOTNOTE 8] Another weakness is the word “sheet.” Sheets are normally rectangular and the word may foreclose our inventor from round, oblong, oval, triangular, and perfectly square tables. Also, sheets are normally paper thin. What if competitors make tables whose tops are not so thin? Further, can we say that the tops of wicker tables and metal grill patio tables are sheets? Good replacements for “sheet,” however, are hard to come by. The safest course is to claim the tabletop more abstractly, e.g., as “a member having a substantially flat upper surface.” Again, we have paid a price in comprehension. Even the phrase “a plurality of elongated support members of equal length” is vulnerable. Competitors could include a leg that is literally, but not effectively, longer than the others. For instance, the tabletop end of a longer leg could be bored further into the tabletop than the other legs. As such, the legs would operate as if they were the same length even though, at least independent from the table, one is clearly longer. To mitigate this danger, the attorney might include the word “substantially” or “effectively” in front of the claim phrase “equal length.” Again, at a price. These weasel words inherently detract from readability. Joined “to the undersurface” is also vulnerable. In many cases the legs could be joined to the sides of the tabletop rather than to its undersurface, especially with end tables, sofa tables, night tables and coffee tables. The legs could also bore through so that they extend above the upper surface. Are the legs then attached to the upper surface or the undersurface? Even under current case law, “joined perpendicularly” might not include legs that are attached to something that is in turn joined perpendicularly to the tabletop. [FOOTNOTE 9]The legs of folding utility tables, for instance, attach to brackets that in turn attach to the tabletop. Moreover, many table legs are not perpendicular to the tabletop. Night tables, display tables, dinner tables and picnic tables often have legs that slant. To mitigate these dangers, the attorney could remove “perpendicularly to the undersurface” and add “directly or indirectly” in front of “joined.” However, the removal of specific orientation (perpendicular) and the inclusion of alternative expressions reduce comprehension. The phrase “in a horizontal orientation” is also vulnerable because some tables, such as drafting and architectural tables, are inclined. Putting “substantially” before “horizontal” probably would not fix the problem because these tables are decidedly inclined and not substantially horizontal. A range would need to be included, for example, “wherein the angle of said member ranges, relative to the floor or ground, between zero and forty-five degrees.” Alas, the revised claim might read: An article of furniture, comprising: (a) a top member of rigid material having a substantially flat upper surface of sufficient size to accommodate use by a human being; (b) a plurality of elongated support members of effectively and substantially equal length, each of said support members having a first end and an opposed second end; (c) said first ends of said support members being directly or indirectly joined to said top member at spaced locations, wherein the angle of said flat upper surface of said top member ranges, relative to the floor or ground, between zero and forty-five degrees. No device is more simple or clearly known than the table. Nevertheless, without the benefit of hindsight, this claim, standing alone, would not readily conjure up a table. Imagine the challenge to comprehension if the invention were truly new and complex. THE RIGHT BALANCE After reading Londonand Festo, one may be left wondering why the Federal Circuit does not dispense with the doctrine of equivalents altogether. The reason, of course, is that the court tacitly appreciates both the benefits of the doctrine of equivalents and the costs of peripheral claiming. [FOOTNOTE 10] Conversely, it would be unwise to adopt a “super” doctrine of equivalents by which equivalents are far broader than they were in the 1980s. The ultimate point of this article is that claims optimally perform their notice function at some point on the continuum between the true periphery of inventions and their preferred embodiments. [FOOTNOTE 11]Where that optimal point lies is a matter of feel, developed through experience. By and large, the collective experience of the patent bar suggests that, on its way toward the periphery end of the continuum, the Federal Circuit passed that optimal point some time ago. Samson Vermontis the editor-in-chief of Patent Strategy & Management and an associate at the Washington, D.C., IP law firm Stevens Davis Miller & Mosher LLP. ::::FOOTNOTES:::: FN1Laurence H. Pretty, “The Judicial Attack on Infringement,” Patent Litigation 1999 (1999). FN2 Festo v. Shoketsu, 234 F.3d 558; 2000 U.S. App. LEXIS 29979; 56 U.S.P.Q.2D. 1865 (2000). FN3 London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991). See also K-2 Corp. v. Salomon S.A., 191 F.3d 1356 (Fed. Cir. 1999); Sextant Avionique S.A. v. Analog Devices Inc., 172 F.3d 817 (Fed. Cir. 1999); Ethicon Endo-Surgery Inc. v. U.S. Surgical Corp., 149 F.3d 1309 (Fed. Cir. 1998); Davies v. U.S., 31 Fed.Cl. 769 (U.S. Ct. Fed Cl. 1994). This concern with the notice function of claims also echoes throughout Festo. See Festo, supranote 2, at 564, 567, 575, 576, 578, 586, 598, 599, 600, 605, 612, 621, 623-626, 629, 630, 632, 635, 636 and 641. FN4The full quote is: “If you want to know the law and nothing else, you must look at it as a bad man, who cares only for the material consequences which such knowledge enables him to predict, not as a good one, who finds his reasons for conduct, whether inside the law or outside of it, in the vaguer sanctions of conscience.” Oliver Wendell Holmes, “The Path of the Law,” 10 Harvard L. Rev. 457 (1897). FN5“Loss of the doctrine of equivalents would give patent attorneys added incentive to blur the borders of their claims with broadening terms and imprecise adjectives. Infringement evaluations would become more uncertain, not less.” Donald S. Chisum and William Aslup, “Brief for Amicus Curiae Urging Reversal of Judgment,” pg. 20, as filed in Hilton v. Davis Chem. Co. v. Warner Jenkinson Co., 62 F.3d 1512 (Fed. Cir. 1995) (No. 93-1088). FN6 See generallyToshiko Takenaka, “Interpreting Patent Claims: The United States, Germany and Japan,” 17 IIC Studies 3-68 (1995); Comment, “Peripheral Definition Theory v. Central Definition Theory in Patent Claim Intepretation: A Survey of the Federal Circuit,” 32 Geo. Wash.L.Rev. 609 (1967). FN7This claim is found in David Pressman, “Patent It Yourself,” p. 9-10 (5th ed. 1996). FN8Robert C. Faber, “Landis on Mechanics of Claim Drafting,” Section 32 and Section X (4th ed. 1996, updated annually). FN9 Suncast Corp. v. Avon Plastics Inc., N.D. Ill., 1999 U.S. Dist. LEXIS 15222 (1999) (held that “perpendicular” implied a direct connection). FN10 See, e.g., Festo, supran.2, at 621 (In their dissent-in-part, Judges Linn and Rader state that claims should be able to use ordinary language). See alsoJoseph S. Cianfrani, “An Economic Analysis of the Doctrine of Equivalents,” 1 Va.J.L. & Tech. 1 (Spring 1997). FN11“The break even point in efficiency will occur when an increase in the scope of the doctrine of equivalents as an incentive [to invent] is worth less to the patentee than it costs society in uncertainty.” Cianfrani, supran.10, at 22.

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