United States Court of Appeals for the Federal Circuit
2007-1117
U.S. PHILIPS CORPORATION,
Plaintiff-Appellant,
v.
IWASAKI ELECTRIC COMPANY LTD.,
Defendant-Appellee.
Steven H. Reisberg, Wilkie Farr & Gallagher LLP, of New York, New York,
argued for plaintiff-appellant. With him on the brief were John M. DiMatteo, Diane C.
Ragosa, and Sean S. Buckley.
John B. Pegram, Fish & Richardson, P.C., of New York, New York, argued for
defendant-appellee. With him on the brief were Autumn J.S. Hwang and Jorge M.
Torres.
Appealed from: United States District Court for the Southern District of New York
Judge Kevin P. Castel
United States Court of Appeals for the Federal Circuit
2007-1117
U.S. PHILIPS CORPORATION,
Plaintiff-Appellant,
v.
IWASAKI ELECTRIC COMPANY LTD.,
Defendant-Appellee.
__________________________
DECIDED: November 2, 2007
__________________________
Before NEWMAN, LOURIE, and LINN, Circuit Judges.
LINN, Circuit Judge.
U.S. Philips Corporation appeals from a final judgment entered pursuant to Fed.
R. Civ. P. 54(b) in favor of Iwasaki Electric Company Ltd. by the United States District
Court for the Southern District of New York. Specifically, U.S. Philips challenges the
district court’s decision to limit U.S. Philips’s right of recovery to acts of infringement
after the complaint was filed, based on a failure of notice; its claim construction ruling
relating to U.S. Patent No. 5,109,181 (“the ’181 patent”); and its decision to grant partial
summary judgment of noninfringement as to those accused products not subject to the
temporal limitation of liability. Because Iwasaki was properly on notice of potential
infringement before the filing of the complaint, we reverse the district court’s
determination that notice was inadequate until the instant suit was filed and the
concomitant limitation of liability. We affirm the district court’s claim construction, and
with it the entry of partial summary judgment of no literal infringement. Finally, because
the district court erred in concluding that the doctrine of equivalents is foreclosed as to
the disputed claim limitation, we vacate the partial summary judgment of
noninfringement under the doctrine of equivalents, and we remand for consideration of
infringement under the doctrine of equivalents as well as for consideration of literal
infringement from June 7, 2000, the date notice was provided, until the filing of the
complaint.
I. BACKGROUND
The ’181 patent is directed to high-pressure mercury vapor discharge lamps filled
with a gaseous mixture in which “at least one of the halogens Cl, Br or I is present in a
quantity between 10-6 and 10-4 μmol/mm3.” ’181 patent, claim 1. The halogen
transports tungsten evaporated during the normal operation of the lamp back onto the
electrodes, creating “an improved color rendition and a longer life.” Id., col. 1, l. 49.
U.S. Philips is the assignee of the ’181 patent. On June 7, 2000, Mr. Rolfes, an
employee of Philips International B.V., Corporate Intellectual Property, sent Iwasaki a
letter on Philips International B.V. letterhead (“the Rolfes letter”). That letter notified
Iwasaki of potential infringement of “at least four of our patents and patent applications”
by Iwasaki’s UHE-U HSCR 120 E5H lamp. The ’181 patent was listed in the letter, and
a copy of the patent was enclosed. The letter also contained an offer for a non-
exclusive license. The letter did not identify U.S. Philips as the patent owner or identify
Mr. Rolfes as an attorney, nor did it disclose the corporate relationship between U.S.
Philips and Philips International B.V. The letter did, however, identify Mr. Rolfes as
“Patent Portfolio Manager,” speaking on behalf of “Corporate Intellectual Property,
2007-1117 2
Philips International B.V.” Before the district court, witnesses for U.S. Philips testified
that the corporate intellectual property department of Philips International B.V. is
responsible for prosecution, licensing, and enforcement of many of the patents that
belong to the Philips family of companies, including patents assigned to U.S. Philips
Corporation. U.S. Philips Corporation is “an IP holding company on behalf of . . . the
overall Philips organization” and has no employees.
U.S. Philips filed suit against Iwasaki, alleging infringement of independent claim
1 of the ’181 Patent, which reads in relevant part:
A high-pressure mercury vapor discharge lamp comprising . . . a filling
essentially consisting of mercury, a rare gas, and a halogen for
maintaining a tungsten transport cycle during lamp operation,
characterized in that . . . at least one of the halogens Cl, Br or I is present
in a quantity between 10-6 and 10-4 μmol/mm3.
’181 patent, claim 1. The district court construed the phrase “ a quantity between
10-6 and 10-4 μmol/mm3” as “a quantity between 1 divided by 1,000,000 and 1 divided by
10,000 micromoles per cubic millimeter,” or, in alternative terms also stated by the
district court, “a quantity between 1 × 10-6 and 1 × 10-4 μmol/mm3.” U.S. Philips Corp. v.
Iwasaki Electric Co., No. 1:03-CV-172-PKC, slip op. at 9 (S.D.N.Y. Jan. 3, 2006) (“Claim
Construction Opinion”).
In a subsequent partial summary judgment opinion, the district court confronted
the question of whether the Rolfes letter provided adequate notice within the meaning of
35 U.S.C. § 287(a). U.S. Philips Corp. v. Iwasaki Electric Co., No. 1:03-CV-172-PKC,
slip op. at 5–8 (S.D.N.Y. Sept. 28, 2006) (“Summary Judgment Opinion”). The district
court addressed this as a preliminary matter, rather than simply as a question of
damages, because it considered the issue potentially dispositive of literal infringement.
2007-1117 3
Because it was uncontested that Philips did not mark its lamps as permitted by
§ 287(a), if the Rolfes letter did not constitute notice under § 287(a), then Iwasaki’s
liability would be limited to any acts of infringement since January 8, 2003, the date the
complaint in this action was filed. Since that date, it is uncontested that Iwasaki’s lamps
have had a target concentration of bromine (one of the named halogens) of 1.6 ± 0.4 ×
10-4 μmol/mm3, and U.S. Philips has not alleged that Iwasaki has produced any lamps
with a concentration lower than 1.08 × 10-4 μmol/mm3. In contrast, there appears to be
at least some evidence that before the filing of the complaint, but after the date of the
Rolfes letter, Iwasaki produced lamps with a bromine concentration as low as 0.68 ×
10-4 μmol/mm3, a concentration within the claimed range even under a strict
interpretation of Iwasaki’s proffered claim construction. Citing Lans v. Digital Equipment
Corp., 252 F.3d 1320 (Fed. Cir. 2001), the district court concluded that the Rolfes letter
was inadequate to provide notice to Iwasaki under § 287(a) because it failed to identify
U.S. Philips as the owner of the ’181 patent and did not purport to speak for U.S.
Philips. Summary Judgment Opinion at 7–8.
The district court then proceeded to grant summary judgment of noninfringement
both as to literal infringement and under the doctrine of equivalents. As to literal
infringement, and looking only to lamps sold or manufactured after January 8, 2003, the
court concluded that Iwasaki’s entire target concentration range of 1.6 ± 0.4 × 10-4
μmol/mm3 “unquestionably exceeds the 10-4 (1/10,000) μmol/mm3 disclosed in the
patent,” and noted that U.S. Philips did not challenge the factual accuracy of Iwasaki’s
claims that it had not made or sold any lamps during the relevant period with a bromine
concentration below 1.0 × 10-4. Id. at 10–11. The court therefore held that summary
2007-1117 4
judgment of noninfringement was appropriate. Under the doctrine of equivalents, the
court held that a finding of infringement would vitiate the claim limitation that “a ‘quantity’
. . . is ‘present’ and that ‘quantity’ is ‘between’ one value ‘and’ another.” Id. at 18.
Accordingly, it concluded that recourse to the doctrine of equivalents was foreclosed as
a matter of law.
U.S. Philips appeals the district court’s limitation of liability to acts of infringement
after the complaint was filed, the claim construction, and the entry of summary judgment
as to infringement by equivalents. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
II. DISCUSSION
A. Standard of Review
We exercise plenary review over claim construction. Cybor Corp. v. FAS Techs.,
Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). We likewise review the district
court’s grant of summary judgment de novo, reapplying the standards applied by the
district court. SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1283 (Fed. Cir.
2005). The legal limitations on the applicability of the doctrine of equivalents are
determined as a matter of law. Abbott Labs. v. Dey, L.P., 287 F.3d 1097, 1103 (Fed.
Cir. 2002).
Summary judgment is generally appropriate where, after making all inferences in
favor of the nonmoving party, there are no genuine issues of material fact and the
moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Celotex
Corp. v. Catrett, 477 U.S. 317, 322 (1986). “Summary judgment on the issue of
infringement is proper when no reasonable jury could find that every limitation recited in
a properly construed claim either is or is not found in the accused device either literally
2007-1117 5
or under the doctrine of equivalents.” PC Connector Solutions LLC v. SmartDisk Corp.,
406 F.3d 1359, 1364 (Fed. Cir. 2005). Although infringement under the doctrine of
equivalents is a question of fact, “[w]here the evidence is such that no reasonable jury
could determine two elements to be equivalent, district courts are obliged to grant partial
or complete summary judgment.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
469 F.3d 1005, 1013, 1017 (Fed. Cir. 2006) (quoting Warner-Jenkinson Co. v. Hilton
Davis Chem. Co., 520 U.S. 17, 39 n.8 (1997)).
B. Notice Under 35 U.S.C. § 287(a)
We begin with the question of whether the Rolfes letter provided notice of alleged
infringement sufficient to satisfy 35 U.S.C. § 287(a). 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 and continued to
infringe thereafter, in which event damages may be recovered only for infringement
occurring after such notice. Filing of an action for infringement shall constitute such
notice.”
We have held that actual notice under § 287(a) “requires the affirmative
communication of a specific charge of infringement by a specific accused product or
device.” Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir.
1994). It is not disputed that the Rolfes letter meets these criteria. However, in Lans,
we held that a letter sent by Mr. Lans, the inventor of the patent in suit and the sole
shareholder and managing director of the assignee company, was nevertheless
insufficient to create notice because it was not sent by the patent owner. 252 F.3d at
1327. We observed that “the actual notice requirement of § 287(a) demands notice of
2007-1117 6
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.” Id. at 1327–28 (citing Amsted, 24 F.3d at 187).
Iwasaki argued before the district court and reiterates here that the Rolfes letter
was deficient under Lans because it was not sent by, and did not reference, the patent
owner U.S. Philips. The district court held in Iwasaki’s favor on both of these grounds.
We disagree. Lans is distinguishable and does not support Iwasaki’s position. First,
unlike the facts in Lans, the front page of the ’181 patent, which was enclosed with the
Rolfes letter, correctly identifies “U.S. Philips Corporation, New York, N.Y.” as the
assignee. Although the assignation printed on the face of a patent is not a conclusive
indication of the patent’s current ownership, we hold that when the information printed
on the patent is correct, it is enough to put an accused infringer on notice of the
patentee’s identity. Second, although the Rolfes letter did not purport to come from
U.S. Philips Corporation, it is undisputed that Philips International B.V. had the ultimate
responsibility for licensing and enforcement of the ’181 patent. Thus, the reasons we
articulated in Lans for strictly enforcing the notice requirement were all fulfilled: Philips
International B.V.—the sender of the letter—was the party “to contact . . . about an
amicable and early resolution of the potential dispute,” “to consult with . . . about design
changes to avoid infringement,” and with whom “to negotiate a valid license.” Lans, 252
F.3d at 1327. Under the facts of this case, the Rolfes letter constituted notice under
§ 287(a), and Iwasaki is liable for any acts of infringement that U.S. Philips can
demonstrate took place after the June 7, 2000, date of the letter. The district court’s
contrary ruling is reversed.
2007-1117 7
C. Claim Construction
We next turn to the question of claim construction. U.S. Philips argues that the
term “between 10-6 and 10-4 μmol/mm3” expresses a range of orders of magnitude, not a
range of more-precise numbers, and that it was therefore error for the district court to
construe the claim to mean “between 1 × 10-6 and 1 × 10-4 μmol/mm3.” According to
U.S. Philips, one of ordinary skill in the art of lamp chemistry would understand “10-4” to
mean something different and less precise than “1 × 10-4”; i.e., the absence of a
coefficient (“1”) means that the term encompasses all values that are closer on a
logarithmic scale to 10-4 than to 10-5 or 10-3, or a range of approximately 3.2 × 10-5 to
3.2 × 10-4. 1 Thus, according to U.S. Philips, the full range should be construed as
approximately 3.2 × 10-7 to 3.2 × 10-4 μmol/mm3, and Iwasaki’s lamps with admitted
halogen concentrations of 1.2 × 10-4 to 2.0 × 10-4 μmol/mm3 literally infringe.
We disagree with U.S. Philips and, like the district court, conclude that the claim
limitation is properly construed to mean “between 1 × 10-6 and 1 × 10-4 μmol/mm3.”
Although 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.” Claim
1
In other words, under U.S. Philips’s proffered construction, the term “10-4,”
as an order of magnitude, encompasses a range of values from 10-4.5 and 10-3.5—the
set of numbers with base-10 logarithms that round to -4. This range is approximately
3.2 × 10-5 to 3.2 × 10-4. Mathematically, 10-4.5 = 100.5 × 10-5 = 10 × 10-5, and 10-3.5 =
100.5 × 10-4 = 10 × 10-4; the square root of 10 is approximately 3.2.
2007-1117 8
Construction Opinion at 8. The limitation does not refer to either bound as a range, an
order of magnitude, or an approximation.
The specification fully supports this construction. In the LAMP 1 embodiment,
under the heading “halogen,” the ’181 patent refers to “5 • 10-6 μmol of CH2Br2[/mm3]
(10-5 μmol of Br/mm3).” ’181 patent, col. 3, ll. 53–54. The parenthetical expression
apparently refers to the fact that one molecule of CH2Br2 contains two bromine atoms,
so the concentration of atomic bromine (Br) should be double the concentration of
CH2Br2—two times 5 × 10-6, or 1 × 10-5. See Tr. of 11/22/2005 motion hearing at 57, ll.
10–11 (Dist Ct. Dckt. No. 64; Fed. Cir. J.A. 1233) (“You simply multiply the number on
the first line by 2 because there are two bromines in every mole.”). This suggests that
“10-5” is used as a synonym for “1 × 10-5.” Moreover, the LAMP 1 example specifies
particular quantities for a number of attributes of the embodiment: e.g., an envelope
volume of 23 mm3, filling mercury at a concentration of 0.261 mg/mm3, and power of
50W. It would be odd to infer in this context that “10-5 μmol of Br/mm3,” alone among
the specified quantities, refers to a range or order of magnitude, solely because it uses
a power of ten. Indeed, there is no use of a power-of-ten quantity such as 10-5
anywhere in the specification that requires the broader construction that U.S. Philips
advocates. We therefore affirm the district court’s claim construction of the halogen
range “between 10-6 and 10-4 μmol/mm3” as meaning “between 1 × 10-6 and 1 × 10-4
μmol/mm3.”
However, there remains the question of how this construction is to be applied to
the accused lamps. Before the district court, U.S. Philips argued that even under a
claim construction of “between 1 × 10-6 and 1 × 10-4 μmol/mm3,” a lamp with a halogen
2007-1117 9
concentration toward the lower end of Iwasaki’s admitted range—for instance, with a
concentration of 1.2 × 10-4 μmol/mm3—might still literally infringe due to rounding. The
question of whether and how to apply rounding, it argued, is a question of fact that
should have been left for the jury rather than decided as part of the claim construction or
at summary judgment. See Summary Judgment Opinion at 11. The district court
disagreed and held that the question of whether to apply rounding should be treated
solely as a claim construction issue that did not present any factual questions for a jury.
Id. at 12. U.S. Philips declined to argue its position as to rounding as a matter of claim
construction, instead limiting its claim construction argument to its contentions regarding
the meaning of the phrase “between 10-6 and 10-4 μmol/mm3,” as discussed supra. Id.
at 13.
In its opening brief on appeal, U.S. Philips does not challenge the district court’s
decision to treat the question of rounding as an issue of claim construction, nor does it
challenge the district court’s entry of summary judgment of no literal infringement under
the district court’s claim construction. Its sole infringement arguments on appeal are
that the bounds of the claimed range refer to orders of magnitude rather than ordinary
numbers—the claim construction argument we reject above—and that the doctrine of
equivalents should have been available, an argument we address below. Accordingly,
we deem the argument based on rounding to have been waived as to the Iwasaki
products that the district court considered. See SmithKline Beecham Corp. v. Apotex
Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006) (“[A]rguments not raised in the opening
brief are waived.”). We therefore affirm the entry of summary judgment of no literal
infringement as to Iwasaki’s alleged acts of infringement after the filing of the
2007-1117 10
complaint. 2 We do not reach U.S. Philips’s argument that the question of rounding
should have been presented to a jury, nor do we determine in this case where the
process of claim construction ends and the literal infringement analysis begins.
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. Thus, it is technically incorrect to assert, as Iwasaki does in its brief
before this court, e.g., Br. for Appellee at 35, that “10-x” should be construed to mean
“1.0 × 10-x.” It means, simply, “1 × 10-x.” “1.0 × 10-x” expresses a quantity with greater
precision, reflected in the recitation of a significant digit following the decimal point.
The claim construction that we affirm today is “between 1 × 10-6 and 1 × 10-4
μmol/mm3,” not “between 1.0 × 10-6 and 1.0 × 10-4 μmol/mm3.” We leave for another
day the question of whether this claim construction is sufficient to answer the
2
In so doing, we do not decide whether and to what extent this waiver
applies to further proceedings in this case on remand with respect to alleged literal
infringement occurring between the Rolfes letter and the filing of the complaint.
2007-1117 11
infringement questions presented by a future record. See E-Pass Techs., Inc. v. 3Com
Corp., 473 F.3d 1213, 1219 (Fed. Cir. 2007) (“[A]ny articulated definition of a claim term
ultimately must relate to the infringement questions that it is intended to answer.”).
D. Infringement Under the Doctrine of Equivalents
The final issue on appeal is whether the doctrine of equivalents is available to
extend the claimed concentration range beyond its literal scope. The district court held
that the language of the claim was “intended to establish the demarcation of
boundaries” and that those boundaries were expressed with “the type of precision that
is closely analogous to the metes and bounds of a deed of real property.” Summary
Judgment Opinion at 18. Thus, the district court reasoned, a finding of infringement
would vitiate the claim limitation, and resort to the doctrine of equivalents is foreclosed
as a matter of law. Id. at 18–19. U.S. Philips argues that the district court’s decision
misreads our precedent regarding vitiation and is inconsistent with our decision in
Abbott Laboratories v. Dey, L.P., 287 F.3d 1097 (Fed. Cir. 2002), and the Supreme
Court’s decision in Warner-Jenkinson, 520 U.S. at 17. Iwasaki counters that Abbott
Laboratories and Warner-Jenkinson are distinguishable and that other precedents
support the district court’s holding.
We agree with U.S. Philips and conclude that resort to the doctrine of equivalents
is not foreclosed with respect to the claimed concentration range. In Abbott
Laboratories, we noted that “the fact that a claim recites numeric ranges does not, by
itself, preclude . . . [reliance] on the doctrine of equivalents.” 287 F.3d at 1107–08.
Indeed, in that case, we allowed consideration of the doctrine of equivalents as to such
a range. Id. at 1100 (discussing claim to a material “characterized in that the overall
2007-1117 12
phospholipid content is 68.6–90.7%”); see also Warner-Jenkinson, 520 U.S. at 32–33
(permitting consideration of the doctrine of equivalents with respect to a claim to a pH
range “from approximately 6.0 to 9.0”).
Iwasaki contends that our decisions in Moore U.S.A., Inc. v. Standard Register
Co., 229 F.3d 1091 (Fed. Cir. 2000), Cooper Cameron Corp. v. Kvaerner Oilfield
Products, Inc., 291 F.3d 1317, 1322 (Fed. Cir. 2002), and Elekta Instrument S.A. v.
O.U.R. Scientific International, Inc., 214 F.3d 1302 (Fed. Cir. 2000), preclude U.S.
Philips from relying on the doctrine of equivalents and support the district court’s
determination that a finding of infringement by equivalents would vitiate the recited end
points of the stated range. Contrary to Iwasaki’s arguments, however, these cases do
not foreclose resort to the doctrine of equivalents on the facts of this case. As we
observed in DePuy Spine, “[a] holding that the doctrine of equivalents cannot be applied
to an accused device because it ‘vitiates’ a claim limitation is nothing more than a
conclusion that the evidence is such that no reasonable jury could conclude that an
element of an accused device is equivalent to an element called for in the claim, or that
the theory of equivalence to support the conclusion of infringement otherwise lacks legal
sufficiency.” 469 F.3d at 1018–19.
Our decision in Moore was based on the claim’s use of the term “majority,” a
claim limitation that is qualitatively different from a range. See 229 F.3d at 1106 (“[T]o
allow what is undisputedly a minority (i.e., 47.8%) to be equivalent to a majority would
vitiate the requirement . . . . If a minority could be equivalent to a majority, this limitation
would hardly be necessary.”). In Moore, no reasonable juror could have concluded that
an adhesive strip running only 47.8% of the lengths of the accused product’s margins—
2007-1117 13
a minority of the lengths—was equivalent to one running a “majority of the lengths.”
Even though the term “majority” means a quantity greater than 50% and less than or
equal to 100%, holding 47.8% to be equivalent to a majority changes the character of
the claim limitation in a way that merely broadening a range need not. See id. (“[I]t
would defy logic to conclude that a minority—the very antithesis of a majority—could be
insubstantially different from a claim limitation requiring a majority, and no reasonable
juror could find otherwise.”); see also Asyst Techs. v. Emtrak, Inc., 402 F.3d 1188, 1195
(Fed. Cir. 2005) (discussing the “specific exclusion” principle by which “the term
‘mounted’ can fairly be said to specifically exclude objects that are ‘unmounted’”).
Likewise, the use of “between” in Cooper Cameron described a spatial
relationship among two “plugs” and a “workover port” that was claimed as lying
“between” them on a subsea wellhead. 291 F.3d at 1319. Given the arrangement of
components and the overall description of the claimed wellhead, no reasonable juror
could have concluded that a workover port placed somewhere other than between the
two plugs was insubstantially different from a workover port that was between the plugs.
Here, in contrast, the limits of the claimed halogen range are not themselves
components of an invention that a third component must physically lie between; rather,
they place limitations on a single quantity of halogen. A reasonable juror could make a
finding that a quantity of halogen outside that range is insubstantially different from a
quantity within that range without “ignor[ing] a material limitation” of the patent claim. Id.
at 1322.
For similar reasons, Elekta’s use of a claim limitation containing the word “only”
presents a question more akin to Moore than to Abbott Labs, Warner-Jenkinson, or the
2007-1117 14
instant case. 214 F.3d at 1304. Moreover, the precedential value of Elekta is limited by
the fact that we explicitly declined to decide the question of whether the accused device
infringed under the doctrine of equivalents and by our suggestion that prosecution
history estoppel might apply. Id. at 1309 & n.2.
In short, this case is distinguishable from Moore, Cooper Cameron, and Elekta
and indistinguishable from Abbott Labs and Warner-Jenkinson. Here, as in Abbott Labs
and Warner-Jenkinson, a numeric range is claimed. The language “between x and y” of
the present case has the same meaning as the phrase “x – y” of Abbott Labs. Likewise,
the phrase is also essentially the same as that used in Warner-Jenkinson, with the
exception of the absence of the qualifier “approximately.” However, terms like
“approximately” serve only to expand the scope of literal infringement, not to enable
application of the doctrine of equivalents. Notably, the Supreme Court in Warner-
Jenkinson did not even mention the qualifier in allowing consideration of the doctrine of
equivalents. 520 U.S. at 25–28.
Iwasaki’s final argument against application of the doctrine of equivalents is that
the upper concentration limit here was included to avoid a prior art German patent, DE-
AS 14 89 417, and its American counterpart, U.S. Patent No. 3,382,396 (collectively,
both here and at the district court, “the Holmes reference”). The Holmes reference
disclosed lamps with a halogen concentration of 5 × 10-4 to 5 × 10-2 μmol/mm3. ’181
patent, col. 1, ll. 22–23. Iwasaki analogizes the inclusion of an upper bound that avoids
Holmes to prosecution history estoppel and argues that U.S. Philips must demonstrate
that it has not “surrender[ed] the particular equivalent in question.” Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 740 (2002). However,
2007-1117 15
there has been no narrowing amendment to the claim at issue, and Iwasaki has not
asserted prosecution history estoppel in this case. Given these facts, there is no reason
to presume that U.S. Philips has “surrendered” anything. Rather, the relevant inquiry is
whether “a ‘hypothetical claim’ that literally recites the range of equivalents asserted to
infringe . . . could have been allowed by the PTO over the prior art.” Abbott Labs., 287
F.3d at 1105 (quoting Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904
F.2d 677, 684 (Fed. Cir. 1990)). Here, the asserted equivalents have halogen
concentrations that lie below the range disclosed by the Holmes reference, there has
been no showing that the lamps disclosed in Holmes meet all the other limitations of the
claim, and Iwasaki has not established that Holmes alone or with other references
would have rendered the claimed lamps obvious. Holmes therefore does not foreclose
the application of the doctrine of equivalents to lamps with halogen concentrations
between 1 × 10-4 and 5 × 10-4 μmol/mm3.
For the above reasons, we vacate the district court’s summary judgment of
noninfringement under the doctrine of equivalents. On remand, the district court should
consider on a lamp-by-lamp basis whether Iwasaki’s lamps infringe under the doctrine
of equivalents. We do not foreclose partial or complete resolution of this issue at
summary judgment based, inter alia, on development of the record on remand with
respect to alleged acts of infringement after the date of the Rolfes letter and prior to the
filing of the complaint.
III. CONCLUSION
For the foregoing reasons, the judgment of the district court is
AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED.
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COSTS
No costs.
2007-1117 17