Brief By: Caio Soella
U.S. Philips Corp v. Iwasaki Elec. Co. Ltd
F.3d, 2007 3225917 (C.A.Fed.(NY))
FACTS:
US Philips Corporation is the assignee of US Patent No 5,109,181 (“the 181 patentâ€) for high-pressure mercury vapor discharge lamp. Claim 1 reffers to “high-pressure mercury vapor discharge lamps filled with gaseous mixture in which at least one of the halogens Cl, Br or I is present in quantity between 10 -6 and 10 -4 <<mu>> mol/mm3"
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.
US Philips notified Iwasaki Electric Company Ltd. by letter that Iwasaki was infringing its patent. The letter was sent by an employee (the Rolves Letter) of an US Philips affiliate and did not disclose US Philips as the patent owner, nor the relationship between US Philips and the affiliate Philips International B.V.
PROCEADURAL HISTORY:
US Philips Corporation appeals from a final judgment entered in favor of Iwasaki Electric Company Ltd, challenging the district court’s decision to limit US Philips’s right to recover to acts of infringement after the complain was filed, since its fail to notice.
Court of appeals held that the letter from employee of assignee’s affiliate was sufficient to place competitor on notice of alleged infringement.
Court of Appeals affirms District Court that there was no literal infringement and holds that the District Court erred in concluding that the doctrine of equivalents is foreclosed as to the disputed claim limitation.
Issues:
1 – Did the Rolves Letter provide notice of alleged infringement sufficiently to satisfy 35 USC 287?
2 – Does claim 1 describe a range of precise number or a range of magnitude?
3 (main issue) - Whether the doctrine of equivalents is available to extend the claimed concentration range beyond its literal scope.
Holding:
The Court of Appeals held that:
1 – the letter of assignee’s affiliate satisfied the requirements of a notice of alleged infringement under 35 USC 287
2 – claim 1 describes a range of precise numbers: “quantity between 10 -6 and 10 -4 <<mu>> mol/mm3â€
3 – the Doctrine of equivalents was not foreclosed.
Analysis:
The case addresses 3 questions.
It determines, firstly, that the letter sent by an affiliate of US Philips was a valid notice of alleged infringement according to 35 USC 287, even though the letter failed to identify Philips International B.V. as an affiliate of US Philips and to explicit that US Philips was the owner of the patent.
Secondly, it determined that the numbers, that were expressed by power of ten, were so described because the quantity was not to be precise, however, still understood it as a range of precise numbers.
Regarding to the final issue, the Court of Appeals ruled that the resort to the doctrine of equivalents is not foreclosed with respect to the claimed concentration range. The fact that a claim recites a numeric range does not by itself preclude reliance on the doctrine of equivalents.
This has been done before in Warner-Jenkinson regarding a claim with a pH range from approximately 6.0 to 9.0
By vacating the district court's summary judgment of noninfringement under the doctrine of equivalents, this court affirms the Warner-Jenkinson decision, that the doctrine of equivalents is applicable in cases where the claims specify a range of numbers.
U.S. Philips Corp v. Iwasaki Elec. Co. Ltd
F.3d, 2007 3225917 (C.A.Fed.(NY))
FACTS:
US Philips Corporation is the assignee of US Patent No 5,109,181 (“the 181 patentâ€) for high-pressure mercury vapor discharge lamp. Claim 1 reffers to “high-pressure mercury vapor discharge lamps filled with gaseous mixture in which at least one of the halogens Cl, Br or I is present in quantity between 10 -6 and 10 -4 <<mu>> mol/mm3"
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.
US Philips notified Iwasaki Electric Company Ltd. by letter that Iwasaki was infringing its patent. The letter was sent by an employee (the Rolves Letter) of an US Philips affiliate and did not disclose US Philips as the patent owner, nor the relationship between US Philips and the affiliate Philips International B.V.
PROCEADURAL HISTORY:
US Philips Corporation appeals from a final judgment entered in favor of Iwasaki Electric Company Ltd, challenging the district court’s decision to limit US Philips’s right to recover to acts of infringement after the complain was filed, since its fail to notice.
Court of appeals held that the letter from employee of assignee’s affiliate was sufficient to place competitor on notice of alleged infringement.
Court of Appeals affirms District Court that there was no literal infringement and holds that the District Court erred in concluding that the doctrine of equivalents is foreclosed as to the disputed claim limitation.
Issues:
1 – Did the Rolves Letter provide notice of alleged infringement sufficiently to satisfy 35 USC 287?
2 – Does claim 1 describe a range of precise number or a range of magnitude?
3 (main issue) - Whether the doctrine of equivalents is available to extend the claimed concentration range beyond its literal scope.
Holding:
The Court of Appeals held that:
1 – the letter of assignee’s affiliate satisfied the requirements of a notice of alleged infringement under 35 USC 287
2 – claim 1 describes a range of precise numbers: “quantity between 10 -6 and 10 -4 <<mu>> mol/mm3â€
3 – the Doctrine of equivalents was not foreclosed.
Analysis:
The case addresses 3 questions.
It determines, firstly, that the letter sent by an affiliate of US Philips was a valid notice of alleged infringement according to 35 USC 287, even though the letter failed to identify Philips International B.V. as an affiliate of US Philips and to explicit that US Philips was the owner of the patent.
Secondly, it determined that the numbers, that were expressed by power of ten, were so described because the quantity was not to be precise, however, still understood it as a range of precise numbers.
Regarding to the final issue, the Court of Appeals ruled that the resort to the doctrine of equivalents is not foreclosed with respect to the claimed concentration range. The fact that a claim recites a numeric range does not by itself preclude reliance on the doctrine of equivalents.
This has been done before in Warner-Jenkinson regarding a claim with a pH range from approximately 6.0 to 9.0
By vacating the district court's summary judgment of noninfringement under the doctrine of equivalents, this court affirms the Warner-Jenkinson decision, that the doctrine of equivalents is applicable in cases where the claims specify a range of numbers.