U.S. Phillips v. Iwasaki Electric (CAFC 2007-1117)

Notice Letter

Mr. Rolfes' letter was insufficient to the district court; it didn't identify Phillips as the patent owner, though the letter was on Phillips letterhead. Two Phillips companies are involved. Phillips didn't mark its product.

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, 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.

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.

But the letter was currency to the CAFC: it had enough information to tell what the deal was.

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 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).

[T]he 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.

Claim Construction

There was contention as to the range required for infringement; the range referring to a gas mixture. What's the difference between "1" and "1.0"? Precision.

[T]he 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.

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.

Infringement & The Doctrine of Equivalents

The porch light of infringement blew in district court. Iwasaki may have had made infringing lamps in the period between the notice letter and complaint, but that period was pitched because of the defective notice letter. Doctrine of equivalents was a no-go to the district court as an outcome of claim construction: the claimed range was read as precise by the district court, foreclosing DOE.

The district court then proceeded to grant summary judgment of noninfringement both as to literal infringement and under the doctrine of equivalents.

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.

The CAFC reversed: "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 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”).

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.

Here,... the limits of the claimed halogen range... 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.

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 played a Festo prosecution estoppel card, but it didn't trump the CAFC cards; there'd been no narrowing amendment to avoid prior art.

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 x 10^-4 to 5 x 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, 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 x 10^-4 to 5 x 10^-2 µmol/mm³.

DOE is back in play, as is the period between the notice letter and the lawsuit complaint.

Remanded.