All-Elements Rule Prevents Application of Doctrine of Equivalents
February 09, 2001
Last Month at the Federal Circuit - March 2001
Judges: Newman (author), Michel, and Rader
In Collett v. Piper’s Saw Shop, Inc., No. 00-1290 (Fed. Cir. Feb. 9, 2001) (nonprecedential decision) the Federal Circuit affirmed a holding, after a bench trial, of noninfringement, but reversed a finding of invalidity for violation of 35 U.S.C. § 102(b).
U.S. Patent No. 4,889,025 and its reexamined claims (“the ‘025 patent”) concern an improved cutting tooth for a circular saw. The claims at issue define a cutting tip “composed of high impact resistant carbide alloy consisting essentially of a mixture of 83.5% tungsten carbide, 16% cobalt, and 0.5% tantalum carbide.” The patentee conceded no literal infringement, but asserted infringement under the DOE.
The district court had found no infringement under the DOE because the patentee had repeatedly cited these three components in distinguishing the prior art during the prosecution history. Because the accused product did not contain tantalum, the district court concluded that infringement under the DOE would violate the all-elements rule. The Federal Circuit agreed, noting that the separate components of the alloy should be viewed as separate claim elements, and the complete omission of any one of them would violate the all-elements rule.
As to invalidity, the Federal Circuit reversed the district court’s finding that the on-sale bar had been violated, concluding that there was no evidence to show that an actual sale or offer for sale had occurred prior to the critical date.