Warner-Jenkinson, 62 F.3d 1512, 1517-18 (Fed.Cir. 1995) (in
bane), rev'd on other grounds 520 U.S. 17, 117 S.Ct. 1040, 137
L.Ed.2d 146 (1997) (emphasis added). Thus, equivalency will be
found where there are mere "insubstantial differences" between a
certain element or elements of a claim and corresponding aspects
of the accused product. A plaintiff invoking the doctrine of
equivalents must do more than prove that the patented product
and the accused product bear an overall equivalence to one
another. Rather, a plaintiff must prove equivalence on a
limitation-by-limitation basis. See Texas Instruments Inc. v.
Cypress Semiconductor Corp., 90 F.3d 1558, 1566 (Fed.Cir.
1996). Plaintiffs must also prove equivalency "with
particularized testimony and linking argument." Id. at 1567
(quotation and citation omitted).
The usual test of equivalence is whether the element in the
accused composition performs substantially the same function
in substantially the same way to obtain substantially the same
result as the claimed element. See Graver Tank & Mfg. Co.,
Inc. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct.
854, 94 L.Ed. 1097 (1950). However, this function-way-result
test is "not the sole test for equivalency." Texas
Instruments, 90 F.3d at 1566 (quotation and citation omitted).
Rather, courts often allow juries to consider "other `objective
evidence'" in order to determine "whether the differences
between the accused product or process and the claimed invention
are insubstantial." Id. (citing Hilton Davis, 62 F.3d at
1519). "Such [objective] evidence may include evidence of known
interchangeability to one of ordinary skill in the art, copying,
and designing around. Thus, . . . the doctrine of equivalents
[is] `not the prisoner of a formula' and `the available relevant
evidence may vary from case to case.'" Id. (citing Hilton
Davis, 62 F.3d at 1518).
In this case, the crux of the dispute focuses on whether the
two adhesives contain equivalent graft copolymerized natural
rubber.*fn8 Under the traditional way-function-way-result
test, it is apparent that both adhesives use graft copolymerized
natural rubber to perform the same function in the adhesive.
Furthermore, both adhesives achieve the same fundamental result
— that is, both use graft copolymerized rubber and finely
divided, hard particulate matter to create a hard, non-tacky
The ultimate question, then, is whether the two adhesives
achieve graft copolymerization in the same way. In the patented
adhesive, graft copolymerization is accomplished through a blend
of MMA and
styrene, with significantly more MMA being present than styrene.
In SRC Adhesive 3, graft copolymerization is accomplished solely
through the use of MMA. Thus, the ultimate question is whether
SRC Adhesive 3 is equivalent to Moore's patented adhesive by
virtue of SRC's use of MMA alone rather than a blend of MMA and
Before the court can reach this ultimate question of
equivalence, it must first address SRC's argument that Moore is
barred from asserting the doctrine of equivalents. Here, SRC
relies on a related case in which the Federal Circuit set forth
a number of legal doctrines that may undermine a plaintiffs
attempt to invoke the doctrine of equivalents. "Whether the
result of the All Limitations Rule, prosecution history
estoppel, or the inherent narrowness of the claim language, many
limitations warrant little, if any, range of equivalents."
Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091,
1106 (Fed.Cir. 2000) ("Moore I") (citations omitted).
A. Prosecution History Estoppel: Amendments to Application
Under the doctrine of prosecution history estoppel, a patent
owner can be estopped from relying upon the doctrine of
equivalents when the patent applicant relinquishes coverage of
subject matter during the prosecution of the patent, either by
amendment or argument. See Pharmacia & Upjohn Co. v. Mylan
Pharms., Inc., 170 F.3d 1373, 1376-77 (Fed.Cir. 1999).*fn10
In the large majority of cases, prosecution history estoppel
applies where the applicant canceled, amended, or added language
to an application after learning that the Patent Office Examiner
had rejected the application on the basis of prior art. In other
words, estoppel typically arises where an applicant has amended
an application in order to avoid prior art and secure protection
for the claimed invention. See Warner-Jenkinson Co., Inc. v.
Hilton Davis Chemical Co., 520 U.S. 17, 30-31 & n. 5, 117 S.Ct.
1040, 137 L.Ed.2d 146 (1997); Vaupel Textilmaschinen KG v.
Meccanica Euro Italia SPA, 944 F.2d 870, 882 (Fed.Cir. 1991);
Andco Environmental Processes, Inc. v. Niagara Environmental
Associates, Inc., 224 U.S.P.Q. 43, 48 (W.D.N.Y. 1984) (Elfvin,
J.). However, the Federal Circuit recently held that estoppel
can arise whenever a claim is narrowed by amendment, regardless
of the reason for making the amendments. Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558
(Fed.Cir. 2000). In any event, prosecution history estoppel
clearly arises from situations where an application was amended
and narrowed in response to a patent examiner's objections.
In this case, the only amendments to the '128 patent's
application were the addition of the words "adhesive" and "hard"
to the description found in claim 1 and a clarification that the
final product was a "latex." By its present motion, SRC does not
argue that these amendments create grounds for prosecution
history estoppel. Thus, the vast majority of cases involving
prosecution history estoppel are not on point, since estoppel
generally arises from an amendment to and a narrowing of the
patent application. For this
reason, the court rejects SRC's attempt to invoke prosecution
history estoppel as a bar to Moore's claim that SRC Adhesive 3
infringes the '128 patent under the doctrine of equivalents.
B. "Dedicated to the Public": Subject Matter Disclosed but
not Claimed in Patent
SRC contends that subject matter that was disclosed but not
claimed in the '128 patent is "dedicated to the public" and
therefore cannot fall within the scope of equivalency.*fn11
On this issue, SRC is referring to Comparative Example No. 2,
which describes a pressure-sensitive adhesive created by "the
graft-copolymerization of 15 parts by weight of methyl
methacrylate alone per 100 parts by weight of natural rubber
with omission of styrene as the grafting monomer." Item 101,
Exh. 1, Column 3, lines 29-35. Seizing on the language from the
'128 patent, SRC contends that Mr. Sakai's disclosure of a
pressure-sensitive adhesive which uses only MMA as a grafting
monomer means that Moore cannot now claim that SRC Adhesive
3-which also uses only MMA — infringes the '128 patent under the
doctrine of equivalents. In support of this argument, SRC relies
on a trio of cases from the Federal Circuit: Moore I,
229 F.3d 1091; Maxwell v. J. Baker, Inc., 86 F.3d 1098 (Fed.Cir. 1996);
and YBM Magnex, Inc. v. International Trade Comm'n,
145 F.3d 1317 (Fed.Cir. 1998). See Item 220, pp. 4-6.
In Moore I, the '464 patent (or "the mailer patent") was at
issue. Moore "argue[d] that the written description's teaching
that the length of the first and second strips may be about
`half of the length' of the longitudinal marginal portions
[gave] rise to a scope of equivalents hat would cover a
`minority'. . . ." 229 F.3d at 1107. The Federal Circuit
rejected Moore's contention and, quoting from Maxwell v. J.
Baker, Inc., 86 F.3d 1098, 1107 (Fed.Cir. 1996), held that
"subject matter disclosed in the specification, but not claimed,
is dedicated to the public' in determining infringement under
the doctrine of equivalents." Moore I, 229 F.3d at 1107. The
court then went onto conclude: "Having fully disclosed two
distinct embodiments, one in which the first and second
longitudinal strips extend a majority of the length of the
longitudinal marginal portions, and one in which they do not,
Moore is not entitled to `enforce the unclaimed embodiment as an
equivalent of the one that was claimed.'" Id. at 1107 (quoting
YBM Magnex, Inc. v. International Trade Comm'n, 145 F.3d 1317,
1320 (Fed.Cir. 1998)).
In this case, SRC argues that Moore is once again trying to
expand the doctrine of equivalents so that it protects an
alternative embodiment that was disclosed but not claimed in the
prosecution of the patent. As referenced supra, SRC refers to
the '128 patent's "Comparative Example No. 2." Comparative
Example No. 2 describes a pressure-sensitive adhesive in which
graft polymerization is achieved not with a styrene/MMA blend,
but strictly with 15 parts by weight of MMA. SRC likens the
present case to Moore I and Maxwell and argues that the '128
patent discloses but does not claim a pressuresensitive adhesive
in which only MMA is present as the grafting monomer. Item 220,
pp. 4-5. Thus, SRC concludes, pressure-sensitive adhesives using
as the grafting monomer remain "dedicated to the public." Since
SRC Adhesive 3 uses only MMA as a grafting monomer, SRC contends
that Moore is barred from asserting infringement under the
doctrine of equivalents.
Yet, Moore I is not factually on point with the present
case. While Moore I may have involved the same parties, it
also involved a different patent (the '464 patent) and a
different accused product (SRC's so-called "Form 1"). The '464
patent claimed a C-Fold mailer that had "first and second
strips" of adhesive that were "about `half of the length' of the
longitudinal marginal portions." Moore I, 229 F.3d at 1107.
The '464 patent also described, but did not claim, an
alternative embodiment with "first and second longitudinal
strips" of adhesive that did not "extend a majority of the
length of the longitudinal marginal portions." Id. The accused
product in Moore I — SRC's Form 1 — was indistinguishable from
this alternative embodiment's description, since the accused
form also had longitudinal strips of adhesive extending less
than half the length of the margins. Nevertheless, Moore argued
that the accused product was equivalent because the '464 patent
created "a scope of equivalents covering" mailers with
longitudinal strips of adhesive along a mere "`minority'" of the
margins. Id. at 1106.
The Federal Circuit rejected Moore's argument. Specifically,
the court rejected Moore's insistence that the '464 patent —
which claimed strips of adhesive running "half the length" of
the margins — could have a scope of equivalents that included a
mailer with strips of adhesive on a "minority" of the margins'
length. The court's conclusion in Moore I was logical, since
both Moore's unclaimed alternative embodiment and SRC's accused
mailer had strips of adhesive covering a minority of the
longitudinal margins' length.
The unique facts relevant to the court's decision in Moore I
are not present in this case. Here, the 128 patent discloses
"Comparative Example No. 2," in which natural rubber was graft
copolymerized with just 15 percent MMA. On the other hand, the
accused SRC Adhesive 3 contains natural rubber graft
copolymerized with approximately 30 percent MMA. See Item 183,
Exh. F, pp. 9-10, 13. Thus, the '128 patent has disclosed a
pressuresensitive adhesive in which 15 percent MMA was used, but
not one in which 30 percent MMA is used.*fn12 Unlike the
situation in Moore I, there is a facial difference between the
unclaimed embodiment and the accused product — ie., a
difference of 15 parts of MMA per 100 parts of natural rubber.
Not only is Moore I factually distinct from this case, but
it also seems limited to its facts when viewed in light of YBM
Magnex and Maxwell, the two cases on which the court in
Moore I relied. In YBM Magnex, the Federal Circuit stated
that "the facts in Maxwell are not the routine facts of an
equivalency determination." YBM Magnex, 145 F.3d at 1320.
Indeed, Maxwell involved a case where the patent applicant had
distinct alternative ways in which pairs of shoes are attached
for sale, and claimed only one of them. Both embodiments were
fully described in the patent." Id. at 1320. The Maxwell
court found that the "unclaimed alternative . . . was distinct
from the claimed alternative" and that both embodiments "were
fully described in the [patent's] specification." YBM Magnex,
145 F.3d at 1320. Based on these particular facts, "the Federal
Circuit denied Maxwell the opportunity to enforce the unclaimed
embodiment as an equivalent of the one that was claimed." Id.
Although Maxwell is valid law, the Federal Circuit in YBM
Magnex has cautioned lower courts not to read Maxwell too
broadly. The Federal Circuit rejected the idea that its decision
in Maxwell had created some sort of "blanket rule that
everything disclosed but not claimed [in a patent] is barred
from access to the doctrine of equivalents, whatever the facts,
circumstances, and evidence." Id. The court went on to limit
Maxwell further: "[T]o enlarge Maxwell to a broad and new
rule of law . . . is not only an incorrect reading of Maxwell
but would bring it into direct conflict with Supreme Court
precedent." Id. at 1321. Moreover, YBM Magnex makes it clear
that courts should still look to leading cases such as Graver
Tank and Warner-Jenkinson, which state that equivalency should
usually be judged by the "function-way-result" test and, where
appropriate, the evaluation of other relevant evidence. "The
fundamentals of the law of equivalency . . . were not changed by
Maxwell as applied to all situations. Maxwell did not
displace the wealth of precedent that permits determination of
equivalency, vel non, as to subject matter included in the
written description but not claimed." Id. at 1322.
In any event, Maxwell is not factually on point with this
case. In Maxwell the plaintiff was trying to apply the
doctrine of equivalents to an accused product that was identical
to the alternative embodiment that had been disclosed in the
patent. In this case, SRC Adhesive 3 is not identical to
Comparative Example No. 2, since the former contains 30 percent
MMA and the latter called for 15 percent MMA. In the world of
chemical engineering, 15 parts by weight of a particular
compound could prove to be a significant difference.
Likewise, the court declines to endorse SRC's reliance on
Sage Products Inc. v. Devon Industries Inc., 126 F.3d 1420
(Fed. Cir. 1997). In Sage Products, the court found that the
doctrine of equivalents could not apply because the public had a
right to rely on the relevant patent's "clear structural
limitations." Id. at 1425. In that case, the patent at issue
covered a plastic container meant to be used "for disposing of
hazardous medical waste, including hypodermic needles." Id. at
1422. The patent in that case claimed "a disposal container with
a slot at its top to allow entry of waste materials into the
container and with constrictive barriers above and below that
slot to restrict access to the interior of the container." Id.
The accused product in Sage had two "constrictions" below
the slot, as opposed to one on top of the slot and one below it
as described in the patent. Id. at 1424. The court found that
the patent's limitation on where the barriers should be placed
would have been significant to those skilled in the art. Id.
The court concluded:
[T]he . . . patent [at issue] claims a precise
arrangement of structural elements that cooperate in
a particular way to achieve a certain result. Devon
achieves a similar result — restricted entry to a
medical disposal container — but it does so by a
different arrangement of elements. Because this
issued patent contains clear structural limitations,
the public has a right to rely on those limits in
conducting its business activities. . . .
Sage Products, 126 F.3d at 1425. The issue of notice to the
public underpinned the Sage Products court's reasoning.
Unlike the patent in Sage Products, the '128 patent contains
no similar "clear structural limitations."*fn13 Id. While
claim 1 of the '128 patent does call for "natural rubber graft
copolymerized with styrene and methyl methacrylate," there is
evidence that those skilled in the polymer arts are well aware
that MMA can be freely substituted for styrene in an adhesive
compound. See Item 183, pp. 11-12. Thus, while the difference
between the location of two constrictions was significant in
Sage Products, it is possible that there are only
insubstantial differences between rubber copolymerized with
styrene and MMA, and rubber copolymerized with just MMA.
For these reasons, this court declines to follow Moore I and
Maxwell and instead heeds the admonition of YBM Magnex,
where the Federal Circuit advised lower courts to employ the
function-way-result test and to look to other relevant evidence
when determining whether the doctrine of equivalents applies.
C. All Elements Rule and Inherent Narrowness Doctrine
Before the court can take up the question of equivalency,
however, it must also address SRC's contention that the socalled
"All Elements Rule" precludes Moore's attempt to assert the
doctrine of equivalents against SRC Adhesive 3. See generally
Item 219, pp. 15-20. In Warner-Jenkinson, the Supreme Court
articulated the All Elements Rule in the following way:
Each element contained in a patent claim is deemed
material to defining the scope of the patented
invention, and thus the doctrine of equivalents must
be applied to individual elements of the claim, not
to the invention as a whole. It is important to
ensure that the application of the doctrine, even as
to an individual element, is not allowed such broad
play as to effectively eliminate that element in its
520 U.S. at 29, 117 S.Ct. 1040. "`Element' may be used to mean a
single limitation, but it has also been used to mean a series of
limitations which, taken together, make up a component of the
claimed invention." Corning Glass, 868 F.2d at 1259.
In this case, SRC maintains that Moore cannot, on an
element-by-element basis, show that SRC Adhesive 3 contains an
equivalent component for each claimed element in the '128
patent. SRC observes that the '128 patent claims natural rubber
copolymerized with styrene and MMA. SRC insists that natural
rubber, styrene, and MMA are all separate elements of the '128
patent. SRC argues that Moore cannot use the doctrine of
equivalents to "read out" the term "styrene" and the term "and"
from claim 1 of the '128 patent. In other words, SRC argues that
its use of just MMA in SRC Adhesive 3 cannot be equivalent to
Moore's use of styrene and MMA in the patented adhesive. SRC
implies that it would be redundant and absurd for an adhesive to
claim "natural rubber copolymerized with MMA and MMA." SRC
concludes that the absence of styrene from SRC Adhesive 3 means
that SRC Adhesive 3 cannot, as a matter of law, infringe the
'128 patent under the doctrine of equivalents. See Item 219,
Here, SRC again tries to liken this case to Sage Products.
In Sage Products, the plaintiff sought to apply the doctrine
of equivalents to a container with two
constrictions below the top of the container, yet the patent
described one constriction above the container's top and one
below it. The court in Sage Products found that applying the
doctrine of equivalents to the accused container would
unacceptably read out "top of container" and "over said slot"
from the plaintiffs patent. SRC argues that Moore, like the
plaintiff in Sage Products, is trying to use the doctrine of
equivalents to read out the phrase "styrene and" from claim 1
of the '128 patent. Moreover, SRC states that if Mr. Sakai and
Toppan had desired broader protection, they should have applied
for a patent covering an adhesive with either styrene or MMA
as a polymerizing agent. See Item 220, p. 10.
SRC's reliance on the All Elements Rule fails to acknowledge
that an inquiry into equivalency usually involves a sensitive,
What constitutes equivalency must be determined
against the context of the patent, the prior art,
and the particular circumstances of the case. . . .
In determining equivalents, things equal to the
same thing may not be equal to each other and, by
the same token, things for most purposes different
may sometimes be equivalents. . . . An important
factor is whether persons reasonably skilled in the
art would have known of the interchangeability of
an ingredient not contained in the patent with one
Graver Tank, 339 U.S. at 609, 70 S.Ct. 854 (emphasis added).
In this case, Moore has submitted evidence to support a finding
that those skilled in the polymer art are thoroughly familiar
with the interchangeability of MMA and styrene. See Item 223,
Exh. S, pp. 57-58, 61-62. Furthermore, a plaintiff is "free to
frame the issue of equivalency, if it chooses, as equivalency to
a combination of limitations." Corning Glass, 868 F.2d at 1259
n. 6 (citing Winans v. Denmead, 56 U.S. (15 How.) 330, 343, 14
L.Ed. 717 (1853)). Finally, while an equivalent "for every
limitation of the claim" is "generally" found "in a
corresponding component" of the accused device, certain
situations require the court to assess "equivalency between a
required . . . combination of limitations and what has been
allegedly substituted therefor in the accused device. . . ."
Id. at 1260.
In light of the foregoing, the All Elements Rule does not
preclude Moore from pursuing its theory that SRC Adhesive 3
infringes the '128 patent under the doctrine of equivalents
because the patented pressure-sensitive adhesive uses
approximately 10 percent styrene and 20 percent MMA and SRC
Adhesive 3 differs insubstantially in that it uses 30 percent
MMA for the same function in order to achieve the same result.
D. Equivalence of MMA and Styrene
Having dealt with prosecution history estoppel, subject matter
dedicated to the public, and the All Elements Rule, the court is
left with the relatively straightforward question of whether SRC
Adhesive 3 is equivalent to the patented adhesive. This
question, in turn, can be distilled into the simpler question of
whether styrene and MMA are interchangeable for the purposes of
graft copolymerizing natural rubber in a pressure-sensitive
As the court noted previously, equivalency is a jury question
unless there are no disputed issues of material fact. See
Warner-Jenkinson, 520 U.S. at 39 & n. 8, 117 S.Ct. 1040. The
present record includes two detailed affidavits addressing the
issue of equivalency, one from Dr. Timothy Long for Moore (Item
183, Exh. G) and another from Dr. Rejendra Mehta for SRC (Item
219, Exh. E). These affidavits and other evidence in the record
reveal a sharp disagreement over the equivalency of styrene and
MMA. It would be inappropriate
for the court to resolve this disagreement at the summary
judgment stage. Therefore, both parties' motions for summary
judgment are denied with respect to SRC Adhesive 3.
Moore has not conclusively established the chemical form that
styrene took in SRC Adhesive 1. As a result, Moore has failed to
prove that SRC Adhesive 1 literally infringes the '128 patent.
Therefore, this aspect of Moore's cross-motion for summary
judgment is denied (Item 179).
Moore has also failed to prove that SRC ever used the alleged
SRC Adhesive 2, much less that this accused adhesive literally
infringed the '128 patent as a matter of law. Therefore, this
aspect of Moore's cross-motion for summary judgment is also
denied (Item 179).
Finally, the parties agree that the socalled SRC Adhesive 3
does not literally infringe the '128 patent. Accordingly, SRC's
motion for partial summary judgment (Item 100) is granted as to
literal infringement. However, there are disputed material facts
relating to the issue of whether SRC Adhesive 3 infringes the
'128 patent under the doctrine of equivalents. Therefore, this
aspect of SRC's motion for partial summary judgment is denied
(Item 100) and the relevant aspect of Moore's cross-motion for
partial summary judgment (Item 179) is also denied.