A patent claim may be directly infringed in two ways. A claim may be “literally” infringed or it may be infringed under the “doctrine of equivalents.” I will now instruct you on the specific rules you must follow to determine whether [the patent holder] has proven that [the alleged infringer] has infringed one or more of the patent claims involved in this case.
You must decide whether [the alleged infringer] has made, used, sold, or offered for sale within the United States, or imported into the United States, a product [method] covered by claims [ ] of the [XXX] patent. You must compare each claim to [the alleged infringer]’s product [method] to determine whether every requirement of the claim is included in the accused product [method].
To prove literal infringement, [the patent holder] must prove that it is more probable than not that [the alleged infringer]’s product [method] includes every requirement [step] in [the patent holder]’s patent claim. If [the alleged infringer]’s product [method] omits any requirement [step] recited in [the patent holder]’s patent claim, [the alleged infringer] does not infringe that claim.
For literal infringement, [the patent holder] is not required to prove that [the alleged infringer] intended to infringe or knew of the patent.
Committee Note:
Requirements. The Committee decided to use the word “requirements” to identify the elements or limitations in a claim. We are aware of the statement in Lockheed Martin Corp. v. Space Systems/Loral, Inc., 324 F. 3d 1308, 1315 n.1 (Fed. Cir. 2003), quotingFesto Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F. 3d 558, 564 n.1 (Fed. Cir. 2000), that “[i]t is preferable to use the term ‘limitation’ when referring to claim language and the term ‘element’ when referring to the accused device.” Nevertheless, we believe the word requirements is more descriptive than the word limitation, and it will communicate more clearly to the jury the concept of claim elements or limitations than does the word limitation.
I have defined certain words and phrases in the patent claims. During your deliberations you must apply these meanings:
The beginning, or preamble, of claim [ ] uses the word “comprising. “Comprising” means “including” or “containing but not limited to.” That is, if you decide that [the alleged infringer]’s product [method] includes all the requirements [steps] in claim [ ], the claim is infringed. This is true even if the accused product [method] includes components [steps] in addition to those requirements.
For example, a claim to a table comprising a tabletop, legs, and glue would be infringed by a table that includes a tabletop, legs, and glue, even if the table also includes wheels on the table’s legs.
The beginning of claim [ ] uses the phrase “consisting essentially of.” “Consisting essentially of” means that the claimed invention may include requirements that are not expressly listed in the claim, provided those additional requirements do not significantly affect the basic and novel properties of the invention. In other words, patent claims that include the language “consisting essentially of” will be infringed only if [the patent holder] proves that any requirements [steps] added by [the alleged infringer] beyond those in the claim(s) do not significantly affect the basic and novel features of the claimed invention.
The beginning of claim [ ] uses the phrase “consisting of.” “Consisting of” means that the claimed invention contains only what is expressly stated in the claim. But it does not limit aspects unrelated to the invention. A patent claim using the phrase “consisting of” will be infringed if you decide that [the alleged infringer]’s product [method] includes all the requirements [steps] stated in the patent claim and does not include any additional requirements [steps] related to the invention.
So far, my instructions on infringement have applied to what are known as independent claims. The patent also contains dependent claims. Each dependent claim refers to an independent claim. A dependent claim includes each of the requirements of the independent claim to which it refers and one or more additional requirements.
In order to find infringement of dependent claim [ ] of the [XXX] patent, you must first determine whether independent claim [ ] of the patent has been infringed. If you decide that the independent claim has not been infringed, then the dependent claim cannot have been infringed. If you decide that the independent claim has been infringed, you must then separately determine whether each additional requirement of the dependent claim has also been included in the accused product [method]. If each additional requirement has been included, then the dependent claim has been infringed.
[The patent holder] must prove that it is more probable than not that a patent claim has been infringed.
[The patent holder] alleges that [the alleged infringer] infringed claim [ ] of the patent under the “doctrine of equivalents.”
To prevail on its allegation of infringement, [the patent holder] must prove that it is more probable than not that the accused product [method] contains requirements identical or equivalent to each claimed requirement [step] of the patented invention. You must proceed on a requirement-by-requirement [step-by-step] basis. [The patent holder] must establish that each requirement in the claim is present in the accused product, either literally or under the doctrine of equivalents.
A claim requirement is present in an accused product [method] under the doctrine of equivalents if the difference between the claim requirement and a corresponding aspect of the accused product [method] is insubstantial.
In making this determination, you may consider whether the corresponding aspect [step] performs substantially the same function in substantially the same way to achieve substantially the same result as the requirement in the claim. You may also consider whether people of ordinary skill in the art believed that the corresponding aspect [step] of the accused product [method] and the requirement recited in the patent claim were interchangeable at the time of the alleged infringement. The proper time for evaluating equivalency—and thus knowledge of interchangeability between requirements—is the time of infringement, not the time the patent was issued. Under the doctrine of equivalents, those of ordinary skill in the art do not have to know of the equivalent when the patent application was filed or when the patent issued. Thus, the inventor need not have foreseen, and the patent need not describe, all potential equivalents to the invention covered by the claims. Also, changes in technique or improvements made possible by technology developed after the patent application is filed may still be equivalent for the purposes of the doctrine of equivalents.
Some patent claim requirements may describe a “means” [step] for performing a function, rather than describing the structure [act] that performs the function. For example, let’s say that a patent describes a table in which the legs are glued to the tabletop. One way an inventor may claim the table is to require the tabletop, four legs, and glue between the legs and the tabletop. Another way to claim the table is to require the tabletop and the legs, but instead of stating “glue,” the inventor states a “means for securing the legs to the tabletop.” This second type of claim requirement is called a “means-plus-function” requirement. It describes a means for performing the function of securing the legs to the tabletop, rather than requiring the glue.
When a claim requirement is in means-plus-function form, it covers the structures [acts] described in the patent specification for performing the function stated in the claim and also any structure [act] equivalent to the described structures [acts]. In my example, the claim covers a table using glue to secure the legs to the tabletop, as described in the patent, and any equivalent structure to glue that performs the function of securing the legs to the tabletop.
Claims [ ] of the [XXX] patent include means-plus-function requirements. In instructing you about the meaning of a means-plus-function claim requirement, I will tell you, first, the function that is performed, and second, the structure [act] disclosed in the patent specification that corresponds to that function.
To establish literal infringement of a claim that includes means-plus-function requirements, [the patent holder] must prove two things:
Where the structure [act] in the accused device and the structure [act] disclosed in the patent specification are not identical, [the patent holder] has the burden of proving that it is more probable than not that the relevant structure in the accused device, as I have identified it for you, is equivalent to the disclosed structure [act] in the patent.
Two structures [acts] are equivalent if a person of ordinary skill in the art would consider the differences between them to be insubstantial for performing the required function. One way to determine this is to look at whether or not the accused structure [act] performs the identical function in substantially the same way to achieve substantially the same result. Another way is to consider whether people of ordinary skill in the art believed that the structure of the accused product [method] and the structure in the patent were interchangeable at the time the patent was issued by the PTO.
Committee Note:
Doctrine of Equivalents Applied to a Means-Plus-Function Claim. In some cases a patent holder may contend that a means-plus-function claim is infringed under the doctrine of equivalents. In such a case, the Committee suggests adding the following language at the end of the above instruction:
If the function performed by the relevant structure [act] in the accused device [method] is not identical to the function recited in the means-plus-function requirement, infringement may be proved under the doctrine of equivalents. To prove equivalent infringement in such situation, [the patent holder] must prove that (following the guidelines for establishing equivalence set forth above):
[The patent holder] alleges that [the alleged infringer] indirectly infringed the patent. There are two types of indirect infringement: inducing infringement and contributory infringement. The act of encouraging or inducing others to infringe a patent is called “inducing infringement.” The act of contributing to the infringement of others by, for example, supplying them with components for use in the patented invention, is called “contributory infringement.
A party induces patent infringement if it purposefully causes, urges, or encourages another to infringe the claims of a patent. Inducing infringement cannot occur unintentionally. This is different from direct infringement, which can occur unintentionally.
To prove that [the alleged infringer] induced patent infringement, [the patent holder] must prove that it is more probable than not that:
[The patent holder] must prove that [the alleged infringer] had a specific intent to induce the infringement. [The patent holder] must prove that [the alleged infringer] knowingly induced infringement, not merely that [the alleged infringer] knowingly induced the acts that constitute infringement.
Contributory infringement occurs when a party with knowledge of the patent supplies a part, or a component, to another for use in a product, machine, or process that infringes a patent claim. [The patent holder] must prove that it is more probable than not that contributory infringement occurred.
Contributory infringement arises only if one who received the component infringes a patent claim. The component must also have three characteristics.
A component that has a number of non-infringing uses is often referred to as a staple or commodity article. Providing such a staple or commodity article is not contributory infringement even if the person receiving or buying the article uses it in an infringing way.
35 U.S.C. §271(c) (2001) states that:
Whoever offers to sell or sells within the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use, shall be liable as a contributory infringer.
Direct infringement requires a party to perform or use each and every step of a claimed method, literally or under the doctrine of equivalents. Where no one party performs all of the steps of a claimed method but multiple parties combine to perform every step of the method, that claim will nevertheless be directly infringed if one party exercises control or direction over the entire method so that every step is attributable to the controlling party. Mere arms-length cooperation between the parties is not enough to establish direct infringement. [The patent holder] must prove that it is more probable than not that [the alleged infringer] directly infringed the patent claim.
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