Formative Cases
1.    Graver Tank: Unionmelt has patent for combination of alkaline earth metal silicate and calcium fluoride.
a.    Products
(A)    UM product contains combo of silicates of calcium and magnesium.
(B)    Lincolnweld: Uses silicates of calcium (in small quantities) and Mg instead of Mn.
b.    Prior Art: DOE may not be used to expand a claim to include structures described in prior art.
(A)    Miller: Mn in prior art for use in welding fluxes.
(B)    No evidence that Lincolnweld was developed from independent research or experiments.
(C)    If its general knowledge that x and y are interchangeable after the patent, should they get protection to M + Y if they claimed M + X.?
– L: worry that with technical adv, people can use entire patent, swapping out one ingredient.
c.    2 Dimensions
(A)    Pioneer invention vs not?
(B)    Did UM know it  about Mg/Mn equivalence at time of filing or was it a later advance in technology?
(1)    Best mode: we’re remarkably permissive, don’t have to update it.
d.    Function-Way Result Test = Ask, does accused product perform substantially the same f() in substantially the same way to obtain same result.
– Fed circuit has begun to back away from this rule.
e.    Why don’t we encourage these people to write a better claim?
(A)    Maybe we’re weighing injustices, shame to see their patent completely destroyed with DOE
(B)     Sometimes, though not here, technology wasn’t known at the time of writing.
– Ex. Don’t want velcro attaching eraser to give someone rights to pencil.
2.    Warner-Jenkinson: Hilton-Davis develops ultrafiltration process, added limitation of at a pH of aprox 6-9, to avoid prior art at above 9.0. W-J develops process with pH of 5.
a.    Holding: Remands to Federal Circuit to determine reason lower bound was set.
b.    Does DOE survive 1952 act? Court brushes away first 3 args because they’ve been rejected before.
(A)    DOE is inconsistent with statutory req that patentee “claim” invention covered by patent
(B)    DOE circumvents patent reissue process
(C)    DOE is inconsistent with primacy of PTO in setting scope of a patent through prosecution.
(D)    DOE is already in § 112 para 6. Court replies
(1)    § 112 allows analysis ands literal and so Markman applies and not Festo.
(2)    § 112 is just reversing an old case forbidding this language
c.    All Elements Rule = Have to apply DOE element by element and ask, is there an equivalent for this element?
(A)    Claim for fork: (1) Fork comprising handle with (2) 4 tines attached.
(B)    Suppose drafted as 5 elements: comprising handle, tine one, tine 2, …
(C)    Shrimp fork: 3 tines, is equiv to fork claim?
(1)    First claim handle and 4 tines so equivalent.
(2)    Second claim: Not enough elements to match up with all 4 tines, only 3, so not equivalent.
d.    Ginsburg concurrence: Watch out for retroactive changes to law, lots of patents already issued that thought rules were something else. If we change them we’ll undermine expectation of the parties.