Take care to avoid claiming unnecessary elements – the test for establishing infringement under the doctrine of equivalence cannot be satisfied by a theory that would entirely vitiate a particular claim element (the all-elements rule).
Background / Facts: Despite a jury verdict in favor of Mirror Worlds awarding $208.5 million in damages, the district court entered judgment as a matter of law in Apple’s favor for lack of supporting evidence. The patents in suit are generally directed to searching, displaying, and archiving computer files, in which chronologically ordered “streams” of documents are displayed as stacked images. By sliding the cursor over any item within the stack, the user may see a preview of the document, also known as a “glance view.” The accused Apple products include both the Mac OS X and IOS operating systems, and in particular three specific features: Spotlight, Cover Flow, and Time Machine. Conceding that the accused products do not literally meet the “cursor or pointer” limitation at issue, Mirror Worlds’ theory of infringement relies on the doctrine of equivalents as well as inducement relating to end-user activities.
Issue(s): (1) Whether the “default” area at the center of Cover Flow was equivalent to the claimed “cursor or pointer,” and (2) whether the user manuals cited as describing the various accused features are sufficient evidence of actual use of the claimed method.
Holding(s): (1) No. A patent is infringed under the doctrine of equivalents if any difference between a given limitation in the asserted claim and the corresponding element in the accused device is insubstantial. Alternatively, “an element in the accused device is equivalent to a claim limitation if it performs substantially the same function in substantially the same way to obtain substantially the same result.” Mirror World’s expert testimony relied upon did not explain why the mere fact that users look at the center of the display, where glance views are shown, should mean that a cursor exists there by default. Such an assertion amounts to an argument that the absence of a feature is equivalent to its presence, which is a negation of the doctrine of equivalents. (2) No. When manuals only teach “customers each step of the claimed method in isolation,” but not “all the steps of the claimed method together,” the manuals alone cannot support infringement. Here, the operating systems, laptops, and accused features such as Spotlight, can be indisputably used in a non-infringing manner. The manual entries cited by Mirror Worlds do not directly instruct a user how to infringe.