Atlas Powder Co. v. EI Du Pont De Nemours
750 F.2d 1569 (1984)
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Rule of Law:
A product that does not literally infringe a patent may still be found to infringe under the doctrine of equivalents if it performs substantially the same function in substantially the same way to achieve substantially the same result. The grant of a separate patent on the accused product does not automatically preclude a finding of infringement by equivalents.
Facts:
- Atlas Powder Co. produced a gelled slurry blasting agent named Aquanite, which used nitric acid as a sensitizer, making it caustic, unstable, and hazardous.
- In 1965, Atlas assigned its scientist, Harold Bluhm, to develop a more stable blasting agent.
- By early 1966, Bluhm invented a water-in-oil emulsion blasting agent that was water-resistant and used entrapped air bubbles for sensitization, eliminating the need for dangerous chemical sensitizers like nitric acid.
- Atlas was issued U.S. Patent No. 3,447,978 ('978 patent) for Bluhm's invention, which claimed a composition including an ammonium nitrate solution, a fuel, an occluded gas, and a water-in-oil emulsifying agent.
- In 1976, E.I. du Pont De Nemours & Co. began a project to develop its own emulsion blasting agent.
- Du Pont created a similar water-in-oil emulsion but used a different emulsifying agent, sodium oleate, which is typically an oil-in-water agent but functions as a water-in-oil agent in the product's high-salt environment.
- Du Pont secured its own patent for its specific product formulation.
- In August 1978, Du Pont began commercially manufacturing and selling its patented emulsion blasting agent.
Procedural Posture:
- In December 1979, Atlas Powder Co. sued E.I. du Pont De Nemours & Co. and its customer, Alamo Explosives Co., Inc., for patent infringement in the United States District Court for the Northern District of Texas (a federal trial court).
- Du Pont defended by asserting that Atlas's '978 patent was invalid and not infringed.
- After a non-jury trial, the district court issued a final judgment.
- The district court held that the relevant claims of the '978 patent were not invalid and that Du Pont's products infringed under the doctrine of equivalents, although there was no literal infringement.
- Du Pont (appellant) appealed the trial court's judgment on validity and infringement to the United States Court of Appeals for the Federal Circuit, with Atlas (appellee) defending the lower court's decision.
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Issue:
Does a product infringe on a patent under the doctrine of equivalents if it uses a different, separately patented component but otherwise performs substantially the same function in substantially the same way to achieve substantially the same result as the claimed invention?
Opinions:
Majority - Baldwin, Circuit Judge.
Yes, a product can infringe under the doctrine of equivalents even if it uses a different, separately patented component, as long as it meets the tripartite test of performing substantially the same function in substantially the same way to achieve substantially the same result. The court reasoned that the purpose of the doctrine of equivalents is to protect a patentee from an infringer who appropriates the core of an invention while making minor changes to avoid the literal language of the patent claims. The court applied the Graver Tank tripartite test and affirmed the district court's finding that Du Pont’s product was equivalent to Atlas's patented invention. Crucially, the court rejected Du Pont's argument that obtaining its own patent on the accused product creates a presumption of non-infringement, citing precedent that a patent grants the right to exclude others, not an affirmative right to make, use, or sell the invention, especially if it incorporates another's patented technology. Patentable difference does not negate infringement; an invention can be both a patentable improvement and an infringement of a broader, earlier patent.
Analysis:
This decision solidifies the principle that an 'improvement patent' is not a shield against infringement of a foundational patent under the doctrine of equivalents. It clarifies for competitors that making a non-literal, even patentable, variation on a patented invention does not provide a safe harbor from infringement liability. The ruling strengthens the position of holders of broad or pioneering patents against subsequent innovators who build upon their work. By affirming that a subsequent patent's existence does not preclude infringement, the court ensures that the doctrine of equivalents remains a potent tool for protecting the substance of an invention, not just its literal claims.
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