November 2007 Vol. 106 No. 2 THE REVIEW

Exclusion Confusion? A Defense of the Federal Circuit's Specific Exclusion Jurisprudence

Peter Curtis Magic

Specific exclusion has become a controversial limitation on the doctrine of equivalents, which is itself an essential and controversial area of patent law. The doctrine of equivalents allows a patentee to successfully claim infringement against devices that are outside of the literal reach of the language used by the patentee in her patent to describe what she claims as her invention. The Supreme Court has prescribed some of the outer limits of the doctrine of equivalents and articulated the underlying policy concerns that inform its analysis—noting that courts should balance protection of the patentee’s intellectual property with the public’s reasonable expectations of the bounds of the patent—but has entrusted most of the doctrine’s development to the Federal Circuit. Critics argue that the Federal Circuit has applied specific exclusion, which precludes the doctrine of equivalents from reaching subject matter that is “specifically excluded” by the language used in the patent to describe the invention, in a way that does not adhere to the Supreme Court’s guidance on the doctrine of equivalents. The critics assert that the Federal Circuit has unduly narrowed the doctrine of equivalents by applying specific exclusion too aggressively. This Note demonstrates that the critics’ extreme characterization of Federal Circuit specific exclusion case law is unwarranted. The Federal Circuit has consistently and conscientiously applied specific exclusion, and their decisions conform to the Supreme Court’s guidance on the public notice function of patent claims. At the same time, the Federal Circuit has protected patentees by not allowing specific exclusion to reduce the doctrine of equivalents to another test for literal infringement.

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