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74 Journal of Patent and Trademark Office Society 621 (1992)


In Malta v. Schulmerich Carillons Inc. a divided panel of the Federal Circuit affirmed a JNOV granted on a jury verdict of infringement under the doctrine of equivalents. In so doing, the panel majority confirmed the applicability of guidelines from previous cases for determining the threshold level of evidence necessary to get the equivalents issue to the jury. This paper argues that despite powerful criticism from the dissent, the common sense guidelines articulated in theMalta majority opinion are not only necessary, but are appropriate. Indeed, the paper argues that the Malta guidelines are fundamental to the equivalents analysis, and therefore could be extended both to bench trials involving the doctrine of equivalents and to the analysisof structural equivalents under 35 U.S.C. 112, 6th, whether tried to judge or jury.

Part I of this paper reviews the jury's role in determining infringement, commenting on the jury's role in both claim interpretation and in the comparison of the properly construed claims to the accused device. Part II reviews the Nestier and Lear Siegler cases, key precursors to the Malta decision. Part III reviews the Malta District Court decision as well as the majority, concurring and dissenting opinions of the Federal Circuit panel. Finally, Part IV considers the applicability of the Malta threshold requirement to a bench trial setting involving 35 U.S.C. 112, 6th , and contrasts the Federal Circuit's approach in Malta to its approach in Symbol echnologies, Inc. v. Opticon Inc.