Appeal No. 98-2069
Application No. 29/052,369
law established by the Supreme Court has been infringement
occurs when 'two designs are substantially the same.'" The
appellant argues that since "substantially" was used by the
Supreme Court in defining design patent infringement, surely
it is proper for the appellant to use "substantially" in
claiming the subject matter they regard as the invention. We
are unpersuaded by this argument. It is not apparent to us11
how the presence of the word "substantially" in the Gorham
test for infringement of a design patent mandates that it is12
proper, within the meaning of 35 U.S.C. § 112, second
11This argument would be equivalent to an argument that
"substantially" in a utility claim would never be indefinite
since the term "substantially" is used by the courts in
applying the doctrine of equivalents in an infringement suit.
A finding of infringement under the doctrine of equivalents
requires proof of insubstantial differences between the
claimed and accused products. A patentee may prove this
insubstantial change by showing that the accused device
performs substantially the same function, in substantially the
same way, to produce substantially the same result as the
claimed invention. See Hilton Davis Chem. Co. v.
Warner-Jenkinson Co., 62 F.3d 1512, 1516-21, 35 USPQ2d 1641,
1644-47 (Fed. Cir. 1995) (en banc), rev'd on other grounds,
117 S. Ct. 1040, 41 USPQ2d 1865 (1997) and Graver Tank & Mfg.
Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 85 USPQ 328,
330 (1950).
12We note that in an infringement action, both parties
may present evidence on the issue of whether the two designs
are substantially the same.
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