Doctrine of Equivalents in Patent Prosecution: DOE Application, Festo Exceptions, Recent Case Law Developments

A live 90-minute premium CLE webinar with interactive Q&A


Tuesday, December 1, 2020

1:00pm-2:30pm EST, 10:00am-11:30am PST

Early Registration Discount Deadline, Friday, November 6, 2020

or call 1-800-926-7926

This CLE webinar will guide patent counsel on the doctrine of equivalents (DOE). The panel will discuss Federal Circuit DOE decisions from 2019 and 2020 applying the Festo exceptions, particularly the "tangential relation" exception. As the court held in Eli Lilly & Co. v. Hospira Inc. (Fed. Cir. 2019), "whether an amendment was merely tangential to an equivalent must be decided in the context of the invention disclosed in the patent and the prosecution history." Other recent Federal Circuit decisions on judicial exception to DOE will also be analyzed.

Description

The DOE is a judicial doctrine that permits a court to find infringement when an accused product or process falls outside of the literal language of the claims but is equivalent to and differs only insubstantially from the claimed invention. The concept of something infringing when the accused product "performs substantially the same function in substantially the same way to obtain the same result" can be found as far back as Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42 (1929).

Prosecution history can operate as a limit on DOE. "The doctrine of prosecution history estoppel serves to limit the doctrine of equivalents when the applicant makes a narrowing amendment for purposes of patentability, or clearly and unmistakably surrenders subject matter by arguments made to the examiner." Salazar v. Procter & Gamble Co. (Fed. Cir. 2005). The rationale for this principle is that the patentee should not be allowed to gain through the DOE claim scope that it gave up during prosecution to obtain allowance of the claims. The panel will discuss the recent example of argument-based prosecution history estoppel found in Amgen Inc. v. Coherus Biosciences Inc. (Fed. Cir. 2019).

According to the U.S. Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushki Co. (2002) (Festo VIII), however, a patentee can rebut the presumption that prosecution history estoppel applies if it shows that it comes within one of three exceptions. These exceptions are: the equivalent was unforeseeable at the time of the application, the rationale underlying the amendment bears no more than a tangential relation to the equivalent in question, or some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question.

Listen as our authoritative panel examines the lessons from recent Federal Circuit decisions for practitioners arguing for or against the application of the Festo exceptions, as well as more broadly for or against applying the DOE. The panel will also discuss hypothetical-claim analysis and ensnarement in Intendis v. Glenmark (Fed. Cir. 2016) and Janssen Biotech Inc. v. Celltrion Healthcare Co. Ltd. (Fed. Cir. 2020); disclosure-dedication in Eagle Pharms. Inc. v. Slayback Pharma Inc. (Fed. Cir. 2020); and all-limitations rule in Amgen v. Sandoz (Fed. Cir. 2019).

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Outline

  1. Early DOE decisions; policy considerations
  2. Estoppel
    1. Argument-based
    2. Amendment-based
    3. Festo
      1. Exceptions
        1. The equivalent was unforeseeable at the time of the application
        2. Tangential relation
        3. An unreasonable expectation to describe the insubstantial substitute
  3. Hypothetical claims/ensnarement
    1. Wilson Sporting Goods Co. v. David Geoffrey & Assocs.
    2. Janssen Biotech Inc. v. Celltrion Healthcare Co. Ltd.
    3. Intendis v. Glenmark
  4. Disclosure-dedication
    1. Eagle Pharms. v. Slayback Pharma
  5. All-limitations rule
    1. Amgen v. Coherus

Benefits

The panel will review these and other important issues:

  • The reappearance of the Festo exceptions
  • The return of ensnarement
  • Best practices for drafting and prosecuting claims to minimize estoppel preventing DOE arguments

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Jakes, J. Michael
J. Michael Jakes

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Jakes concentrates his practice on patent litigation and related counseling. He serves as lead counsel in federal...  |  Read More

McCurdy, Barbara
Barbara Clarke McCurdy

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. McCurdy has more than 25 years of experience creating, enforcing, and defending patent rights, with a particular...  |  Read More

Murphy, Amanda
Amanda K. Murphy, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new...  |  Read More

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