Doctrine of Equivalents in Patent Prosecution: DOE Application, Festo Exceptions, Recent Case Law Developments
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide patent counsel on the doctrine of equivalents (DOE). The panel will discuss recent Federal Circuit DOE decisions 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 exceptions to DOE will also be analyzed.
Outline
- Early DOE decisions; policy considerations
- Estoppel
- Argument-based
- Amendment-based
- Festo
- Exceptions
- The equivalent was unforeseeable at the time of the application
- Tangential relation
- An unreasonable expectation to describe the insubstantial substitute
- Exceptions
- Hypothetical claims/ensnarement
- Disclosure-dedication
- All-limitations rule
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
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
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. Mr. Irving has served as lead counsel in many patent interferences.
CloseBarbara 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
Ms. McCurdy has more than 25 years of experience creating, enforcing, and defending patent rights, with a particular focus on patent litigation, patent counseling, and contested patent proceedings before the U.S. Patent and Trademark Office (USPTO). She has been lead trial counsel in patent cases in the U.S. district courts, appeals before the Federal Circuit, Section 337 investigations at the U.S. International Trade Commission, and contested proceedings at the USPTO.
CloseDr. 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
Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.
CloseMichelle E. O'Brien
Partner
The Marbury Law Group
Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in... | Read More
Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of her technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products, including new chemical entities and formulations and novel solid forms, including polymorphs, cocrystals, and amorphous forms of compounds.
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