Patent Infringement After Duncan Parking Technologies

Doctrine of Equivalents, Too-Narrow Claim Construction, and Prosecution Impact on Litigation Outcomes

Recording of a 90-minute premium CLE webinar with Q&A


Conducted on Tuesday, April 30, 2019

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Program Materials

This CLE webinar will guide patent counsel regarding the impact of recent court decisions and the guidance they provide on direct, induced and contributory infringement, claim construction, literal infringement, doctrine of equivalents infringement, including hypothetical claims, and even the reverse doctrine of equivalents. The panel will offer their experiences and practical approaches for addressing claim construction and infringement issues.

Description

Patent practitioners strive to secure valid and enforceable U.S. patent claims that will be construed to have the scope intended by the inventor, whether in litigation or before the Patent Trial and Appeal Board (PTAB). To this end, it is sometimes desirable to have claims, even independent claims, of different scopes. In practice, claim construction--based on the specification, the language of the claims themselves, and the prosecution history (Phillips)--is often determinative of infringement.

Drafting patent claims and specifications to secure claims that are infringed is not an easy task. Care is to be taken throughout prosecution, from the initial drafting to the winning arguments to the examiner, to obtain claims of varying scope, as desired. Vision is to be applied as to what competitors are likely to do and how to prove infringement.

Sometimes, however, claim construction can frustrate a patent owner by leading to a conclusion that the claims are narrower than desired. Our review will identify pitfalls to be avoided. For example, in Duncan Parking Techn. v. IPS Group (Fed. Cir. Jan. 31, 2019), the Federal Circuit limited the claims to the patent's preferred embodiment and declined to apply the doctrine of equivalents, concluding the allegedly infringing device did not work in the same way as the claimed invention. Duncan Parking also reinforces the timeless wisdom of Wahpeton Canvas Co. v. Frontier (Fed. Cir. 1989); if independent claims aren’t infringed, very rarely are claims dependent thereon infringed either.

Generally, if the claims, as construed, do not cover the inventor's preferred embodiments such claim constructions are not favored. Indeed, in Duncan Parking, the Federal Circuit found the district court had improperly read the preferred embodiment out of a different independent claim and deprived the patent owner of the "full scope of its claim language." But, we will also discuss cases where the claims do not cover preferred embodiments.

Prosecutors should ensure that, if desired, the broadest independent claim covers more than the preferred embodiment--that it is supported by other disclosures from the specification. As noted above, Wahpeton may work to severely limit claims if the most comprehensive independent claim covers only a single embodiment. The patent practitioner should strive that each independent claim clearly recites only that which is required to practice the invention. Unnecessary limitations may inadvertently narrow patent rights, not only for independent claims but for all claims dependent thereon.

Listen as our authoritative panel of experienced patent attorneys examines the law of infringement, both literal and doctrine of equivalents, as well as claim construction and prosecution estoppel/prosecution history estoppel. The panel will discuss the lessons learned from Duncan Parking and the impact that patent prosecutors can have on later claim construction.

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Outline

  1. Court treatment
    1. Claim construction of varying scope as applied now under the same standard (Philips) in both the district courts and PTAB AIA post-grant proceedings
    2. Direct infringement, particularly how is it proven and how to avoid reciting unnecessary elements in a claim
    3. Doctrine of equivalents infringement, including Graver Tank, Duncan Parking, Wilson Sporting Goods, narrow claiming
    4. Prosecution (disavowal)/prosecution history estoppel, including Festo and its progeny, as well as Duncan Parking
  2. Best and worst practices, and things in between

Benefits

The panel will review these and other vital questions:

  • What guidance can be drawn from recent court decisions for claim construction? What pitfalls to avoid do the cases identify?
  • What best practices can practitioners use for claim construction of varying scope as applied now under the same standard in the district courts and PTAB post-grant proceedings?

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

Burgy, Adriana
Adriana L. Burgy

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the...  |  Read More

Feldstein, Mark
Mark J. Feldstein, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Feldstein focuses on U.S. district court litigation, primarily concerning the enforcement of U.S. patent rights and...  |  Read More

Hines, Doris
Doris Johnson Hines

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Hines focuses her practice on patent litigation and has led teams in U.S. district courts, the U.S. International...  |  Read More

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