“Exceptional Case” Rule does Not apply to Doctrine of Equivalents

by Dennis Crouch

Amgen v. Sandoz (Fed. Cir. 2019) (on rehearing) [RehearingOrder][AmgenBrief][SandozBrief]

When I wrote about this case back in May 2019, I headlined the post with the court’s statement that “The Doctrine of Equivalents Applies ONLY in Exceptional Cases.” I noted that the court’s statement was “a major step without precedential backing.” It is possible that the court was simply intending to state that DOE is rare.  The decision was so problematic though because “exceptional case” is a term of art used elsewhere in patent law and suggests creation of an additional test prior to allowing a patentee to rely upon DOE.  Citing my post, Amgen petitioned for rehearing on the issue.

The court has now responded by altering its opinion to remove the most offensive portion of its decision.  The new statement:

The doctrine of equivalents applies only in exceptional cases and is not “simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims.” London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991); see
also Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347, 1362 (Fed. Cir. 2019) (“[T]he doctrine of equivalents cannot be used to effectively read out a claim limitation . . . because the public has a right to rely on the language of patent claims.” (citing Primos, Inc. v. Hunter’s Specialties, Inc., 451 F.3d 841, 850 (Fed. Cir. 2006))).

In its decision, the court maintained the ultimate holding that DOE did not apply here — because of substantial differences between the claimed and accused processes.

The decision as it reads now recognizes that DOE winners will be rare — and that rarity stems from the nature of the DOE test. In particular, DOE only applies when the accused device or method is different from what is claimed but may not be “substantially different” on an element-by-element basis.

= = = =

Appellate Litigation Strategy. Deanne Maynard (MoFo) represented Sandoz in the case did a masterful job in her en banc brief suggesting that the court take the action that it did — simply strike out the offending words.  The opposition brief explains:

[T]he Court neither adopted nor applied an “exceptional case” standard. Its doctrine of equivalents ruling broke no new ground. Applying settled law to the undisputed facts of this case, it correctly held that Amgen’s equivalents argument fails because Sandoz’s accused “purification process works in a substantially different way” from the asserted claim. For that reason, Amgen can only speculate about what an “exceptional case” standard might require or how one might be applied in future cases. This Court said nothing about that because it adopted no such standard. Without the six words Amgen highlights, the reasoning and outcome of the Court’s decision would remain the same; the only change would be in this observation: “The doctrine of equivalents applies only in exceptional cases and is not ‘simply the second prong of every infringement charge, regularly available to
extend protection beyond the scope of the claims.”

Maynard did something here that is really hard for attorneys in battle — admit (albeit implicitly) that the court went too far with its language.  In doing so, she opened the pathway to easy victory.

15 thoughts on ““Exceptional Case” Rule does Not apply to Doctrine of Equivalents

  1. 4

    “Deanne Maynard (MoFo) represented Sandoz in the case did a masterful job”

    She was the lead in the USSCT case (Sandoz v. Amgen) winning 9-0 for Sandoz on a BPCIA related matter.

    Wonder if the good folks at Amgen are getting tired of seeing her on the other side…

    1. 4.1

      I agree 100%. But who is the joker that came up with “MoFo” for the law firm?

  2. 3

    Great job by Dennis!

  3. 2

    Looking forward to everyone’s favorite friend, the shifting historical pseudonym’d one’s comments…

    1. 2.1

      … looks like Shifty has lost his game and is stuck in the past desperately trying to find some recognition for his irrelevance…

      Now why would he be avoiding a chance to chime in on a doctrine of equivalence topic?

      1. 2.1.1

        Wikipedia has not been corrected so your “education” is still lacking. BTW, its Doctrine of -Equivalents-. Not doctrine of “equivalence.”

        1. 2.1.1.1

          Wikipedia has not been corrected

          Great – as since I had immediately corrected your penchant for self-flagellation (my position on the Doctrine has never depended on Wikipedia), the better path for you would have been more along the lines of:

          link to patentdocs.org

          Tell me though, since YOU are “guarding” the veracity of Wikipedia, how is that veracity for the Nobel prize discussion point?

          1. 2.1.1.1.1

            Doctrine of -Equivalents-. Not doctrine of “equivalence.”

            1. 2.1.1.1.1.1

              Meh, toe may toe, toe mah toe

            2. 2.1.1.1.1.2

              … and how about Nobel?

      2. 2.1.2

        All the newbies (and wanna-be newbies) think Equivalents and equivalence is the same thing. Nothing to be ashamed of.

        1. 2.1.2.1

          Meh, small spelling errors on a web blog…

          Shall I attempt to find for you the quote from Prof. Crouch when someone tried to play that game with him?

          1. 2.1.2.1.1

            Sure, go with that, however irrelevant. Produce the quote. [everybody knows it’s not a “spelling error”]

            1. 2.1.2.1.1.1

              It’s a few years old, but I will look into it.

  4. 1

    What’s really impressive is that Maynard made her suggestion on the very **first page** of her response, in the introduction. So a Judge could read the introduction, think “that’s easy to fix,” and not even have to read the rest of the brief to rule in Maynard’s favor.

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