by Dennis Crouch
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 andis 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 andis 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.