Added DoE Flexibility Sticks: Federal Circuit Denies Rehearing in Ajinomoto

In Ajinomoto Co., Inc. v. Intl. Trade Commn., 932 F.3d 1342 (Fed. Cir. 2019), the Federal Circuit affirmed an equivalents determination by the USITC. When I wrote about the case back in August, I coined the catchy acronym: DoEPHETAN.

DoEPHETAN: the Doctrine of Equivalents limited by Prosecution History Estoppel unless the narrowing amendment is “merely tangential” to the equivalent in question.

Yes – this is awful.  Its not me; Lets blame the courts who wanted to empower patentees with the doctrine of equivalents but then became afraid that they had gone too far.

In Ajinomoto, the Federal Circuit found that the patentee had found its way through the DoEPHETAN maze.  As originally filed, the patent claims covered the accused genetically engineered E. coli.  During prosecution the claims were narrowed to avoid a particular prior art references.  However, the accused bacteria is also different from the amended-around prior art and so the Federal Circuit found the amendment merely tangential to the equivalent and therefore did not bar the patentee from relying upon the Doctrine of Equivalents. In the original decision, the majority (Judges MOORE and TARANTO) sided with the patentee while Judge DYK dissented in part.

In recent filings, the adjudged infringer (CheilJedang) asked for rehearing — arguing that the majority “applied an expansive approach” the “merely tangential” exception rather than the proscribed “very narrow” application.

The new approach, moreover, accepts post hoc “prosecution-remorse” arguments and threatens to vitiate PHE by expanding the exception well beyond its historical application.

Despite a well written brief, the Federal Circuit has now denied the en banc petition without opinion — leaving this discussion for another day.

I do think that the petition is correct — the majority opinion here appears to be a signal of a slight expansion of DoE. Time will tell whether patentees take advantage.

[Read the Petition Here]

= = = =

I though this list (below) was interesting from the brief. In the litigation, 15 Ropes & Gray attorneys have represented the accused infringer (CJ). Of those, 9 are no longer at the firm.

The petition was filed by Steven Pepe & Matthew J. Rizzolo at Ropes & Gray along with  James Haley from Haley Guiliano. The list below are attorneys not on this brief, but who have represented CJ in the case that was filed in 2016.

 

41 thoughts on “Added DoE Flexibility Sticks: Federal Circuit Denies Rehearing in Ajinomoto

  1. 4

    The Federal Circuit’s approach evidences they have no experience with actual prosecution.

    Let’s assume a genus, which is supported by “sufficient species over the breadth” covers a range which, for expressive purposes, I’ll nominate as 1-100.

    Applicant’s original claim is therefore a claim of 1-100. Assume there exists prior art teaching 10, 34 and 67.

    According to the federal circuit, any claim limiting the genus to a smaller sub-genus or even a particular embodiment is only partially effective. For example, if the claim is amended to limit to embodiments 40-60, the doctrine of equivalents actually covers 1-9, 11-33, 35-66 and 68-100, because the narrowing amendment is only “tangential” with respect to every embodiment except the cited 10, 34, and 67.

    There’s two problems with this – first, because a claim covering, e.g., 61 is never presented to the examiner, we have no clue whether 61 is in fact obvious. It may be that the reference which anticipates 67 also renders obvious 61-70. Consequently, when DoE is used to expand the 40-60 scope to cover 61, there never has been any determination by anyone that 61 is non-obvious, because 61 was never presented to the examiner except in the context that included an anticipatory 67.

    Second, there is no descriptive basis for the scope as envisioned by DoE. There was a scope of 1-100 that was supported by particular embodiments, but no necessary conception of a sub-genus equal to the DoE. (i.e. Applicant never posited grouping 40-61, for example). If the opposite was true, then surely all practicioners malpractice, as they could have simply claimed “[the genus] except for [the exact embodiments cited as prior art]” and avoided the DoE question altogether. But a negative limitation requires affirmative disclosure just as much as a positive limitation does. If the specification doesn’t include doing X “without” doing Y, then a claim that is limited to X except Y hasn’t been disclosed and hasn’t been invented. By definition the judge-made expansion cannot waive a requirement set by statute.

    The only time a DoE should apply is when later-developed elements are known to be exact substitutes for elements claimed. Any other use of DoE is an attempt to relax 103 and 112 statutory requirements that cannot be relaxed. Take the instant case – either the specification disclosed the infringing embodiment, in which case its non-inclusion in the claims should result in the public properly relying upon the applicant dedicating it to the public, or the specification didn’t disclose the infringing embodiment, in which case it couldn’t have drawn a claim to it anyway.

    1. 4.1

      The “don’t know” extends both ways Random.

      Just as Paul Morgan was errant in postulating that prep and pros need not be aware of the effects of DoE, here you are errant in not understanding DoE as being affected during prep and pros.

      Your “example” is constructed with errors baked in, and the decision does not unfold as you suggest with the ranges (as you supply them) having obviousness overlaps. In short, what you postulate as an error is itself error in your setup. Your effort to set up a “tangential” results in NOT setting up the item AS a tangential (your ‘A Ha’ instead shows that it was not a tangential to begin with).

      Further, your “set-up” begs the question with the assertion of no written support, but clearly, a “clever scriviners” CAN provide such written support with but a few lines in the specification providing for alternative embodiments of combinations. This is really easy in some of the Arts. In fact, the whole “Genus/Species” way of thinking simply falls apart in being applied to various different arts (there was a TechDirt article for the computing arts awhile back that showed the ease of Species covering Genus, as I recall).

      Further still, your wanting “exact” is exactly the wrong application. Here, you simply get the concept wrong in its entirety.

      Overall, you are simply in too much of a hurry to deny patent protection, and your post here shows more of your tendency for confirmation bias than anything else.

      1. 4.1.1

        Okay, Bildo, you’re doing that diseased psy-ch0 @-h0le thing again where you repeat your silly l-ie-s about someone’s beliefs (Paul’s) after they have specifically and uncategorically denounces them and there was never any reason to believe that the person held those beliefs in the first place.

        This is where Dennis should simply ban you (should have been done a long time ago) but I guess he recognizes it’s a health issue so he gives you a break.

        Just stop it. Nobody expects an apology. Just stop it.

        1. 4.1.1.1

          Lol – your own “diseased” state has you being the very last one to ever offer the type of advice that you offer here, Malcolm.

          1. 4.1.1.1.1

            The difference is that my own views (regarding patents, “the law”, and US politics) are crystal clear and I don’t try to obscure them (why would I?). Moreover, I’m always happy (indeed, eager!) to defend them and explain the reasoned basis for those views. And I don’t mind being referred to as liberal or progressive. Nor do I care that some patent attorney is going to lose his or her job because the system finally woke up and banned patenting old instructable computers based on the instructions they are following. Likewise I don’t care if a bunch of attorneys are out of work because you can’t protect correlating one fact with another in a prior art context (well, I *do* care but only in the sense that it would be a reason for celebrating! Hooray! Someone will have to find a better job and do something productive for a change).

            What I *do* mind (pretty sure this is a problem for everyone) is when someone attributes views to me that are the polar opposite of views that I’ve expressed in very plain terms (whether in in the first instance or when I’ve made a clarification in response to misunderstanding). And that’s a very bad habit of yours. It’s transparently a bad habit of yours, it’s been going on for years, and it shows that all of your mealy-mouthed attempts to mount the high horse of “civility” are just that: mealy-mouthed hypocritical b.s.

            1. 4.1.1.1.1.1

              Your views — as “crystal clear” as they are TO you, ARE made to obscure in the manner that you try to exchange those views for controlling law.

              THAT is where your attempts to obscure are ever more deleterious.

              That you think I have some “bad” habit (when such has NOT been shown), well, that is a YOU problem.

              1. 4.1.1.1.1.1.1

                you think I have some “bad” habit

                LOL

                More than one. And it’s not my opinion.

                The antics of yours that I noted for the billionth time (and Paul has also noted, more than once) are the primary cause of the alleged “incivility” that so many of your cohorts whine about here. It’s literally impossible to have a conversation with someone who (1) continually misrepresents the other person’s position, regardless of clear clarifications; and (2) who refuses to acknowledge facts that aren’t rebuttable (e.g., the fact that the lack of any substantial prohibitions on claiming paradigms in the US system demands that the prior art be considered during a subject eligibility analysis, lest the subject matter eligibility requirement be turned into a dead letter).

                It’s not question or “opinion” or “feeling” of whether or not you and your maximalist cohorts engage in these p-@-thetic rhetorical games. Nor is it the least bit confusing why you resort to those tactics.

                Once upon a time there was a minor mystery as to why Dennis puts up with it. I don’t think there’s much of a mystery any more.

                1. Stultifying – YOU talking about incivility.

                  Do you even “get” that, or like so many other things, is this yet another of YOUR “Trumpisms”…?

                2. …and tell me again exactly who has had the most posts expunged for being inappropriate?

                  …and tell me again exactly who has had more posts expunged for being inappropriate – than all others combined?

                  You really do need a “Trump” icon for your avatar here.

            2. 4.1.1.1.1.2

              ” Moreover, I’m always happy (indeed, eager!) to defend them and explain the reasoned basis for those views.”

              Unless I am the one asking about them and your views are unsupportable and we both know I’m pointing that out to you lol.

              ” And I don’t mind being referred to as liberal or progressive”

              What about commie, comrade?

              “why would I?”

              On account of your raycism and trans phobialisms, along with ha tre d of the rich and/or successful and also “white society” etc, to name just a few reasons.

      2. 4.1.2

        Keeping the application of the doctrine of non-literal infringement to a minimum is not a very compelling example of wanting to “deny patent protection” to anybody.

        If patent drafters perform their duties, there’s plenty of protection available.

        1. 4.1.2.1

          It’s more than just “keep it to a minimum,” Malcolm.

          And it aligns fully with Random’s tendencies as I have noted.

          You should pay better attention.

      3. 4.1.3

        Anon, your misrepresentation here of what I actually said, for the second time, after two clear rebuttals, is professionally inexcusable behavior from someone representing themselves as an attorney. Please confine that behavior to your constant exchanges of insults with MM.

        1. 4.1.3.1

          Paul,

          Get your undies out of the bunch.

          Your “rebuttal” certainly was not clear (as my reply to that rebuttal pointed out), and Malcolm’s “rebuttal” was merely Malcolm piping in (and to which the due “respect” was given).

          If you really want to talk about sanctionable actions, let’s discuss your “taking charge” of patent prosecution after you have decided to drop your registration number.

          1. 4.1.3.1.1

            Following up with professional libel again, eh?

            1. 4.1.3.1.1.1

              Truth is always a defense to your assertion of professional libel, Paul.

              1. 4.1.3.1.1.1.1

                I will look forward to your truth evidence for the very specific false allegation you have made.

                1. What exactly has been a “false allegation that I have made” Paul?

                  Point to the initial instance of any such “allegation,” and there you will find your own words to which I am merely noting.

                  As I note here: ALL of my posts as to which YOU would say are “false allegations” are truth in that they ONLY mirror your very own words.

                  Here’s a hint: you will not get out of that hole of yours by digging more furiously.

                2. What exactly has been a “false allegation that I have made” Paul?

                  Seems pretty clear to me that you accused Paul of illegally controlling the prosecution of a patent application after he dropped his registration number.

                  You should feel free to walk that accusation back if you meant to say something else. Because that’s the accusation you made.

                3. Seems pretty clear that the initial post of Paul’s was directly to that very same effect, Malcolm.

                  As I noted to you: pay better attention.

      4. 4.1.4

        Your “example” is constructed with errors baked in, and the decision does not unfold as you suggest with the ranges (as you supply them) having obviousness overlaps. In short, what you postulate as an error is itself error in your setup. Your effort to set up a “tangential” results in NOT setting up the item AS a tangential (your ‘A Ha’ instead shows that it was not a tangential to begin with).

        But that is, of course, the point. You can’t know what is tangential or not because the original fact-finder was never presented with the question. Just as the federal circuit doesn’t consider arguments that weren’t placed before the trial court, it doesn’t make a lot of sense for the federal circuit to come to what is essentially a fact determination (that a prior art is or is not directly relevant to a non-obvious scope) when the initial fact finder never passed on the issue.

        A scope is presented for rejection or allowance. Then another scope is presented for rejection or allowance. You can’t conclude from those two data points whether any third scope is subject to a rejection or not, unless the third scope is more limited (in which case, we’re not talking about DoE). The only way to determine if the third scope is allowable is to (here’s a shocking concept) *examine* the third scope.

        Further, your “set-up” begs the question with the assertion of no written support, but clearly, a “clever scriviners” CAN provide such written support with but a few lines in the specification providing for alternative embodiments of combinations. This is really easy in some of the Arts.

        Again, this is a catch-22. It’s not a question of whether written support “can” be had, it’s a question of whether written support *is* made. If it *isn’t* then you shouldn’t be allowing the scope because it violates 112a. If it *is* then you shouldn’t be using the scope against the public, because the public is entitled to rely upon the concept of dedication to the public.

        It’s real simple – The point of the claim is to define the boundaries of the right. DoE should only exist for people who expressly try and skirt that right using later-developed technology. It shouldn’t exist for people who read the spec and do the subject matter that is explicitly not claimed. If you post a speed limit of 60 mph, you don’t go arresting people travelling 58 mph because 58 is essentially equivalent to 60. People are entitled to rely upon the bright-line of 60 and not some nebulous concept that the drafter wanted to achieve some sort of vague end.

        Overall, you are simply in too much of a hurry to deny patent protection, and your post here shows more of your tendency for confirmation bias than anything else.

        It’s because of DoE that we have a whole branch of obviousness that deals with “non-critical limitations” which ultimately denies patents, so it’s just the opposite. Everyone is better served if the claims cover every limitation and just that. Instead you have the PTAB stating that some limitations are not given patentable weight precisely because they know that the federal circuit will ignore the same limitations in a DoE argument. It’d be better if limitations simply always counted on both sides.

    2. 4.2

      Uncanny. It is as if Random Guy is following the progress of the DoE case law in the UK since it was introduced by the UK Supreme Court in 2017. Should the UK courts follow Germany, where DoE is as old as it is in the USA, in developing a “Formstein Defence” (by now well-established in Germany) when the accused embodiment is old or obvious? Doe in UK: consternation. DoE in Germany: been there, done that, nothing to see here folks, move along.

      So, DoE in Europe: work in progress:

      link to opusip.co.uk

      1. 4.2.1

        I’m curious MaxDrei, which side of the UK/German ‘debate’ do you think that Random aligns with?

        And perhaps more importantly (and aside from any foreign Sovereign comparative view), and in your humble opinion, does Random align with the US Sovereign choice?

        1. 4.2.1.1

          Random Guy’s opinion is that: “DoE should only exist for people who expressly try and skirt that right using later-developed technology.”

          Personally, I think it ought not to be available to patentees even for that. I think it ought not to exist at all. I think the former UK case law, which commanded that a claim should be given a “purposive construction” was the proper course, implementing the mandatory requirement under the EPC to construe the claim in such a way as to deliver not only a fair scope of protection to the inventor but also reasonable legal certainty for everybody else.

          In its recent Activis Decision, the UK Supreme Court took a wrong turn when introducing into UK law a DoE. The court lacked an accurate briefing on why the asserted claim, in prosecution at the EPO, was limited to the sodium salt. In short, those who drafted the patent application made an elementary and inexplicable error. Should they be held to that error? The court must decide.

          If it had grasped that aspect, it might not have introduced the DoE. Now that it has though, of course every patentee claimant pleads it. A nightmare of additional cost and complexity, not only for every accused infringer but also every patent attorney asked to write an FTO opinion.

          So, as you see, I disagree with everybody. But I take solace in the film 12 Angry Men

          1. 4.2.1.1.1

            Thanks MaxDrei.

            While I do not agree with your feelings (and DoE is certainly not based on the notion of any single case and your view of error being given largess in that case), you are of course always able to have your own feelings.

            I just don’t see you as the protagonist in “12 Angry Men.”

            I see you more like the guy phoning his wife to complain about all the wrong way drivers (as the man is driving the wrong way down a one way street).

            1. 4.2.1.1.1.1

              Yes, of course.

              BTW the joke is sicker here in Germany, the land of the Autobahn with no speed limit at all. Wife phones to warn him to exit the Autobahn immediately, because the radio channels are putting out warnings of a “Geisterfahrer” on that particular Autobahn. “One?” he replies. “There are loads of them!”

  2. 3

    link to ropesgray.com

    Interesting. R&G Seoul Office used to have those lawyers for IP practice, but apparently no longer.

  3. 2

    Stability and continuity in law firms has been declining for a long time even among partners, and of course the majority of young associates in large firms typically move on to something else.

    1. 2.1

      Golly, I wonder what could be the reason for that? It’s almost as if billing 2000+ hours a year is a super sh-ttty lifestyle, even if it’s the only way you can afford that new Ford Valdez with the Dolby sound system and built in exercise suite that your neighbor with the trust fund just purchased.

      1. 2.1.1

        Yeah I saw a thing on some economics article talking about how the elites (like big time lawyers) working themselves to death actually impacts the rest of the economy because they’re not just leisure suiting around like back in the day day. And them not leisuring like that is in some ways hurting everyone else (round about ways) but it also benefits the econ (obviously their work is valuable).

        1. 2.1.1.1

          6,

          You do realize that you are only feeding the non-patent law rant of Malcolm’s (being that $ = ‘ebil,’ as you say), eh?

          1. 2.1.1.1.1

            Well it was the article that is feeding it. But I saw the article and it doesn’t seem all that implausible. If you have a certain number of elite people (the tail of the 130+ IQ crowd), who themselves have a certain number of people who go get employed in places that need that IQ (or thereabouts), and if they work themselves silly instead of just a normal 40 hrs then you will a. get way more productivity from them than you would from the people that would be trained as their “replacements”/nearest substitutions (sub 130 IQ) over the long haul and b. less replacements/nearest substitution people will be trained (thus less earnings for those less elite people)/hired and trained on the job etc. Further, all this goes down the capability hierarchy (IQ and other capability hierarchies for different jobs) and job markets to an extent. This is nearly certainly 100% true in a general sense and almost assured to be the case. Whether or not that feeds a “narrative” or not, it is the way it is. The money itself is not ebil here, it is the action of the elites working themselves half to death that is “ebil” if anything. And often, hilariously enough, they’re supposedly not even pursuing the $$$, but pursuing status among their elite peers, in their elite peer’s eyes, like for recognition and competing for leadership roles etc, but also netting $$$ as a side effect, which quite often they themselves aren’t even that interested in as they don’t spend nearly what they’re making and never will. Similarly to myself actually.

            1. 2.1.1.1.1.1

              Similarly to myself actually.

              In other words, YOU are the oh so typical “Ebil White Man”…?

              1. 2.1.1.1.1.1.1

                In terms set forth of that article? Well first I don’t ID as white, but presuming I did then I would be if I got paid extra for doing a quality job, but instead that goes into “VOT” irl. But yes, I would be if I cut the “muh quality” bs and just did the rock bottom min and took overtime. Tho I would be at the lower end of the “elite” tail, which the article ascribes most of the issue being with due to various factors that I can’t remember. That is to say the article doesn’t really “blame” or fault someone in the “middle of the pack” for doing the job of 2 people at the “bottom of the pack” even though both of them are not elite. Probably because they feel like those people really could use a bump in pay etc. which the elites don’t actually “need” in general.

                1. … but does remind me of an Alaskan dog sled aphorism:

                  If you are not the lead dog, the view is always the same.

  4. 1

    Can you provide a link to the brief itself….?

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