Doctrine of Equivalents: Impact of Recent Latest Federal Circuit Decisions on Prosecution and Litigation (RECORDING)
In early September, in a brief order, the Federal Circuit announced it was deleting a line it wrote this spring that the doctrine of equivalents (DOE) applies only in cases deemed "exceptional." In a way, the Court was only catching up with two opinions released in August, Eli Lilly & Co. v. Hospira, Inc., and Ajinomoto Co., Inc. v. ITC, that have given hope to patent owners that the DOE is not DOA in a courtroom.
At the center of the issue is one of the exceptions to the general rule that an amendment to a patent application that narrowed a claim creates a bar to equivalents for that claim limitation. Patent owners may rebut prosecution history estoppel by demonstrating that the rationale for an amendment bore no more than a tangential relation to the equivalent in question The importance of this exception cannot be understated as, when applied, prosecution history estoppel can still have a fearsome bite, as demonstrated in another summer decision of the Federal Circuit, Amgen Inc. v. Coherus Biosciences Inc.
This webinar will help practitioners understand the nuances of the Federal Circuit’s recent DOE jurisprudence, as well as give practical tips both on how to build a case for infringement under the DOE and to defend against it. Our panel includes top litigators, including the two that won these cases in August. It also will offer tips for prosecution at the USPTO, particularly regarding how to narrow claims in the least damaging way.
John Livingstone, Finnegan
Sailesh Patel, Schiff Hardin
Adam Perlman, Williams & Connoly
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
John Livingstone is managing partner of the Atlanta office of Finnegan. He is a first-chair trial lawyer focusing on complex pharmaceutical, chemical, and biotechnology patent litigation before U.S. district courts, the ITC, and the PTAB. John was resident in Finnegan’s Tokyo office for four years and frequently helps global clients with U.S. patent issues. He successfully represented Ajinomoto at the ITC and the Federal Circuit.
Sailesh Patel is a partner at Schiff Hardin. He is co-leader of its IP Group, also co-chairs the firm’s Pharmaceuticals and Biologics Patent Litigation Team, and serves on the firm’s executive committee. He frequently represents generic companies in Hatch-Waxman litigation. He has also represented clients in cases involving wind and solar technology, food processing, automotive components, and software, among other industries. He has argued several cases at the Federal Circuit that involved the doctrine of equivalents.
Williams & Connolly LLP
Adam Perlman is co-chair of the Patent Litigation Practice at Williams and Connolly. He focuses on representing innovator pharmaceutical manufacturers in Hatch-Waxman litigation. He was lead trial counsel for Eli Lilly and Company at three bench trials over the validity and infringement of a Lilly patent protecting its anti-cancer drug Alimta, which has annual U.S. sales of over $1 billion.