Doctrine of Equivalents: Tips for Plaintiffs, Defendants, and Patent Prosecutors
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This webinar takes as its starting point the May opinion of the Federal Circuit in Amgen v. Sandoz, which stated that “the doctrine of equivalents [DOE] 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.” This led some experts to wonder if this decision heralded a new emphasis by the Court — or was merely a restatement of existing case law.
In addition to providing insights for litigators, this program will also prove useful to patent prosecutors by highlighting prosecution pitfalls that can lessen the chance of the patentee proving infringement by the DOE in the future.
Our panel of experienced litigators will analyze decisions including Duncan Parking Technologies, Inc. v. IPS Group, Inc., Enzo Biochem Inc. v. Applera Corp., Mylan Institutional LLC v. Aurobindo Pharma Ltd., and others. They will discuss:
- How limitations on DOE play a role, and difficulties plaintiffs face in making a case for the DOE
- Trying to find vitality in the DOE, such as by successfully applying the “function/result/way” or the “insubstantial difference” test and
- The danger to successful plaintiffs from the “ensnarement” doctrine, which has seen increased application and can play out as a trial within a trial
Brian Coggio, Fish & Richardson
Mark Feldstein, Finnegan
Sailesh Patel, Schiff Hardin
Fish & Richardson
Brian Coggio is of counsel at Fish & Richardson. He has extensive experience as a senior trial attorney and counselor and has litigated disputes across a wide range of technologies with a particular focus in the chemical, pharmaceutical, medical device, and biotechnology areas. Brian has also represented clients in numerous cases under the Hatch-Waxman Act, and is the author of “Ensnarement: A Second Bite at the Non-Infringement Apple.”
Mark Feldstein is a partner at Finnegan. He is a patent and trade secret litigator in U.S. district courts and also serves as lead counsel for clients in post-grant trial proceedings at the USPTO. He also maintains an active patent prosecution practice on behalf of domestic and foreign clients. His practice encompasses issues involving pharmaceuticals, biochemistry, polymers, small molecule chemistry, nanotechnology, optics, and medical and analytic devices. He holds a Ph.D. in chemistry.
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.