BarbriSFCourseDetails
  1. keyboard_arrow_leftBack

Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Thursday, January 18, 2024

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE webinar will guide patent counsel on the doctrine of equivalents both generally and in the wake of the Federal Circuit's opinion in VLSI Technology L.L.C. v. Intel Corp., No. 2022-1906 (Fed. Cir. Dec. 4, 2023). The panel will discuss the doctrine of equivalents and its exceptions as well as how patentees can leverage the doctrine of equivalents despite the court's tightening reins on the doctrine. It will also offer best practices for prosecuting claims to minimize limitations on or narrowing of the scope of equivalents. The panel will also discuss strategies that defendants can employ to counter claims of infringement under the doctrine of equivalents.

Faculty

Mark J. Feldstein
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Dr. Feldstein focuses on U.S. district court litigation, primarily concerning the enforcement of U.S. patent rights and trade secret issues, and post-grant trial proceedings at the USPTO, including inter partes review (IPR) and post grant review (PGR). He maintains an active patent prosecution practice, preparing and prosecuting U.S. patent applications on behalf of domestic and foreign clients. He also provides opinions and strategic guidance to clients on infringement, validity, enforceability, and clearance matters. His practice encompasses a range of technologies, including pharmaceuticals, biochemistry, polymers, small molecule chemistry, optics, and medical and analytic devices.

expand_circle_down Expand to View Full Bio expand_circle_up Collapse Bio
Samhitha Muralidhar Medatia
Senior Intellectual Property Counsel
FIS

-

expand_circle_down Expand to View Full Bio expand_circle_up Collapse Bio
Benjamin R. Schlesinger
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Schlesinger, managing partner of the firm’s Atlanta office, is a registered patent attorney, focusing on patent litigation and client counseling in the electrical and computer technology fields. He practices before U.S. district courts, state courts, and the U.S. International Trade Commission (ITC).

expand_circle_down Expand to View Full Bio expand_circle_up Collapse Bio
Daniel C. Tucker
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Tucker focuses his practice on the interplay among district court patent litigation, PTAB post-grant proceedings, and Federal Circuit appeals. He has represented clients across a broad range of technologies, including wireless/cellular communications, semiconductor technology, consumer electronics, and internet services. 

expand_circle_down Expand to View Full Bio expand_circle_up Collapse Bio

Description

In its VLSI decision, the Federal Circuit reversed VLSI's $2.2 billion damages award that was based on infringement of two patents. The reversal was based in part on the panel's determination that VLSI had failed to provide sufficient evidence to support its argument that Intel infringed one of the patents under the doctrine of equivalents. In so holding, the court noted that "[t]he doctrine of equivalents provides a limited exception to the principle that claim meaning defines the scope of the exclusivity right in our patent system."

The court stated, "[t]he limits reflect a familiar balance among the importance of preserving the public's ability to rely on claims' meaning to define patent scope, the ability of patentees to protect their inventions through their claim drafting, and (yet) the occasional need to recognize some non-literal scope of protection to avoid undermining the exclusivity rights authorized by Congress to incentivize certain innovations."

The court outlined the requirements that maintain the exceptional character of the doctrine's use. It then determined that VLSI's proof of equivalence was insufficient under those principles. The court's decision continues to narrow the path by which plaintiffs can prove infringement under the doctrine of equivalents. And it emphasizes the need for sufficient, and specific, evidence to support such a theory.

Listen as our authoritative panel of patent attorneys examines the Federal Circuit's decision in VLSI and what it means for patentees using the doctrine of equivalents. The panel will discuss the doctrine of equivalents and its exceptions as well as how patentees can leverage the doctrine and avoid its pitfalls despite the court's tightening reins on the doctrine. The panel will offer best practices for prosecuting claims to minimize doctrine of equivalents arguments.

Outline

  1. VLSI and implications of the decision
  2. Doctrine of equivalents and exceptions
  3. Issues that could reduce the likelihood of proving infringement by the doctrine of equivalents
  4. Best practices for drafting and prosecuting claims to minimize estoppel-preventing doctrine of equivalents arguments

Benefits

The panel will review these and other important issues:

  • Implications of the Federal Circuit's VLSI decision
  • Patentee-side strategies for navigating the pitfalls of the doctrine of equivalents
  • Strategies for defending against claims of infringement under the doctrine of equivalents