Doctrine of Equivalents in Patent Prosecution: DOE Application, Festo Exceptions, Recent Case Law Developments
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Tuesday, December 13, 2022
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide patent counsel on the doctrine of equivalents (DOE). The panel will discuss recent Federal Circuit DOE decisions applying the Festo exceptions, particularly the "tangential relation" exception. As the court held in Eli Lilly & Co. v. Hospira Inc. (Fed. Cir. 2019), "whether an amendment was merely tangential to an equivalent must be decided in the context of the invention disclosed in the patent and the prosecution history." Other recent Federal Circuit decisions on judicial exceptions to DOE will also be analyzed.
Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of her technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products, including new chemical entities and formulations and novel solid forms, including polymorphs, cocrystals, and amorphous forms of compounds.
Ms. McCurdy has more than 25 years of experience creating, enforcing, and defending patent rights, with a particular focus on patent litigation, patent counseling, and contested patent proceedings before the U.S. Patent and Trademark Office (USPTO). She has been lead trial counsel in patent cases in the U.S. district courts, appeals before the Federal Circuit, Section 337 investigations at the U.S. International Trade Commission, and contested proceedings at the USPTO.
The DOE is a judicial doctrine that permits a court to find infringement when an accused product or process falls outside the literal language of the claims but is equivalent to and differs only insubstantially from the claimed invention. The concept of something infringing when the accused product "performs substantially the same function in substantially the same way to obtain the same result" can be found as far back as Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42 (1929).
Prosecution history can operate as a limit on DOE. "The doctrine of prosecution history estoppel limits the doctrine of equivalents when the applicant makes a narrowing amendment for purposes of patentability, or clearly and unmistakably surrenders subject matter by arguments made to the examiner." Salazar v. Procter & Gamble Co. (Fed. Cir. 2005). The rationale for this principle is that the patentee should not be allowed to gain through the DOE claim scope that it gave up during prosecution to obtain allowance of the claims. The panel will discuss the example of argument-based prosecution history estoppel found in Amgen Inc. v. Coherus Biosciences Inc. (Fed. Cir. 2019).
According to the U.S. Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. (2002) (Festo VIII), a patentee can rebut the presumption that prosecution history estoppel applies if it shows that it comes within one of three exceptions. These exceptions are: the equivalent was unforeseeable at the time of the application, the rationale underlying the amendment bears no more than a tangential relation to the equivalent in question, or another reason suggesting that the patentee could not be expected to describe the insubstantial substitute.
Listen as our authoritative panel examines the lessons from recent Federal Circuit decisions for practitioners arguing for or against the Festo exceptions and, more broadly, for or against applying the DOE. The panel will also discuss hypothetical-claim analysis and ensnarement, disclosure-dedication, and all-limitations rule.
- Early DOE decisions; policy considerations
- Estoppel
- Argument-based
- Amendment-based
- Festo
- Exceptions
- The equivalent was unforeseeable at the time of the application
- Tangential relation
- An unreasonable expectation to describe the insubstantial substitute
- Exceptions
- Hypothetical claims/ensnarement
- Disclosure-dedication
- All-limitations rule
The panel will review these and other important issues:
- The reappearance of the Festo exceptions
- The return of ensnarement
- Best practices for drafting and prosecuting claims to minimize estoppel-preventing DOE arguments
Related Courses
Patent Design Arounds for Both Utility and Design Patents: Minimizing Risk of Infringement, Reducing Likelihood of Competitor Design Arounds, and Maximizing the Chances of Covering Competitors’ Attempted Design Arounds When Preparing a Patent Application
Wednesday, May 28, 2025
1:00 p.m. ET./10:00 a.m. PT
Patent Infringement: Structuring Opinions of Counsel
Friday, May 23, 2025
1:00 p.m. ET./10:00 a.m. PT
Means-Plus-Function Patent Claims Following Xencor: Preamble, Written Description, and More
Thursday, May 15, 2025
1:00 p.m. ET./10:00 a.m. PT