Posts Tagged: "doctrine of equivalents"

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday affirmed a district court’s grant of summary judgment of noninfringement in favor of Tricam Industries, Inc. in a patent infringement suit brought by Little Giant Ladder Systems, LLC. The decision held that Tricam’s ladders did not infringe Little Giant’s patent, either literally or under the doctrine of equivalents, and that the district court correctly construed the key claim term “cavity.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday issued a mixed, split, precedential ruling in Wonderland Switzerland AG v. Evenflo Company, Inc., reversing a permanent injunction and granting a new trial for willful patent infringement in a case between two child car seat manufacturers. The court found a district court judge abused his discretion both in granting an injunction based on speculative harm and in excluding a key email chain that asked how to “ingeniously” avoid a patent. The opinion was authored by Chief Judge Moore and Judge Reyna concurred-in-part and dissented-in-part.

The U.S. Supreme Court on Monday declined to grant a number of IP petitions, including one in which a divided panel of the U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in October 2024 that NexStep, Inc. failed to prove Comcast Cable Communications had infringed its patents under the doctrine of equivalents.

Patent owner NexSteps filed a petition for writ of certiorari with the U.S. Supreme Court that was docketed this week challenging lower rulings overturning a jury verdict over a lack of evidentiary basis for the jury’s infringement finding under the doctrine of equivalents (DOE). NexSteps, a developer of technologies that improve consumer interactions with electronic devices, challenges these rulings as creating rigid requirements to proving DOE infringement claims that undermines the flexible, case-specific inquiry called for by Supreme Court precedent on the doctrine.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming a district court’s finding that NexStep, Inc. failed to prove that Comcast Cable Communications infringed its patents. Judge Chen authored the majority opinion and Judge Reyna authored a partial dissent, disagreeing with the majority’s holding that one of the patents was not infringed under the doctrine of equivalents.

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential decision today upheld two district court judgments for Apple, Inc. that found Wisconsin Alumni Research Foundation (WARF) had 1) abandoned its doctrine-of-equivalents theory (“WARF I”) and 2) that a second suit claiming infringement of the same patent via next-generation Apple products was barred by the previous decision (WARF II).

On December 4, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in the ongoing patent battle between computer chip patent owner VLSI and major chipmaker Intel Corp. While the court affirmed the infringement findings underpinning the bulk of VLSI’s $2.175 billion jury verdict awarded back in March 2021, the panel ordered a retrial of damages award for one of two asserted patents and dismissed the doctrine of equivalents infringement finding for the other patent. The Federal Circuit also found that the district court abused its discretion by denying Intel’s motion for leave to add a license defense to its case.

On March 9, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and reversed the U.S. District Court for the Central District of California’s decision to grant summary judgment in favor of defendant Munchkin, Inc. (Munchkin) for noninfringement of U.S. Patent Nos. 8,899,420 (the ‘420 patent) and 6,974,029 (the ‘029 patent), held by plaintiffs Edgewell Personal Care Brands, LLC and International Refills Company, Ltd. (collectively Edgewell). Edgewell manufactures and sells the Diaper Genie, a diaper pail system with two main components: 1) a pail for collection of soiled diapers; and 2) a replaceable cassette within the pail that forms a wrapper around the soiled diapers. The ‘420 and ‘029 patents relate to improvements in the cassette design. Edgewell filed suit against Munchkin for infringement of these patents for selling refill cassettes marketed as being compatible with Edgewell’s Diaper Genie. Edgewell appealed the district court’s decision to grant summary judgment to Munchkin for noninfringement of both patents.

The doctrine of equivalents allows a patentee to raise a claim of infringement even when each and every element of the patented invention is not identically present in the allegedly infringing product/process. The doctrine is aimed at preventing an infringer from gaining the benefit of a patented invention by making insubstantial changes. Disclosure-dedication doctrine is a bar to the doctrine of equivalents. Under the disclosure-dedication doctrine, when a patentee discloses subject matter but does not claim it, the patentee dedicates the unclaimed subject matter to the public and cannot recapture it through the doctrine of equivalents. The public can then practice the unclaimed subject matter without fear of infringement.Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC, No. 2019-1924 (Fed. Cir. May 8, 2020) (“Eagle Pharm”) is the most recent Federal Circuit case involving this doctrine. In Eagle Pharm, the Federal Circuit considered whether a patentee can avoid dedication on the ground that the disclosure occurred in an embodiment distinct from the claimed invention. The court answered the question in the negative.

Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential public opinion affirming the District Court for the District of Delaware’s grant of summary judgment of noninfringement for Donghee America, Inc. and Donghee Alabama, LLC (Donghee). The CAFC held that the summary judgment ruling was consistent with the claim construction and supported by the facts on the record. A sealed opinion was delivered on November 21.

The plaintiff, Plastic Omnium Advanced Innovation and Research (Plastic Ominum), owns two patents for blow molding plastic fuel tanks, U.S. Patent Nos. 6,814,921 (‘921) and 6,866,812 (‘812). The patents outline a system to manufacture the tanks in a manner that allows accessory components to be installed without damaging or removing part of the tank’s wall. The ‘812 patent describes a method in which a hollow plastic tube, called a parison, is extruded, formed, and then cut by a blade at the exit of the extruder. The dispute arises out of the ‘921 patent’s description of an “extruded parison” limitation.

On November 22, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the District of Nevada granting summary judgment of noninfringement under the doctrine of equivalents. Pharma Tech Solutions, Inc. (Pharma Tech) sued LifeScan, Inc. (LifeScan) for infringement of U.S. Patent Nos. 6,153,069 (the ‘069 patent) and 6,413,411 (the ‘411 patent). The patents are directed toward home use, blood glucose monitoring systems for individuals with diabetes. Previous monitoring systems determined blood glucose concentration from the Cottrell current drawn and measured from a patient’s oxidized blood sample. The specification of the ‘069 and ‘411 patents claims to improve on these systems by “eliminating several of the critical operator dependent variables that adversely affect the accuracy and reliability” of the previous systems. The invention performs multiple Cottrell current measurements (opposed to just the one) and converts these into analyte concentrations. It then compares the results for better accuracy, notifying the user if the results fall outside of an acceptable range of each other to indicate a system error. Ultimately, the CAFC found that because LifeScan’s meter does not convert diffusion limiting current readings to analyte concentration measurements and then compare the measurements to detect errors, and because Pharma Tech is barred in its infringement argument by prosecution history estoppel, LifeScan did not infringe Pharma Tech’s ‘069 or ‘411 patents.

Whenever a company finds itself in the cross-hairs of a cease-and-desist letter or patent infringement lawsuit, a license may not be a viable option. That is often the case when the patent holder is a competitor intent on enforcing a patent against its rivals… The lesson to be taken away is that the efficacy of a design-around is likely to depend on how significant the change is in terms of the claimed invention’s novelty and/or functionality. One should also consider the possibility of incorporating changes that make use of long-standing prior art techniques, methods or elements, especially any that were cited by the patent examiner, in response to which prior art the patentee either amended its claims or distinguished its invention from such prior art during the course of prosecution. 

Power Integrations, Inc. owns U.S. Patent Nos. 6,212,079 (“the ‘079 patent”) and 6,538,908 (“the ‘908 patent”). Power Integrations sued Fairchild Semiconductor Corporation and Fairchild (Taiwan) Corporation (collectively “Fairchild”) for infringement. A jury found Fairchild literally infringed the ‘079 patent and infringed the ‘908 patent under the doctrine of equivalents. The jury subsequently awarded damages of $140 million, applying the entire market value rule in calculating damages. Fairchild appealed. The Federal Circuit affirmed the judgments of infringement, but concluded that the entire market value rule was inappropriately used in this case to calculate damages.

Nalco asserted that the only difference between its patented method and the Chem-Mod Process was the location of the injection. The district court dismissed Nalco’s complaints for failure to state a claim, including its Fourth Amended Complaint (“4AC”) at issue in the present appeal… The Federal Circuit, in an opinion authored by Judge O’Malley, rejected Defendants’ argument that Nalco’s direct infringement claims were implausible and instead agreed with Nalco that the resolution of its claims depended on the construction of the terms “flue gas” and “injecting.” Resolution of this claim construction dispute was inappropriate at the Rule 12(b)(6) stage of the proceedings.