News & Analysis as of

Doctrine of Equivalents Patent Prosecution

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Knobbe Martens

Prosecution History Disclaimer and Estoppel Lead To Noninfringement

Knobbe Martens on

TRAXCELL TECHNOLOGIES, LLC V. NOKIA SOLUTIONS AND NETWORKS Before Prost, O’Malley, and Stoll. Appeal from the Eastern District of Texas. Summary: An applicant’s arguments distinguishing prior art during patent...more

American Conference Institute (ACI)

[Virtual Event] 18th Advanced Summit on Life Sciences Patents - August 5th - 6th, 9:00 am EDT

Perfect Your Patent Prosecution Strategies and Master the Patent Application Process in the U.S and Around the World. ACI’s 18th Global Summit on Life Sciences Patents virtual conference this August will provide practical...more

Knobbe Martens

Examiner Amendments Can Trigger Prosecution History Estoppel

Knobbe Martens on

Amgen, Inc. v. Amneal Pharmas. LLC et al - Before Newman, Lourie, and Taranto.  Appeal from the U.S. District Court for the District of Delaware. Summary: An examiner amendment may give rise to prosecution history...more

Knobbe Martens

The Tangential Exception to Prosecution History Estoppel

Knobbe Martens on

ELI LILLY AND COMPANY v. HOSPIRA, INC. Before Lourie, Moore, and Taranto. Appeal from the District Court for the Southern District of Indiana. Summary: A narrowing claim amendment does not necessarily surrender all...more

Mintz - Intellectual Property Viewpoints

Effect of Prosecution History Estoppel on Infringement Claim under Doctrine of Equivalents

The Federal Circuit in Amgen Inc. v. Coherus Biosciences Inc. affirmed a district court decision that once certain subject matter is clearly and unmistakably surrendered during prosecution, the patentee is barred from...more

Mintz - Intellectual Property Viewpoints

Effect of A Restriction Requirement on Prosecution History Estoppel

The decision whether to issue a Restriction Requirement during patent prosecution lies with the patent examiner, not the patent applicant. A Restriction Requirement can nevertheless trigger prosecution history estoppel that...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Doctrine of Equivalents and Prosecution History Estoppel Around the World

Please see full Doctrine of Equivalents Chart for Countries around the World. ...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution Newsletter - September 2017

Worldwide Doctrine of Equivalents and Prosecution History Estoppel - The doctrine of equivalents (DOE) arises in the context of a patent infringement action where the accused product or process does not literally infringe...more

Knobbe Martens

Latest Developments in European Patent Law: How to Apply Them in Both the United States and Europe

Knobbe Martens on

Agenda: • UK Supreme Court Decision on Infringement – “Equivalents” – Use of the prosecution history • Doctrine of Equivalents in the United States • Plausibility before the EPO and UK courts – Inventive step of...more

Patterson Belknap Webb & Tyler LLP

Judge Abrams Dismisses Case Based on Arguments Made to the PTO During Prosecution

On August 9, 2016, District Judge Ronnie Abrams (S.D.N.Y.) granted defendant Richloom Fabrics Group, Inc.’s motion to dismiss plaintiff Anchor Sales & Marketing, Inc.’s allegation of patent infringement based on the doctrine...more

Snell & Wilmer

Interpreting Utility Patent Claims

Snell & Wilmer on

Utility patents constitute about 90% of the patents in the United States. Design patents and plant patents, which are not discussed here, comprise the other 10%. Utility patents protect the functional aspects of a machine,...more

McDermott Will & Emery

A Substantially Pure Isomer Is Obvious in View of Both a Completely Pure Isomer and an Impure Mixture (Spectrum Pharmas. V. Sandoz...

Addressing an unusual twist on an obviousness case, the U.S. Court of Appeals for the Federal Circuit held a substantially pure isomer obvious in view prior art disclosing both a completely pure isomer and an impure mixture....more

Womble Bond Dickinson

Opportunity for Equivalents in Claim Amendments

Womble Bond Dickinson on

It is commonly held that the doctrine of equivalents is lost when claim amendments are made during patent prosecution. That is, any claim amendment that is made during patent prosecution surrenders or gives up elements which...more

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