News & Analysis as of

Doctrine of Equivalents Pharmaceutical Patents Appeals

McDermott Will & Emery

The Devil Is in the Details: Bioequivalence, In Vitro Testing Not Enough to Establish Infringement

McDermott Will & Emery on

Addressing for the first time the issue of whether bioequivalence data and in vitro testing can show that an abbreviated new drug application (ANDA) product with different immediate and delayed release portions infringed on a...more

McDonnell Boehnen Hulbert & Berghoff LLP

Galderma Laboratories, L.P. v. Amneal Pharmaceuticals LLC (Fed. Cir. 2020)

The Federal Circuit continued its recent willingness to affirm findings of infringement under the doctrine of equivalents (see, e.g., "Eli Lilly & Co. v. Hospira, Inc. (Fed. Cir. 2019)"), in Galderma Laboratories, L.P. v....more

McDonnell Boehnen Hulbert & Berghoff LLP

DOE Infringers Petition for Certiorari over PHE "Tangential Relationship" Test

Recently, the Federal Circuit has taken up issues relating to infringement under the doctrine of equivalents (DOE) and a related doctrine, prosecution history estoppel (PHE), that limits the scope of equivalents that can be...more

McDermott Will & Emery

Doctrine of Equivalents: Prosecution History Estoppel Can Be Both Amendment and Argument-Based

McDermott Will & Emery on

In a case involving at-home glucose monitoring systems, the US Court of Appeals for the Federal Circuit found the patent owner was estopped from asserting a doctrine of equivalents theory of infringement based on subject...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2019

PATENT CASE OF THE WEEK - Elbit Systems Land and C4I Ltd. v. Hughes Network Systems, LLC, Appeal No. 2018-1910 (Fed. Cir. June 25, 2019) - In this appeal from the United States District Court for the Eastern District of...more

Knobbe Martens

The Doctrine of Equivalents May Apply Despite Restriction Requirements and Narrow Claiming

Knobbe Martens on

UCB, INC. v. WATSON LABORATORIES INC. Before Taranto, Schall, and Chen. Appeal from the United States District Court for the District of Delaware. Summary: Application of the doctrine of equivalents may not be barred...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - February 2019

PATENT CASE OF THE WEEK - Duncan Parking Techs., Inc. v. IPS Group, Inc. and IPS Group, Inc. v. Duncan Solutions, Inc. et al., Appeal Nos. 2018-1205, -1360 (Fed. Cir. January 31, 2019) - The Court this week provided a...more

Ladas & Parry LLP

UK Supreme Court Decision In Actavis V. Eli Lilly – Doctrine Of Equivalents Recognized

Ladas & Parry LLP on

In its decision of July 12, 2017 in Actavis v. Eli Lilly, the Supreme Court of the United Kingdom for the first time formally adopted the concept of a doctrine of equivalents when considering what constituted an infringement...more

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

Recent Trends on the U.S. Doctrine of Equivalents

U.S. courts have long recognized that a product or process which does not literally infringe a patent can nevertheless infringe under the "doctrine of equivalents" if it is equivalent to the claimed invention. The percentage...more

Foley & Lardner LLP

Court Questions Applicability of Function Way Result Test In Chemical Cases

Foley & Lardner LLP on

In Mylan Institutional LLC v. Aurobindo Pharma Ltd., the Federal Circuit reviewed a preliminary injunction based in part on a finding of likelihood of success in establishing infringement under the doctrine of equivalents....more

Foley & Lardner LLP

Recent Guidance from the Federal Circuit on the Doctrine of Equivalents in Cases Involving Chemical Compositions

Foley & Lardner LLP on

In Mylan Institutional LLC, et al. v. Aurobindo Pharma Ltd., et al., Case No. 2017-1645, the Federal Circuit affirmed the district court’s grant of a preliminary injunction as to one of three patents-in-suit, while finding...more

Knobbe Martens

Federal Circuit Review | January 2017

Knobbe Martens on

PTAB’s Final Written Decision in IPR Must Explain Its Basis for a Motivation to Combine References - In In Re: Nuvasive, Inc., Appeal No. 2015-1670, the Federal Circuit vacated the PTAB’s obviousness finding in an IPR,...more

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