News & Analysis as of

Patents Claim Construction Doctrine of Equivalents

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Sidesteps Ruling on the Reverse Doctrine of Equivalents Theory in Steuben Foods Inc. v. Shibuya...

In this edition of The Precedent, we outline the decision in Steuben Foods Inc. v. Shibuya Hoppmann Corp. This case addresses whether the reverse doctrine of equivalents (RDOE) is a viable defense to patent infringement....more

Fitch, Even, Tabin & Flannery LLP

Is the End Near for the Reverse Doctrine of Equivalents?

On January 24, in Steuben Foods, Inc v. Shibuya Hoppman Corporation, the Federal Circuit found that Steuben had made a compelling argument that the common law Reverse Doctrine of Equivalents (RDOE) did not survive the 1952...more

McDermott Will & Emery

Bottling the Truth: Equivalence and Reverse Equivalence

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The US Court of Appeals for the Federal Circuit ruled that the “substantially the same way” comparison in connection with a doctrine of equivalents (DOE) analysis involving a means-plus-function claim limitation should focus...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Steuben Foods, Inc. v. Shibuya Hoppman Corp.

Steuben Foods, Inc. v. Shibuya Hoppman Corp., Appeal No. 2023-1790 (Fed. Cir. Jan. 24, 2025) In its only precedential patent decision this week, the Federal Circuit addressed an “anachronistic exception, long mentioned but...more

McDermott Will & Emery

Equivalence Requires Element-by-Element Proof With Linking Argument

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The US Court of Appeals for the Federal Circuit affirmed a district court determination that a patent owner had not provided the “particularized testimony and linking argument” required to demonstrate equivalence under the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Wisconsin Alumni Research Foundation v. Apple Inc. (Fed. Cir. 2024)

In a joint appeal of two adverse decisions from the District Court, the Federal Circuit on procedural grounds rejected an appeal from the Wisconsin Alumni Research Foundation ("WARF") in Wisconsin Alumni Research Foundation...more

WilmerHale

Federal Circuit Patent Watch: An Expert Need Not Have Acquired the Requisite Skill Level Prior to the Time of the Invention

WilmerHale on

Precedential and Key Federal Circuit Opinions - WISCONSIN ALUMNI RESEARCH FOUNDATION v. APPLE INC. [OPINION] (2022-1884, 8/28/2024) (Prost, Taranto, and Chen) - Prost, J. The Court affirmed two final judgments of the...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Kyocera Senco Indus. Tools v. Int’l Trade Comm’n,...

The patent holder, Kyocera, filed a complaint in the International Trade Commission against Koki in Certain Gas Spring Nailer Prods. & Components Thereof, Inv. No. 337-TA-1082, 2020 WL 2093834 (Apr. 28, 2020). Kyocera’s...more

Sunstein LLP

It’s Not Complicated: Make Sure the Technical Expert You Retain to Testify About Infringement Has Credentials That Match the Level...

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In infringement suits, the patentee must show that each element of a patent claim is infringed either literally by an accused product or infringed under the doctrine of equivalents. Literal infringement means the accused...more

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

PTAB Strategies and Insights: January 2022 - Federal Circuit Holds that Your Technical Expert Must be a POSA

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held in a precedential opinion that expert witnesses must at least have ordinary skill in the art. Because Kyocera’s expert did not...more

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

PTAB Strategies and Insights: January 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

McDonnell Boehnen Hulbert & Berghoff LLP

Jennewein Biotechnologie GmbH v. International Trade Commission (Fed. Cir. 2021)

The International Trade Commission can more readily provide injunctive relief against an adjudged infringer than a district court, under appropriate conditions (i.e., with regard to an infringing product or a product made by...more

Knobbe Martens

Federal Circuit Review - March 2021

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Corresponding Structure Snafu: Lack of Algorithm Renders Claims Indefinite - In Rain Computing, Inc. v. Samsung Electronics Co. Ltd., Appeal No. 20-1646, the Federal Circuit held that the structure for performing a...more

McDermott Will & Emery

Doctrine of Equivalents Analysis Should Not Be Simple Binary Comparison

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The US Court of Appeals for the Federal Circuit remanded a district court’s claim construction and grant of a defendant’s summary judgment motion of non-infringement under the doctrine of equivalents, finding that a...more

McDermott Will & Emery

“Tangential Relation” Exception Saves Patentee’s Reliance on DOE

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Addressing an infringement determination under the doctrine of equivalents (DOE), the US Court of Appeals for the Federal Circuit found that the “tangential relation” exception to the doctrine of prosecution history estoppel...more

McDonnell Boehnen Hulbert & Berghoff LLP

Federal Circuit Issues Order Clarifying Status of Doctrine of Equivalents

The late Gilda Radner's character, Emily Latella, would consistently misapprehend something ("violins on television," "saving Soviet jewelry"), give a guest editorial on Weekend Update, and when corrected would say "Never...more

Knobbe Martens

Federal Circuit Review - June 2019

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One-year Clock for Filing IPR Petition Applies to Litigants and Parties that Become Privies of the Litigant Prior to Institution. In Power Integrations, Inc v. Semiconductor Components, Appeal No. 2018-1607, the Federal...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2019 #2

PATENT CASE OF THE WEEK - Amgen Inc. v. Sandoz Inc., Appeal No. 2018-1551 (Fed. Cir. May 8, 2019) - In an appeal from a district court’s summary judgment of non-infringement, the Federal Circuit affirmed claim...more

Schwabe, Williamson & Wyatt PC

Latest Federal Circuit Court Cases - July 2018 #2

PATENT CASE OF THE WEEK - Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., Appeal Nos. 2016-2691, 2017-1875 (Fed. Cir. July 3, 2018) - The Court affirmed a jury verdict of patent infringement and vacated a...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - Ottah v. Fiat Chrysler, Appeal No. 2017-1842 (March 7, 2018) - In Ottah v. Fiat Chrysler, the Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement as to...more

Harris Beach Murtha PLLC

Patent Infringement Claims Simply Require Alleging Facts Stating a Plausible Claim

The United States Court of Appeals for the Federal Circuit (“Federal Circuit”) addressed the pleading standards for direct infringement, doctrine of equivalents infringement, indirect infringement and willful infringement in...more

Schwabe, Williamson & Wyatt PC

2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

Schwabe, Williamson & Wyatt PC

2017 Supreme Court and Precedential Patent Cases From the Federal Circuit, With Some Significant Cases from 2016

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

WilmerHale

Federal Circuit Patent Updates - September 2017

WilmerHale on

Jang v. Boston Scientific Corporation (No. 2016-1575, 9/29/17) (Prost, O'Malley, Chen) - Chen, J. Affirming denial of motion for JMOL, vacatur of verdict of infringement under the doctrine of equivalents, and judgment of...more

Knobbe Martens

Doctrine of Equivalents under Enzo Biochem Inc. v. Applera Corp.

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Before Prost, O’Malley, and Wallach. Appeal from the District of Connecticut (nonprecedential). On August 2, 2017, the Federal Circuit affirmed a decision by the U.S. District Court for the District of Connecticut granting...more

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