Whither the Reverse Doctrine of Equivalents
by Dennis Crouch
The Reverse Doctrine of Equivalents can shrink the scope of a patent to exclude functions actually covered by the claims. The Supreme Court in Graver Tank discussed that the doctrine arrives up to protect against abuse of the patent procedure:
[W]in this article a unit is so considerably changed in principle from a patented post that it performs the very same or a comparable functionality in a substantially distinct way, but nonetheless falls inside the literal words of the assert, the doctrine of equivalents may perhaps be utilised to prohibit the assert and defeat the patentee’s motion for infringement.
Graver Tank & Mfg. Co., Inc. v. Linde Air Prods. Co., Inc., 339 U.S. 605 (1950). The Graver Tank decision traced its provenance again to Westinghouse v. Boyden Electric power Brake Co., 170 U.S. 537 (1898) (“correspond[ence] with the letter of the [claim] does not settle conclusively the question of infringement.”). Both Westinghouse and Graver Tank describe this scope-shrinking as an facet of the doctrine of equivalents that can either improve or reduce literal scope. The phrase “reverse doctrine of equivalents” was seemingly 1st made use of by Decide Markey in a 1977 conclusion rejecting application of any reverse doctrine of equivalents in the validity context. Ex parte Hogan, 559 F.2d 595, 607 (Cust. & Pat. App. 1977). Hogan sites the phrase in just quotation marks–“reverse doctrine of equivalents”–but did not suggest regardless of whether all those estimates were being for emphasis or citing some prior utilization. The use was later solidified by the Federal Circuit in SRI Worldwide v. Matsushita Electrical Corp. of The usa, 775 F.2d 1107 (Fed. Cir. 1985). In Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372 (Fed. Cir. 2008), the courtroom endeavored to cabin-in the doctrine’s use by detailing that (1) “The reverse doctrine of equivalents is not often applied” and (2) the Federal Circuit “has in no way affirmed a finding of non-infringement underneath the reverse doctrine of equivalents.” Id.
The Reverse DOE has not seen significantly action of late. In Steuben Foods, Inc. v. Shibuya Hoppmann Corp., CV 19-2181-CFC-CJB, 2021 WL 4775996, at *1 (D. Del. Oct. 13, 2021), the courtroom denied summary judgment. The defendant seemingly admitted that its products was protected by the literal scope of the patent, but argued no infringement dependent upon the reverse doctrine of equivalents. In specific, the defense argued that its sterile location was substantially various than that disclosed by the invention. The jury was requested no matter if the accused device “is no additional than insubstantially diverse from the 2nd sterile area of the creation.” The jury marked the box labelled Of course-INFRINGED.
Not likely that the defendant will select this difficulty to appeal provided the record of the Federal Circuit and reverse DOE, but we’ll see. In a different recent Delaware selection, the court mentioned that Teva had originally elevated the reverse doctrine of equivalents, but afterwards dropped that defense. Vifor Fresenius Med. Treatment Renal Pharma Ltd. v. Teva Pharm. United states of america, Inc., CV 18-390 (MN), 2022 WL 3562555, at *6 (D. Del. Aug. 18, 2022). In, Kewazinga Corp. v. Microsoft Corp., 558 F. Supp. 3d 90, 112 (S.D.N.Y. 2021), the patentee sought summary judgment rejection of Microsoft’s reverse DOE protection. The district courtroom refused, keeping that any final decision concerning reverse DOE will have to abide by a acquiring about literal infringement. Id.
In several strategies, the Reverse Doctrine of Equivalents has the probable of executing some of the very same do the job as our doctrines of comprehensive-scope enablement & created description. A key big difference nevertheless is that the final result is a narrowed patent claim fairly than an invalid patent claim.
