In a couple of 2019 decisions, the Federal Circuit appeared to expand-out the “merely tangential” exception to prosecution history estoppel. Those cases have now both been petitioned to the Supreme Court for review — with the two cases becoming three petitions:

Hospira, Inc. v. Eli Lilly and Company, SCT Docket No. 19-1058. [Petition]

Whether a patentee may recapture subject matter via the doctrine of equivalents under the “tangential relation” exception by arguing that it surrendered more than it needed to during prosecution to avoid a prior art rejection, even if a claim could reasonably have been drafted that would literally have encompassed the alleged equivalent.

Dr. Reddy’s Laboratories, Ltd., v. Eli Lilly and Company, SCT Docket No. 91-1061 [Petition]

[W]hether, under Festo’s “tangential” exception to prosecution history estoppel, patent owners may recapture subject matter they could have claimed in prosecution but did not, by arguing that they surrendered more than they needed to during prosecution to address a rejection by the Patent Office.

CJ CheilJedang Corp. v. International Trade Commission, SCT Docket No. 19-1062. [Petition]

Whether, to avoid prosecution history estoppel under Festo, “the rationale underlying the amendment” must be the rationale the patentee provided to the public at the time of the amendment.

The doctrine of equivalents [DoE] is fairly complicated by itself because of the element-by-element function-way-result test and the limit on vitiation of claim elements. DOE is further complicated by the prosecution history estoppel [PHE] that creates a presumption against equivalents associated with narrowing claim amendments made during prosecution for a “substantial reason related to patentability.” In Festo, the Supreme Court explained that courts should presume estoppel based upon a narrowing amendment. However, the patentee may avoid the estoppel by providing evidence that the “rationale underlying the [narrowing] amendment … bear[s] no more than a tangential relation to the equivalent in

question.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740 (2002) (TAN). In prior posts, I called this expansion [DoE]; retraction [PHE]; re-expansion [TAN] process DoePHETAN. The complication comes from the courts who – as I previously explained “wanted to empower patentees with the doctrine of equivalents but then became afraid that they had gone too far” and perhaps given too much power to a jury.

The petitions here are powerful and their parallelism may create interest from the court. Unfortunately, neither call for simplifying this process but rather ask for more detailing — What is the meaning of “tangential?”; At point must the “rationale” be declared?; What is the scope of “recapture” available for DoE?

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Recent DOE Decisions from the District Courts: Steyr Arms, Inc. v. SIG Sauer, Inc., 17-CV-483-JD, 2020 WL 905534, at *4 (D.N.H. Feb. 25, 2020) (court rejects DoE claim because the accused “pin” was not sufficiently structurally similar to the claimed “bridge”).

Speedfit LLC v. Chapco Inc., 215CV1323PKCRLM, 2020 WL 758824, at *2 (E.D.N.Y. Feb. 14, 2020) (patentee waived DoE claim after failing to include it in its pretrial infringement contentions).

KAIST IP US LLC v. Samsung Elecs. Co., Ltd., 2:16-CV-01314-JRG, 2020 WL 731360, at *7 (E.D. Tex. Feb. 13, 2020) (confirming jury verdict — finding that “the jury had substantial evidence from which to find infringement under the doctrine of equivalents.”).

Epistar Corp. v. Lowes Companies, Inc., LACV1703219JAKKSX, 2020 WL 771096, at *9 (C.D. Cal. Feb. 11, 2020) (unequivocal disclaimer during prosecution will bar DoE).

ViiV Healthcare Co. v. Gilead Scis., Inc., CV 18-224-CFC, 2020 WL 567398, at *3 (D. Del. Feb. 5, 2020) (refusing to apply the disclosure-dedication rule)