Novartis loses in Novartis v. Abbott

Although not accepting the claim construction of the district court, the Federal Circuit, in a 2-1 vote, overturned a jury verdict and granted JMOL to Abbott. The court analyzed equivalents:

Here, the “lipophilic component” element requires at least a pharmaceutically acceptable non-surfactant lipophilic excipient capable of dissolving cyclosporin. Under Novartis’ theory of infringement by equivalence, Span 80, admittedly a surfactant according to the ’840 patent, see col. 9, ll. 47-50, col. 11, ll. 58-59, is an equivalent to the non-surfactant excipient required by the claimed “lipophilic component.” Including a chemical composition made entirely of surfactants within the scope of “lipophilic component” would be inconsistent with the claim construction of that term. We must reject Novartis’ theory of infringement by equivalence.

In an interesting "application" of SciMed to Graver Tank, the majority seemingly completely overlooked Festo (wherein one could have a nonmagnetizable sleeve (aluminum) as an equivalent to a claim element requiring a magnetizable sleeve). Pertinent text from Novartis:

See SciMed Life Sys., Inc. v. Advanced Cardiovascular, 242 F.3d 1337, 1347 (Fed. Cir. 2001) (“[I]f a patent states that the claimed device must be ‘non-metallic,’ the patentee cannot assert the patent against a metallic device on the ground that a metallic device is equivalent to a non-metallic device.”);

(...)
[In Graver Tank] The Court found that the difference between the metal silicates was insubstantial, and they therefore could be considered equivalents. Id. Notably, there was no dispute that the metal silicate element was present in the accused product. Rather, the dispute focused on a limitation of the metal silicate element.

(...)
In Graver Tank, for instance, although the accused product used manganese metal instead of an alkaline earth metal, that substitution did not transform the disputed element, i.e., metal silicate, into something that was not a metal silicate.

Overlooked in Novartis is the fact that certain metal silicates, including manganese silicate, had been claimed in claims that were invalid, and that manganese silicate was already known in the welding art (thus, "foreseeable" under Festo). The issue wasn't about "metal silicates" but rather whether manganese silicate was the equivalent of an alkaline earth silicate.