No reverse doctrine of equivalents in Roche v. Apotex

In a CAFC case in which the Honorable Faith S. Hochberg, District Judge, United States District Court
for the District of New Jersey, was sitting by designation, a decision of ND Cal was affirmed and Apotex lost.

As to standards of analysis:

The determination of infringement is a two-step process, wherein the court first
construes the claims and then determines whether every claim limitation, or its
equivalent, is found in the accused device. In re Gabapentin Patent Litig., 503 F.3d
1254, 1259 (Fed. Cir. 2007). While claim construction is a question of law that we
review de novo, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998)
(en banc), non-infringement under the reverse doctrine of equivalents is a question of
fact. SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1124 (Fed. Cir. 1985).

The CAFC noted:

The reverse doctrine of equivalents is rarely applied, and this court has never affirmed a
finding of non-infringement under the reverse doctrine of equivalents. Tate Access
Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1368 (Fed. Cir. 2002).

The CAFC spoke of the "principle" of the patent in question:

We agree with the district court that Apotex has failed to set forth a prima facie
case of non-infringement under the reverse doctrine of equivalents because it does not
properly establish the principle of the ’493 patent. The “principle” or “equitable scope of
the claims” of the patented invention is determined in light of the specification,
prosecution history, and the prior art. Scripps Clinic, 927 F.2d at 1581. Here, however,
Apotex relies exclusively on the declaration of its expert, Dr. Mitra.

The CAFC distinguished "claim limitation" from "intended result":

Further, we previously held that
there was no error in the district court’s construction of claim 1 of the ’493 patent to
regard “stabilizing amount” not as a claim limitation, but as an intended result, given that
the claim expressly sets forth a concentration range for O.

The CAFC then stated:

The prosecution history is not in evidence in this case and was not relied on by Apotex
before the district court in establishing the principle of the invention. Nonetheless, there
is no indication that the examiner, in allowing the claims, attributed the unexpected
results of O40 to its superiority in forming micelles. The intrinsic evidence is therefore
inconsistent with Apotex’s proffered “principle” of the ’493 invention.

The case also discusses claim preclusion:

Accused products “are ‘essentially the same’ where the differences between them are merely ‘colorable’ or
‘unrelated to the limitations in the claim of the patent.’” Acumed, 2008 WL 2020534, at
*3 (citations omitted); Foster, 947 F.2d at 480. The party asserting claim preclusion has
the burden of showing that the accused products are essentially the same. Acumed,
2008 WL 2020534, at *3; Foster, 947 F.2d at 480.

***See also

Apotex Challenge to ACULAR LS Patent Barred by Res Judicata at Patently-O. IPBiz notes that while --Although Graver Tank stands as good law, the CAFC has “never affirmed a finding of non-infringement under the reverse doctrine of equivalents.” -- LBE has argued in IPT that the CAFC has used the concept of the reverse doctrine of equivalents without so naming it.