Saturday, April 15, 2017

Was Medicines v. Mylan, in effect, a reverse doctrine of equivalents case?

In a post related to UC/Berkeley's appeal to the CAFC of an unfavorable PTAB decision (no interference in fact in CRISPR dispute with the Broad), the Patent Docs blog had comments concerning a hypothetical future invocation of a reverse doctrine of equivalents defense to a charge of infringement of hypothetical claims of a hypothetical future UC Berkeley patent:


Kevin-Do you think the UC patent claims, if granted, will be susceptible to a reverse doctrine of equivalents argument if and when they are applied to eukaryotic cells? Does lack of a reasonable expectation that this process would work in eukaryotic cells warrant the application of this doctrine to limit the effective scope of UC's claims?

Kevin Noonan:

ScottE: I was just discussing the reverse doctrine the other day, and here is a quote from Roche v. Apotex (Fed. Cir. 2008):

"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."

I think it more likely that an accused infringer, armed with a license from the Broad, would argue that Berkley's patents would be invalid under Sec. 112 if construed to encompass mammalian cells, because it would have been undue experimentation to apply the technology due to the unpredictability of the art, lack of examples in UC's specification, and undue breadth of the claims.

But r-DOE is a creative argument so it may be in an accused infringer's arsenal.

Thanks for the comment.

IPBiz has discussed the reverse doctrine of equivalents (e.g.,
SRI v Matsushita: reverse doctrine of equivalents

One wonders if the net result of Medicines Company v. Mylan was simply an application of the reverse doctrine of equivalents, by another name?

For example, from footnote 10:

While we also disagree with the district court’s
construction of “efficient mixing” as “not using inefficient
mixing conditions such as described in Example 4,” the
district court correctly concluded that Mylan did not
infringe the ’343 patent under this construction because
Mylan’s compounding process was “more inefficient” than
Example 4. Medicines, 2013 WL 6633085, at *9.

Mylan got the same (functional) result in a different ("more inefficient") way,
and did not infringe. Is this not what Justice Jackson was describing in Graver Tank:

[W]here a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee's action for infringement.

See April 6 IPBiz post

CAFC in Medicines v. Mylan. Claim term limited to the sole portion of the specification that adequately discloses term

See also

UC/Berkeley to appeal adverse PTAB decision in CRISPR case


Post a Comment

<< Home