Saturday, September 30, 2017

Dr. Jang loses ensnarement argument at CAFC

The complicated issue in the case pertained to "doctrine of equivalents":

Dr. Jang also challenges the district court’s vacatur of the jury’s finding that the Express stent infringed the asserted claims under the doctrine of equivalents, as well as the entry of judgment of non-infringement in favor of BSC, on the ground that the district court incorrectly held that he failed to provide an acceptable hypothetical claim for an ensnarement analysis, and thereby failed to prove that his doctrine of equivalents theory did not ensnare the prior art.

Of burdens in this case as to direct infringement, the CAFC noted:

The Ninth Circuit reviews the denial of a motion for a new trial for abuse of discretion. Incalza v. Fendi N. Am., Inc., 479 F.3d 1005, 1013 (9th Cir. 2007). It reverses the denial only if the record lacks any evidence supporting the verdict or if the district court made a mistake of law. Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007).

Here, as to the verdict of no literal infringement, there was evidence and the CAFC quickly dealt with the matter:

In sum, a reasonable jury could have returned a verdict of no literal infringement based on the evidence presented at trial. We consequently have no basis to order a new trial.

The doctrine of equivalents issue was more complicated:

In an appeal relating to the doctrine of equivalents, a party often challenges the fact finding made below of infringement (or no infringement) under that doctrine, which is usually analyzed under the well-established “substantially the same function-way-result” or “insubstantial differences” inquiry. Here, however, the jury’s finding that the Express stent satisfies each claim element of the asserted claims under the doctrine of equivalents is not on appeal. Instead, this appeal centers on the district court’s application of a limitation on the reach of the doctrine, known as “ensnarement.”

A doctrine of equivalents theory cannot be asserted if it will encompass or “ensnare” the prior art. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1322 (Fed. Cir. 2009). “This limitation is imposed even if a jury has found equivalence as to each claim element.” Id. at 1323 (citing Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 683, 687 (Fed. Cir. 1990), overruled in part on other grounds, Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 92 n.12 (1993)).


We have explained: Hypothetical claim analysis is a two-step process. The first step is “to construct a hypothetical claim that literally covers the accused device.” Next, prior art introduced by the accused infringer is assessed to “determine whether the patentee has carried its burden of persuading the court that the hypothetical claim is patentable over the prior art.” In short, [the court] ask[s] if a hypothetical claim can be crafted, which contains both the literal claim scope and the accused device, without ensnaring the prior art. Id. at 1363 (quoting DePuy, 567 F.3d at 1324, 1325); see also Ultra-Tex Surfaces, 204 F.3d at 1364–65 (“Under a hypothetical claim analysis, a patentee proposes a hypothetical claim that is sufficiently broad in scope to literally encompass the accused product or process. If that claim would have been allowed by the PTO over the prior art, then the prior art does not bar the application of the doctrine of equivalents.” (citations omitted)).

Footnote 5:

We have described the ensnarement inquiry as one of determining the patentability of the hypothetical claim, rather than its validity. That is because “[t]he pertinent question” is “whether that hypothetical claim could have been allowed by the PTO over the prior art” as the PTO has never actually issued it. Wilson Sporting Goods, 904 F.2d at 684.


Following Dr. Jang’s troubles in drafting a proper hypothetical claim that encompassed the Express stent yet was also patentable in the face of seemingly crowded prior art (a venture that began with generating approximately ten different hypothetical claims), the district court was under no obligation to undertake a hypothetical claim analysis on his behalf. A patentee, like Dr. Jang, bears the burden of proving that it is entitled to “the range of equivalents which it seeks.” Wilson Sporting Goods, 904 F.2d at 685. And, when utilizing the hypothetical claim tool, that burden starts with proposing a proper hypothetical claim that only broadens the issued
asserted claims. See Streamfeeder, 175 F.3d at 983. Dr. Jang cannot effectively transfer the responsibility of defining the range of equivalents to which he is entitled to the district court.7 See Ultra-Tex Surfaces, 204 F.3d at 1364 (“Under a hypothetical claim analysis, a patentee proposes a hypothetical claim . . . .” (emphasis added)). Because, as a threshold matter, Dr. Jang failed to submit a proper hypothetical claim for consideration, he was unable to meet his burden of proving that his doctrine of equivalents theory did not ensnare the prior art. The district court thus correctly vacated the jury verdict of infringement under the doctrine of equivalents.

Of procedure:

We are unpersuaded by Dr. Jang’s attempt to conflate two different concepts. We have explained before that “[t]he ensnarement inquiry . . . has no bearing on the validity of the actual claims” asserted in a case. DePuy, 567 F.3d at 1323 (citing Wilson Sporting Goods, 904 F.2d at 685). And that is because ensnarement concerns patentability with respect to a hypothetical patent claim as opposed to the validity of an actual patent claim. See Wilson Sporting Goods, 904 F.2d at 685 (“Leaving this burden [of proving that the range of equivalents sought does not ensnare the prior art] on [the patentee] does not, of course, in any way undermine the presumed validity of [its] actual patent claims.


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