Intellectual Property Directions

I bought a new car recently and it came with a wide-angle backup camera - a safety feature that shows what’s behind you when you are in reverse. In a patent infringement suit the “reverse Doctrine of Equivalents” [rDoC]may provide you some safety… but don’t count on it.

“What?”, you say, “There’s a reverse doctrine of equivalents?”

Yup, and by a reverse logic that the Red Queen would love the reverse doctrine of equivalents says that you can be literally infringing a patent without being an infringer. To take a case example, last week the Court of Appeals for the Federal Circuit handed down a decision in the case of Roche v. Apotex (a generic drug manufacturer). In that case Apotex wanted to essentially duplicate one of Roche’s pharmaceuticals and called upon this doctrine to fend off a summary judgment of infringement.

The “normal” DoE extends the scope of a patent beyond the literal bounds defined in the claims. The idea is to prevent an infringer from making insubstantial changes or unforeseeable minor improvements in the invention as a way to avoid infringement. For example, replacing a circuit originally built with descrete transistors with one containing an IC would probably be considered an infringing equivalent.

The reverse DoE, on the other hand, contracts the scope of a patent to allow a literal infringer to escape sanctions. The idea is to prevent a patentee from extending the reach of the claims beyond the fair scope of the invention. According to the Supreme Court:

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

 For example, two devices may measure the same signal and apply computer signal processing to determine some property of the source. But if one device is looking for amplitude variations while the other is looking for frequency variations, the accused infringer might have opportunity to apply the rDoE by arguing that the principle of operation is different and that the same function (determination of source property) is performed in a substantially different way (frequency analysis rather than amplitude analysis).

But before you get excited, note that the CAFC said:

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. [emphsis added]

 So, just like looking in my backup camera, objects (or favorable patent rulings) may be closer than they appear.

This entry was posted on Tuesday, July 15th, 2008 at 4:03 pm and is filed under Patent Litigation, infringement. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.