As early as July and December 2020, we wrote about the apparent increase in allegations of violations of the Doctrine of Equivalence (DOE) in cases in the life sciences. We found that the Federal Circuit provided in-depth analysis of the application of DOE, the congestion of law enforcement history, and the various other limits on the DOE in these recent cases, and suggested that potential infringers need to keep an eye on the evolution of the DOE’s teaching .
A recent decision in Arendi SARL v Motorola Mobility LLC, Civ. Action No. 1-12-cv-01601 (D. Del.) (File Entry 250) reminds practitioners that before delving into the essential elements of DOE, they should ensure that this is the case at all. In this case, Arendi’s original complaint accused Motorola of violating “literally or by the doctrine of equivalency”. In its initial claims, filed under the Standard Detection Standard, Motorola was accused of “violating” but made no mention of the DOE. Similarly, Arendi’s entitlement tables referred to “violations” without distinguishing between literal violations and the DOE. Upon completion of the factual investigation, Arendi submitted his expert reports on violations, noting that “[t]o To the extent that the foregoing evidence does not demonstrate a verbal violation of this element, the evidence indicates a violation. . . under the doctrine of equivalence. “In his expert reports on violations of the answer, Arendi contained substantive comments on the DOE.
Motorola has attempted to delete portions of these reports on the DOE granted by the Court:
Arendi’s temporary reference to DOE in his complaints, followed by the lack of a positive disclaimer for DOE theories. . . does not come close to fulfilling Arendi’s obligation to articulate disputes and then expert opinions in a timely manner and to link evidence that is specifically aimed at the claim elements he claims and is fulfilled (at least partially) by an equivalence theory under the function / manner / Results and / or insignificant difference tests.
Since Motorola “has not had an opportunity to pursue factual or even expert discoveries in order to counter the new DOE theories they may be pursuing by pursuing various theories of non-infringement such as: B. entanglement, the court suggested the DOE theories.
It is not uncommon to articulate DOE theories for the first time in expert reports. Some courts have local patent rules that would prevent such late adoption of DOE theories unless there is good cause, including the Northern District of California, District of New Jersey, and Eastern District of Texas. For example, local patent rules for the Northern District of California require disclosure of “[w]whether every limitation of any claim made should be literally present or present under the doctrine of equivalency. In contrast, the standard Delaware discovery standard only requires the disclosure of an “initial claims chart,” and many common patent litigation do not have such requirements.
The recent Arendi ruling provides that defendants should pay close attention to the availability of evidence of the doctrine of equivalency in all forums and that plaintiffs should be careful not to rely solely on the language of the boiler plates in the complaint.