Revisiting the Doctrine of Equivalence: How to Utilize It to Prevent Patent Infringement

May 16, 2019 4:30pm

Dominic Adair
Partner
Bristows LLP (London, United Kingdom)

Melissa Brand
Associate Counsel and Director Intellectual Property Policy
BIO (Washington, DC)

Barbara Ruskin
President
BA Ruskin Law LLC

Mark Waddell
Co-Chair, Life Sciences; Chair, Patent Litigation & Counseling
Loeb & Loeb LLP (New York, NY)

This brand-new Doctrine of Equivalence session will start with a brief refresher presentation on the best practice for utilising the Doctrine of Equivalence rule against patent infringement in the U.S. A panel discussion following this will bring together most practical knowledge from both sides of the Atlantic. USA:
  • Understanding the current scope of DOE and analyzing how it may enhance a company’s claim for patent infringement?
    • Recro Gainesville LLC vs. Actavis Laboratories (D. Del 2017)
  • Discover how to utilize DOE to enhance both infringement and prosecution strategies
  • Considerations for prosecution history estoppel for DOE
Europe: A UK Supreme Court decision in Actavis vs Eli Lilly [2017] UKSC 48 gave guidance on the new approach for the UK patenting process. Now, the UK Supreme Court has adopted a doctrine of equivalence (DOE) standard whereby variations to a patented product falling outside the literal scope of claims may now also be considered as infringements where the variations are “immaterial”. Delegates will benefit from presentations regarding DOE judgements and breakdown of application currently in both USA and Europe. Additionally, receiving benchmarking opportunities:
  • What are the practical results following the decision?
  • Developing industry best practices to construe patents: If a product falls outside the literal scope of patent claim, can it still be considered as infringement due to immaterial variation
  • Understanding whether patents can be found as invalid from novelty claims based on ‘equivalents’ to prior art
  • Discussing whether sufficiency attacks can succeed where the patent does not enable ‘equivalents’