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Reverse doctrine of equivalents still a losing argument at the Federal Circuit

By McKee, Voorhees & Sease, P.L.C.

In a decision Wednesday, the Federal Circuit affirmed a district court's finding of patent validity and patent infringement.  The Federal Circuit found no error in the district court's holding that the reverse doctrine of equivalents was inapplicable and that claim preclusion prohibited the defendant from raising other validity challenges.  

Specifically, the defendant did not establish a prima facie case of noninfringement under the reverse doctrine of equivalents because it relied exclusively on the declaration of its expert witness to determine the principle of the invention instead of properly determining the principle from the specification, prosecution history, and prior art.  The Federal Circuit added that the reverse doctrine of equivalents is rarely applied (and that it has never affirmed a finding of non-infringement under the doctrine).

The Federal Circuit further agreed with the district court that the defendant's other claims were precluded by earlier litigation.  The accused products in both the first and second litigations were encompassed by the claims of the patent, so they constituted the "same claim" for purposes of claim preclusion.  The defendant also argued that because of KSR, there should be a "change of law" or fairness exception to claim preclusion.  The Federal Circuit disagreed, stating that although there may be rare exceptions in cases involving "momentous changes in important, fundamental constitutional rights," KSR involved no such right.

More detail of Roche Palo Alto LLC v. Apotex, Inc. after the jump.

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Full post as published by FileWrapper on July 11, 2008 (boomark / email).