Defending a patent infringement in court - take recourse of Reverse Doctrine of Equivalents

Doctrine of Equivalents was set forth by US Supreme Court in 1950 to extent the protection of patent rights to a good patent holders beyond the literal meaning of the claims i.e. literal infringement. US Supreme Court also established Function-Way-Result test with the objective to ensure the fundamental fairness to it to all.

Reverse of the doctrine is also hold good, i.e. if the claim elements did not Function is the same Way to accomplish the same Result then there would not be actual infringement under the doctrine.

Till date, neither US Supreme Court nor Federal Circuit Courts of Appeal had reversed a finding of non-infringement based on reverse doctrine of equivalence.

read more from ipfrontlines authored by Jay Sandvos

Is infringment of patent in abroad liable to claim damages in the country…. ?

This is the question .. going to be decided by US SC in july 2007, while hearing Microsoft Corp. v. AT&T Corp., 05-1056 case.

In a long-running case between Microsoft and AT&T, AT&T had been able to secure favorable judgments from lower federal courts.

In this case, Microsoft has accepted the infringement of an AT&T patent in US but disputed the infringement of the patent in overseas markets.

The patent is related to technology that converts speech into computer code, so the speech can be transmitted electronically. It accused Microsoft Corp. of infringing the patent by including similar capabilities in its Windows software.

AT&T has cited the provision of US patent law, which restricts the export or infringed products from country. It says by incorporating the infringed technology in windows and selling it overseas Microsoft has violated the said provision and hence liable for the damages.

Microsoft, has pleaded that it is exporting only the “master copy” of the software and said feature has been added by computer  manufacturers in the foreign markets.

AT&T  protested the idea of “master version” of the software and argued that Microsoft has collected the royalty on the infringing software sold in the overseas markets, hence it is liable for the damages for the infringement in  overseas markets.

US Supreme Court is expected to deliver its judgment on the issues in july 2007.

ANDA Filing is not per se willful patent infringement

Patently Obvious: MBHB Patent Law Blog: “ANDA Filing is not per se willful patent infringement

Glaxo v. Apotex (Fed. Cir. July 27, 2004)
Apotex appealed the district court judgment, which found that Apotex’s filing of an Abbreviated New Drug Application (ANDA) for a generic version of the antibiotic Ceftin� willfully infringed Glaxo and SmithKline Beecham’s patents. (U.S. Patents 4,562,181 and 4,820,833).
On appeal, the Federal Circuit (GAJARSA) affirmed the infringement holding, but refersed the the district court’s finding of willful infringement.
We hold that the mere filing of an ANDA cannot constitute an act of willful infringement compensable by attorney�s fees under the Drug Price Competition and Patent Term Restoration Act of 1984, also known as the Hatch-Waxman Act.
Because, the ANDA filing did not constitute an ‘exceptional case,’ the willfulness holding was reversed
In dissent, DYK argued that the case was moot and thus should not be decided.
The questions of infringement and invalidity are moot since, as the parties conceded at oral argument, there are no past damages being sought for infringement, and the patents have expired. I dissent from the majority�s decision to address the issues of infringement and invalidity in the absence of a live case or controversy.”