Doctrine of Equivalents After VLSI Technology Decision: Navigating DOE Amid Tight Policing; Avoiding Pitfalls

Description

In its VLSI decision, the Federal Circuit reversed VLSI's $2.2 billion damages award that was based on infringement of two patents. The reversal was based in part on the panel's determination that VLSI had failed to provide sufficient evidence to support its argument that Intel infringed one of the patents under the doctrine of equivalents. In so holding, the court noted that "[t]he doctrine of equivalents provides a limited exception to the principle that claim meaning defines the scope of the exclusivity right in our patent system."

The court stated, "[t]he limits reflect a familiar balance among the importance of preserving the public's ability to rely on claims' meaning to define patent scope, the ability of patentees to protect their inventions through their claim drafting, and (yet) the occasional need to recognize some non-literal scope of protection to avoid undermining the exclusivity rights authorized by Congress to incentivize certain innovations."

The court outlined the requirements that maintain the exceptional character of the doctrine's use. It then determined that VLSI's proof of equivalence was insufficient under those principles. The court's decision continues to narrow the path by which plaintiffs can prove infringement under the doctrine of equivalents. And it emphasizes the need for sufficient, and specific, evidence to support such a theory.

Listen as our authoritative panel of patent attorneys examines the Federal Circuit's decision in VLSI and what it means for patentees using the doctrine of equivalents. The panel will discuss the doctrine of equivalents and its exceptions as well as how patentees can leverage the doctrine and avoid its pitfalls despite the court's tightening reins on the doctrine. The panel will offer best practices for prosecuting claims to minimize doctrine of equivalents arguments.