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Anachronistic Exception Where Same Function is Perfomed in Substantially Different Way

Posted by James Juo | Jan 28, 2025 | 0 Comments

The reverse doctrine of equivalents ("RDOE") in patent law has been described as an “anachronistic exception, long mentioned but rarely applied.” Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1368 (Fed. Cir. 2002). As the reverse of the doctrine of equivalents, an alleged infringer may avoid a finding of infringement by showing the accused “product has been so far changed in principle [from the asserted claims] that it performs the same or similar function in a substantially different way.” SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1124 (Fed. Cir. 1985); see also Boyden Power-Brake Co. v. Westinghouse, 170 U.S. 537, 568 (1898) (noting the "converse" where the accused product "has so far changed the principle of the device" that it has "ceased to represent [the] actual invention"). 

In Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., the Supreme Court commented:

[The doctrine of equivalents] is not always applied in favor of a patentee but is sometimes used against him.Thus, where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee's action for infringement. 

339 U.S. 605, 608–09 (1950). 

It can be argued that the 1952 Patent Act eliminated the common law RDOE doctrine because it conflicts with 35 U.S.C. § 271(a) and was subsumed in 35 U.S.C. § 112. 

The reasoning is that if a device literally falls within the scope of a claim, but the accused infringer believes the claim is too broad and its device should not infringe, the appropriate recourse is a § 112 challenge, not a claim of noninfringement under RDOE. Indeed, the Federal Circuit has noted, without deciding, that “when Congress enacted 35 U.S.C. § 112, after the decision in Graver Tank, it imposed requirements for the written description, enablement, definiteness, and means-plus-function claims that are co-extensive with the broadest possible reach of the reverse doctrine of equivalents.” Tate, 279 F.3d at 1368; see also Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042 (Fed. Cir. 1993) (noting § 112 ¶ 6 “operates more like the reverse doctrine of equivalents than the doctrine of equivalents because it restricts the coverage of literal claim language”). 

A counterargument is that the Supreme Court has observed that “[t]he 1952 Patent Act is not materially different from the 1870 Act with regard to claiming” and declined to overrule Graver Tank in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 26 (1997). 

Presently, the Federal Circuit has never affirmed a decision finding noninfringement based on the reverse doctrine of equivalents. Tate, 279 F.3d at 1368; see also, e.g., U.S. Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247, 1253 (Fed. Cir. 1989); Intel Corp. v. U.S. Int'l Trade Comm'n, 946 F.2d 821, 842 (Fed. Cir. 1991); Odetics, Inc. v. Storage Tech. Corp., 116 F.3d 1497 (Fed. Cir. 1997); Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1351 (Fed. Cir. 2003); Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372, 1378 (Fed. Cir. 2008); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1339 (Fed. Cir. 2009). 

The Federal Circuit recently considered whether RDOE survived the 1952 Patent Act in Steuben Foods, Inc. v. Shibuya Hoppmann Corp., No. 23-1790, __ F.4th __ (Fed. Cir. Jan. 24, 2025), but determined the issue did not need to be decided in that case. At trial, the jury found infringement, but the District of Delaware granted judgment as a matter of law ("JMOL") of noninfringement. With respect to claim 26 of U.S. Patent No. 6,209,591 ("'591 patent"), the Federal Circuit found that a reasonable jury could have found the principles of operation of the accused product and claim 26 of the '591 patent were not “so far changed,” as to support a theory of noninfringement under RDOE—because there was substantial evidence to rebut a prima facie case of RDOE. Specifically, even if the accused infringer had made a prima facie case that the principle of operation of the accused product was so far removed from that of claim 26 of the '591 patent, the jury's verdict should not have been overturned under RDOE because the patentee had presented expert rebuttal testimony that the jury was entitled to credit. 

JMOL “should be granted only if, viewing the evidence in the light most favorable to the nonmovant and giving it the advantage of every fair and reasonable inference, there is insufficient evidence from which a jury reasonably could find liability.” Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993). Accordingly, the Federal Circuit reversed the JMOL of noninfringement with respect to the asserted claim of the '591 patent and reinstate the jury's verdict of infringement. 

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.

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