{"id":1768,"date":"2017-09-29T12:49:37","date_gmt":"2017-09-29T16:49:37","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1768"},"modified":"2017-10-01T18:06:38","modified_gmt":"2017-10-01T22:06:38","slug":"hypothetical-claim-in-doctrine-of-equivalents-analysis-cannot-narrow-claim-scope","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1768","title":{"rendered":"Hypothetical Claim in Doctrine of Equivalents Analysis Cannot Narrow Claim Scope"},"content":{"rendered":"

In\u00a0Jang v. Boston Scientific Corp.<\/a>, [2016-1275, 2016-1575](September 29, 2017), the Federal Circuit\u00a0affirmed the district court\u2019s denial of Jang\u2019s motion for JMOL, its vacatur<\/em> of the jury verdict of\u00a0infringement under the doctrine of equivalents, and its\u00a0entry of judgment of non-infringement.<\/p>\n

At issue was U.S. Patent No. 5,922,021 on\u00a0coronary stents, which the jury found not literally infringed, but infringed under the Doctrine of Equivalents.\u00a0 The Federal Circuit noted that the district court\u00a0must uphold a jury\u2019s verdict if it is supported by substantial\u00a0evidence, which is evidence adequate to support the\u00a0jury\u2019s conclusion, even if it is also possible to draw a\u00a0contrary conclusion, and in the Ninth Circuit reverses the\u00a0denial only if the record lacks any evidence supporting the\u00a0verdict or if the district court made a mistake of law.\u00a0 \u00a0The Federal Circuit noted that\u00a0Jang failed to persuade the district court that\u00a0BSC\u2019s non-infringement arguments were legally erroneous, and that it was similarly\u00a0unpersuaded.<\/p>\n

On the Doctrine of Equivalents, the Federal Circuit noted that a doctrine of equivalents theory cannot be asserted if\u00a0it will encompass or \u201censnare\u201d the prior art.\u00a0 This is true even if\u00a0a jury has found equivalence as to each claim element.\u00a0 The Federal Circuit explained that\u00a0a hypothetical claim analysis is a practical method to\u00a0determine whether an equivalent would impermissibly\u00a0ensnare the prior art. The Federal Circuit agreed with the district court that Jang’s hypothetical claims were improper because they both expaneded and narrowed the scope of the actual claims, and such narrowing is not permitted.\u00a0\u00a0While use of a hypothetical claim may
\npermit a minor extension of a claim to cover subject\u00a0matter that is substantially equivalent to that literally\u00a0claimed, one cannot, in the course of litigation and outside\u00a0of the PTO, cut and trim, expanding here, and narrowing\u00a0there, to arrive at a claim that encompasses an accused
\ndevice, but avoids the prior art.<\/p>\n

The Federal Circuit explained that when utilizing the hypothetical
\nclaim tool, that burden starts with proposing a\u00a0proper hypothetical claim that only broadens the issued asserted claims, and said that Jang\u00a0cannot\u00a0 transfer the responsibility of\u00a0defining the range of equivalents to which he is entitled to\u00a0the district court.\u00a0 Jang failed to meet this burden, and thus the\u00a0district court thus correctly vacated the jury verdict of\u00a0infringement under the doctrine of equivalents.<\/p>\n

 <\/p>\n

 <\/p>\n

 <\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In\u00a0Jang v. Boston Scientific Corp., [2016-1275, 2016-1575](September 29, 2017), the Federal Circuit\u00a0affirmed the district court\u2019s denial of Jang\u2019s motion for JMOL, its vacatur of the jury verdict of\u00a0infringement under the doctrine of equivalents, and its\u00a0entry of judgment of non-infringement. At … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-1768","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1768","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1768"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1768\/revisions"}],"predecessor-version":[{"id":1769,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1768\/revisions\/1769"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1768"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1768"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1768"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}