{"id":4285,"date":"2024-10-24T13:55:00","date_gmt":"2024-10-24T18:55:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=4285"},"modified":"2024-11-07T09:19:51","modified_gmt":"2024-11-07T15:19:51","slug":"infringement-claim-under-d-o-e-doomed-by-lack-of-specificity-and-completeness-of-expert-testimony","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=4285","title":{"rendered":"Infringement Claim under D-O-E Doomed by Lack of Specificity and Completeness of Expert Testimony"},"content":{"rendered":"\n

In Nextstep, Inc., v. Comcast Cable Communications, LLC<\/em>, [2022-1815, 2022-2005, 2022-2113]<\/a>(October 24, 2024), the Federal Circuit affirmed the construction of the claim term VoIP, and the district\u2019s court\u2019s grant of judgment as a matter of law that there was no infringement under the doctrine of equivalents.<\/p>\n\n\n\n

The appeal involved U.S. Patent No. 8,280,009 directed to a \u201cdigital butler\u201d that controls consumer electronics based on audio data, which the jury found was not literally infringed, but was infringed under the doctrine of equivalents.\u00a0 However, the district court set aside the jury verdict and granted judgment of non-infringement as a matter of law, finding the evidentiary record inadequate to support infringement under the doctrine of equivalents.\u00a0 The district court primarily reasoned that the testimony of NexStep\u2019s expert, Dr. Ted Selker, was too conclusory to sustain the verdict. Describing portions of Dr. Selker\u2019s testimony as \u201cword salad,\u201d the district court concluded that Dr. Selker\u2019s testimony lacked the specificity and analysis required by Federal Circuit precedent.\u00a0 Among other things, the district court concluded that Dr. Selker failed to identify specific components in the accused products and failed to offer a reasoned basis for concluding that those specific components were equivalent to the relevant claim limitations.<\/p>\n\n\n\n

At trial, the parties\u2019 dispute focused heavily on the \u201csingle action\u201d limitation in the claims. Comcast argued that the multiple actions\u2014the several user button presses\u2014 required as a predicate to using any of the three troubleshooting tools meant that the My Account App did not infringe. NexStep focused its infringement theory on the view that a series of steps, when taken together, can be appropriately described as a single action.\u00a0 The jury returned a verdict of no literal infringement, rejecting NexStep\u2019s view that the series of user steps needed for each of the accused tools amounted to \u201ca single action\u201d) but found infringement under the doctrine of equivalents.<\/p>\n\n\n\n

The Federal Circuit noted that patentees typically seek to prove infringement under the doctrine of equivalents in one of two ways. \u00a0One way, often referred to as the function-way-result test, asks \u201cwhether the accused product performs \u2018substantially the same function in substantially the same way to obtain the same result.\u2019\u201d The other way asks whether \u201cdifferences between the claimed invention and the accused device or process are \u2018insubstantial.\u2019\u201d\u00a0 However the test is phrased, courts must employ \u201cspecial vigilance\u201d to avoid overbroad applications of the doctrine of equivalents, because when applied to broadly, the<\/p>\n\n\n\n

doctrine of equivalents conflicts with the definitional and public-notice functions of the statutory claiming requirement.\u00a0 Thus, the Federal Circuit has imposed specific evidentiary requirements necessary to prove infringement under the doctrine of equivalents: First, proof under the doctrine of equivalents must be on a limitation-by-limitation basis.\u00a0 Second, the evidence of equivalents must be from the perspective of someone skilled in the art, for example through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art.\u00a0 Third, specificity and completeness of proof is crucial, there must be particularized testimony and linking argument as to the insubstantiality of the differences between the claimed invention and the accused device.<\/p>\n\n\n\n

After quoting a little more than a page of testimony, which it said was the only testimony it was aware of in which NexStep asserted infringement under the doctrine of equivalents, the Federal Circuit said that NexStep had to prove\u2014with particularized testimony and linking argument\u2014that the elements of the accused arrangement were substantially the same as the elements of the claimed arrangement.\u00a0 The Federal Circuit noted that Dr. Selker\u2019s testimony never identified a particular element or elements in the My Account App as being equivalent to the \u201csingle action\u201d limitation.\u00a0 The Federal Circuit concluded that Dr. Selker\u2019s testimony simply does<\/p>\n\n\n\n

not include a particularized identification of what elements in the accused device are equivalent to the claimed limitation.  The Federal Circuit said that the failure to explicitly identify the alleged equivalent is fatal to NexStep\u2019s doctrine of equivalents theory.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Nextstep, Inc., v. Comcast Cable Communications, LLC, [2022-1815, 2022-2005, 2022-2113](October 24, 2024), the Federal Circuit affirmed the construction of the claim term VoIP, and the district\u2019s court\u2019s grant of judgment as a matter of law that there was no … 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":[40],"tags":[],"class_list":["post-4285","post","type-post","status-publish","format-standard","hentry","category-doctrine-of-equivalents"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/4285","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=4285"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/4285\/revisions"}],"predecessor-version":[{"id":4286,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/4285\/revisions\/4286"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=4285"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=4285"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=4285"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}