The U.S. Supreme Court refused to strike down the doctrine of equivalents in 'Hilton Davis,' but it still left many questions about the doctrine unresolved

Article Abstract:

The US Supreme Court's decision in Warner-Jenkinson Co. v. Hilton-Davis Chemical Co. upholds the doctrine of equivalents, but fails to answer many questions about the doctrine. The court rejected attempts to rigidly limit the doctrine, such as requiring intent to infringe, precluding the doctrine's use by estoppel of any time claims amended during prosecution, or limiting its use to equivalents disclosed in the patent. The doctrine was held to be a fact issue for juries. More patent infringement litigation is sure to follow since so many issues were left unresolved.

Pharmaceutical industry, Intellectual property

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Hilton Davis: the Doctrine of Equivalents survives - now what?

Article Abstract:

The US Supreme Court decided in its much-anticipated ruling in Warner-Jenkinson Co. v. Hilton Davis Chemical Co. not to abolish the doctrine of equivalents, but it did reverse the lower court in adopting a rebuttable presumption rule. There will be a rebuttable presumption of prosecution history estoppel created by amendments that limit claims if the intent of the amendments is unclear. The decision strikes a balance between competing patent law arguments, but the rebuttable presumption rule will increase the importance of drafting claims that are all-encompassing.

Other Justice, Public Order, and Safety Activities, Patent Law

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Judge and jury roles in equivalents analysis: commentary on Malta v. Schulmerich Carillons

Article Abstract:

Malta v Schulmerich Carillons established a comparison requirement for claims of patent infringement under equivalents doctrine. A device must be compared to the plaintiff's and an explanation given of why similarity exists, or else a JNOV or directed verdict could ensue. The comparison requirement should be applied to prima facie cases using the sixth paragraph of section 112 of the Patent Code, and reconsideration should be given to Symbol Technologies v Opticon using the comparison test.

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