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« Merck & Cie v. Watson Laboratories, Inc. (Fed. Cir. 2016) | Main | Court Report »

May 17, 2016


Hey Kevin,

I must say that treating a monoester (isopropyl myristate) as being a DOE equivalent of the combination a triglyceride and lecithin (a mixture of diglycerides linked to choline esters of phosphoric acid) is a pretty strange application of DOE. Admittedly, the Federal Circuit panel noted that: "To be clear, we are not presented the issue of the substantiality of the differences between the chemical structures of isopropyl myristate,triglyceride, and lecithin." But such chemical "differences" should impact the application of DOE. (Note that SCOTUS in Graver Tank also committed the faux pas of treating magnesium as being equivalent to manganese.) Also, as the accused infringer correctly pointed out, the functional benefit alleged for the combination of triglyceride and lecithin (as "penetration enhancers") is nowhere to be found in the patent. Also admittedly, the accused infringer was caught by their own statements to the FDA that isopropyl myristate was equivalent to the combination of triglyceride and lecithin as a "penetration enhancer." Even so, I find the application of DOE in this case very strange, including whether it complies with the "all elements rule" that still must be satisfied for DOE.

Hi Kavin,

Both Federal Circuit and District Court's determinations are being same in this case of DOE..

It's a strange example of DOE.

But one thing we can note from here there is no stringent rule in law.. It May vary Case by Case.

Dear EG: That’s the beauty of DOE, and has been since Graver Tank. Structural similarity isn’t a limitation – the point is whether the equivalent has the same function as the recited limitation. The fact that one chemical in the accused infringing article can perform the role of two in the patented invention doesn't preclude DOE infringement. However, the outcome perhaps would have been different if the argument was insubstantial differences rather than function-way-result, and this difference may suggest the type of inconsistency that raised issues about the scope of the rule that was the basis for the tussle between the Federal Circuit and Supreme Court a decade ago.

Thanks for the comment.

Dr. Noonan,

Your comment of "That’s the beauty of DOE, and has been since Graver Tank. Structural similarity isn’t a limitation" is dead on - and I would only wish that so many people who think that equivalence in the patent sense carries with it some sort of "physical"-the-same-as requirement would stop, think, and recognize that such a "same-as" requirement just is not there.

For any field of art.

Once that is understood, then the meaning of "wares" becomes self-evident and the field of computer arts fundamental understanding that softWARE is equivalent to hardWARE (and equivalent to firmWARE) would be the proper starting point for software claim discussions.

Alas, those who should know better have an ulterior motive and a philosophy driving how they want to discuss that particular art field, and the basic understanding that you explicate with reference to Graver Tank will not be recognized, let alone admitted and integrated into any conversation on the merits.

To follow up on the first comment, and your detailed accounting of the court opinion, I am a little shocked at the selection of the infringing material for the hypothetical claim. I could not find any case law supporting such a selection. Obviously, the hypothetical claim has to literally cover the alleged equivalent, but are you aware of any decision allowing a free selection of the contents of the hypothetical claim based upon extrinsic evidence? I have not seen the briefs, but Sue Robinson's opinion (Dist. Del.) seems to indicate this. The choice of hypothetical claim scope appears to be a distortion of ensnarement to be a flexible, ad hoc, post filing determination based upon extrinsic evidence rather than any characterizations in the specification of the patent allegedly infringed under the DoE. The admitted prior art is responsible for the "careful and limited language of the claim" (see 117 F. Supp. 3d 549, 578), not any particular worthiness of the patent in question, and this patent has been awarded a bizarrely well-tailored hypothetical claim, apparently without intrinsic support. This decision seems to put no burden on the draftsman to give a hint of what might be equivalent.

as a caveat to my statement above:

US 6,534,070 Bl (col. 4, ll. 3-11) states that "[l]ecithins are obtained by extraction from biological material. A lecithin fraction from soybeans (the most common raw material) thus comprises, e.g., palmitic acid, stearic acid, palmitoleic acid, oleic acid, linoleic acid and linolenic acid. Normally, the saturated fatty acid with the primary hydroxy group of the glycerine and the unsaturated fatty acid with the secondary hydroxy group of the glycerine are

While this does not describe mystiric acid (C13), palmitic is C15, stearic is C18, oleic is C18 (9Z unsat'd), linoleic is C18 (9Z, 12Z unsat'd), linolenic is C18 (9Z, 12Z, 15Z or 6Z unsat'd). Palmitic and oleic acid seem to be actually present in lecithin (https://en.wikipedia.org/wiki/Lecithin). However, there does not appear to have been a triol of any sort in the allegedly equivalent composition.

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