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« Athena Diagnostics v. Mayo Collaborative Services -- The Concurrences | Main | Athena Diagnostics v. Mayo Collaborative Services -- The Dissents »

July 16, 2019


All patents must go through the prosecution gauntlet. For the vast majority that are commercially unsuccessful, this represents a waste of time and energy.

A strong DOE is a tool that can significantly reduce this waste. If applicants can rely on the DOE to fairly resolve disputes about the fair scope of their patent claims at the edges, they will not waste time with examiner's trying to eek out every last morsel of claim scope they can get (and risking creating a prosecution history estoppel). Wouldn't this be better for everyone?

"Wouldn't this be better for everyone?"

Definitely not. Literal claim scope---determined in the back and forth of prosecution---puts the burden on the *applicant* to obtain what s/he believes to be the fair claim scope. DoE claim scope puts the burden on the *public* to figure out what is the fair claim scope. As between the applicant and the public, it is much more fair for the burden of clearly defining the claim scope to fall on the applicant.

U.S. law would be considerable improved if we were simply to efface DoE from U.S. law. So long as it remains a feature of U.S. law, I will not cavil to make use of it as necessary for my clients, but it would be better if we got rid of DoE for everyone.

These things are rarely resolved so rationally. And DOE adds a level of subjectivity that makes patentees uncomfortable (admittedly, something the Federal Circuit has created or at least contributed to). As this case illustrates, the issue is typically whether the patentee is trying to extend the scope of patent protection to cover articles created in an attempt to design around, an activity patent law encourages as a spur to new innovation. I think the case is closer than it may appear; another panel could just as well have decided that the inventor's knowledge of the PIB alternative, coupled with the burden the patentee has on choosing her claim language (see, Sage Prod. v Devon) that excluded PIB as an embodiment, and the structural differences between PIB and the claimed acrylate- and silicone-based adhesives could have rendered a decision that PIB embodiments were dedicated to the public or not conceived in the original application.

Thanks for the comment

Does Mr. DeLassus even recognize the origination of just why there is a Doctrine of Equivalents in his call for effacing the same from patent law.

He belies his own sentiment about NOT cavil to make use of it as necessary for his own clients, while doing exactly that in relation to how blind he is to the worlds of Art and innovation beyond his clients.

Once again, Mr. DeLassus "generously" wishes to see the world though his own very limited vision of what "may work well" for the Pharma world and does not take into account (at all) most all of the other Art fields and how innovation actually works in those fields.

Since he insists on repeating this vacuous position regardless (or perhaps because of) his lack of knowledge, can we expect him at any point to simply NOT advocate as he does?

Sadly, I am....

Perhaps Mr. DeLassus is correct in that "everyone" includes accused infringers who may have a tougher time escaping infringement under a strong DOE.

But that misses the main point, which is that it is better to defer tough claim scope issues to be resolved during litigation. Why? Because only a tiny minority of claims get litigated. For all the rest we save all the time and energy that would otherwise be spent resolving these issues during prosecution. I wish there was a way to calculate this cost savings.

And in those cases that are litigated I would argue that that a strong DOE may actually promote resolution and thereby benefit both sides. This is because the DOE creates uncertainty in the mind of the patentee (as Dr. Noonan points out) and accused infringer. Uncertainty is what drives most settlements. The more claims that fall within the uncertain zone of the DOE the more likely the litigants are to settle.

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