IAM Publishes Maslowski, Elsby Article on Federal Circuit Decision Ruling on Infringement and Equivalents

Akin Gump intellectual property partner Steven Maslowski and counsel Rachel Elsby have co-authored the article “Federal Circuit decision shows door not shut on infringement claims under the doctrine of equivalents in ANDA cases,” which has been published by IP business media platform IAM.

The article looks at the recent decision by the Court of Appeals for the Federal Circuit in UCB, Inc., et al., v. Watson Laboratories Inc., Actavis Laboratories Ut, Inc., wherein the court affirmed a Delaware district court finding that the defendants had infringed UCB’s patent for a transdermal therapeutic system under the doctrine of equivalents, framed by the U.S. Patent and Trademark Office as “Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?.”

The authors note, “Given the court’s rejection of several arguments as to why UCB should be barred from alleging infringement under the doctrine, the case provides important strategic guidance on the doctrine for both patent prosecutors and litigators.”

In this article, Maslowski and Elsby outline the case and the Federal Circuit’s findings and note, “Although infringement under the doctrine of equivalents has been difficult to prove in the pharmaceutical context, the door is not shut by any means. As this case illustrates, the doctrine remains a viable one, but there are numerous defences available to accused infringers faced with its application.”

They conclude, “[I]t is important to use caution when distinguishing the claimed invention from the prior art so as to focus only on those features necessary to patentability.  Knowing where such distinctions have been drawn and where they may have been avoided provides a map to both patentees and accused infringers considering possible equivalents arguments.”

To read the full article, please click here.