December 8, 2023

Federal Circuit Summary for Week Ending December 8, 2023

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VLSI Technology, Inc. v. Intel Corporation, No. 2022-1906 (December 4, 2023) (precedential) (3-0); U.S. Patent No. 7,725,759

Key point(s):

  • Burden of proof for patent owner to legally establish infringement under the doctrine of equivalents requires that each of the function, way, and result of the accused device be substantially the same with respect to each element of the asserted claim.
  • Evidence must be specific and complete to meet the burden of proof in order to enforce limits on the doctrine of equivalents.
  • Expert testimony explaining the difference between a claim element and the accused device as “a design choice” is legally insufficient to establish the “way” requirement.

Jackson Family Farms, LLC v. Grands Domaines Du Littoral, No. 2023-1675 (December 5, 2023) (nonprecedential)

Key point(s):

  • A determination of no likelihood of confusion can be made at the pleading stage solely based on the dissimilarity of the marks.

H. Lundbeck A/S v. Lupin Ltd., Nos. 2022-1194, 2022-1208, 2022-1246 (December 7, 2023) (precedential) (3-0); Patent Nos. 9,278,096, and 9,125,910

Key point(s):

  • The intent element required for inducing infringement cannot be established solely based on labels which “carve out” (omit) infringing uses in an abbreviated new drug application (ANDA).
  • Contributory infringement of patents “carved out” from ANDA labels cannot be established because of the substantial non-infringing (no longer patented, FDA approved) use of the drug.

Related Team:

Kevin Rollins

Of Counsel