Summary Judgment Denied On Reverse Doctrine Of Equivalents Defense

On April 28, 2017, the District Court for the District of Delaware denied AVM Technologies' motion for summary judgment because Intel's non infringement defense based on the reverse doctrine of equivalents requires the Court to resolve disputes of material fact regarding the manner in which Intel's product functioned relative to the claimed invention.

An accused infringer may rely on the reverse doctrine of equivalents as a defense "where a[n accused] device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim." Graver Tank & Mfg. Co. v. Linde Air Prod. Co., 339 U.S. 605, 608-09 (1950). It "is an equitable doctrine designed 'to prevent unwarranted extension of the claims beyond a fair scope of the patentee's invention.'" Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372, 1377 (Fed. Cir. 2008) (quoting Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1581 (Fed. Cir. 1991)). Although rare, the reverse doctrine of equivalents has been found to exist "where defendants are not gaining the benefit of plaintiffs' patents, but their equipment could fall within the literal language of the patents." Precision Metal Fabricators, Inc. v. Jetstream Sys. Co., Div. of Oerlikon Match Corp., 693 F. Supp. 814, 819 (N.D. Cal. 1988). However, "[b]ecause the reverse doctrine of equivalents requires a fundamental change in the basic principle by which the device operates, the doctrine is rarely invoked and virtually never sustained." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009) (quoting Roche, 531 F.3d at 1378 ("[T]his court has never...