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Rare but Not Exceptional: Doctrine of Equivalents Does Not Require Exceptional Case

On petition for panel rehearing, the US Court of Appeals for the Federal Circuit stripped the phrase “applies only in exceptional cases and” from its previous opinion, but otherwise denied the petition. Amgen, Inc. v. Sandoz Inc., Case Nos. 18-1551, -1552 (Fed. Cir. Sept 3, 2019) (per curiam).

In its underlying opinion, the Federal Circuit noted that the doctrine of equivalents “applies only in exceptional cases and” is not regularly available as a method to extend protection beyond the literal scope of the claims (IP Update, Vol. 22, No. 6). In response to the petition for rehearing, the Court narrowed its prior holding by removing the language limiting application of the doctrine of equivalents to only “exceptional cases.”

Practice Note: The Federal Circuit’s order clarifies that Amgen v. Sandoz was not intended to change the law with respect to the application of the doctrine of equivalents. As always, litigants should be careful to allege the doctrine of equivalents in appropriate circumstances and may not use it to read limitations out of the claims.

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About this Author


David Mlaver* is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C. office.  He focuses his practice on intellectual property litigation matters.

David received his J.D., cum laude, from the Georgetown University Law Center, where he was a senior editor of The Tax Lawyer.  He earned his A.B. in chemistry and B.S. in biology, with high distinction, from Duke University. David is admitted to practice in Maryland.

*Not admitted to practice in the District of Columbia...

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