November 2024 In a recent decision, the Federal Circuit has confirmed it is insufficient to allege two features are equivalent for a finding of equivalence to be reached. Instead, the party alleging equivalence needs to show how the variant achieves substantially the same result, in substantially the same way, as the corresponding feature of the claim.
Doctrine of Equivalents
In a recent decision, the US Court of Appeals for the Federal Circuit has confirmed the importance of explaining why two features are equivalent when alleging that a patent is infringed under the so-called “doctrine of equivalents”.
The doctrine of equivalents is a legal concept applied by the courts of certain countries, including both the USA and the UK, under which a particular act can be held to infringe a patent even though it falls outside the scope of the literal meaning of the claims. Specifically, this may be permitted if it can be shown that the alleged infringement achieves substantially the same result, in substantially the same way, as the claimed invention.
Decision of the District Court
In the case of NexStep, Inc. v Comcast Cable Communications, LLC, NexStep sued Comcast for infringement of its patent, which protected a method of initiating a technical support session for an electronic device such as a smartphone. The claimed method was required to be “responsive to a single action performed by a user”, such as the user pressing one button to initiate the subsequent steps of the method. However, Comcast’s allegedly infringing method required the user to press multiple buttons to initiate a technical support session.
Thus, whilst there was no infringement of the literal wording of the claim, the jury had to consider whether initiating a process by pressing multiple buttons could be considered equivalent to initiating a corresponding process by pressing one button, that is whether it achieves substantially the same result in substantially the same way.
At first instance, the jury decided these two processes were equivalent to each other, and thus the District Court held that NexStep’s patent was infringed by Comcast.
Appeal to the Federal Circuit
On appeal, however, the Federal Circuit overturned the jury’s verdict, holding that there was insufficient evidence of equivalence for this verdict to have been reached.
Specifically, the Federal Circuit held that, whilst NexStep’s expert witness had explained why the overall functions of NexStep’s and Comcast’s processes were the same, that witness had failed to explain why pressing multiple buttons in Comcast’s method had a function corresponding to the specific function of pressing one button in the claimed method. The Federal Circuit also held that, whilst the expert witness had asserted that the two features were equivalent, he had not adequately explained how pressing multiple buttons in Comcast’s method achieved substantially the same result, in substantially the same way, as pressing one button in the claimed method.
Conclusions
This decision confirms the bar is high when demonstrating that two features are equivalent to each other in US court proceedings. Importantly, it is not enough to state that two features are equivalent and leave the jury to analyse this. Instead, the party alleging equivalence needs to explain in detail why the variant achieves substantially the same result, in substantially the same way, as the corresponding feature of the claim.
Thus, patent proprietors wishing to enforce their patents against seemingly equivalent products would be wise to determine exactly what is required to demonstrate equivalence at the relevant court before doing so.
