Doctrine of Equivalents: Expert Testimony Must Include Particularized Links
Patent – Patently-O 2024-10-25
Summary:
by Dennis Crouch
Throughout its 40-year history, the Federal Circuit has been largely negative toward the doctrine of equivalents (and exceedingly negative toward the reverse DOE). This negativity includes repeatedly taking decisions out of the jury’s hands based upon insufficient evidence of equivalency. In a new decision, a 2-1 majority continues this trend, holding that conclusory expert testimony is insufficient even for relatively simple technologies. NexStep, Inc. v. Comcast Cable Communications, LLC, No. 22-1815 (Fed. Cir. Oct. 24, 2024). Writing for the majority, Judge Chen affirmed the district court’s grant of JMOL overturning a jury’s DOE infringement verdict. Judge Reyna filed a sharp dissent arguing the majority imposed an unnecessarily rigid expert testimony requirement.
- Read the Decision: 22-1815.OPINION.10-24-2024_2408132
The Technology and Patents at Issue: The case involves two family-member patents related to streamlining technical support for consumer electronics. U.S. Patent Nos. 8,280,009 and 8,885,802. The ‘009 patent claims a “concierge device” that initiates technical support through a “single action” by the user – avoiding the hassle of providing model numbers and other device information when seeking help. The claimed invention allows the user to press just one button to start a support session, with the system automatically providing necessary device identification details.