Showing a strong Spine, the Federal Circuit addresses the Doctrine of EquivalentsNovember 21, 2006

In DuPuy Spin, Inc. v. Medtronic Sofamor Danek, Inc., the Federal Circuit concluded that the district court erred in granting summary judgment of non-infringement on Medtronics Vertex? model with regards to U.S. Patent No. 5,207,678 (the ‘678 patent). Additionally, the Federal Circuit concluded that the district court’s judgment of non-infringement for Medtronics bottom-loaded screw device was proper and that the district court was correct in determining the Medtronic was not entitled to judgment as a matter of law on the issues of non-infringement or lost profit damages for Medtronic’s MAS polyaxial pedicle screws. Thus, the Federal Circuit affirmed-in-part, reversed-in-part, and remanded the case.

The ‘678 patent, owned by DePuy, involve pedicle screws and receiver members used in spinal surgeries. Pedicle screws are implanted into the vertebrae during surgery. The head of each pedicle screw is connected to a receiver portion, and a threaded rod connects the receiver portion of several screws. Together, the screws, receiver portions, and rods are used to stabilize spinal column segments. On January 26, 2001, DePuy filed suit against Medtroni asserting infringement of the ‘678 patent based on Medtronic’s MAS, Vertex?, M8, M10, and Sextant models of polyaxial pedicle screws.

In the decision, the Federal Circuit had the opportunity to address the Doctrine of Equivalents. Under the doctrine of equivalents, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the patented invention. The Federal Circuit then cited the Festo Corp decision stating that:

The language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty. If patents were always interpreted by their literal terms, their language would be greatly diminished. Unimportant and insubstantial substitutes for certain elements could defeat the patent, and its value to inventors could be destroyed by simple acts of copying.

The Federal Circuit then explained that there are limitations on the doctrine of equivalents, specifically the “all elements” rule. The “all elements” rule informs a doctrine of equivalents analysis by requiring that equivalence be assessed on a limitation-by-limitation basis, rather than from the perspective of the invention as a whole, and that no limitation be read completely out of the claim. The Federal Circuit then determined in the present case that there was no support for the district court’s conclusion that applying the doctrine of equivalents would vitiate or read out one of the limitations of the claims.

To read a complete decision, click here.

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