High Court Declines to Weigh in on Doctrine of Equivalents Inquiry

By Editorial Team

The U.S. Supreme Court recently declined to address a case involving the doctrine of equivalents, where a divided panel of the U.S. Court of Appeals for the Federal Circuit ruled that Comcast Cable Communications did not infringe on patents owned by NexStep, Inc. under this doctrine.

NexStep owns U.S. Patent Nos. 8,885,802 and 8,280,009 related to voice communications technology. The dispute arose when the district court granted summary judgment of non-infringement on the '802 patent but denied a similar motion on the '009 patent. A jury found infringement under the doctrine of equivalents for the '009 patent, but the district court later overturned this verdict due to insufficient evidence.

The Federal Circuit upheld the district court's decision, stating that NexStep failed to provide the necessary specific evidence to prove infringement under the doctrine of equivalents. The court highlighted the requirement for expert testimony or other technical evidence to support such claims, which was lacking in this case.

In its petition to the Supreme Court, NexStep argued that patents would offer little protection if confined to literal claim terms only, emphasizing the importance of the doctrine of equivalents in patent law.

While the majority opinion in the Federal Circuit case supported the district court's ruling, Judge Reyna dissented, criticizing the majority's rigid stance on expert testimony and its departure from the substantial evidence standard.

The Supreme Court's decision not to hear the case leaves the Federal Circuit's ruling intact, underscoring the challenges patent holders may face in proving infringement under the doctrine of equivalents without robust technical evidence.