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Keywords

appealtestimonypatentappellee
appealtrialpatentappelleebench trial

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Intendis GMBH v. Glenmark Pharmaceuticals Inc., USA, 822 F.3d 1355, 119 U.S.P.Q.2d 1200

Facts

Issue

Did the district court err in finding that Glenmark's isopropyl myristate performed substantially the same function as the claimed triglyceride and lecithin under the doctrine of equivalents?

Did the district court err in finding that Glenmark's isopropyl myristate performed substantially the same function as the claimed triglyceride and lecithin under the doctrine of equivalents?

Rule

Infringement under the doctrine of equivalents allows for a finding of infringement even if an accused product does not meet each claim element literally, provided that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product. This is often assessed using the function-way-result test, which is a factual determination.

Infringement under the doctrine of equivalents is a question of fact that the Court of Appeals reviews for clear error following a bench trial.

Analysis

The district court found that isopropyl myristate in Glenmark's product performed substantially the same function as the claimed triglyceride and lecithin, as both acted as penetration enhancers for azelaic acid. The court relied on expert testimony and Glenmark's own ANDA submissions, which referred to the claimed excipients as penetration enhancers. The court also determined that the hypothetical claim analysis did not ensnare prior art, as the prior art did not disclose isopropyl myristate, triglyceride, or lecithin.

Conclusion

The Court of Appeals affirmed the district court's decision, finding no clear error in its conclusions regarding infringement under the doctrine of equivalents.

We see no clear error in the district court's finding of infringement under the doctrine of equivalents.

Who won?

The prevailing party in this case is Intendis GmbH and its co-appellees, who successfully proved that Glenmark's generic product infringed their patent under the doctrine of equivalents. The court's findings were based on a thorough analysis of the function-way-result test, expert testimony, and Glenmark's own admissions in its FDA submissions, which indicated that the claimed excipients functioned as penetration enhancers. The court's ruling effectively prevented Glenmark from marketing its generic product until the expiration of the patent.

The prevailing party in this case is Intendis GmbH and its co-appellees, who successfully proved that Glenmark's generic product infringed their patent under the doctrine of equivalents.

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