Narrowing Amendment Specifying DNA From Specific Viral Strains Precluded Application of Doctrine of Equivalents to Encompass Other DNA

Narrowing Amendment Specifying DNA From Specific Viral Strains Precluded Application of Doctrine of Equivalents to Encompass DNA Other Than Those Specific Viral Strains

Defendant's claim of infringement under the doctrine of equivalents was barred by prosecution history estoppel. On the question of whether the subject matter surrendered by the narrowing amendment encompassed the alleged equivalent, the court explained: "[T]he territory between vectors comprising isolated DNA molecules comprising sequences selected from ORFs 1-13 of any organism and vectors comprising isolated DNA molecules comprising sequences selected from ORFs 1-13 of the five viral strains identified in the [patent-in-suit] includes [plaintiff's] PCV WT2/1 isolate. . . . [Plaintiff's] vaccine is not a vector that comprises a sequence selected from ORFs 1-13 of the five viral strains identified in the [patent-in-suit]. Therefore, the Court determines that [defendant] surrendered the territory encompassing [plaintiff's] isolate and that the presumption of prosecution history estoppel applies."

Intervet, Inc. v. Merial Ltd. et al., 1-06-cv-00658
(DCD August 12, 2009, Memorandum Opinion)(Kennedy, J.)