Infringement Contentions May Not Assert Doctrine of Equivalents Via Boilerplate Footnote

The court granted defendant's motion to compel plaintiff to produce a third set of infringement contentions addressing the doctrine of equivalents and rejected plaintiff's "footnote approach." "Plaintiff's contentions contain a footnote explaining that if a claim limitation bears the 'E' designation, then 'to the extent any of those limitations is not found to be literally present, the same acts/structures described are at least the equivalents of the required limitations for the same reasons because they perform substantially the same function in substantially the same way for substantially the same result.' Plaintiff defends that 'footnote approach,' arguing that PLR 3-1 (e) only requires it to disclose 'whether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents.' Plaintiff reads the requirement too narrowly. 'The Patent Local Rules require a limitation-by-limitation analysis, not a boilerplate reservation. The doctrine of equivalents exists to prevent 'a fraud on the patent.' It is not designed to give a patentee a second shot at proving infringement '[t]o the extent that any limitation is found to be not literally present.' Therefore, the footnote approach is insufficient."

Altair Instruments, Inc. v. Rodan & Fields, LLC et al, 2-13-cv-07448 (CACD May 19, 2014, Order) (Wu, J.)