Best Med. Int'l, Inc. v. Accuray, Inc

The Local Patent Rules for the Western District of Pennsylvania require a patentee to promptly specify whether it is seeking relief for literal infringement or whether the accused device infringes under the doctrine of equivalents. If the latter theory is used, there must be sufficient detail, beyond the wording of the patent itself, to provide the accused infringer with notice of infringement.

Opinion (Mcverry): Best Medical International ("BMI") sued Accuray, Inc. ("Accuray") alleging that a cancer treatment Accuray developed infringed three of its patents. During pre-trial litigation, all but one count of BMI's amended complaint were dismissed. Despite prompting by the court, BMI did not indicate in its amended complaint whether it intended to assert infringement based on the doctrine of equivalents until after the close of discovery. Accuray moved to strike the count as far it pursued relief under the doctrine of equivalents. The Local Patent Rules in the Western District of Pennsylvania require that a party claiming patent infringement promptly specify whether the allegedly infringed claim is literally present in the accused device or is present under the doctrine of equivalents. If it is present under the doctrine of equivalents, the patentee must specify how it is present in greater detail than the language of the patent provides. The court determined that the Local Patent Rules were not intended to permit the addition of a doctrine of equivalents claim following the close of discovery because the delay is too great. It also decided that BMI failed to provide sufficient specificity to meet the requirements of the Local Rules. Accordingly, the court GRANTED Accuray's motion to strike BMI's doctrine of equivalents infringement claim.