Firm Files Cert. Petition Challenging Federal Circuit’s “Account-For-Every-Component” Equivalents Rule

Today, the Supreme Court docketed the cert. petition in Genuine Enabling Technology LLC v. Sony Group Corp., asking the Court to review a published Federal Circuit decision that affirmed summary judgment of noninfringement based on a rule that is contrary to 35 U.S.C. § 112(f), which protects claim elements described by their function and “equivalents thereof,” and Graver Tank, which holds that equivalence is a question of fact, established by showing that the accused structure performs substantially the same function in substantially the same way to obtain the same result. The Federal Circuit nonetheless held that a patentee loses as a matter of law, whatever it proves about the two structures as wholes, unless it also goes through the disclosed structure component by component and explains why each part missing from the accused device may be disregarded. The Federal Circuit’s rule converts the one element Congress allowed the inventor to claim by function into as many structural elements as the drawing has parts, contradicting the Federal Circuit’s own prior precedent holding that those components “are not claim limitations”; takes the equivalence question from the jury; and falls hardest on inventors of logic designs and other technologies that can be rebuilt from interchangeable parts—exactly where protection against trivial substitution matters most. Daniel is counsel of record to petitioner.