Contributed by Jim Nelson, J.D., Ph.D. of Schwegman Lundberg & Woessner, P.A.
The Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., (a copy is available at the end of this post) case presents a fundamental issue and holding about equivalents in the face of a patent covering the product alleged to infringe another patent under the DOE.
The Court said that an equivalent of the claims at issue is present even though that equivalent was literally claimed in another patent. Of course that holding tracks the rule we all have learned: domination. You can patent an improvement of an earlier patented invention but your patent will be dominated by that earlier patent. Usually, this domination rule is considered in terms of literal infringement, not doctrine of equivalents.
In this situation, the defendant offered a clever retort to the domination rule. The defendant said that because of the relation among equivalents, obviousness, the later patented product, the plaintiff needed to show equivalents by a higher degree of proof, clear and convincing evidence, not preponderance of evidence. The defendant based its argument upon the theory backed by case quotes such as that from Judge Nies: a substitution in a patented invention cannot be both nonobvious (leading to a patent on the substitution) and insubstantial (leading to infringement under DOE).
The majority of the Court disagreed. They said that obviousness is not tantamount to equivalents.
Recall the syllogism: a development that anticipates a patent claim if before literally infringes such a patent claim if after. This Siemens case considers corresponding obviousness/equivalents syllogism. In this context, the majority and dissent discussions of obviousness as the counterpoint to equivalents present good views of both sides of this issue. The majority stated that obviousness is not the counterpoint to equivalents under the DOE. The majority indicated that it is not valid syllogism to assert: a development that would have rendered a patent claim obvious if before is an equivalent of such a patent claim if after. However, it is significant in this context that the argument made by St. Gobain did not strictly follow this syllogism. St. Gobain argued that a patent claim that is not obvious over a prior issued patent, does not claim an embodiment that is an equivalent of the claims of that prior issued patent. In other words, St. Gobain argued against application of the domination rule: if there is a later filed patent literally covering the accused device, that device cannot be an equivalent under the claims of the patent at issue.
The majority and dissent point out that while the later filed patent is relevant to these issues, there is no per se rule equating obviousness and equivalents. Note the majority discussion at pages 13-18 and the dissent’s discussion of overlap pages 3-5 (no complete correspondence).
One problem with the analyses on both sides is their (required) assumption that the later filed patent is indeed non-obvious. The court is required statutorily to make this conclusion when the validity of that patent is not in issue. We know, however, that a large number of issued patents are found by the courts not to be valid for reasons of obviousness.
Another problem is that the two sides of the syllogism do not seem to be equal. Those two sides are:
1. A development that would render patent claims obvious if before is an equivalent of those claims if after;
2. A development that does not render patent claims obvious if before is not an equivalent if after.
The first side appears to put the development close to the claim language. The second side is difficult because the development could be close to the claims or far away. There is no way of telling based upon the nature of the phrase that one size catches all.
A further problem is that the syllogisms are too simplistic. As the Court indicated, all of the facts are relevant to the issues but the facts do not stop at the point of an issued U.S. patent and its per se cloak of validity. The details are to be considered.
I suspect that this case will form a basis for a number of articles about literal and DOE infringement versus anticipation and obviousness.
Here is the blurb from the IPO web site.
Patent Equivalents Infringement Found Even Though Equivalent Was Separately Patented — Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 2010-1145 — On February 24 in an opinion by Judge Lourie, a split Federal Circuit rejected defendant Saint-Gobain’s argument that proof of patent infringement by equivalents requires clear and convincing evidence in one particular situation – where the alleged equivalent is claimed in a separately issued patent. The Siemens patent related to a scintillator crystal for a PET scanner. Saint-Gobain held a license under a different patent claiming the crystal that Siemens asserted was the equivalent of Siemen’s crystal. The Federal Circuit majority held that the district court did not err by instructing the jury that equivalents could be proved by a preponderance of the evidence. The appeals court did not agree that equivalence is tantamount to obviousness. Judge Prost dissented on the equivalents issue. Other issues were lost profits damages and reasonable royalty damages.