Obviousness = Equivalence? Saint-Gobain v. Siemens

Saint-Gobain Ceramics (“S-G”) has asked the Supreme Court to review the Fed. Cir. panel below, 647 F.3d 1373 (Fed. Cir. 2011) in which the panel decision refused to reverse a district court decision that instructed the jury that it could find infringement  by S-G under the doctrine of equivalents (DOE) of a Siemens Medical Solutions USA patent on “LSO crystals” using a preponderance of the evidence standard, rather than the higher “clear and convincing” evidence standard, even though S-G held its own patent on a variation of the infringing crystals – “10% Y LYSO crystals.”

The jury found S-G guilty of infringement under the DOE and assessed damages. The Fed. Cir. affirmed that the jury had been instructed to apply the  appropriate legal standard and a divided court denied the petition for rehearing en banc. 647 F.3d 1373 (2011). The denial crystallizes the central point that will be appealed, and it is all you need to read to get at the heart of the case. The majority opinions affirming the district court and the order denying rehearing were both authored by Judge Lourie, but there were three concurring opinions denying rehearing and a dissenting opinion by Judge Dyk, joined by Gajarsa and Prost- and all in twenty pages. This one is teed up for Supreme Court review.

Since my initial run-on sentence did not follow the legal principle of KISS, here is the question as summarized by Judge Newman’s concurrence, joined by Rader and Lourie:

“The dissenters’ position is that if any modification or substitution is made in any part of a patented product or process [added 10% Y to the LSO crystals], this frees the entire product or process from the reach of the doctrine of equivalents whatever the evidence of equivalency. According to the dissenters, it is irrelevant whether the substitution [meets the function-way-result test of Graver Tank].”

The majority’s rationale is largely based on the fact that the legal standards employed to determine equivalency differ from those employed to obtain a patent from the PTO. In other words, you can get a patent on an insubstantial variation of a known product by demonstrating secondary considerations and other factors not in play in a Festo analysis. As Newman writes: “Precedent recognizes that an equivalent substitution may or may not be an obvious variant.” Slip. op. at 4.  In other words, you can patent your improvement and still infringe under the DOE.

Judge Dyk’s disagreement cannot be much clearer when he writes:

“to prove that an element of an accused product is an equivalent for the purposes of infringement, the patentee must prove that the feature is insubstantially different [citing Warner-Jenkinson v. Hilton Davis and Graver Tank]. In my view, a product cannot be insubstantially different if it is nonobvious and separately patentable…In my view, just as the [DOE] cannot extend a patent’s scope to cover prior art [citing Wilson Sporting Goods], it should not permit patents to be extended to cover new and nonobvious inventions.” Slip op. at 3-4.

Earlier, Judge Rader had written, interpreting Festo, 2324 F.3d 558 (Fed. Cir. 2000):

“Of course, if an equivalent was foreseeable as available technology at the time of the filing, the applicant has an obligation to claim that technology. If the applicant does not claim, foreseeable technology, that subject matter enters the public domain. [citing Johnson & Johnston]..In other words ‘[t]he applicant is charged with surrender of foreseeable equivalents known before the amendment, not equivalents known after the amendment.’ [citing Festo at 1380]. Thus, the doctrine of equivalents allows patent owners to cover after arising technology.”

Judge Dyk criticized this broad statement in footnote 1 of his opinion:

“Our decisions have recognized that the [DOE] may sometimes capture after-arising technology where the original claims could have captured that technology by using more general claim language. For example, if a claim were to use the narrow term ‘clip’ to describe an incidental aspect of the invention, the claim might be extended under the [DOE] to include all fasteners, including those subsequently developed. But this is a far cry from saying that a claim directed to a particular type of clip – i.e., where the invention in whole or in part is the clip itself, – should cover after-arising and separately patentable fastening means.” Slip op. at 4.

Lest you should think I am getting off the point, and even though this is a case in which the alleged infringer holds an “improvement patent” on a crystal not literally within the scope of the Siemens’ claims, I think it is worth noting that Judge Rader was not so kind to after-arising technologies in Chiron Corp  v. Genentech, 363 F.3d 1247, 1254 (Fed. Cir. 2004). Chiron had sued Genentech for literal infringement of a patent that it asserted had a claim broad enough to encompass a chimeric  antibody. The earlier Chiron filings, which Chiron needed for priority, had broad statements about antibody technology, but the Fed. Cir. affirmed a district court ruling that the earlier claims did not adequately describe Genentech’s later-invented chimeric antibodies. Oddly echoing the language above, Judge Rader wrote:

‘[A] patent disclosure need not enable information within the knowledge of an ordinary skilled artisan. Thus a patentee preferably omits from the disclosure any routine technology that is well known at the time of the application….At the other end of the knowledge continuum, a patent document cannot enable technology that arises after the date of application. The law does not expect an applicant to disclose knowledge invented after the filing date. Such disclosure would be impossible…Nascent technology, however, must be enabled with a specific and useful teaching.’”

If this is not a pure tautology, we are left with legal doctrines in which S-G might have been found not to infringe if its crystals fell within the literal scope of Siemen’s claims, so long as Siemen’s did not mention or otherwise enable 10% Y – literal infringement was not at issue—but S-G can be found to infringe if its patented crystals fall outside of the literal scope of the claims, as an insubstantial equivalent.

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