Archive for the ‘Doctrine of Equivalents’ Category

Brilliant Instruments v. GuideTech – Doctrine of Equivalents on Review

Thursday, February 21st, 2013

Contributed by Theresa Stadheim of Schwegman Lundberg & Woessner

In Brilliant Instruments, Inc., v. Guidetech, LLC, Appeal no. 2012-1018 (Fed. Cir. February 20, 2013) (a copy can be found at the end of this post), a panel of the Federal Circuit reversed and remanded the Northern District of California’s summary judgment that Brilliant Instruments, Inc. (“Brilliant”) did not infringe GuideTech’s patents: 6,226,231 (the ’231 patent), 6,091,671 (the ’671 patent) and 6,181,649 (the ’649 patent). (A copy of each patent can be found at the end of this post.)

One issue was whether there was a genuine issue of material fact as to whether Brilliant infringed the ’671 and the ’649 patents under the doctrine of equivalents.  The particular claim limitation at issue recited in claim 1 of the ’671  patent: “wherein said shunt and said capacitor are operatively disposed in parallel with respect to said first current circuit.”

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Supreme Court Asks Government To Weigh In On Saint-Gobain’s Cert. Request

Wednesday, November 9th, 2011

Since I have done two, rather lengthy posts on the Fed. Cir. split decision in Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, 637 F.3d 1269 (Fed. Cir. 2011) , reh’g den. 647 F.3d 1373 (2011), it deserves note that the Court delayed its vote on whether or not to grant cert., and asked the Solicitor General for a brief giving the Government’s position on the issue. This seems like an unusual amount of attention to be given to a fairly narrow issue regarding the doctrine of equivalents – when, if ever, can doe infringement be found when there is no literal infringement and the accused infringer has obtained a patent on the accused invention? At least this is the practical question that will be answered – put technically the question may relate to the burden of proof on the plaintiff to establish doe infringement – should it be higher if the accused infringer has obtained a patent? Remarkably, the Fed. Cir. decision denying rehearing en banc is only eight pages short, with the dissent by Dyk, Gajarsa and Prost. The opinion presents this intriguing question clearly and is well worth a read.

See my previous posts on Saint-Gobain v. Siemens.

Infringement by Unobvious Changes – A Look (Way) Back

Sunday, October 16th, 2011

As a much younger attorney, I gave a presentation at the 1990 AIPLA Annual Meeting:  “A Review of Recent Federal Circuit Decisions Relating to Infringement” (AIPLA Selected Legal Papers, 9, 3 (July 1991)), in which I wrestled with the question of whether or not a novel and unobvious chemical composition would infringe under the doctrine of equivalents.  Since this is the central issue that the Supreme Court will be asked to resolve in Saint-Gobain Ceramics v. Siemens Med. Sol’ns, Supreme Ct. No. 11-301, I thought these excerpts might be of interest:

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“Although no recent case (or any case) was found where the unobviousness of a substituted ingredient led to a holding of non-infringement of an accused composition that otherwise met the tripartite test, such a holding would be appropriate.  At the very least, Atlas Powder Co. v. DuPont DeNemours & Co., 750 F.2d 1569 (Fed. Cir. 1985), suggests that an unexpected result achieved by the accused composition would support a finding of non-interchangeability [and thus, noninfringement].

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Obviousness = Equivalence? Saint-Gobain v. Siemens

Friday, October 14th, 2011

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.

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