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AMERICAN BAR ASSOCIATION
ADOPTED BY THE HOUSE OF DELEGATES
FEBRUARY 6, 2012
RESOLUTION
RESOLVED, That the American Bar Association supports, in principle, the longestablished precedent that patent infringement must be proven by a preponderance of the
evidence, and the fact that a product or process accused of infringing a patent-in-suit is
itself separately patented does not alter the burden of proof, or create a presumption of
non-infringement;
FURTHER RESOLVED, That the American Bar Association supports, in principle, that
the separate patentability of an accused product or process may be potentially relevant to
whether the accused product or process infringes the patent-in-suit under the doctrine of
equivalents, and, therefore, the issuance of a separate patent thereon is entitled to due
weight;
FURTHER RESOLVED, That the American Bar Association supports, in principle, that
the separate patentability may be particularly relevant in applying the doctrine of
equivalents when (a) the separate patent issued later than the patent-in-suit and (b) the
patent-in-suit was considered by the U.S. Patent and Trademark Office as prior art
against the application for the laterissued separate patent.
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REPORT
The Section of Intellectual Property Law requests that the House of Delegates approve this
Resolution, which would provide policy in support of an Association amicus curiae brief in the
U.S. Supreme Court in the case of Saint-Gobain Ceramics & Plastics, Inc. v. Siemens Medical
Solutions USA, Inc., Case No. 11-301, or in another judicial proceeding presenting the same or
similar issues. On September 6, 2011, Saint-Gobain Ceramics & Plastics, Inc. (“Saint-Gobain”)
filed a petition for writ of certiorari with the U.S. Supreme Court, seeking to overturn the U.S.
Court of Appeals for the Federal Circuit’s February 24, 2011, panel decision affirming a jury’s
finding that Saint-Gobain infringed a patent exclusively licensed to Siemens, and relating to
medical imaging technology. Specifically, Saint-Gobain argues in its petition that a heightened
evidentiary standard (i.e., clear and convincing standard vs. preponderance standard) should
apply when determining whether an accused product or process, that is itself separately patented,
infringes under a concept in patent law known as the doctrine of equivalents1. On November 7,
2011, the Supreme Court invited the Solicitor General to file a brief expressing the views of the
United States in the case.
Patent Rights, Remedies, and the Role of the Doctrine of Equivalents in Drawing the Lines
of Patent Enforcement
Article 1, Section 8, clause 8 of Constitution of the United States provides the basis for the U.S.
patent system, by establishing “The Congress shall have Power . . . To promote the Progress of
Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive
Right to their respective Writings and Discoveries.”
The “exclusive Right” that results from the grant of a patent is the right to exclude all others
from making, using, selling, offering to sell, or importing the subject matter of the patent. Most
fundamentally, the right to exclude is the right to prevent others from copying the subject matter
of the patent and converting it to one’s own use or advantage. Such acts of infringement are
subject to remedies set out in chapter 29 of the Patent Act (35 U.S.C. §§ 281-297), which include
monetary damages, injunctions, and attorney fees in exceptional cases.
In a suit for infringement, if the accused product or process copies or incorporates every literal
detail of a valid patent-in-suit, the issue of infringement is not a difficult question. In a leading
case on the subject, the Supreme Court noted
“In determining whether an accused device or composition
infringes a valid patent, resort must be had in the first instance to
1
A patent claim can be infringed literally (i.e., the accused product meets each and every limitation of the asserted
claim(s) of the patent-in-suit) or under the doctrine of equivalents (i.e., the accused product is substantially the same
as – or equivalent to – the limitations of the asserted claim(s) of the patent-in-suit).
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the words of the claim. If accused matter falls clearly within the
claim, infringement is made out and that is the end of it.”2
However, the Supreme Court and lower courts have long recognized that requiring copying of
every literal detail of a patent claim for a finding of infringement would permit and encourage
“the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the
patent which, though adding nothing, would be enough to take the copied matter outside the
claim, and hence outside the reach of law.”3
To prevent this undesirable result, a judicial doctrine known as “the doctrine of equivalents” was
developed. It permits a patentee to maintain an action for infringement if the accused device
“performs substantially the same function in substantially the same way to obtain the same
result."4 The theory on which it is founded is that "if two devices do the same work in
substantially the same way, and accomplish substantially the same result, they are the same, even
though they differ in name, form, or shape." 5
The Supreme Court has described the function of the doctrine of equivalents as that of
prohibiting one from avoiding infringement liability by making only “insubstantial changes and
substitutions . . . which, though adding nothing, would be enough to take the copied matter
outside the claim, and hence outside the reach of law.”6 The “insubstantial change” standard is
now widely applied by courts.
The Resolution addresses important policy matters concerning the application of the doctrine of
equivalents, including circumstances in which both the product claimed in (and, therefore,
covered by) the patent-in-suit and the allegedly infringing product were based on presumptively
valid patents issued by the United States Patent and Trademark Office (“USPTO”).
The Resolution would approve policy favoring long-standing judicial precedent that
infringement – whether literal or under the doctrine of equivalents – be proven by a
preponderance standard. The policy further provides that the fact that the accused product or
process is separately patented may potentially be relevant to an infringement inquiry under the
doctrine of equivalents and, therefore, is entitled to due weight. Finally, the Resolution supports
the principle that the separate patentability of the accused product may be particularly relevant
when the patent that is alleged to be infringed was issued earlier and was considered by the
USPTO as prior art against the application for the later patent.
A.
The Saint-Gobain Case: An Overview
2
Graver Tank & Mfg. Co., Inc. et al v. Linde Air Products Co., 339 U.S. 605, 608 (1950).
3
Id.
4
Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42 (1929).
5
Union Paper Bag Machine Co. v. Murphy, 97 U.S. 120, 125 (1877).
6
Supra, n.1.
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This is a patent infringement case in which plaintiff-patentee, Siemens, sued Saint-Gobain for
patent infringement relating to Saint-Gobain’s manufacture and sale of certain products claimed
by Siemens to infringe its patent. A summary of the case, including the decisions at the district
court and intermediate appellate court level, is immediately below.
1.
Factual Background
The technology at issue in this case pertains to positron emission tomography (“PET”) scanners.
PET scanners are used in the medical industry to provide images and information about a
patient’s body. One component of a PET scanner is a radiation detector. The radiation detector
contains scintillator crystals that absorb gamma rays and emit visible light. The emitted visible
light is then converted to reproduce a three-dimensional view of a patient’s body.
Siemens develops, manufactures, and sells PET scanners. In particular, Siemens’ PET scanners
utilize cerium-doped lutetium oxyorthosilicate (“LSO”) scintillator crystals in the radiation
detector. The combination of these LSO scintillator crystals with a photodetector are claimed by
Siemens’ exclusively licensed U.S. Patent No. 4,958,080 (the “Siemens’080 patent”).
Saint-Gobain manufactures and sells scintillator crystals for use in PET scanners. In particular,
Saint-Gobain’s scintillator crystals utilize cerium-doped lutetium oxyorthosilicate and, notably,
contain a 10% substitution of yttrium for lutetium (“LYSO”). The LYSO scintillator crystals are
covered by claims of U.S. Patent No. 6,624,420 (the “Saint-Gobain ’420 patent”), which is
licensed to Saint-Gobain. During prosecution of the application that led to the Saint-Gobain ‘420
patent, the USPTO was made aware of the Siemens’ ’080 patent. Despite knowing about the
Siemens ‘080 patent, the USPTO granted the Saint-Gobain ‘420 patent.7
2.
District Court Proceedings
In 2007, Siemens sued Saint-Gobain for patent infringement in the United States Court for the
District of Delaware. Specifically, Siemens alleged that Saint-Gobain’s manufacture and sale in
the U.S. of its LYSO scintillator crystals infringed the Siemens ’080 patent under the doctrine of
equivalents. Saint-Gobain countered by arguing that the LYSO scintillator crystals were not
equivalent to the LSO crystals of the Siemens ‘080 patent, and that the LYSO crystals cannot be
subject to a valid patent (the Saint-Gobain ’420 patent) and yet constitute an equivalent of
another earlier issued patent (the Siemens ‘080 patent). During the trial, Saint-Gobain sought a
jury instruction that infringement of the Siemens ‘080 patent must be proved by clear and
convincing evidence in light of the existence of the Saint-Gobain ‘420 patent. The trial judge
denied this request, and the jury found that Saint-Gobain’s product infringed Siemens’ ’080
patent under the doctrine of equivalents.
7
This fact leads to the logical presumption that the USPTO considered the invention claimed by the Saint-Gobain
’420 patent (i.e., LYSO crystals) to be new (i.e., novel), and not obvious as compared to the invention claimed in the
Siemens ’080 patent (i.e., LSO crystals) and, specifically, that the 10% substitution of yttrium for lutetium would
not have been obvious to someone of ordinary skill in the art.
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Following a jury trial, Saint-Gobain moved for judgment as a matter of law or for a new trial
based upon the jury instruction concerning infringement. In particular, Saint-Gobain claimed that
the jury should have been instructed that infringement of the Siemens ‘080 patent under the
doctrine of equivalents must be proven by clear and convincing evidence, instead of the normal
preponderance of the evidence standard.
The district court denied Saint-Gobain’s motions. See Siemens Med. Solutions USA, Inc. v. SaintGobain Ceramics & Plastics, Inc., 615 F. Supp. 2d 304 (D. Del. 2009) (vacated in part). In
particular, the district court noted that no court had deviated from the preponderance of the
evidence standard for infringement. Siemens, 615 F. Supp. 2d at 310.
3.
Federal Circuit Panel Decision ( 2/24/11)
On February 24, 2011, a Federal Circuit panel, by a decision of 2-1, affirmed the district court’s
denial of Saint-Gobain’s motion for JMOL or for a new trial, based on an alleged improper jury
instruction relating to infringement under the doctrine of equivalents. Siemens Med. Solutions
USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269 (Fed. Cir. 2011).
a.
Majority Opinion (Lourie & Linn, JJ.)
On appeal, Saint-Gobain argued that the district court erred in its jury instructions regarding
proof of infringement under the doctrine equivalents. Specifically, Saint-Gobain contended that a
heightened evidentiary burden (i.e., something more than a preponderance standard) is required
to find infringement under the doctrine of equivalents in cases where the accused product – or
alleged equivalent in the context of an equivalents analysis – is separately patented. Moreover,
Saint-Gobain argued that the jury’s finding of infringement under the doctrine of equivalents by
a preponderance standard “constructively invalidated” the Saint-Gobain ‘420 patent covering
Saint-Gobain’s accused product. This, Saint-Gobain contended, is legally erroneous since a
patent is presumed valid under 35 U.S.C. § 282, and can only be found invalid under a stricter,
clear and convincing, standard. In support of its argument Saint-Gobain relied on language in an
earlier decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushihi Co., 493 F.3d 1368 (Fed.
Cir. 2007), which stated that “when a device that incorporates the purported equivalent is in fact
the subject of a separate patent, a finding of equivalency, while perhaps not necessarily legally
foreclosed, is at least considerably more difficult to make out.” Siemens, 637 F.3d at 1278.
The majority began by acknowledging that Saint-Gobain “makes an interesting argument, not
illogical, (and ably articulated by the dissent) regarding a correspondence between the
nonobviousness of an accused product, as shown by its separate patentability, and its
infringement of another patent under the doctrine of equivalents.” Id. at 1279. Nevertheless, the
majority rejected Saint-Gobain’s argument that the jury should have been instructed that
infringement under the doctrine of equivalents in this case could only be found by clear and
convincing evidence. In so ruling, the majority relied on the Federal Circuit’s long-standing
precedent that infringement under the doctrine of equivalents is to be proven by a preponderance
of the evidence. The majority also pointed to the U.S. Supreme Court’s decision in Sanitary
Refrigerator Co. v. Winters, 280 U.S. 30 (1929), in which the Supreme Court found equivalence
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without imposing something more than a preponderance evidentiary burden, and despite separate
patentability of the accused product. Siemens, 637 F.3d at 1280.
For several reasons, the majority also rejected Saint-Gobain’s contention that the jury’s
infringement finding was a de facto invalidation of the Saint-Gobain ‘420 patent covering SaintGobain’s accused product. Id. at 1281-1282. First, the infringement finding made by the jury was
under a preponderance standard and, therefore, could not, as a matter of law, invalidate the ’420
patent since, overcoming the presumption of validity of the Saint-Gobain ‘420 patent requires
clear and convincing evidence. Id. at 1282. Second, the principles of infringement and invalidity
“require different analytical frameworks,” and the infringement finding in no way takes into
account secondary considerations of non-obviousness of the Saint-Gobain ‘420 patent, such as
commercial success of Saint-Gobain’s LYSO product, or unpredictability in the field of
crystallization. Id. In addition, the time frames under which the infringement and invalidity
analyses are conducted differ – a notable point raised in Judge Prost’s dissenting opinion.
Specifically, an infringement analysis is conducted at the time of infringement, whereas an
invalidity analysis is conducted at the time the invention was made. Id. Finally, the infringement
analysis conducted here compared the asserted claims of Siemens’ ’080 patent with the accused
Saint-Gobain equivalent only. It did not compare the asserted claims of the Siemens’ patent-insuit with the full scope of the Saint-Gobain ‘420 patent. Id.
b.
Dissenting Opinion (Prost, J.)
Judge Prost issued a dissenting opinion, and would have reversed because the trial court did not
properly instruct the jury that differences between a patent and its purported equivalent cannot be
both nonobvious and insubstantial. Siemens, 637 F.3d at 1291-93 (Prost, J., dissenting).
Judge Prost perceived a tension between the equivalence and nonobviousness inquiries. When a
patentee asserts infringement under the doctrine of equivalents, the patentee attempts to prove
that the feature is insubstantially different from the patented feature. But where the same feature
is claimed as the point of novelty over the patent-in-suit in a separately issued patent, the
patentee crashes into the well-settled presumption that patents are nonobvious over prior art.
Judge Prost disagreed with the majority, which found that obviousness and equivalence are
separate tests. Judge Prost found that there is inevitable overlap. Setting aside the timeframe of
analysis, if a court determined that the difference between a claim limitation and subsequent
patent was insubstantial, “the court would need only a further finding that the skilled artisan had
some reason to make the substitution to find this limitation obvious under Graham and KSR.” Id.
at 1292. Insubstantial differences are predictable, so the reason to combine (and, therefore,
obviousness) is easy to prove when the difference is insubstantial.
Judge Prost cited prior concurrences that recognized a relationship between insubstantial
differences and obviousness. See Roton Barrier, Inc. v. Stanley Works, 79 F.3d 1112, 1128 (Fed.
Cir. 1996) (“[A] substitution in a patented invention cannot be both nonobvious and
insubstantial.”) (Nies, J.); Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 493 F.3d 1368,
1379-80 (Fed. Cir. 2007) (Dyk, J.). Judge Prost would use these concurrences as a guide for fact
finders: “a separately-patented (and presumptively nonobvious) substitution cannot be
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‘insubstantial’ unless some fact distinguishes the equivalence finding from the [US]PTO's earlier
nonobviousness determination.” Id. at 1293. Judge Prost concluded that the trial court committed
reversible error because it did not guide jurors with instructions concerning the presumed
validity of the Saint-Gobain ‘420 patent and its significance on infringement by equivalence. In
particular, Judge Prost found that the trial court should have instructed the jury that equivalence
can be found if and only if the state of the art rendered the allegedly equivalent LYSO crystals
obvious some time after the Saint-Gobain ‘420 patent was granted. Id. at 1293.
4.
Federal Circuit Decision Denying Rehearing (6/7/11)
Saint-Gobain petitioned the Federal Circuit for a panel rehearing, or rehearing en banc. On June
7, 2011, the Federal Circuit issued an order denying Saint-Gobain’s petition. Three judges
authored concurrences in the denial, and judges dissented. See Siemens Med. Solutions USA, Inc.
v. Saint-Gobain Ceramics & Plastics, Inc., 647 F.3d 1373 (Fed. Cir. 2011).
In his dissent from the denial of the petition for rehearing en banc (joined by Judges Gajarsa and
Prost), Judge Dyk agreed with Judge Prost’s panel dissent and framed the question as: “whether,
under the doctrine of equivalents, a patent claim’s scope can encompass a new and separately
patented (or patentable) invention.” Id. at 1378. Judge Dyk observed that the “doctrine of
equivalents is not designed to enable the patent holder to secure the rights to a new invention that
the inventor did not create.” Id. at 1379. In this case, Saint-Gobain requested, but was denied, a
jury instruction to prevent capture of the Saint-Gobain ’420 invention. Judge Dyk reasoned that
the doctrine of equivalents “should not permit patents to be extended to cover new and
nonobvious inventions,” just as the doctrine “cannot extend a patent’s scope to cover prior art.”
Id. citing Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 684 (Fed. Cir.
1990). Judge Dyk concluded that the finder of fact should afford the presumption of validity to
subsequent patents. “In short, a purported equivalent cannot be both insubstantially different and
nonobvious, and in no event should the doctrine of equivalents permit a patent to capture
another's subsequent invention that is novel and nonobvious.” Id. at 1380.
B.
The Policy Recommended in the Resolution is Supported by Well-Established Policy
and Precedent
The Resolution addresses three distinct issues: (1) the burden of proof for establishing
infringement under the doctrine of equivalents; (2) the overall relevance of the separate
patentability of an accused product or process to the establishment of infringement under the
doctrine of equivalents; and (3) the specific relevance of the separate patentability of an accused
product or process when the separate patent is both (i) later in time and (ii) the patent-in-suit was
considered by the USPTO as prior art against the later issued separate patent.
Regarding the first issue, the burden of proof for establishing infringement under the doctrine of
equivalents, the Resolution maintains that the burden should remain as a preponderance of the
evidence standard. This is in line with U.S. Supreme Court and Federal Circuit precedent on the
subject and should be preserved for several reasons.
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First, the law has a long and consistent history maintaining that the burden of proof for
establishing infringement under the doctrine of equivalents is by a preponderance of the
evidence. Because of this precedential history, sound policy considerations support maintaining
the standard. Both patentees and accused infringers know what the standard for establishing
infringement is and both structure their actions in accordance with this standard. Indeed, an
alteration to this long-standing history may result in seismic changes that could substantially
disrupt the courts, patent practitioners, patentees, and accused infringers. Accordingly, by
maintaining the burden of proof as by the preponderance of the evidence, the Resolution adheres
to the long line of judicial precedent and avoids any potential unintended repercussions that may
result in altering the standard.
Second, any substantial changes to the burden of proof under the doctrine of equivalents should
come from the legislature. As noted by the U.S. Supreme Court in Warner-Jenkins Co. v. Hilton
Davis Chem. Co., “Congress can legislate the doctrine of equivalents out of existence any time it
chooses.” 520 U.S. 17, 28 (1997). Accordingly, it follows that Congress could also alter the
standard for proving infringement under the doctrine of equivalents any time it wants. Congress
has just completed a six-year comprehensive review and revision of the patent laws of the United
States, concluding with the enactment of the Leahy-Smith America Invents Act. At no time
during this undertaking did Congress adopt or even consider legislating changes to the doctrine
of equivalents, a fact that suggests that Congress sees no need for change.
Third, having a fluctuating standard for assessing infringement under the doctrine of equivalents
would result in unnecessary waste of judicial resources and flout the recent teachings of
Microsoft Corp. v. i4i Ltd. P’ship, 131 S.Ct. 2238, 2250 (2011). First, having a fluctuating
standard would require judges to make an initial determination of whether the case at hand
would require the preponderance of the evidence standard for infringement or a higher standard
based upon the facts at hand. This additional initial determination may unnecessarily drag out
cases and could encourage clever counsel to raise the issue to extend the pendency of a case
unnecessarily. Moreover, as the Supreme Court recently discussed in Microsoft v. i4i, an
alteration to the standard is unnecessary where the relevant evidence may “‘carry more weight’
in an infringement action.” 131 S.Ct. at 2251. Indeed, by addressing separate patentability as an
issue relating to the relevance of the evidence, the Resolution comports with the Supreme
Court’s Microsoft v. i4i opinion and will not unnecessarily increase the burdens on an already
over-extended judiciary.
Regarding the second issue, the overall relevance of the separate patentability of an accused
product or process, the Resolution asserts that the separate patentability may be relevant to the
establishment of infringement under the doctrine of equivalents. This assertion reflects the policy
and precedent established by the U.S. Supreme Court and Federal Circuit.
The law recognizes that the question of infringement is a separate and distinct issue from the
question of patentability, and that the existence of a separate patent does not automatically avoid
infringement. This separation of infringement and separate patentability is important to maintain
because there are numerous situations where the existence of a separate patent may be irrelevant
to a finding of infringement. For instance, if the separate patent addresses a wholly unrelated
aspect of the accused product or process that is not the subject of the asserted claims of the
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patent-in-suit, the separate patentability may have little or no relevance. Alternatively, if the
claims of the separate patent add additional elements beyond those of the allegedly infringed
claims of the patent-in-suit, the existence of the separate patent may also have little or no bearing
upon the infringement determination of the patent-in-suit. While the foregoing two examples
demonstrate situations in which the separate patentability may be irrelevant or is substantially
less relevant, the Federal Circuit has also recognized that there are situations in which the
separate patentability may affect the assessment of infringement. Accordingly, the Resolution
recognizes the potential relevance of a separate patent by asserting that the separate patentability
may be relevant to a determination of infringement, but that such relevance is not necessarily
present in all circumstances.
Finally, regarding the third issue, the relevance of the separate patentability of an accused
product or process that was issued even when the patent-in-suit was considered by the USPTO as
prior art against the later issued separate patent, the Resolution reflects that the separate
patentability may be of particular relevance to the determination of infringement under the
doctrine of equivalents. This particular relevance is supported both by a growing trend in Federal
Circuit opinions and by policy considerations.
First, the language of the Resolution is supported by and reflects the concerns that have been
expressed by several Federal Circuit judicial opinions. In Roton Barrier, Inc. v. Stanley Works,
79 F.3d 1112 (Fed. Cir. 1996), Judge Nies commented that “[i]t is a truism that the fact that an
accused device is itself patented does not preclude a finding that such device infringes an earlier
patent of another. However, the fact of a second patent, depending on its subject matter, may be
relevant to the issue of whether the changes are substantial. . . . [a] substitution in a patented
invention cannot be both nonobvious and insubstantial.” Id. at 1128. Judge Nies’ opinion
reflected a concern regarding the potential overlap between the doctrine of equivalents and nonobviousness. These concerns were further addressed in the Federal Circuit’s opinion in Glaxo
Wellcome, Inc. v. Andrx Pharm., Inc., 344 F.3d 1226 (Fed. Cir. 2003), where the separate
patentability of Andrx’s drug was “[a] fact [that] may be weighed by the district court,
particularly if there is an issue of “insubstantial” change with respect to equivalency, [but]
separate patentability does not automatically negate infringement.” Id. at 1233. Finally, the
Federal Circuit opinion in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushihi Co., 493 F.3d 1368
(Fed. Cir. 2007) reiterated that:
We have not directly decided whether a device-novel and
separately patentable because of the incorporation of an equivalent
feature-may be captured by the doctrine of equivalents, although
we have held that when a device that incorporates the purported
equivalent is in fact the subject of a separate patent, a finding of
equivalency, while perhaps not necessarily legally foreclosed, is at
least considerably more difficult to make out. But there is a strong
argument that an equivalent cannot be both non-obvious and
insubstantial.
Id. at 1379-80. The proposed Resolution addresses these concerns by establishing that the
separate patentability may be particularly relevant where the separate patent is both later in time
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and the patent-in-suit was considered by the USPTO as prior art against the application for the
later issued separate patent.
Second, as a matter of policy, giving particular relevance to the separate patentability where the
separate patent is both later in time and the patent-in-suit was considered by the USPTO as prior
art against the application for the later issued separate patent, is supported by both logic and
fairness. The doctrine of equivalents was developed to permit patentees to capture infringing
products that are insubstantially different from the claimed invention. As noted by the Supreme
Court, “to permit imitation of a patented invention which does not copy every literal
detail . . . would leave room for—indeed encourage—the unscrupulous copyist to make
unimportant and insubstantial changes and substitutions in the patent which, though adding
nothing, would be enough to take the copied matter outside the claim.” Graver Tank Mfg. v.
Linde Air Prods. Co., 339 U.S. 605, 607 (1950). Accordingly, the doctrine of equivalents was
intended to encompass only changes which “add nothing.” In contrast, one of the primary
functions of our patent system is to encourage inventors to create innovations that are both new
and non-obvious over what is known—essentially contributing something beyond the prior art.
See, e.g., 35 U.S.C. §§ 102, 103. When a patent is issued by the USPTO, it is presumed that the
patent has met both the new and non-obvious requirements. However, a possible inconsistency
results when the two concepts of insubstantial differences and non-obviousness overlap. To
address this overlap, the Resolution calls for recognition that a separate patent may be
particularly relevant when it has been issued over the patent-in-suit. The Resolution both
preserves the presumed adequacy of the USPTO’s examination of the patent application by
permitting due weight to be given to the separately issued patent while still permitting
infringement to be found under the doctrine of equivalents.
In addition, by permitting particular relevance to be given to the separately issued patent, the
Resolution also preserves fairness in the patent system for both the patentee and others who may
rely upon the USPTO’s determination of patentability, but without giving undue weight to the
later patent.
C.
Conclusion
For the foregoing reasons, the Section of Intellectual Property Law urges the Association to
adopt the Resolution, and to provide policy in support of the submission of an ABA amicus
curiae brief in the case of Saint-Gobain Ceramics & Plastics, Inc. v. Siemens Medical Solutions
USA, Inc. (Supreme Court Docket No. 11-301), or in another judicial proceeding presenting the
same or similar issues.
Respectfully submitted,
Robert A. Armitage, Chair
Section of Intellectual Property Law
February 2012
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GENERAL INFORMATION FORM
Submitting Entity:
Section of Intellectual Property Law
Submitted by:
Robert A. Armitage, Section Chair
1.
Summary of Resolution
The resolution calls for the Association to adopt policy reinforcing long-standing judicial
precedent that patent infringement under the doctrine of equivalents be proven by a
preponderance of the evidence, and not some heightened evidentiary standard, such as
clear and convincing evidence, even when a product or process accused of infringement
is, itself, separately patented. The resolution, however, also acknowledges that the fact
that an accused product or process accused of infringement is separately patented may be
relevant to the issue of infringement under the doctrine of equivalents, and is entitled to
due weight. This is especially so when the separate patent issued later than the patent-insuit, and where the U.S. Patent and Trademark Office considered the patent-in-suit as
prior art against the application for the later issued separate patent.
2.
Approval by Submitting Entity
The Section Council approved the resolution on November 11, 2011.
3.
Has This or a Similar Resolution Been Submitted to the House of Delegates or Board of
Governors Previously?
Yes. The House of Delegates has previously adopted the following recommendations
relating the doctrine of equivalents.
At the Midyear Meeting in January 1994, the House of Delegates approved a resolution
favoring that, when determining infringement under the doctrine of equivalents, (1)
consideration be given to any relevant factors supported by the evidence, including but
not limited to certain specified factors, and (2) the range of equivalents that may be
determined to be an infringement be discretionary.
At the Annual Meeting in 2001, the House of Delegates adopted the following policies
that are important in maintaining the doctrine of equivalence as a viable and useful
principle of patent law: (1) oppose in principle the concept that an amendment to a patent
claim shall necessarily operate as a bar to all equivalents with respect to the amended
language of the claim; and (2) oppose in principle an absolute bar to the application of the
doctrine of equivalents with respect to unclaimed subject matter that is disclosed in the
specification of a patent.
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4.
What Existing Association Policies are Relevant to This Resolution and Would They be
Affected by its Adoption?
The policies referenced in paragraph 3 are similar to this recommendation in that they
address the same broad subject of proving patent infringement under the doctrine of
equivalents, but they are not directly relevant to this recommendation, and would not be
affected by its adoption.
5.
What Urgency Exists Which Requires Action at This Meeting of the House?
On September 6, 2011, Saint-Gobain Ceramics & Plastics, Inc. filed a petition for writ of
certiorari with the U.S. Supreme Court (Docket No. 11-301), challenging a decision from
the U.S. Court of Appeals for the Federal Circuit, and on issues relating to this resolution.
On November 7, 2011, the Supreme Court invited the Solicitor General to file a brief
expressing the views of the United States in the case. The resolution would support the
filing of an ABA brief amicus curiae. The resolution and report cannot be considered by
the House of Delegates at a time later than the 2012 Midyear Meeting since the deadline
for filing the amicus brief in the Supreme Court will be reached before the next meeting
of the House of Delegates.
6.
Status of Legislation (if applicable)
The status of the issue is discussed in the preceding paragraph. There is no legislation
applicable to this resolution.
7.
Brief explanation regarding plans for implementation of the policy, if adopted by the
House of Delegates.
The policy would be used to support the filing of an ABA brief amicus curiae, as
described in Item 5 above.
8.
Cost to the Association (both direct and indirect costs).
Adoption of the recommendations would not result in additional direct or indirect costs to
the Association.
9.
Disclosure of Interest
There are no known conflicts of interest with regard to this recommendation.
10.
Referrals
This recommendation is being distributed to each of the Sections and Divisions and
Standing Committees of the Association.
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11.
Contact Person (prior to meeting)
Donald R. Dunner
Section Delegate to the House of Delegates
Finnegan, Henderson,
Farabow, Garrett & Dunner LLP
901 New York Avenue, N.W.
Washington, DC 20001-4413
Ph: 202 408-4062
Fax: 202 408-4400
don.dunner@finnegan.com
Cell: 202 251-1893
12.
Contact Persons (who will present the report to the House)
Donald R. Dunner (See item 10 above)
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EXECUTIVE SUMMARY
1.
Summary of the Resolution
The resolution calls for the Association to adopt policy reinforcing long-standing
judicial precedent that infringement under the doctrine of equivalents be proven
by a preponderance of the evidence, and not some heightened evidentiary
standard, such as clear and convincing evidence, even when a product or
process accused of infringement is, itself, separately patented. The resolution,
also acknowledges that the fact that an accused product or process accused of
infringement is separately patented may be relevant to the issue of infringement
under the doctrine of equivalents, and is entitled to due weight. This is especially
so when the separate patent issued later than the patent-in-suit, and where the
U.S. Patent and Trademark Office considered the patent-in-suit as prior art
against the application for the later issued separate patent
2.
Summary of the Issue that the Resolution Addresses
In litigation involving allegations of patent infringement, the patentee has the
burden to show that one or more patent claims describe the accused device or
process literally or under the doctrine of equivalents.1 The burden of proof for
showing infringement has long been held to be by a preponderance of the
evidence.
In its petition for a writ of certiorari, Saint-Gobain contends that a heightened
evidentiary standard (i.e., clear and convincing evidence) should be required
when proving infringement under the doctrine of equivalents where the accused
product or process (i.e., purported equivalent) is claimed in a separately issued
United States patent. Specifically, Saint-Gobain argued to the U.S. Court of
Appeals for the Federal Circuit that the district court erred in not instructing the
jury on this heightened evidentiary standard. The Federal Circuit disagreed with
Saint-Gobain, and held that, while perhaps relevant to the issue of infringement
under the doctrine of equivalents, the fact that the accused product or process is
separately patented does not require a heightened evidentiary standard to prove
infringement under the doctrine of equivalents. The Federal Circuit further
disagreed with Saint-Gobain that the jury’s infringement finding below
presumptively invalidated the later-issued patent covering Saint-Gobain’s
accused product.
1
The doctrine of equivalents prohibits one from avoiding infringement liability by making only
“insubstantial changes and substitutions . . . which, though adding nothing, would be enough to take the
copied matter outside the claim and hence outside the reach of law.” Graver Tank & Mfg. Co. v. Linde Air
Prods. Co., 339 U.S. 605, 607 (1950). The “essential inquiry” under the doctrine of equivalents is whether
“the accused product or process contain[s] elements identical or equivalent to each claimed element of
the patented invention.” Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997).
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3.
Please Explain How the Proposed Policy Position will Address the Issue
The policy advanced by the resolution above would support the filing of an ABA
brief amicus curiae addressing the issue of the proper standard for proving
infringement under the doctrine of equivalents, especially when the accused
product or process is, itself, separately patented. More specifically, the policy
would support a brief taking the position that infringement under the doctrine of
equivalents is to be proven by a preponderance of the evidence, and not by a
heightened, clear and convincing evidence, standard. The policy would further
support a brief taking the position that the fact that an accused product or
process is separately patented may be relevant to the issue of infringement
under the doctrine of equivalents, and is entitled to due weight, especially where
the separate patent covering the accused product or process issued later than
the patent-in-suit, and where the patent-in-suit was considered by the U.S.
Patent and Trademark Office as prior art against the application for the laterissued separate patent.
4.
Summary of Minority Views
None known at this time.
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