KSR and the Doctrine of Equivalents
Lots of people have probably figured this out already … but I’m inspired to write about it anyway. I’ve just finished a delightful trial court opinion where the principles I’m about to describe were deployed, albeit unsuccessfully, by an accused infringer. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., No. 01-10165, 2007 WL 4305933 (D. Mass. Dec. 11, 2007).
KSR makes it marginally more likely that a given patent claim is unpatentable/invalid for obviousness. Interestingly, KSR also makes it marginally less likely that a given claim is infringed by a given accused item under the doctrine of equivalents.
How so? Well, it’s all about Wison Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677 (Fed. Cir. 1990).* Under Wilson, “a patentee should not be able to obtain, under the doctrine of equivalents, coverage which he could not lawfully have obtained from the PTO by literal claims.” Id. at 684. Put simply, one cannot use the doctrine of equivalents to reach subject matter that was in, or would have been obvious in light of, the prior art. Moreover, the burden is on the patentee to prove infringement … which, in this context, means that the burden is on the patentee to show that a hypothetical claim just broad enough to literally cover the accused item would not have been obvious in light of the prior art.
So … all other things being equal, after KSR it is more likely that a patentee will fail to show that its hypothetical claim would have been patentable (i.e., would not have been obvious) over the prior art. If a patentee fails to make this showing, equivalent infringement is foreclosed.
* For additional applications of the Wilson Sporting Goods approach, see, e.g., Abbott Labs. v. Dey, L.P., 287 F.3d 1097 (Fed. Cir. 2002); Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371 (Fed. Cir. 2001); Streamfeeder, LLC v. Sure-Feed Sys., 175 F.3d 974 (Fed. Cir. 1999).
KSR makes it marginally more likely that a judge (or examiner) who is no ordinary artisan by any stretch of reasonable imagination in a given art will nonetheless rule himself to be one despite lack of any evidence to support the proposition.
Comment by step back — December 28, 2007 @ 3:45 am
Joe,
You wrote “KSR makes it marginally more likely that a given patent claim is unpatentable/invalid for obviousness.”
Earlier, many commentators argued that KSR is a SEA CHANGE.
I have not been studying the results of KSR – which one is it?
i.e. does KSR knock out a LARGE fraction of patents/patent applications, or is the change more subtle.
Thanks,
AnoymousAgent
Comment by anonymousAgent — January 7, 2008 @ 7:53 am
Anon,
I’m actually in the “sea change” camp. By “marginally,” I didn’t mean “only a little bit” (although I see it’s reasonable to read it that way – sorry for the confusion). Rather, I meant that it shifts the likelihood over for everyone, so all the patent claims that were near the borderline are now over the borderline (into invalid territory).
Of course, I can’t definitively state (yet) whether it’s a big change or not, because not enough time has gone by. Conceptually, it’s a big change. The new PTO Guidelines, for example, reflect a large number of rationales for concluding that an invention would have been obvious (beyond the suggestion test). Is it a big change numerically? Again, I think it’s too soon to tell.
Best,
Joe
Comment by Joe — January 7, 2008 @ 8:28 am
Has anybody else noticed that in KSR
(a) the Supremes held that all courts should look at collocation/combination, but
(b) they never applied that test to the facts before them but decided the case on other and more conventional grounds?
One of their law clerks should be blushing by now!
Comment by Paul Cole — January 11, 2008 @ 4:17 pm