Fitch, Even, Tabin & Flannery LLP: Saint-Gobain—Standard of Proof Under the Doctrine of Equivalents

Fitch, Even, Tabin & Flannery LLP: Saint-Gobain—Standard of Proof Under the Doctrine of Equivalents

By Allen E. Hoover

On May 29, 2012, the U.S. Supreme Court denied a petition for certiorari filed by Saint-Gobain Ceramics and Plastics, Inc., in Saint-Gobain Ceramics & Plastics, Inc. v. Siemens Medical Solutions USA, Inc. The Court's action is consistent with the concept in certain of its prior decisions that evidentiary standards in patent cases should not vary case by case based on the specific facts in each case.

In this case, Siemens sued Saint-Gobain for patent infringement. The accused Saint-Gobain product was alleged to be covered under another patent. After finding infringement under the doctrine of equivalents, the jury awarded Siemens a verdict of $52 million. Saint-Gobain challenged the verdict on several grounds, including the standard of proof on which the court instructed the jury. Historically, in patent infringement cases, courts have held the standard of proof for infringement is "preponderance of the evidence," irrespective of whether infringement is alleged to be literal or under the doctrine of equivalents. Saint-Gobain argued that proof of infringement under the doctrine of equivalents should require a higher standard of proof where there exists another patent that covers the accused device, because the jury's verdict under the doctrine of equivalents called into question the validity of the other patent that covered its device.

The Federal Circuit [enhanced version available to subscribers] rejected Saint-Gobain's argument. The court first observed that in light of the higher "clear and convincing" standard of proof required to establish patent invalidity, the jury's finding of infringement under the lower "preponderance" standard was insufficient to affect patent validity. The Federal Circuit also observed that different analyses were required for determining infringement under the doctrine of equivalents versus determining patent invalidity.

In denying Saint-Gobain's petition for certiorari, the Supreme Court left standing the Federal Circuit's decision that applied the preponderance of the evidence as the burden of proof. The Federal Circuit's decision is significant for companies asserting patents under the doctrine of equivalents in infringement litigation.

For further information, please contact Fitch Even partner Allen E. Hoover, the author of this alert.

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