Wilson Sporting Goods Co. v. David Geoffrey & Associates
904 F.2d 677 (1990)
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Rule of Law:
A patentee cannot obtain coverage for an accused product under the doctrine of equivalents if a hypothetical patent claim, broad enough to literally cover the accused product, would have been unpatentable over the prior art.
Facts:
- Wilson Sporting Goods Co. (Wilson) obtained patent '168 for a golf ball design where dimples are arranged on the surface so that none of them intersect six imaginary 'great circle' paths.
- The goal of Wilson's patented design was to create a ball with six axes of symmetry, an improvement over prior balls.
- Prior to Wilson's invention, a golf ball sold by Uniroyal in the 1970s featured a similar icosahedral dimple pattern with six great circles, but approximately 30 dimples intersected these circles by 12-15 thousandths of an inch.
- Another piece of prior art, a 1932 British patent to Pugh, taught dividing a golf ball surface into an icosahedron and subdividing its triangles, a method similar to that used in Wilson's patent.
- Dunlop Slazenger Corporation (Dunlop) manufactured and sold golf balls that used an icosahedral pattern with six great circles.
- On Dunlop's accused golf balls, a number of dimples (between 30 and 60 depending on the model) slightly intersected the great circles by small amounts (4-9 thousandths of an inch).
- Wilson's patent claims literally require the great circle paths to have zero intersections with any dimples.
Procedural Posture:
- Wilson Sporting Goods Co. sued Dunlop Slazenger Corporation for patent infringement in the U.S. District Court for the District of South Carolina.
- In a separate action in the same court, Wilson sued David Geoffrey & Associates (DGA), a distributor for Dunlop.
- The case against Dunlop went to a jury trial, which resulted in special verdicts finding Wilson's patent '168 to be valid and willfully infringed.
- The trial court magistrate entered a judgment of liability against Dunlop based on the jury's verdict.
- Dunlop filed a motion for judgment notwithstanding the verdict (JNOV), which the trial court denied.
- Wilson then moved for summary judgment against DGA, arguing that the judgment against Dunlop created collateral estoppel.
- The trial court granted summary judgment against DGA.
- Dunlop and DGA (appellants) each appealed the respective judgments against them to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does the doctrine of equivalents permit a patentee to claim infringement by a product when a hypothetical patent claim, written to literally cover the accused product, would be unpatentable due to obviousness over the prior art?
Opinions:
Majority - Rich, Circuit Judge.
No. A patentee cannot obtain, under the doctrine of equivalents, coverage which it could not have lawfully obtained from the Patent and Trademark Office (PTO) with literal claims. The court reasoned that the doctrine of equivalents exists to prevent fraud on a patent, not to grant a patentee protection over subject matter that is in the public domain. To determine the limit imposed by prior art, the court established a new analytical framework: one must envision a hypothetical patent claim broad enough to literally read on the accused device. The court then must assess whether that hypothetical claim would have been patentable over the prior art. Here, a hypothetical claim covering a ball with up to 60 dimples intersecting great circles by up to 9 thousandths of an inch is not patentably distinct from the prior art Uniroyal ball, which had 30 intersecting dimples by 12-15 thousandths of an inch. Because this hypothetical claim would have been obvious over the prior art, Wilson is precluded from asserting that Dunlop's balls infringe under the doctrine of equivalents.
Analysis:
This decision established the 'hypothetical claim' analysis as the definitive framework for applying the prior art limitation on the doctrine of equivalents. It provides a more structured and predictable methodology than simply comparing the accused device to the prior art. The ruling clarifies that the burden is on the patentee to prove that the scope of equivalency they seek does not impermissibly encompass what was already in the public domain. This approach reinforces the principle that the doctrine of equivalents cannot be used to expand a patent's scope to cover what would have been unpatentable in the first instance.
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