Amicus Curiae Brief — Standard Industries, Inc. v. Tigrett Industries, Inc.

é

\

IA

Opinions helow :

-Jrutsdiction eer

~ Question presented :

Interest of the U nited States

St: iteme nt

Introduction and summary of argume nt”

sr

The doctrine of @quiv: alents, conflicts with

American Chemical Paint Co.

117 I. 2d 927

v. Convertibl

the dominant

patent system ; :

A. The statutory requirement of precise

claiming is designed to safeguard the

public from unjustified assertions of

monopoly power aay :

B. The doctrine of equiv alents i is INconsist-

ent with the purposes of the statutory

policies of the -

a 4%

requirement of precise claiming

without

retention

_ doctrine of equivalents ”

Conclusion

+, Sages: *

Advance Rumley Mig. Co.

275 led.

Prod. ('o.,

Avo Mfg. Co.

3360

A vtogiro V.

CITATIONS

249

United Ntate x,

I

ot

federal

The rights of patentees would adequately be

protected

the

John Laiuson Be

Top ('o.,

ie bire starve

363 U5

10, 14, 16,

384 F.2d 39]

‘Steel

4)

a iN .

4H)

Cases—Continued

* Brenner-v. Manson, 383 US. 519 14,16

Burr v. Duryee, 1 Wall. 531 sa

Rutles. Inve, 87 F. W028. A: eee. 8

Chicago Steel Foundry Co. v. Burnside Steel

Foundry Co., 132 F.2d S812 Sraeaes 9:

Claude Neon Lights vB. Machlett & Son, 36

~ V. 2d 574 aa . i,

Compco Corp. v. Day-Brite Lighting Ine., 376 —

U.S, 234... me es ae Pura 13

Evans vy. Baton, 3 Wheat. 454, d2

Frick Co. v. Lindsay, 27 VF. 2d 59) | eas IS

General Electric Co. v. Wabash Appliance Corp., }

- 304 U.S. 364... Bre

Graham v. John Deere Co., 383 U.S. 1 a i 15.2)

Graver Tank & Mfg. Co. v. Linde Air Products

(‘9:, 339 U.S. 605_._- oat ag UR, Tay Oe dg

Halliburton Co. v.. Walk roe Lie | s, 19

Hogg v. Emerson, 6 How. 436 12

Incandescent Lamp Patent, 159 US. 465 20)

James’ P. Marsh Corp. v. United States Gauge

Co., 129 F.2d 16! Sh 9

Keith v. Charles LE. Hires Co., AAO. 2d 46 IN.

Keystone Bridge Co, v. Phoenix Tron Cor, 95 |

U.S. 274 eed 10, 21

Lear, Inc. v. Adkins, 395 U.S. 658 5.6, 15, 21

Marcon? Wireless Co. ve United States, 326

Tf Sano fe fo. 10

McKee; In re, 95 F. 2d 267-2. 2-5 -- 20

Milcor Steel Co. v. Fuller Co., 316 U.S. 148 10.

Minerals Separation v. Butte Mining Co., 2p0)

U.S. 336 10)

O'Reilly v. Morse, 15 Wow. 62. ss 20)

Pemco Products, Inc. v. General Mills, Ine.,>

261 I. 2d 302

a } -

“IEI

Cases—Continued - a re [

Sanitary. Refrigerator Co. ve Winter, 280 U.S.

ee es Sethe eet Rig GeO ay

Schechter, Application of, 205 F.2d 185

Sears, Roebuck & Co.v. SUiffel Co. 376 US, 225

Smith vo Magte City Kennel Club, Ine. 2s2

UR tees ve : owe ae

Sontag Stores Co., We Vel Cw. 31030 .S,..28T.. |

“Sperry Vv. Florida, 373 U.S. 379

- Steenbock, En ve, 83 ¥. 2d:912. 3.2. 2. eee. 2

Stuart Oxygen Con. Josephian, 162 b. 2d 857

United Carbon Co.v. Binney Co., 317 U.S, 228

le nited States v. Masonite Corp.. 316 Es. 265

Universal Oil Products Co. v. Globe Oil &

Refining Co., 322 U.S. 471-2

White v. Dunbar, 119 U.S. 47.

Wiyans v. Denmead, 15 How. 330

Constitution and Statutes:

, Constitution, Art..I, §8, cl. §

. § Stat. IEG.

16 Stat. 201__ =. -., _ on

Rey. Stat. S$4SSS8 (1875). as amended. 3S

Stat. 958, 35 U.S.C. 33_

URS aS eee ee ee

35 U.S.C. 102 React 2

35 U.S.C. 103 | Se en

35 U.S.C. 112 go ee te eee

35 U.S.C. 251

9:06... See. ne Ae

The Statute of Monopolies, 21 Jac. T, ¢. 3.27 -

*9

.

vt

—_

=

ne

Gn the Supreme Court of the United States

es OCROBER TeRM, 1969 | | |

~ No. 445

—Stranparp INpustRieEs, INC., PETITIONER

v.

TiGRETT INDusTRIES, INC., ET AL.

' ON WRIT OF CERTIORARI .TO THE UNITED STATES COURT OF

APPEALS FOR THE SIXTH CIRCUIT

_ BRIEF FOR UNITED STATES AS AMICUS CURIAE

~

OPINIONS BELOW

The opinion of the United States District Court for

the Western District of Tennessee (App. 37a—46a ; 162

U.S.P.Q. 32)' is not officially veported. The ‘court of

appeals’ opinion (App. o3ad- cei is: —- at 411

F. 2d 1218.

JURISDICTION |

The judgment of the court of appeals was entered’

on May 27, 1969. The petition for a writ of certiorari

was filed on August 8, 196, and was granted on Octo-

ber 27, .1969. The jurisdiction of this Court rests on |

28 U.S.C. 125 »4(1). |

“App.” refers to the Appendix filed by the petitioner in this

Court. ie mit

(1)

2

QUESTION PRESENTED

The United States will discuss the following ques- .

tion, which is fairly compreliended within Point IH

of the petition and Question 2 of petitioner’s brief on

the merits: |

W hether the judic ially-created doctrine of equiva-

lents, applied by the courts below, conflicts with basic

policies of the federal patent system and should there-

fore he rejected or fundamentally 1 ‘evised as a stand-

-ard of patent infringement.”

INTEREST OF THE UNITED STATES

The doctrine of equivalents permits a patent owner

to enforce monopoly power over devicés related to

the subject of his. patent even though not expressly

within the scope of the claims of his patent and, there-

fore, not, within the scope of the liniited monopoly to

which the Patent Office has ruled he is entitled. The

result is to leave the patent owner’s competitors and

the general public uncertain as to the boundary between

_ permnissible enterprise and impermissible: infringmenit,

‘ thus hindering the creative enterprise of both. We be-

lieve ‘that this result is contrary to the balance achieved

in the Constitution and the patent statutes between the

general social and economic policy favoring free. com-

petition and the policy of granting a limited reward

to inventors in order to promote the progress of sci-

ence and the useful arts. Indeed, we believe that the

?The United States intimates no view with respect to the

parties’ contentions on other questions not discussed in this

br ief.

3

doctrine of equivalents, as it has been judicially de-

veloped, hinders, rather than promotes, , the techno- .

logical progress that is the goal of the system. The

importance of the issue to the national economy and

to the proper functioning of the federal patent system

~has led the United States to file this brief. amicus

curiae.

STATEMENT |

The principal facts relev: ant to the equivalents issue —

are set out in the opinions of the district court (App.

37a—-46a) and of the court of appeals (App. 53a9-

93a12). Respondent John B. Tigrett licensed respond-

ent Tigrett Industries, Inc., to use his patent (U.S.

Patent: No. 3,162,865) on a children’s play pen in re-

turn for continuing royalties (App. 41a—43a, 53410).

Petitioner succeeded to this license by assignment

(App. 42a, 54a-63a). Under the assignment agree-

ment, petitioner was obligated to pay royalties to the

respondents on ‘‘covered products”. that petitioner

manufactured utilizing the patent (App. 62a). Peti-

tioner subsequently refused to pay royalties on cer--

tain play pens it produced, contending that they were

not “covered products” within the scope of the patent

grant (App. 41a—-44a, 53a10). Respondents then

brought this suit against petitioner for royalties al-

legedly due. |

Claim One of the patent reads as follows :

An article of infant: furniture comprising a

top frame member, a base plate, a flexible net-

ting having a general tubular form’ suspended

from said top frame member, and extending

4

downwardly for receiving the said base plate

and presenting same in normal planar relation

to the axis of said tubular netting, said netting

_at its lower end extending inwanglyterenth

said base plate, drawstrings engaged to the

lower end edge of ‘said netting beneath said

base plate, said base plate having a pair of

spaced openings,:| said drawstrings —_ being

threaded upwardly through said. openings in

said base plate and being mutually fixedly en-

gaged above said base plate for providing .a

grip for convenient manipulation for said net-.

ting to elevate said base plate by upward pull-

ing on said grip, a bottom frame member in

planar parallel relation to said top frame

member and disposed below said base plate for

support thereof, legs engaged at their upper

ends to said top frame member and extending

downwardly therefrom, ‘and means for engag-

ing said bottom frame member to said legs

[ Emphasis. supplied].

Petitioner’s main contention’ was that the play ‘pen

in question was not within Claim One of the patent

because its base plate had only a — opening

instead of “a pair of spaced openings’”’ as specific ally

described in the Olaim (App. 44a). ,

The district court held that petitioner’s play pen

was covered by the patent, notwithstanding the differ-,

ence in structure. It ruled that the doctrine of equiva-

lents was “applicable here because the two structures

work in’ substantially the same way and with the

same result’’- (App. 44a). Accordingly, the court held

that respondents were entitled to recov er the unpaid

royalties (App. ee

5

In a per -curiam opinion, the court’ of appeals

affirmed the district Court’s decision (App. 58a9-

53a11).

. INTRODUCTION AND SUMMARY OF ARGUMENT

_ Patent monopolies are narrowly delimited exeep-

tions to the competitive free-enterprise system.’ The

Patent Clause of the Constitution and the patent

statutes carefully restrict’ the scope of patent monop-

lies and the method by which they may be achieved,

so as to: allow and encourage the exploitation of

science and the useful arts by the public. The doctrine

of equivalents undermines this, policy by permitting

judicial expansion of -patent monopolies beyond the

scope granted by the Patent Office and upheld as

valid in the judicial proceedings themselves—since

hoth. issuance and validity are, in accordance with

the statutory scheme, determined on the basis of the-

patentee’s claims, but the doctrine of equivalents has

not been so limited. By thus’ broadening the area

foreclosed from public use by a patent, the doctrine

discourages inventive efforts and commercial enter-

puise by the patentee’s competitors‘and confers com-

petitive advantage on the patentee in contravention

of statutory requirements. |

This case presents an appropriate occasion for

reexamination by this Court of the validity of the

doctrine of equivalents. Although the Court sustained

* See, e.g., Lear, Inc. v. Adkins, 395 U.S. 653, 663; Graham v.

John Deere Co., 383 U.S. 1, 5-6; Sears, Roebuck & Co. v. Stiffel

Co., 376 U.S. 225, 229-231. : eh

373-202—70——2

: * (

the dectrine twenty years ago in Graver Tank & Mfg.

Co. v. Linde Ati Products -Co., 339 US. 605, that

decision failed to give adequate weight to the statu-

tery changes which have occurred since the doctrine’s

origins, and is antithetical to federal patent policy

as alticulited by this Court in important, more recent

decisions. Since the holding of the courts Delow. that

“petitioner infringed! respondent's patent is dependent

upon the validity of the principles of Graver, and

since, petitioner has broadly challenged the applica-

tion here of the equivalents doctrine at every stage

of the proceedings (cf. Lear, Tne. vy. Adkins, supra,

395 U.S. at 662 1. 10), the oceasion Is appropriate for

this Court to reconsider the premises of the Graver

decision. - if

We shall show first that the doctrine of equivalents,

as presently interpreted, subverts the federal paterit

policy defined by the Constitution, the patent statutes |

and decisions of this Court. We shall then show that

the legitimate rights of patentholders can adequately

he protected by the courts and by administrative

procedures provided for by statute, without resort to

judicial expansion of patent monopolies through use

of the equivalents doctrine, Our conclusion is that rejec-

- tion of the doctrine, in favor of a test of infringement

more specifically focused on the patentees’ claims, would.

properly vindicate federal patent policy without hin-

dering appropriate equitable adjustment of any con-

flict between the -patentees’ rights and the public —

* Although petitioner is in effect a licensee, the parties agrees in

the district court that the issue was essentially the same as infringe-

‘ment (App, 45a).

7.

interest in encouraging competition and furthering

technological progress. .

ARGUMENT

THE DOCTRINE OF EQUIVALENTS CONFLICTS WITH, THE

DOMINANT POLICIES OF THE FEDERAL PATENT SYSTEM

The Patent Clause of the Constitution authorizes.

Congress “To promote the Progress of Science and

useful ‘Arts, by securing for limited Times to * * *

Inventors the exclusive Right to their * * * Dis-

coveries.” Art. I, &8, cl 8 The statutory system

devised to give effect to the Patent Clause reflects

congressional balancing, on the-one hand, of an inter--

est in conferring a competitive advantage on inventors

in order to encou ‘age and reward invention and dis-—

closure thereof, with, on the other hand, the more -

pervasive policies of fostering competition and en-

couraging the economic exploitation of knowledge and

technology by the public. In Cufiersal OF] Products

Co. Vv. Globe Oil d& Refining Co., 322 U.S. 474, 454.

this Court explained the reasoning underlying the

statutory scheme as follows: |

- As a reward for inventions and to enceourxee

their disclosure, the United States offers a

seventeen-vear monopoly to an inventor. who

refrains from keeping his invention a trade

secret, But the quid pro quo is disclostire of a

process or device in sufficient detail te erable

one skilled in the art to practice the invention

once the period of the monopoly has expired:

and the same precision of disclosure is likewise

- ‘

s

es

gt 4 -

essential to Warn See industry. « ‘is

Te a ct { AWWatt ii. i Pate lis © (°t) yare It if qt t i

’ v4 ene ! By I, . ‘ ]

bi Se seaope of The Miehtopoaly asserted,

; m

oss Geis dened i deta the conddtions that

°

Wisc peswactl To-warrant. the @rhit of ep; ii

y a } ; ‘ at ;

poly as a caveldaily-Tinites Che UIMG Poi Te CoM

: types an sae

Pete Hori. Pairst, ao patent mav be eranted only.

ae BRYA) sacha i ora) re i° pee “gape *y : 4° “ae ] rca tae]

= Eee 497) Mito TnVventS of discovers a WOW A ASOT

5 ae ; Be Be piers, SS oe Rh a i

iene hiet On PPacoss { +>} i oh YN i}t I PMO al prstors

ghantops prontorted af the agdhe@ed invention tiad wee

Vieuishy bea lene ot sca! by whother: Beit, A",

eh Seen a als EEE goat MS Pee | Mie ‘

. binrd, the subject pAatter qaiisthot fe obvious

Ths those skilled in the-art (35 ULS.c, 103). And, OF

SS pruelpal importance in ihe present contest, the in

veritor ninst fully define and explain the prodiiet an.

process he claims as his invention. Phat is. the inves

Ton ackt its use miat be deseribedk in suebh of

; coneises and exact terms” that the pubiwe is tagih

foo dnake ond use it: TOPO, the Sb geet hitter OF

&

! eee Cae ee ht 4 ious fansel ee ; H : '

The Giventon must be particenlarly potted out sid

Y Ser #4 “te

beet veeice : theo : ne kacatirece Maine en. ee RN

tibethiretl! charnined. in thie Perea CPVARIS fea, Sen

2 hd ae ae , + oF eae

- PORY REQUIREMENT OF PRECISISCLADMENG [S DESIGNED

RDP PORLIC OPROAD, UNGUSTIFERD ASSEETIONS OF

.

.

< » sot’ MR R

i rotg NN INE te amt a. pea ee Ps agate

Pee VCHIPOCMONT OF sSpeenicitv th Section PI and

. ; a ; . :

iis predecessors “serves 2 dual pchev—to tpsure dedi

ae See eae

My Stet. 2d € ISTO): Rev. Stat. ISSN CISTS). a iinemeledd. 38

- ‘yee j . oe ae a os tye b . P

re ef OA (Ito), Oo TSC, 3 61946). For’ an esanple of

Wwikeint enforcement of this staiutory requirement. sce (ida,

on Cane Valkey, 229 US. 1. And sco While: Divhar. 19S.

“ _— -~-* - F

x '

i

4 '

‘ iy { j ' fia & ; I ( ‘ i :

‘o ' : ‘ ° 3 ' 4

Rye om REY Gowen d Pad ME i Dba Petite ry Pike weGry Peak OE Gee i em a ee

. . “was ‘

. . °

.a% si Rite we Sng lend See bes 408 . . ey 7 % :

biilhs AGP B vars fe Oe ree OCG @ ori dee fe thie: Wb eee 2 Ye ar

2 ; a

ie lesa v A tA cs . is 4 * : = re ae ania t pe

WTOC scr Val the posits OER Le Cobbs titors ey Oa aes if -

1. 4 \s beat oxy a} :33 i! H 1 1 \" 1) Neate vat “yh }: Yous | 17 ea

TMOUAN ACO ERCP P PE PTA PACE eee ESTE L Le (CALLED De ta ESAT 4

ey

CHTCEDLESG, Phis Court explained these noleles lin ie

( pal Mleetrie Conv. Wabash Appliaiter COs AY

SA. BOG:

The limits of a patent must be known for the

protection -of the patentee, the eneonragerient

cof the iventive genius of others and assur

ance that the subject af the patent will be ded ie

‘cated ultimately to the public. Phe statute socks

tie cilard aeaifist unreasonable advantiges to

the patentec and disadvantages to others arising °*

Jrom: uneertamty as toe their rights. The: in

"Ventor mist rniform the public during the lie

at the yuitent of the limits of the Mmonepoly as:

serted. so that it maw be known whieh features

Inay be safely used or manufactured without e

Hieense and: which may met.”

Accordingly, by relying on the description of the in

verition disclosed in the patent claiius, competitors are

free te “invent around’ the claimed subject matter wt

the patent in order to ‘Compete technologically With

the patentee without the burden of royalty payinents,

Competition in Mmovation is thus encouraged notwith-

standing the vovernmental grant of a Inanapaly ta the

patentee,

"See C'/, OUMO Nteel Konudry Eon k Burnside Niel bound, Se Gas es

oo I. »«| Si. S16 (( ae ry | ee Sitnnie S | i Varsh ( Ory, , / “pile Wes hatte ‘

Crete ( 0: 1%) FF, «| IG, 1Q5 ‘tees, Ge ia:

x

e

co e

5, 1 10) ‘

2

. . 5 Pa) “s

Conmsiste iif with dics Veli undlate of Section be for NrL-

else claims is ihe beast ie tenet of the Sede rab patent SVs-

tem thatthe pater claims are the ‘doko measure of

the scope ot the monigpely Ovi ret, Aro® Mig. Co. v.

Corre rtibleTop Co, Are DP) 365 US. 336, 33940:

(iginersal Ou & rolucls Co. Se Globe Oil Refariing

t ayer sep, O22 US oat 4840 Die Matrersal O11. Products

‘s this 3 Oliht stated) ely for the rile as follows

“The chi in. the neasnre. of the erant, lies The

ree “hs: reauived to hye speeitic for the 1,rery ieaies

vot Wrotecting ae pulie aeainst extension of the SCO pe =

of the fatent.” 322 Us. at 484-485. The Court ene

ities that the. claims ‘Serve asa Warning to the

mdustiy concerned of the Scope of ihe patent Mionop-

aly todoat dS) so thai commpetiters’ reliance on the

cclaitis is protected and encouraged, -

It rollows that whatever is not speettieally elained

TH a Joatent Is dedicated or renounced to the priblie.

Mave hd Ware lexs ( sy Nile Vyarted States, U0) ce. ] (ae

Sontag Stores ('o, Vv. Nal ('o., OV $e. 281... 289-200:

S

>

VMiineccils Ne pervation ve Bulle Ming Co., SUPPL, 29

ALS. nt Mae] Tationtecs cantot show that their inven-

Highs is brefder that the terns ofether claims; er at

Irate rallt vommat be held to Tate sirrendered-the sur

‘A

bere : a & °

; pli Is Tuy thie public (Neystoie Bridge Cv. Ae Phor ie

Fraow( 00, Ah) US. 214, 278).

La

i. Tih da LRIN® GE EQUINALEN'ES Is: INCONSISTENT, WATE THE PUR

tees OP THE SPATECTORY REQUIREMENT OF PRECISE CLATMING

}

koe Pe : be | ' Pag. % oe ud

Phe qudendlv-ereated doetrine of risaria ke rus

counter td the statutory requipement that the subject

Soe, leo, Vil ts) Nhict ('v. aN Kaulley ('d.. Olt [|S Lists

Mine rad Se poration Big Patti Vi Say Ci. OO) Be a spepta,

1]

of a patent be precisely defined im the patent claims.

Crider the doctrine of equivalents, a deviee mot cov-

Jofed by the claims of a patent may nevertheless fal

Within the patent monopoly if a conrt eoneludes that

the allegedly: infringing deviee performs substan-

thally ihe ssadae Pumetion in substantially the same way

to obtain the same result.’ raver Taunt & Mry. a..

ve hinds Air Products Co., pod U Ss sats ‘OOS ‘(quoting

Stuilave Retrigerator Col Vv. W inte r, 280. U.S. 30, see

The Court i Graver ae explamed (339 CLS.

GOS): Phe theory on which [the doctrine | is ar

is that cif two devices do the same work: in substan-

tially the same way, and accomplish stibstantially: thre

same result, they are the same, even though they differ

In name. form or shapes Machine Co. v. Marpha, §

US. 120, 125 a i

As oo standard: for judicial determination of im-

Mringement.. therefore, the doctrine puts in issue a

remge seh ingiiry that goes far beyond the tertis of the,

Cam for pw hat constitutes « oe ney must be de- |

termined against the context ef the patent, Fhe prior

art, and the particular circumstances of the case”

Garren. SOW US, at G09), breed, the Graves opinion

Kiither specities (839 TLS. at G09) that “faju impor-

tant factor is whether persons. reasonably skilled

the art weuld have known of the interchangeability of

Tan ingredient not contained inthe patent with one

that was’—so that the inquiry imder the equivalents

doctrine tends to approximate a consideration of

Whether Jn light of- the teachings of the patent, the

allegedly infringing device Wils sufficiently obviows to

et

"49

ene shilled in the technology to, preclude its own pat-

ceittability. As formulated by this Court, therefore; the”

deetring of eqtivajents authorizes judicial expansion

of atent monopolies significantly. hevond the dimen-

‘Sions granted by the Patent Office or upheld as valid

ia judicial review of the grant—sinee. both the admin-

istrative issuance of paterits and the determination of .

patent validity ate Foruscd on the patentee’s claims,

rather than on the broad range of “cquivalents” which

Ay seach alse lie foreclosed hy the patent. <

If the equivalents doctrine this seems: surprisingly

incompatible with the principlé that the claims are the

ole measure of the monopoly granted and, with the

statutory requirements of definitive claiming and of

expert administrattye issuance of patent Inonopolies

‘as wellas with other aspects of the Statutory scheme,

see Hifad, pp. A922), the explanation is probably hhis-

terieal, As the Court noted in Guaver (339 U.S. at

HOS), the Gdoctrine originated in this. Court's closely

divided T8594 decision in Windus ve. Denmead, 1 Wow.

2 The Court in Graver failed to note, however, that

HWvens was decided wider the signifieantly different

statnory scheme of the 1836 patent law, which did not

require specificity inf claiming (see 5 Stat. 117)°—and

wos decided more than a half century before the -enact-

os Vor exannplen of the difficulties in determining infringement

moces divolving patents with vaguely worded claims during

tus early period (diflieuttics which undoubtedly contributed to -

pubes evolvement of Nuc equivalents doctrine), see Liraus vy.

Lote S Wheat. 14. 155 EM (note a): dogg v. Emerson, 6 Wow.

bai. PS HD: Bare v. Davyee. VWalll, 531, 542-545, 547-548, 567-

-.*

. 13 ;

ment of the first federal antitrust laws, which added a

Hew dimension: to the interpretation Of patent. statutes

by making it Clear that they provide for only a narrowly

delimited exception to the dominant federal policy fa-

voring.competition (see p. 5 and n. 3, supras ef, The

Statute of Monopolies, 21 Jag. i, ¢. 3). Such considera-

tions are perceptively reflected in an opinion in which

Judge Learned Hand recognized forty years ago that

the Winans doctrine of equivalents “had become an

anachronism diffic ult to reconcile with subsequent. statu-

tory ‘mandates, - ‘laude Neon Lights ve &. Machlett &

Sou, 36 BF, 2d 574, 575 (4 ‘A. | 2)):

hea doctrine of equivalerita. + was based | ap.

on the theory that the claim was. not intended

to be verbally definitive, but to cover the *tin- .

vention” which should, to some extent any way,

he gathered from the disc losure at large.

It is plain .that such latitude. violates in

theory the underlying and necessary principle

that the disclosure is open to the public save

as the claim forbids, and that it is the ¢laim and

thet alone which measures the monopoly. * * *

Not only.do the premises of the equivalents doe-

trine contradict ‘fundamental principles “of — the

estatutor v patent system, but the doctrine’s - CCONOMME

impact tends to undermine the paramount public

interest in competitive technological advancement re-

flected in that system. That public interest, and not

private reward, is the dominant factor. to be con-

sidered in adjusting conflicts over the scope of paterit

14

monopolies. Graham vy. John Deere Co., supra’ Vin-

dication of this important public interest is dependent

upon the statutory policy that. the boundaries of the

patent must be clearly delineated so that rivals of the’

patentee or newcomers to the field (1) may so adjust

and conduct their business operations as to avoid

undesired infringement of the grant, and (2) are en-

couraged -to develop alternative technology hy ‘‘in-

venting around’’ the monopoly (see stipra, pp. 8-10).

The doctrine of equivalents is an obstacle to the

economic implementation of this statutory policy. It

prevents competitors seeking to invent around the

subject of a patent from relying, as Congress in-

tended, on the patent claims themselves to define the

“ scope of the area foreclosed from their use. Because

of the difficulty of forecasting how expansively courts:

might be willing to apply patents under the doctrine,

‘invention around can be accomplished only at a sub-

stantial risk of infringement. Yet, as this Court

unanimously recognized in.a decision enforcing the

‘statutory requirement of particularity and distinct- -

Ness in claims,’’ such ‘a result is precise]y what Con-

gress sought to avoid because “fa] zone of uncer-

tainty which enterprise and experimentation may

enter only at the risk of infringement claims would dis-

courage invention only a little less than unequivocal

foreclosure of the field.’’ United Carbon Co, vy. Bin-

ney Co., 317 U.S. 228, 236; ef. Brenner v:. Manson, 383

U.S. 519, 534. See, also, Aro I, supra, 365 U.S. at 358-

399 (Mr. Justice Black, coneurring). |

*See, also, [nited Ntates vo Masonite. Corp... 2AG US. 265,

278. :

15

In other words, by expanding the economic impact

of patents beyond the terms of their claims, the doctrine

I ; ’

of equivalents reaches into the area renounced to the

pubhe by the patentee—reaches into the public domain

(where presumably no. patent could have been se-:

—cured)—-and permits royalties tobe exacted on the use

of that which is the property of all. Cf. Lear, Tne. v.

Adkins, supra; Scars, Rocbuck cd Co, v. Stiffel Co.,

supra: Compoo Corp. Vv. Day-Brite Lighting Tie., 376

U.S. 234. | 3

The coutlict between the doctrine of equivalents

and the foregoing considerations lias contributed to

the growth of the doctrine of file wrapper estoppel,

which was. summarized by this Court in Graham v.

John Deere Co, supra, 385 U.S. at 33, as follows:

“= [e]laims that have been narrowed in order to

obtain the issuance of a patent by distinguishing the

prior art cannot be sustained to cover that which was

previously by limitation eliminated from the patent.”

File wrapper estoppel has become an important limi-

tation on the application of the doctrine of equiva-

lents. “[W Jhere a patentee has narrowed his claim,

in order to escape rejection [by the Patent Office

¢xaminer], he may not ‘by resort to the doctrine of

equivalents, give to the claim the larger scope which

it might have had without the amendments which

amount to disclaimer.’ ” Smith v. Magie City Kennel

Club, Inc., 282 U.S. 784, 790. | |

We submit that the reasoning underlying the doc-

trine of file wrapper*estoppel should not be confined

solely to those circumstances where, in response to a

16

- rejection by the Patent Office, the \patentee amended

_his claims to secure his patent grant. Even where the

original claims are allowed without amendment, the

patent. monopoly should be confined to what the claims

disclose. A patentee who originally confines his ¢laim

to avoid prior ait, and thus escapes a rejection,

should stand in the same position as one who has gone

through the forinal amending process. In both cases

the claims have been narrowly defined in order to

avoid rejection and induce a grant.’’ In both cases

“the claims made in the patent are the sole measure

of the grant” (Aro I, supra, 365 U.S. at 339) and, if

the theory of the patent law. is to be. implemented as

an economic reality, the clainis should also be the

guiding measure of the scope of the judicially en-

forceable patent monepoly. |

Our. eae therefore, is that, beeause it author-

IZeS judicial enforcement of broader patent monopo-

hes than those measured by the claims, the doctrine

of equivalents, as it was explicated in Graver Tank,

should now be, rejected by this Court as irreconcilable

with fundamental principles of congressional patent

policy. We do not mean by this that patentees should

no longer he protected against imitations which in-

volve only colorable or trivial deviation from the

literal terms of the patent claims. We recognize the

wisdom of the Court’s observation in Graver Tank that

” The drafting of patent claims is a “highly developed art”

(see Brenner v. Manson,, supra, 383 U.S. at 534) engaged in

hy certified experts (see Sperry v. Florida, 373 U.S. 379,

390-402). y z. .

17—

“Tojutright and forthright duplication is a dull and

very rare type of infringement” (339 U.S. at 607),

and we note that dissent within the Court to perpetu-

ation of the equivalents doctrine has not taken the

form of advocacy that forbidden infringement be

limited to carbon copying (see, e.g.; the concurring

opinion of Mr. Justice Black in Aro I, 365 U.S. at

354-355). Indeed, we favor reaffirmation of the gen-

eral principle that inventors should not be placed

“at the mercy of verbalism’”’ and that form should not

be exalted over substanée in the test of infringenient

(Graver Tank, 339 U ‘S. at 607), but we believe that

the doctrine of equivalents .should no longer be

utilized as a means of implementing that principle

because the doctrine fails to afford claims their as-

- signied role in the statutory patent system.

‘We submit that, instead, the test of infringement .

should focus specifically on the claims themselves and,

if the allegedly infringing device deviates from the

claims im any respect, the inquiry should he whether

that, deviation is material in relation to the statutory -

function of the claims. More specifically, the proposed

test can be formulated in terms of whether the ques-

tions involved in the patent issuance proceedings or in

the determination of the patent’s validity would have

-been different had the claims been written so as to cover

literally the alleged ntti ‘inging device. Only if the

difference in the claims is sufficiently trivial so that

either formulation of them would have presented essen-

tially the same case in the issuance proceedings and in

litigation of the patent’s validity, should a finding of in-

fringement be warranted. The measure of infringement

18

would, im essence, be the substance of the Claims."' In

light of the statutory safeguards which, in appropriate

circumstances, enable patentees to state their claims.

comprehensively and to revise them to.correct verbal-

istic deficiencies (see point II, infra), we believe that

the proposed test would adequately protect the eco-

nomic value of patents, while eliminating judicial ex-

pansion of the limited monopolies granted by the

Patent Office. We recognize that this test would not

obviate the need for the exercise of judgment in-lose

cases. But we believe that it would provide guidance

for such judgments that is both more in keeping with

the congressional mandate and substantially more com-

prehensible than that provided “by a doctrine char-

acterized by the Court's admonition in Graver Tank

that, “*[i]n determining equivalents, things equal to

the same thing may not be equal to each other and,

by the same token, things for most purposes ditfuxerit

”»

may sometimes be, equivalents” a U.S. at 609).

°

Il

THE RIGHTS OF PATENTEES WOULD ADEQUATELY BE PRO-

TECTED WITHOUT RETENTION OF THE DOCTRINE OF

LQUIVALENTS .

Replacement of the doctritie of equivalents by a

standard of. infringement compatible with more per-

This is to be distinguished from the concept of protecting

the “heart” or “gist” of patented inventions which has sonie-

times been said to justify the doctrine of equivalents. See Ave/th

v. Charles BE. Mires Cow (V6 F.2d 46 (CA. 2); Frick. Co. v.

Lindsay, 27 F.2d 59 (CLA. 4). This concept, like the equivalents

doctrine itself, improperly expands the scope of patent monop-

olies beyond the measure of the claims approved by the Patent

Office. See Aro I, supra: 365 US lat 344-345.

T he proposed test Is also narrower than the standards governing

~

«

19 ‘

Vasive federal patent policies would not sacrifice any

legitimate rights or deserving equities Of inventors.

Bilt into ‘the patent system itself are several alterna-

tive protective devices whieh are more carefully tail-_

ored than the doctrine ef equivalents to achieve

proper adjustment between the equitable needs of in-

ventors and the pertinent policy considerations. Their.

availability assures that it would not be unfair for pat-

entees” own claims to be the measure of infringement.

While, as previously noted, 35 U.S.C. 112 requires

precise and definitive claiming (typically accom-

plished by. professional claim drafting, see supra, p.

16, 1. 10), 1t does not preclude appropriately compre-

hensive claiming. For example, if the, inventor does

not wish to restrict his claims to a single way of

perferming one step of the invention (or to a

single device for one element of the patentable com-

bination), he may instead claim a “means’’ as the .

third paragraph of Section 112. specifically. author-

izes."* To protect the public from the use of a “means”

claim to stake out: a monopoly ,broader than. the

patent applicant’s disclosure, however, the novel

aspect of the disclosure may not be deseribed in gen-

eral “means” terms (Halliburton Co. vy. Walker,

supra): nor may the means claim be so broad that

reissue of patents under 35 U.s.C. 251 (see fn fru, pp. 20-21)’: its

ure, therefore, would not amount to judicial reissue of patents in

evasion ofthat statutory provision,

"Phat paragraph provides as follows:

“An clement ina claim for a combination may be expressed

as a means or step for performing a specified function without

the recital of structure, material, or acts in support thereof.

and such claim shall be construed to cover the corresponding

structure, material, or acts described in the specification and

equivalents thereof.” ;

20

. . Py

it covers every means for achieving - the desired

result (OReilly ve Morse, 15. How, 62).

Similarly, the discoverer of a “species” may claim

the “genus” to which it belongs, subject te poliey

qualifications “Csee lucandesccut Lump Putent, od

US. 465, 476). A genus may net be claimed where

some of the species in it are inoperative for the de-

sired purpose, (bid. 2-Pemco Products, lic. VeGeucral

Mills, Fne., 261 Fe 2d 302 (C.A. 6): American Chemical

Paint Co. v. Firestone Steel Prod, Co. WTF. 2d 927

“AL 6) orare already known or used by the public for

suc ae purpose, Lire Stecnbock, 83 B. 2d 912 (C.C.P.A.)

But where a broad claim ofthis type is found by the

Patent Office to be appropriate in view of the extent of

the applicant's contribution, it will be allowed subject

to the above qualifications. Moreover, the genus may

even be an artificial one invented by the applicant,

provided a? recognizable community of characteristics

Is discernible among the species to, define their genus.

Application of Schechter, 205 F.2d 185 COLCLP LN)

And where a new and inventive product cannot be

defined in a claim other than by reference to’ the proc-

ess of producing it, such claiming is proper. Li ve

McKee, 95 F. 2d 267 (C.C.P.A.) ; In ove Bathory, 37

F', 2d 623: (C.0.P-.A.).

Finally, af a patentee through ae ist error has

Claimed more or less than he had’ a right to clam im

A dike rule perhaiits the patentee to become his + lexi-

cographer, transcending the Tinits of conventions! aig. ONS

where this is necessary to deseribe the inventions dvfogiie v.

Inited States, S84 BFL 2d BO) (CL. Ch: Nfaart Oryqen Corn.

Sosephion, 162 FL 2d 857 (CLA. 9) | Ndeance Reumtley Cos.

Sohn Lauson eM tg. Co. 275 Fed. 249, 251 OCA. 7).

ate

~ 24

his patent, he may apply to the Patent Office (within

two vears of the original erant) fora reissue patent.

te correct his mistakes me originally defining lis iiven-

- tion (35, ULS.C. 251). In setting eNa@tiNe: standards

for reissue patents, however, Congress has indicated

that such enlargement of the claims of an already:

issued patent should he confined to the cirenmstances

prescribed by statute (A cystone Bride Co. v2 Phocnis

Tron Co.. 95 US. PT4, 278), as: well as toa two-vear

time period, Moreover, .and most importiith, Con-

vress has guarded against prejudice to intervene

rights of competitors, insofar as the -reissued patent.

alters the claims of the origmal (35 U.S.C. 252).

The foregoing devices of the patent svsteny are

~ designed with specificity to assure fair protection of -

the inventor without “‘prejudicing the publie interest.

All of them are cotisistent with the fact that Congress

has placed administrative responsibility. (subject. to

Judicial review) in the ‘Patent Office, as the expert,

agency to sereen patent ‘applications for nevelty,

utility. invention, and adequacy of disclosure and

definition. by contrast, the doctrine of equivalents

Forces the Stiite and federal. courts © to assume the

duties of the Patent Office (see Judge Hand's opinion

lit CTeancde Neou Lights, Supra, Ob. H.. 2 BE RAL EE CS ee

This anomaly is unnecessary and wiwarranted for the

reasons we have shown. [t debilitates and erodes the

integrity of the patent examining svstem (Gyula \,

A olen Deere ('o.. SH Pre, peed CS “it IS): and Wot

(hses sinnlar to the present one Pine ALISe as COHTPACT. aue-

tions in “the State courts. Cf. Lear. Tne v. Adkins. SU DPA,

. G ; d

‘

: eel

ci: oe >

justifiably prejudices the diterests of competitive man-

Ufacturers and the general publie.

Weoreethe Court, therefore, to rejeet the doctrine

of equivalents anel to adopt, ristead, the standard

For dete Pra nis patent mifrvineement proposed | Hi this

teen Wi-18).’

lade isu phyy J}.

, ‘ \

. \. ; ,

Ror the fAregoing reasons. the judgement of the

e . a

- CONCLUSION

Heourt of appeads should be reverse’. +

Respectfully Submitted,

: ee. - Frwin, N. Griswonp, 2.

Solicitor Groneral,

Rien arp We McLaren,

we Assistant Afiorney Gone val,

ee LAWRENCE, G@, WALLACE,

Aysistant Xv L hic Solic Hoy ie neral,

RICHARD ae Srp KN,

SUSAN I URINGHAUS,

me te aea, Miorncys.

JANUARY 1970.

Hee

In applynig the

: believes threat if world bee Appropriate forcthis Court to recownize

that the speeitic- reference to “a pair of spacecl openings” mn the

here (ih hhew of 4.10 re comprehensive

hin) is the: tesa of linn tril 1Ov Ine: eran that could well lee

ile ~|s ened te ohé iY) pehitee gts issu nee or SUb winits valid: ty. Necord

for the Cofirt to diold thant the puitent

We recognize, how-

- ° ’ E rs d —

prrape ed standard to the dastant CASE. We

ola I tf issue -mequs”

‘};

4:

ingly, if Would be proper

Wits het infringed, nhcder the propor vil te St.

that the parties did- not deyelop the record in this litiga-

CVE,

} £2 :

eto the standard wevhavge proposed and. for

tion with reference

this reason, the Court may

further hearing att thy qitestion of maiy

posed. standard to the facts of this. case,

ct <

prefer to remand the ease: for ac

Soupplication of the pro-

5 =

“