# Amicus Curiae Brief — Standard Industries, Inc. v. Tigrett Industries, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385001_1419%3A05 ## Record - **Collection:** Supreme Court brief - **Document type:** Amicus Curiae Brief - **Published:** January 1, 1970 - **Citation:** 397 U.S. 586 ## Text 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 = “ --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385001_1419%3A05. Public record. Not legal advice.