Opposition Brief — E. I. du Pont de Nemours & Co. v. Phillips Petroleum Co.

ie

Suprema Cou

No. 88-613 |.) BIL ED

NOV 12 1988

IN THE UOSEPH F, sp ;

E SPANIOL, JR,

—

Supreme Court of the Anited States

OCTOBER TERM, 1988

E. I DU PONT DE NEMOURS & COMPANY,

Petitioner,

v.

PHILLIPS PETROLEUM COMPANY, PHILLIPS 66

COMPANY, and PHILLIPS DRISCOPIPE, INC.,

Respondents.

BRIEF IN OPPOSITION TO PETITION FOR

A WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

Harry J. ROPER PHILIP S. BECK

GeorGE S. Bosy (Counsel of Record)

NEUMAN, WILLIAMS, PHILIP C. SWAIN

ANDERSON & OLSON KIRKLAND & ELIS

77 West Washington Street 200 East Randolph Drive

Chicago, Illinois 60602 Chicago, Illinois 60601

(312) 346-1200 (312) 861-2000

Attorneys for Respondents

November 12, 1988

Pandick Midwest, Inc., Chicago ¢ (312) 733-6000

SY

TABLE OF CONTENTS

PAGE

STATEMENT PURSUANT TO RULE 28.1..........0....... il

ee Fe A rtricttcstinenksnnsenncasineassesacvenaaee iv

EPA CEEEe © OR BORE CAB nnn ccccsccccccccsccnsssiecsonsncessaonss l

REASONS FOR DENYING THE WRIT.............0......... 6

A. The posture of this case renders certiorari

a cicatditnnsstoananntiasens 6

B. The Federal Circuit’s ruling does not conflict with

UIE INT Ws I ia a eicccssadaececscnnne 9

C. DuPont’s appeal to “equity” does not warrant

I aes, 13

eee aA AT NIE arceieadl ncasciaronianindanccinanigatexensddmbarinnniieniuies 15

il

STATEMENT PURSUANT TO RULE 28.1

The subsidiaries and affiliates of Phillips Petroleum Com-

pany, Phillips 66 Company, and Phillips Driscopipe, Inc., other

than wholly-owned subsidiaries, are included in the list below:

Ace Limited

Alyeska Pipeline Service Company

Artic LNG Transportation Company

Bissendorf Biosciences GmbH

Canada Western Cordage Company, Limited

Canyon Reef Carriers, Inc.

Chisholm Pipeline Company

Cochin Refineries Limited

Colonial Pipeline Company

Corporate Officers and Directors Assurance Holding

Limited

Crystal Limited

Dixie Pipeline Company

East Texas Salt Water Disposal Company

Explorer Pipeline Company

Great Yarmouth Port Labour Company Limited

Heat Transfer Research, Inc.

Insurance and Reinsurance Brokers ( Bermuda)

Limited

Iranian Marine International Oil Company— Iminoco

Kenai LNG Corporation

Multinational Gas and Petrochemical Company

Multinational Gas and Petrochemical Services

Limited

Norland GmbH Fur Grundbesitz Und

Industrieanlagen

Norpipe A.S.

Norpipe Petroleum UK Limited

Norsea Gas GmbH

Norsea Pipeline Limited

Oil Casualty Insurance Limited

Oil Insurance Limited

Papago Chemicals, Inc.

Phantex Pipeline Company

Phillips Carbon Black Limited

Phillips Petroleum International Andina, S.A.

Phillips Petroleum Singapore Chemicai ( Private )

Limited

Phillips Petroleum Tanker Management, Limited

Phillips Petroleum Toray Inc.

Phillips—Imperial Petroleum Limited

Polar LNG Shipping Corporation

Renolit—Haus GmbH

Spodco Limited

Spodco— USA, Inc.

The Salk Institute Biotechnology/Industrial

Associates Inc.

Venezoil, C.A.

Western Desert Operating Petroleum Company

( WEPCO)

iV

TABLE OF AUTHORITIES

Cases

PAGE

Altoona Publix Theatres Inc. vy. American Tri-

Ergon Corp., 294 U.S. 477 (1935 )...........ssssssccceees 11

American Hoist & Derrick Co. v. Sowa & Sons,

Inc., 725 F.2d 1350 (Fed. Cir.), cert. denied,

EF es Be OD stinieciccedecleiccehcaumnssseomererbians 12

Brooks v. Fiske, 56 U.S. (15 How.) 212 (1854)...... 11

Cimiotti Unhairing Co. v. American Fur Refining

es Se Re re Oe cectitiainceicccsatenentiernene 11

Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir.

PIUEE Pin icecsinkincsdiansceanatbchanipboskiicidasenmmdasacethetiiamcanisias 9

Foxboro Co. v. Taylor Instrument Co., 157 F.2d

226 (2d Cir. ), cert. denied, 329 U.S. 800 (1949). 13

General Electric Co. v. Jewel Incandescent Lamp

Ci eee as re Re Fated el csiibnterenennse 7

Graham vy. John Deere Co., 383 U.S. 1 (1966)........ 10, 11

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

Be os fg. ; RU Dieser ACI Se, Sree een 11

Hamilton Shoe Co. v. Work Bros., 240 U.S. 251

SIT Dhscicsiko Tension ebiphnseeetaitldagilaaa nidibasechehetedniecbdiaeabonaescinnt 8

Hughes Tool Co. v. Trans World Airlines, 409 U.S.

BP A TT Ir Users cecsciiapnesnicdos ela etaone lia Adiatiniasibassbasiidiicnete 8

McCarty v. Lehigh Valley R.R., 160 U.S. 110

IU Dictisconstucetadcesosilescelebsapncsthlcebiaianeinssiiasacamamadeacsananniins 11

Loctite Corp. vy. Ultraseal Ltd., 781 F.2d 861 (Fed

Rs. EO sacaccnainasicoudasenebeannabmancbeaimatddnucikebaneecpaiccsias 14

McClain v. Ortmeyer, 141 U.S. 419 (1891)......00...... 11

Merrill v. Yeomans, 94 U.S. 568 (1876) .................. 11,13

PAGE

SRI Int'l v. Matsushita Electric Corp. of America,

TID Bele EEG CH Glo FD vccctctacsincscivisntionnss 12

Titanium Metals Corp. of America v. Banner, 778

Fe Fe CI ak PD cetisieidiniensccmsenes 7

United States v. Adams, 383 U.S. 39 (1966) ........... 4, 6, 9,

10, 11

White v. Dunbar, 119 U.S. 47 (1886) .................2002- 11

Yale Lock Mfg. Co. v. Greenleaf, 117 U.S. 554

(FEO Piictctstinsntiocnconsiontadtiniaersinpinipsmiembacdaiaass 1]

Statutes

ee Wisc Th Pi sotcsamstscishentsiclacindiaadnalanaadiedcecaantae 4,10

Be SES eM incseshtnsasiivnnntcatanicimteiaieniiannaemaen 3, 4, 10

Be BEE Ue Riensiniseisninnianinstindiansibetvbiiduditaabuceneins 3,9, 12

Fe le aie Mintintiannasicidadeatgapenesscapamaaibabdippaiaianl 12

FP Wheles fF U aicensiessniaghncibennachianetenapinlecensumeaiaass 5

Rules

SN Ge Ts OF snis iccincspictcirsonadeasinaeaneaee ead 14

Be We. FOI. By iicctstccconitinnkenmeniocenamiaman 14

IN THE

Supreme Court of the United States

OcToBER TERM, 1988

E. I DU PONT DE NEMOURS & COMPANY,

Petitioner,

v.

PHILLIPS PETROLEUM COMPANY, PHILLIPS 66

COMPANY, and PHILLIPS DRISCOPIPE, INC.,

Respondents.

BRIEF IN OPPOSITION TO PETITION FOR

A WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

STATEMENT OF THE CASE

DuPont filed its application for the ‘698 patent in 1956.

The invention set forth in the claims of the patent is a group of

chemical compositions called higher alpha-olefin copolymers.

The patent was not issued until 1978. Throughout the twenty-

two-year period during which the Patent Office had the appli-

cation under review, DuPont maintained that it was the first to

make higher alpha-olefin copolymers.

Sianeli

After the ‘698 patent finally issued, several potential

licensees pointed out to DuPont that it had not informed the

Patent Office of an array of prior art indicating that DuPont

was not the first to make higher alpha-olefin copolymers. In a

series of unusual agreements, DuPont granted eleven licenses

for its “invention,” but the licensees’ obligations to pay running

royalties were contingent on DuPont obtaining a reissue of the

‘698 patent after informing the Patent Office of the prior art

that had not been revealed during the original prosecution.

DuPont filed its reissue application with the Patent Office

in 1980. As it did during the original prosecution, DuPont

steadfastly maintained that it was the first to make higher

alpha-olefin copolymers. This time, however, the Patent Office

had all the facts. In four successive Office Actions, the Patent

Examiner rejected all of the claims of the ‘698 patent, holding,

among other things, that Phillips had made higher alpha-olefin

copolymers before DuPont had. DuPont’s appeal from the last

and final Office Action, which was issued on May 12, 1986, was

stayed at DuPont’s request when the trial of this case began in

July 1986.1

By the time the trial began, DuPont could no longer

credibly maintain that it was the first to make higher alpha-

olefin copolymers. Not only had the Patent Examiner rejected

this contention four times, but also Phillips was prepared to

prove through a handwriting expert that DuPont had falsified a

key document it had been relying on in the Patent Office to

show an early date of invention.

Consequently, on the first day of trial—thirty years after

filing its patent application—DuPont finally was forced to

1 Phillips had refused to take a license, and DuPont filed this

infringement suit in 1981. Phillips participated in the Patent Office

proceedings by filing a request that the ‘698 patent be reexamined.

The request was granted, and the reexamination and reissue proceed-

ings were merged.

EE

admit that Phillips made higher alpha-olefin copolymers before

DuPont did. Rather than concede defeat, however, DuPont

announced that the copolymers it had claimed as its invention

were not really the invention of the ‘698 patent after all.

Instead, said DuPont, the real invention of the ‘698 patent was

the discovery (which is nowhere set forth in the claims of the

‘698 patent) that sometimes higher alpha-olefin copolymers

have superior physical strength properties than /ower alpha-

olefin copolymers.

The District Court adopted DuPont’s position that this

discovery was the real invention of the ‘698 patent and that this

discovery was a limitation that must be read into the claims

from the specification.2

On appeal, Phillips pointed to the unbroken line of Federal

Circuit cases holding that patents cannot be rewritten by

reading limitations into the claims from the specification.

DuPont asserted that no such rule could be derived from the

Federal Circuit’s prior holdings and that, in fact, Federal

Circuit precedent required the opposite result.

2A patent consists of two basic sections—the claims and the

specification. The claims are required by statute to “particularly

point[] out and distinctly claim[] the subject matter which the

applicant regards as his invention.” 35 U.S.C. § 112. In contrast, the

specification should contain “a written description of the invention,

and the manner and process of making and using it, in such full, clear,

concise, and exact terms as to enable any person skilled in the art to

which it pertains, or with which it is most nearly connected, to make

and use the same, and shall set forth the best mode contemplated by

the inventor of carrying out his invention.” Jd. Typically, when a

claimed invention is similar but not identical to prior art, the

specification will describe how the claimed invention has unexpected

advantages over the prior art. Such an explanation of the invention’s

unexpected advantages helps establish that the claimed invention

would not have been “obvious” in light of the similar prior art. See 35

U.S.C. § 103.

3 DuPont now takes a different position, complaining that the

Federal Circuit ““woodenly adhered to the rigid, legalistic rule, stated

( Footnote continued on following page.)

4

The Federal Circuit reversed the District Court and ruled

for Phillips. In accord with the well-settled distinction between

interpreting ambiguous claim language and rewriting unam-

biguous claims, the Federal Circuit held that, while it is

“entirely proper to use the specification to interpret what the

patentee meant by a word or phrase in the claim,” it is

improper to read limitations “into a claim from the specification

wholly apart from any need to interpret what the patentee

meant by particular words or phrases in the claim.” (A7)

The Federal Circuit also explained that the rule against

reading limitations into the claims from the specification—a

rule that it “has consistently adhered to” (A6)—is fully

consistent with United States v. Adams, 383 U.S. 39 (1966), the

case principally relied on in DuPont’s Petition. As the Federal

Circuit noted, Adams involved an assertion that the claims were

invalid for obviousness, not anticipation. (A7-8) The differ-

ence is crucial. An anticipation attack says, in essence, that the

invention set forth in the claims is not novel. 35 U.S.C. § 102.

When deciding the novelty issue, it is improper to rewrite the

claims to set forth a different invention. An obviousness attack,

in contrast, says that, though the claimed invention is not

technically anticipated, it would have been obvious from

similar prior art. 35 U.S.C. § 103. When deciding the

obviousness issue, it is proper to look beyond the claims to the

specification (and other materials) to determine whether the

invention set forth in the claims would or would not have been

obvious from the prior art. As the Federal Circuit explained,

this is precisely what this Court did in Adams. (See pages 9-11,

infra. )

(Footnote continued from preceding page. )

in several of its decisions, that Courts cannot alter what the patentee

has chosen to claim as his invention and limitations from the

specification are not to be read into the claims.” (Pet. 13)

Having ruled in Phillips’ favor on the threshold issue of

claim interpretation, the Federal Circuit reversed the judgment

as to four of the six claims based on DuPont’s admission at trial

that these claims, as written, were anticipated by Phillips’

earlier higher alpha-olefin copolymers. (A9-10) The Federal

Circuit therefore did not resolve several alternative grounds

advanced by Phillips concerning the invalidity of these claims.

As to the two remaining claims, which did include specific

property limitations, the Federal Circuit vacated and remanded

for a new determination of whether these claims were also

anticipated by or obvious from the prior art, including Phillips’

earlier copolymers. The proceedings on remand are going

forward.

Meanwhile, the Patent Office proceedings also remain

unresolved. As noted, these proceedings were stayed when the

trial began. When the District Court entered judgment for

DuPont, the reexamination proceeding was vacated. When the

Federal Circuit reversed the District Court, Phillips filed a

petition to reinstate the reexamination proceeding. The Patent

Office declined Phillips’ petition, stating that it was untimely.

The reissue proceeding, which was also stayed at DuPont’s

urging, was not dismissed. However, it can only be reactivated

at DuPont’s request. Faced with four Office Actions rejecting

all of its claims, DuPont has chosen not to reactivate the reissue

proceeding. In order to get the Patent Office proceedings back

on track, Phillips recently filed a new reexamination request

asking that, for the same reasons already found meritorious by

the Patent Examiner, the claims of the ‘698 Patent be can-

celled.4

Under the Patent Office’s procedures, Phillips’ new reex-

amination request will be granted or denied by December 21,

1988. If, as appears likely, the request is granted, the Patent

4 Unlike in civil litigation, a dismissal of a reexamination pro-

ceeding does not bar the same party from filing a subsequent

reexamination request. See 35 U.S.C. § 301.

6

Office will then resume its inquiry into whether the ’698 Patent

ever should have issued in the first place.

REASONS FOR DENYING THE WRIT

Certiorari would be inappropriate in this case. The overall

controversy between the parties is likely to be mooted by a

Patent Office decision rejecting DuPont’s claims. Similarly, a

District Court decision on remand as to the remaining claims

could effectively moot the case. There is no reason for this

Court to grant certiorari at this stage of the litigation when the

specific issue presented may become moot and when, even if it

does not, the issue will remain reviewable on certiorari from a

final decision disposing of the entire controversy.

These considerations have particular force here because

the specific issue presented by DuPont—whether claims in a

patent can be rewritten by reading in limitations from the

specification—would not warrant review even if the posture of

the case were different. The Federal Circuit—the court created

by Congress to bring consistency and coherence to patent

law—has repeatedly held that, when the invention actually

claimed in a patent is anticipated by prior art, a court should

not rewrite the claims to set forth a different invention that may

or may not be anticipated. This unbroken line of Federal

Circuit cases does not conflict with United States v. Adams or

any other decision of this Court. Rather, it is consistent with

and-compelled by this Court’s precedent. Finally, the rule

adhered to by the Federal Circuit is required by the structure

and operation of the Patent Act.

A. The posture of this case renders certiorari in-

appropriate.

The District Court upheld the validity of all six of the

claims at issue in this case. Four of these claims did not have

any sort of property limitation concerning the strength of the

copolymers. DuPont admitted that these claims as written were

anticipated by Phillips’ earlier Witt and Leatherman copoly-

mers. (A9-10) The Federal Circuit held these claims invalid.

As to the other two claims, which contained objective

property limitations going to strength, the Federal Circuit

vacated and remanded for new determinations of whether the

claims are invalid for anticipation or obviousness. Remand was

necessary in part because DuPont had persuaded the District

Court to refuse to consider evidence, including a notebook

prepared contemporaneously by a Phillips’ researcher, in-

dicating that the Witt and Leatherman higher alpha-olefin

copolymers had the type of objective strength characteristics

recited by DuPont in the two remaining claims. (A13-17)

If the two claims that do contain property limitations are

held invalid on remand, the four that do not contain such

limitations will be invalid even if they are rewritten to include

objective strength limitations. In other words, a decision

adverse to DuPont in the pending proceedings on remand

would moot the issue presented by DuPont in its Petition. On

the other hand, once the controversy is finally resolved, this

Court could issue a writ of certiorari to review and correct any

5 It is theoretically possible that the issue would not be moot if,

instead of asking that an objective strength limitation be read into the

claims, DuPont is asking that some sort of “comparative” limitation

be read into the claims. As far as can be discerned from DuPont’s

arguments, such a “comparative” limitation would require that prior

art higher alpha-olefin copolymers not only have strength character-

istics equal to DuPont’s, but also have strength characteristics superior

to those of “comparable” /ower alpha-olefin copolymers. If this is

DuPont’s argument, certiorari should be denied because such a

limitation, even if it could be read into the claims, would not set forth

patentable subject matter. Rather, such a limitation would merely

describe that one pre-existing (and thus unpatentable ) composition is

Stronger than another pre-existing (and thus unpatentable) com-

position. See General Electric Co. v. Jewel Incandescent Lamp Co.,

326 U.S. 242, 248-49 (1945); Titanium Metals Corp. of America v.

Banner, 778 F.2d 775, 782 (Fed. Cir. 1985).

errors in the proceedings below, regardless of whether certiorari

was denied earlier on a single issue. See, e.g., Hughes Tool Co.

v. Trans World Airlines, 409 U.S. 363, 365 n.1 (1973);

Hamilton Shoe Co. v. Wolf Bros., 240 U.S. 251, 257-58 (1916).

An equally compelling reason to deny certiorari is the

pendency of the Patent Office proceedings. The way the patent

system is supposed to work is that, when an inventor submits

his application, he or she also supplies the Patent Office with all

prior art that might be material to the patentability of the

claims. The Patent Office then reviews the claims in light of the

pertinent prior art and decides whether the patent should issue.

Here, DuPont did not submit the pertinent prior art during

the original prosecution. However, the prior art is now before

the Patent Office. Given the Patent Examiner’s repeated

rejections of DuPont’s claims in light of this prior art, it is

altogether likely that Phillips’ new reexamination request will

be granted and DuPont’s claims will be cancelled.

Moreover, even if Phillips’ reexamination request is de-

nied, there remains the reissue proceeding instituted by Du-

Pont. This proceeding is currently stayed, and as a procedural

matter only DuPont can reactivate it. Eventually, DuPont will

have to do so if it hopes to obtain any royalties from the eleven

licensees whose obligations are not triggered unless and until

the patent reissues.

What appears to be going on here is that DuPont, fearing

that it is destined to lose in the Patent Office, is holding off the

reissue proceeding in the hope that this Court will rule in its

favor in the infringement litigation. In such an event, DuPont

could stand to recover damages from Phillips for infringing

claims of a patent that the Patent Office is about to decide never

should have issued in light of previously undisclosed prior art.®

6 A ruling for DuPont in this case, where Phillips has the burden

of showing invalidity, would not be res judicata in the reissue

(Footnote continued on following page.)

Patil 2 .

9

This Court should not grant a discretionary writ of certio-

rari in an infringement suit when the Patent Office did not have

the pertinent prior art before it in the original prosecution and

the patentee is refusing to press forward in a reissue proceeding

in which the pertinent prior art is before the Patent Office.

Rather, this Court should deny DuPont’s petition so that

DuPont will be obliged to let the Patent Office do its job.

B. The Federal Circuit’s ruling does not conflict with

United States vy. Adams.

In an effort to create a conflict between the Federal

Circuit’s ruling and a decision by this Court, DuPont quotes

United States v. Adams, 383 U.S. 39, 49 (1966), for the

proposition that “claims are to be construed in the light of the

specifications and both are to be read with a view to ascertain-

ing the invention.” (Pet. 9) However, immediately before

stating the familiar principle that claim language can be

construed in light of the specification, this Court also cautioned

that “the claims of a patent limit the invention, and specifica-

tions cannot be utilized to expand the patent monopoly.” 383

USS. at 49.

Thus, nothing in Adams suggests that this Court was

abrogating the statutory requirement that the invention be

particularly pointed out in the claims. 35 U.S.C. § 112, second

paragraph. Indeed, in Adams, which involved a patent on a

battery, it was admitted that the claims themselves set forth a

combination of electrodes not shown in the prior art. Accord-

(Footnote continued from preceding page.)

proceeding, where DuPont has the burden of showing patentability.

Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). In

contrast, if the Patent Office rules against DuPont, there will be no

patent whose claims could be infringed, and this case will be moot.

10

ingly, the battery was held to be novel and not anticipated

under 35 U.S.C. § 102.7

As the Federal Circuit pointed out (A7-8) the real focus of

Adams was whether the admittedly novel combination of

electrodes would have been obvious under 35 U.S.C. § 103.

When making that determination, this Court considered the

factors outlined in Graham v. John Deere Co., 383 US. |

(1966), and gave due consideration to the main advantage of

the claimed battery—its ability to be activated by water.

Adams, 383 U.S. at 48. This advantage was described in the

specification. When the question is obviousness, a court can

look to the specification to determine the inherent advantages

of the claimed invention. This is a far cry from reading

limitations into the claims in order to distinguish them from

prior art that concededly anticipates the claims as written.

DuPont’s attempt to transform Adams into a novelty case

by selective quotation is unavailing. Any question about the

7 On the issue of novelty, the government’s petition for certiorari

stated: “It is true that Adams put together elements not actually

combined before and obtained more favorable results, for some

purposes, than had prior combinations.” Petition for Certiorari .t 11,

United States v. Adams, 383 U.S. 39 (1966) (No. 65-66). The only

§ 102 challenge in Adams was based on the theory that a novel

combination of separately known elements is anticipated by the

known elements. This Court rejected this discredited approach. 383

U.S. at 48-50.

8 For example, DuPont quotes the following:

We believe that the Court of Claims was correct in concluding

that the Adams battery is novel ....

DuPont Petition 11, quoting Adams, 383 U.S. at 50. DuPont omits

the prior two sentences:

It begs the question, and overlooks the holding of the Commis-

sioner and the Court of Claims, to state merely that magnesium

and cuprous chloride were individually kuiown battery com-

(Footnote continued on following page.)

11

real issue in Adams is answered by this Court’s observation at

the outset of Adams that “this case is controlled on the merits

by No. 11, Graham, ante, p. 1.” 383 U.S. at 41. The referenced

case is Graham v. John Deere Co., supra, which is the leading

Supreme Court decision on obviousness and which has nothing

to do with novelty.

That Adams does not sanction the approach urged by

DuPont is clear from the fact that, if it did, it would have

overruled a venerable line of Supreme Court cases rejecting

efforts to read limitations into claims. As this Court stated as

early as 1895:

[ W Je know of no principle of law which would authorize

us to read into a claim an element which is not present, for

the purpose of making out a case of novelty. ... The

difficulty is that if we once begin to include elements not

mentioned in the claim in order to limit such claims and

avoid a defense of anticipation, we should never know

where to stop.

McCarty v. Lehigh Valley R.R., 160 U.S. 110, 116 (1895). Far

from overruling McCarty, this Court’s Adams decision cites it

favorably. 383 U.S. at 49.9

(Footnote continued from preceding page.)

ponents. If such a combination is novel, the issue is whether

bringing them together as taught by Adams was obvious in light

of the prior art.

383 U.S. at 50 (emphasis supplied ).

8 Other Supreme Court cases to the same effect as McCarty are:

Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 432-35 (1822); Brooks v.

Fiske, 56 U.S. (15 How.) 212, 214-15 (1854); Merrill v. Yeomans, 94

U.S. 568,.568-69 (1876); Yale Lock Mfg. Co. v. Greenleaf, 117 U.S.

554, 559 (1886); White v. Dunbar, 119 U.S. 47, 51-52 (1886);

McClain v. Ortmayer, 141 U.S. 419, 423-24 (1891); Cimiotti Unhair-

ing Co. v. American Fur Refining Co., 198 U.S. 399, 410 (1905);

Altoona Publix Theatres Inc. v. American Tri-Ergon Corp., 294 U.S.

477, 487 (1935); Graver Tank & Mfg. Co. v. Linde Air Products Co.,

336 U.S. 271, 277 (1949).

ee ii el

12

Finally, when asking this Court to grant certiorari in order

to overturn the longstanding rule that limitations cannot be

read into claims from the specification, DuPont ignores the fact

that a contrary approach to claim interpretation would con-

travene the structure and operation of the Patent Act.

The statute requires that the specification “conclude with

one or more claims particularly pointing out and distinctly

claiming the subject matter which the applicant regards as his

invention.” 35 U.S.C. § 112, second paragraph. As the Federal

Circuit has observed, reading the invention from the specifica-

tion into the claims “would render meaningless the statutory

requirement for claiming.” SRI Int'l v. Matsushita Electric

Corp. of America, 775 F.2d 1107, 1115 n.7 (Fed. Cir. 1985).

The statute also establishes an examination system “‘cen-

tering on the allowance or rejection of claims.” Jd. Once again,

this system is rendered meaningless if, after a claim is allowed

as written, courts are free to “read into” the claim limitations

that are not present in the claim language and that con-

sequently were never considered by the examiner. Jd. In such a

case, the court would not be determining the validity of a claim,

but rather would be determining the “validity” of the specifica-

tion.

The importance of preserving the integrity of the exam-

ination system is underscored by the fact that, once the claims

are allowed and the patent issues, “{e]ach claim ... shall be

presumed valid,” 35 U.S.C. § 282, and an alleged infringer

must overcome the presumption of validity by clear and

convincing evidence. The analytical basis for the presumption

of validity is that the examiner did his job properly, considered

the pertinent references, and made a reasoned judgment about

the patentability of each claim. See American Hoist & Derrick

Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 ( Fed. Cir. ), cert.

denied, 469 U.S. 821 (1984). If, however, a court fundamen-

tally changes the nature of a claim by reading into it extraneous

13

limitations from the specification, the court ends up presuming

valid its own construct instead of a claim that was actually

passed on by the examiner. A defendant must then prove by

clear and convincing evidence the invalidity of a “claim” that

was never allowed.

On the other hand, a patentee has no cause to complain if a

court refuses to rewrite his claims. He need only apply for a

reissue patent containing amended claims. Judge Learned

Hand explained:

We should have no warrant for limiting the claims by the

elements of the disclosure which they do not include, even

if the elements were new. A patentee who claims broadly

must prove broadly; he may not claim broadly, and recede

as he later finds that the art unknown to him has limited

his invention. That is the chance he must take in making

broad claims; if he has claimed more than he was entitled

to, the statute does give him a locus poenitentiae, but he

must seasonably disclaim the broad claims in toto. He may

not keep them by interpretative limitation; he must procure

new Claims by reissue.

Foxboro Co. v. Taylor Instrument Co., 157 F.2d 226, 232 (2d

Cir.), cert. denied, 329 U.S. 800 (1949) (emphasis supplied ).

Accord, Merrill v. Yeomans, 94 U.S. 568, 573 (1876).

In essence, DuPont’s claim interpretation argument re-

duces to the proposition that DuPont wishes the Patent Act and

the controlling precedent of this Court and the Federal Circuit

were different than they are. This is not a basis for certiorari.

C. DuPont’s appeal to “equity” does not warrant review

by this Court.

DuPont argues that the Federal Circuit’s adherence to the

rule against reading limitations into a claim from the specifica-

tion is somehow inconsistent with other Federal Circuit deci-

sions holding that a patentee cannot assert a broader inter-

pretation of the claim in an infringement suit than he or she

14

urged in the Patent Office when asking that the claim be

allowed. (Pet. 13-15)

As a threshold matter, harmonizing allegedly inconsistent

decisions from within a single court of appeals is not generally

this Court’s task. See Sup. Ct. R. 17. Rather, that is a matter to

take up with the particular court of appeals by way of a petition

for rehearing in banc. Fed. R. App. P. 35. In this case, DuPont

did file a petition for rehearing in banc, but it never even

mentioned the supposed intra-circuit conflict that it now says

warrants certiorari.'° This is because no conflict exists.

The supposedly conflicting principle referred to in Du-

Pont’s Petition is that, when suing someone for infringement, a

patentee is estopped from arguing that the meaning of the

claim is any different than the meaning the patentee attached to

it during the prosecution of the claim in the Patent Office. This

equitable doctrine (called “prosecution history estoppel” or,

more archaically, “file wrapper estoppel”) ensures that a

patentee does not procure a patent by professing a narrow

interpretation of the claim and then turn around and sue

someone whose products fall outside that interpretation.

This principle has no application where a patentee claims

broadly, never attempts to limit the claims, and later finds out

that someone else made the claimed invention first. Much less

does this equitable doctrine apply where, as here, the patentee

first comes up with a brand new interpretation of the claims on

the first day of trial.

10 DuPont’s Petition to this Court cites Loctite Corp. v. Ultraseal

Lid., 781 F.2d 861 (Fed Cir. 1985), as its sole example of a case

where the Federal Circuit looked to the prosecution history in an

infringement suit. (Pet. 14) The Loctite decision is not cited

anywhere in DuPont’s petition for rehearing in banc.

15

CONCLUSION

For the foregoing reasons, the petition for a writ of

certiorari should be denied.

Dated: November 12, 1988 Respectfully submitted,

Harry J. ROPER Puiip S. Beck

GeorGe S. Bosy (Counsel of Record)

NEUMAN, WILLIAMS, Puitie C. SWAIN

ANDERSON & OLSON KIRKLAND & ELLIs

77 West Washington Street 200 East Randolph Drive

Chicago, Illinois 60602 Chicago, Illinois 60601

(312) 346-1200 (312) 861-2000

Attorneys for Respondents