Petition for Writ of Certiorari — Warner-Jenkinson Co. v. Hilton Davis Chemical Co.

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(\) 95

No. 950 FICE OF THE CLERK

In THE

Supreme Court of the United States

OCTOBER TERM, 1995

WARNER-JENKINSON COMPANY, INC.,

Petitioner,

Vv.

HILTON Davis CHEMICAL Co.,

Respondent.

Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

PETITION FOR A WRIT OF CERTIORARI

H. BARTOW Fark, III

(Counsel of Record)

RICHARD G. TARANTO

FARR & TARANTO

2445 M Street, NW

Washington, DC 20037

(202) 775-0184

J. ROBERT CHAMBERS

Kurt L. GROSSMAN

Woop, HERRON & EVANS

2700 Carew Tower

Cincinnati, OH 45202

——————————— anna

WILSON - Eres Printing Co., Inc. - 789-0096 - WASHINGTON, D.C. 20001

2/0

QUESTION PRESENTED

Whether patent infringement exists whenever the ac-

cused product or process is “equivalent” to the invention

claimed in the patent, in that the differences are not “sub-

stantial” as determined by a jury, even though the accused

product or process is outside the literal scope of the patent

claim.

(i)

REASONS FOR GRANTING THE PETITION ......

I. THE CASE PRESENTS A FUNDAMENTAL

QUESTION OF PATENT LAW THAT THIS

COURT SHOULD RESOLVE |.

Il. THE DECISION OF THE COURT OF AP-

PEALS IS SERIOUSLY FLAWED ON THE

MERITS .......... iiadietinibietpetsantnnences eniteeeene rataeaone

TT sicininepeenntemeningesnenen

(iii)

—_

TABLE OF AUTHORITIES

Cases Page

Aro Mfg. Co. v. Convertible Top Replacement Co.,

fe ee es 24

Bonito Boats v. Thunder Craft Boats, 489 U.S. 141

SETITIITEEY sinissontirsenepenntnctlesenasindiiinahesichesiaterieiaeabbememeniteneitcliiiineiemiasel 14, 19

Charles Greiner & Co. v. Mari-Med Mfg., 962 F.2d

ee ns I BID vi nsecnerennininsiannabictiennnnibnee 16

Gertz v. Robert Welch, Inc., 418 U.S. 323 (1974)... 30

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

XL RRR passim

In re Lockwood, 50 F.3d 966 (Fed. Cir. 1995),

vacated, 64 U.S.L.W. 3182 (Sept. 1, 1995) 17

John Hancock Mut. Life Ins. Co. v. Harris Trust

& Sav. Bk., 114 S. Ct. 517 (1998) —................ 22

Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470

I dilicdit hnisinndadincndennsinchcilindinsanianisiascaitaietsnadaiipdiinaies 22

Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S.

Re a ee 24, 25

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

RR aes tae ase 16

London v. Carson Pirie Scott & Co., 946 F.2d 1534

Or Cs ee 16

Markman v. Westview Instruments, Inc., 52 F.3d

967 (Fed. Cir. 1995), cert. granted, 64 U.S.L.W.

3238 (No. 95-26; granted Sept. 27,1995) . 25

Tezas Instruments Inc. v. United States Int’l Trade

Comm'n, 805 F.2d 1558 (Fed. Cir. 1986)... 16

United Carbon Co. v. Binney & Smith Co., 317 U.S.

ES a 23

Universal Oil Prods. Co. v. Globe Oil & Refining

MM 14, 23, 24

Valmont Industries, Inc. v. Reinke Mfg. Co., 983

F.2d 1089 (Fed. Cir. 1993) 16

White v. Dunbar, 119 U.S. 47 (1886) _................... 24

Winans v. Denmead, 56 U.S. (15 How.) 330

(1854) _....... Ee a ET 10, 27

Statutes and Rules

EET EY aes enn eS 2

I cciecicitinipirieerlti die ire ieneadiainecina lati 2

§ 112 _ ———w passim

TABLE OF AUTHORITIES—Continued

Page

ES passim

ST dcapasnenmenpempunepenenaeatetnenateinmnatemnes 12, 15, 26

ee passim

Other Material

M. Adelman, G. Francione, The Doctrine of Equiva-

lents in Patent Law: Questions That Pennwalt

Did Not Answer, 137 U. Pa. L. Rev. 673 (1989) passim

R. Bajefsky, Patent Equivalency: The Jury Is Still

In, Legal Times, Sept. 4, 1995, at 28 0... 16

W. Rooklidge, Federal Circuit Unsettles Doctrine

of Equivalents, National Law Journal, Oct. 23,

EERE SE as ee 16, 21

een

In THE

Supreme Court of the United States

OcToBER TERM, 1995

No. 95 - ——

WARNER-JENKINSON COMPANY, INC.,

Petitioner,

Vv.

HiLTon Davis CHEMICAL Co.,

Respondent.

Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

PETITION FOR A WRIT OF CERTIORARI

Petitioner Warner-Jenkinson Company, Inc., hereby

petitions this Court to review the judgment of the United

States Court of Appeals for the Federal Circuit in this

case.’ Sitting en banc and producing five opinions, the

sharply divided court resolved one of the fundamental

questions of patent law: to what extent, if any, may in-

fringement be proved under the “doctrine of equivalents,”

where “literal” infringement cannot be proved because

the defendant’s product or process does not come within

the plaintiff's patent claim? The court, repeatedly invok-

ing precedent of this Court dating from prior to the 1952

Patent Act, adopted the broad view that a patentee al-

‘Pursuant to Rule 29.1 of the Rules of this Court, Warner-

Jenkinson states that it is a wholly owned subsidiary of Universal

Foods Corporation and that it has no subsidiaries other than wholly-

owned ones.

ways may resort to two different causes of action for

infringement—one based on the patent claim's literal cov-

erage of the accused product or process; the other based

on the lack of “substantial differences,” as found by a

jury, between the patented invention and the accused

product or process.

OPINIONS BELOW

The opinions of the court of appeals sitting en banc

(Pet. App. la-152a) are reported at 62 F.3d 1512. The

unpublished panel opinion of the court of appeals on other

issues (Pet. App. 153a-159a) is not reported. The dis-

trict court’s oral opinion on relevant aspects of post-

judgment motions (Pet. App. 160a-167a) is not reported.

JURISDICTION

The court of appeals entered judgment on August 8,

1995. Pet. App. la, 153a. The jurisdiction of thle Court

is invoked under 28 U.S.C. § 1254.

STATUTORY PROVISIONS INVOLVED

35 U.S.C. § 111 provides in pertinent part:

Application for patent shall be made, or author-

ized to be made, by the inventor, except as otherwise

provided in this title, in writing to the Commissioner.

Such application shall include (1) a specification as

prescribed by section 112 of this title... .

35 U.S.C. § 112 provides in pertinent part:

The specification shall contain a written descrip-

tion of the invention, and of the manner and process

of making aff 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.

The specification shall conclude with one or more

claims particularly pointing out and distinctly claim-

ing the subject matter which the applicant regards

as his invention.

* * * *

An element in a claim for a combination may be

expressed as a means or step for performing a speci-

fied function without the recital of structure, mate-

rial, 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.

35 U.S.C. § 251 provides in pertinent part:

Whenever any patent is, through error without

any deceptive intention, deemed wholly or partly in-

operative or invalid, by reason of a defective specifi-

cation or drawing, or by reason of the patentee

claiming more or less than he had a right to claim

in the patent, the Commissioner shall, on the sur-

render of such patent and the payment of the fee

required by law, reissue the patent for the invention

disclosed in the original patent, and in accordance

with a new and amended application, for the un-

expired part of the term of the original patent. No

new matter shall be introduced into the application

for reissue.

* * cs -

No reissued patent shall be granted enlarging the

scope of the claims of the original patent unless ap-

plied for within two years from the grant of the

original patent.

35 U.S.C. § 271 provides in pertinent part:

(a) Except as otherwise provided in this title,

whoever without authority makes, uses or sells any

patented invention, within the United States during

the term of the patent therefor, infringes the patent.

STATEMENT

1. This case arises out of separate, independent efforts

by petitioner and respondent to develop an improved proc-

ess, known as ultrafiltration, for removing impurities from

certain dyes. Both petitioner and respondent manufacture

food dyes, including FD&C Red Dye #40 and Yellow

Dye #6. “Historically, [petitioner and respondent] used

an expensive and wasteful process known as ‘salting out’

to purify the dyes.” Pet. App. 2a. Ultrafiltration—which

“uses osmosis to separate components of a solution by

drawing some of the components, but not others, through

a membrane” (Pet. App. 2a-3a)—produces a dye of high

purity at less cost and with less loss of the dye itself.

It is undisputed in this case that petitioner and respond-

ent developed their respective ultrafiltration processes on

parallel tracks. Both of these tracks involved dealings

with a company called Osmonics, Inc.“ Having been ap-

proached by the companies, Osmonics selected certain

membranes to be tested and specified the process condi-

tions for those tests—i.e., pH, pressure, and membrane

pore size—first for petitioner and later for respondent.

After Osmonics demonstrated to both companies that it

had succeeded in performing ultrafiltration on their food

dyes, respondent (unbeknownst to either Osmonics or

petitioner) sought to obtain a patent for the process.

Respondent's initial efforts to obtain a patent met with

rejection at the U.S. Patent and Trademark Office (PTO).

In October 1984, a PTO Examiner concluded that, given

the prior art disclosed in the “Booth patent,” the process

claimed by respondent was obvious. C.A. Jt. App. 2209.*

2 Osmonics, Inc. “was known to specialize in the development of

membranes and equipment for fluid purification by ultrafiltration.”

Pet. App. 85a (Nies, J., dissenting) .

8 The Booth patent also disclosed an ultrafiltration process. That

process, however, “operates at a pH above 9 and preferably between

11 and 13.” Pet. App. 4a; id. at 156a. Because pH is a logarithmic

A second application was likewise rejected on grounds of

obviousness. Id. at 2145-47.

Respondent then met, through its patent agent, with

the PTO Examiner, asserting that its claimed process

differed in four important respects from the process dis-

closed in the Booth patent. Of particular importance here,

it argued that, while the Booth process operated at a pH

level above 9 (see note 3, supra), its process operated at

a pH level between 6 and 9. According to the Examiner

Interview Summary Record, “[t}he Examiner stated that

if clair 1 were amended to contain the pH range of 6

to 9, the rejection on prior art would be overcome.” C.A.

Jt. App. 2149. Respondent amended its claim to call for

“a pH from approximately 6.0 to 9.0,” as well as “hydro-

Static pressure of approximately 200 to 400 p.s.i.g.” See

Pet. App. 4a.‘ As a result, the patent—U.S. Patent No.

4,560,746 (the 746 patent)— issued in December 1985.

See Pet. App. 3a.

The process developed by Osmonics for petitioner does

not fall within the ranges specified in the ‘746 pateat. To

the contrary, it is conceded that its process operates at a

pH of 5 (and at hydrostatic pressure of nearly 500

p.s.i.g. at the upstream side of the membrane). It is also

conceded that, at the time that petitioner began commer-

cial use of its ultrafiltration process for Red Dye #40, it

had no knowledge of the ‘746 patent, which had just

scale, a single pH unit represents a tenfold difference in hydrogen

ion concentration. See Pet. App. 62a (Plager, J., dissenting).

* Dr. Cook, a co-inventor of the process claimed in the ’746 patent,

“testified at trial that though the process would work to separate

the dye from the impurities at pH-values as low as 2.0, a solution

with a pH below 6.0 would cause ‘tremendous foaming problems in

the plant.’” Pet. App. 62a (Plager, J., dissenting).

5 The process used by petitioner—which utilized a pH of 5.0 for

the purpose of decomposing a triazene impurity—employed a differ-

ent chemistry, making it able to operate at a pH below 6.0 without

causing the foaming problems noted by Dr. Cook. See note 4, supra.

issued, or of the process used by respondent. Pet. App.

Sa.

Petitioner learned of the ‘746 patent in October 1986.

It then consulted with patent counsel, who advised that

the patent was invalid and that, in any event, it was not

infringed by petitioner’s process. In particular, counsel

stated the opinion that the process—operating, as it did,

outside the ranges specified in the ‘746 patent—did not

literally infringe the “746 patent and could not be deemed

to infringe under the doctrine of equivalents. Pet. App.

87a (Nies, J., dissenting).

2. Respondent brought suit against petitioner in 1991,

alleging that petitioner had infringed the “746 patent.

Although it claimed at first that the process developed by

petitioner literally infringed the patent, it expressly dis-

avowed this argument before the district court. C.A. Jt.

App. 668 (“we are not asserting literal infringement in

this case”). It continued to press arguments, however,

that petitioner’s process infringed the patent under the

doctrine of equivalents, as set forth in Graver Tank &

Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605 (1950),

and other decisions. That issue was submitted to a jury,

which found infringement (but not willful infringement).

It awarded damages of $3,564,705. See Pet. App. Sa,

167a, 168a.

The district court subsequently denied a motion by

petitioner for judgment as a matter of law. Even though

the “746 patent had been modified before the PTO to

recite a process utilizing “a pH of approximately 6.0 to

9.0,” and even though petitioner’s process utilized a pH

outside that range, the court nevertheless held that the

jury had sufficient evidence to conclude that the monopoly

granted by the “746 patent extended, under the doctrine

of equivalents, beyond the terms of its claims. Pet. App.

16S5a. As a result, in addition to the award of damages,

it issued an injunction barring petitioner from employing

its process with any pH below 9.01 (and any pressures

below 500 p.s.i.g.). Pet. App. 172a.

3. The Federal Circuit, sitting en banc, affirmed by a

closely divided vote—6 active judges plus one senior

judge in the majority; 5 active judges in dissent. (Judge

Bryson did not participate.) The issues of validity and

infringement were initially argued to a panel of that court,

but, before it rendered a decision, the court decided to re-

hear the issues of infringement en banc,* in order “to

consider the important issues raised concerning the doc-

trine of equivalents.” Pet. App. 5a.’ Its efforts to resolve

those issues produced wide disagreement, reflected in five

separate opinions.

The majority began by broadly declaring its allegiance

to the doctrine of equivalents, stating flatly that “[t)his

case presents an opportunity to restate—not to revise—

the test for infringement under the doctrine of equiva-

lents.” Pet. App. 6a. Observing that this Court had

“mapped the modern contours of the doctrine of equiva-

lents in its landmark Graver Tank decision” (Pet. App.

7a), the court concluded that the doctrine gave a patent

* The issue of validity later was assigned to the same panel, which

held that the ‘746 patent was valid. Pet. App. 154a-159a. But see

Pet. App. 90a-102a (Nies, J., dissenting). Petitioner is not seeking

review of that ruling.

7 The court of appeals sought briefing on three specific questions:

1. Does a finding of infringement under the doctrine of equiva-

lents require anything in addition to proof of the facts

that there are the same or substantially the same (a) func-

tion, (b) way, (c) result, the so-called triple identity test of

Graver Tank [& Manufacturing Co.] v. Linde Air Products

Co., 339 U.S. 605 (1950), and cases relied on therein?

If yes, what?

2. Is the issue of infringement under the doctrine of equiva-

lents an equitable remedy to be decided by the court, or is

it, like literal infringement, an issue of fact to be submitted

to the jury in a jury case?

3. Is application of the doctrine of equivalents by the trial

court to find infringement of the patentee’s right to exclude,

when there is no literal infringement of the claim, discre-

tionary in accordance with the circumstances of the case?

Pet. App. 5a-6a.

holder the right to establish infringement whenever a jury

determined that the differences between an accused prod-

uct and the product claimed in the patent were “insub-

stantial.” See Pet. App. 8a; id. at 9a (“this court explicitly

holds that the application of the doctrine of equivalents

rests on the substantiality of the differences between the

claimed and accused products or processes, assessed ac-

cording to an objective standard”). The court continued

to endorse reliance on the familiar “function-way-result”

test (Pet. App. 9a) but cautioned that “the function-way-

result test may not invariably suffice to show the substan-

tiality of the differences.” Pet. App. 10a.*

The majority further held, again relying on Graver

Tank, that “preventing ‘fraud on a patent’ involves an

objective assessment of the substantiality of the differences

between the claimed and accused products or processes.”

Pet. App. 12a (emphasis added). It thus determined that

the district court had “correctly resisted [petitioner’s] ef-

fort to erect an equitable threshold for application of the

doctrine of equivalents.” Pet. App. 20a. According to

the court, evidence of “copying” or “designing around” is

relevant to determining the substantiality of differences,

but evidence of independent development is not. See Pet.

App. lla-14a; id. at 13a (“fe]vidence that the accused

infringer developed its product or process through inde-

pendent research is not directly relevant to the question

of infringement under the doctrine of equivalents”).° As

§ This Court in Graver Tank stated that “a patentee may invoke

[the doctrine of equivalents] to proceed against the producer of a

device ‘ “if it performs substantially the same function in substan-

tially the same way to obtain the same result.”’” 339 U.S. at 608

(quoting Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42

(1929), in turn quoting Machine Co. v. Murphy, 97 U.S. (7 Otto)

120, 125 (1878)).

* The majority stated that “[w]hen an attempt to copy occurs,

the fact-finder may infer that the copyist, presumably one of some

skill in the art, has made a fair copy, with only insubstantial

changes.” Pet. App. lla. By contrast, it said, “{w]hen a competitor

becomes aware of a patent, and attempts to design around its claims,

a result, “those who make only insubstantial changes to

a patented product or process are liable for infringement,

regardless of their awareness of the patent and its dis-

closure.” Pet. App. 14a.”

The court acknowledged that respondent had narrowed

its patent claims in order to win approval from the PTO,

but held that respondent nevertheless could use the doc-

trine of equivalents to bar products falling within the sur-

rendered area. To the court, the important issue was not

what was surrendered but the reason for the surrender.

See Pet. App. 24a-252. Thus, while respondent had ex-

plicitly limited its claimed process to recite “a pH from

approximately 6.0 to 9.0,” the court concluded that a

process utilizing a pH of 5.0 was infringing because re-

spondent had amended its claim “to avoid the disclosure

in the Booth patent of an ultrafiltration process operating

at a pH higher than 9.” Pet. App. 24a; see also ibid.

(“{t]his amendment surrendered pHs above 9, but does

not bar [respondent] from asserting equivalency to proc-

esses . . . operating sometimes at a pH below 6”).

The remainder of the majority opinion was devoted

largely to addressing, and rejecting, arguments made by

the three dissents. In particular, the majority dismissed

the notion that widespread resort to the doctrine of equiv-

alents was fundamentally inconsistent with the specific

claiming requirements of the Patent Act itself. In dis-

sent, Judge Plager, noting that the doctrine of equivalents

“is regularly used by patentees to seek greater coverage

for their patents than the patent statute grants” (Pet. App.

53a), argued that, as defined by the majority, the doctrine

the fact-finder may infer that the competitor, presumably one of

skill in the art, has designed substantial changes into the product

to avoid infringement.” Pet. App. 13a.

1© The insistence of the majority on an objective “factual” test—

albeit one in which the substantiality of differences apparently may

turn upon the intent of the alleged infringer (see note 9, supra) —

enabled it to conclude that application of the doctrine of equivalents

was a matter for a jury, not the court. See Pet. App. 14a-18a.

“is a virtually uncontrolled and unreviewable license to

juries to find infringement if they so choose.” Pet. App.

55a. Judge Plager objected that this expansion of the

patented area “is done largely without regard to and in-

dependent of the express limitations of the patent claims

which may have brought about their allowance by the

[PTO] in the first place.” Pet. App. 55a. Even though

Judge Plager accepted the need for some equitable remedy

to prevent virtual duplication—a remedy lying within the

discretion of the court—he found no basis for a doctrine

broad enough to rescue patent holders from the failure

to claim all that they lawfully might have claimed, stating

that “[tJhe solution to the problem of inadequate or in-

complete claim drafting is not arbitrary after-the-fact ‘in-

terpretation’ under the guise of ‘equivalents,’ whether by

judge or jury, that goes beyond anything in the claims

themselves.” Pet. App. 62a.

The majority, continuing to rely heavily on Graver

Tank, disagreed. “According to Graver Tank, the ‘theory

on which [the doctrine of equivalents] is founded is that

if two devices do the same work in substantially the same

way, and accomplish substantially the same result, they

are the same, even though they differ in name, form, or

shape.’” Pet. App. 26a (quoting Graver Tank, 339 US.

at 608 (internal quotes omitted) (emphasis added by

Federal Circuit). For that reason, the court concluded,

the doctrine of equivalents is “quite consistent with the

requirement that the patent claim ‘particularly point out’

and thereby circumscribe the protected invention.” Pet.

App. 26a-27a. Rejecting the idea that changes in the

Patent Act of 1952 had narrowed judicial authority to go

beyond the express terms of a patent, the court stated

that, “{iJn light of [Supreme Court] authority,” there

11 The court of appeale stated that “[a)gainst [a] stable backdrop

of statutory definitions of infringement, definitions which are vir-

tually indistinguishable from the current 85 U.S.C. § 271(a), the

Supreme Court has recognized actions at law for recovery for

infringement under the doctrine of equivalents since its Winans

was “no basis to hold that the doctrine of equivalents was

rendered extrastatutory and thus equitable by virtue of the

silent repeal that the dissent finds in the Patent Act of

1952.” Pet. App. 28a.

The court also found no ground for concluding that,

once a factual determination of insubstantiality had been

made, the doctrine of equivalents turned in any way on

the intent of the accused infringer. In dissent, Judge

Lourie took a contrary position, stating that “the substan-

tiality of the differences [between the patented and ac-

cused processes] is still only one of the factors according

to Graver, arguably the most important factor, which a

court should consider in deciding whether to apply the

[doctrine of equivalents].” Pet. App. 74a."* Noting that

“[t}he whole purpose of the doctrine is to defeat piracy

and to do justice to a patentee” (Pet. App. 77a), Judge

Lourie said that “[i]ntent to misappropriate someone

else’s invention is the hallmark of a pirate, and intent

must therefore not be excluded if a suitable judgment is

to be made concerning the applicability of the [doctrine

of equivalents].” Pet. App. 77a. The majority, however,

found no merit in this theory: “The Supreme Court, in

our view, made the fundamental question ‘whether under

the circumstances the change [in the accused product or

process} was so insubstantial that . . . invocation of the

doctrine of equivalents [is] justified.” Pet. App. 29a

(quoting Graver Tank, 339 U.S. at 610). The court thus

concluded that “[/‘»fringement is. and should remain, a

strict liability offense.” Pet. App. 29a.

v. Denmead decision [56 U.S. (15 How.) 330) in 1854.” Pet.

App. 28a.

'2 Judge Lourie mentioned several other factors to be considered,

including “whether independent development or copying has oc-

74a. He also noted “any behavior of the

Finally, the couri rejected a number of arguments made

by Judge Nies in dissent, including the argument that re-

spondent could not reclaim under the doctrine of equiva-

lents what it had expressly surrendered before the PTO.

Judge Nies pointed out that, “[i]n view of the liberality

in current claiming practice, the need for the doctrine of

equivalents because of difficulties in Grafting claims to

cover an invention in all possible forms is a rare case.”

Pet. App. 103a." Given that the decision by petitioner

to claim a process involving “a pH from approximately

6.0 to 9.0" was made in order to secure approval from

the PTO (Pet. App. 4a), Judge Nies reasoned that,

“{hjaving narrowed the claim's range of pH to secure the

Examiner's withdrawal of his prior rejection, [respond-

ent] may not now resort to the doctrine to cover equiva-

lents thereof.” Pet. App. 15la. But the court—looking

to “the reasons for claim amendments during prosecu-

tion” (Pet. App. 32a), rather than to the terms of the

amendments on their face—held that respondent still

could invoke the doctrine of equivalents, notwithstanding

the restrictions in the claim itself. Pet. App. 31a-32a.

A concurring opinion by Judge Newman expressed

considerable doubt about the doctrine of equivalents, but

found that “any change in the legal and factual funda-

mentals so explicitly laid out by the Supreme Court is

beyond our judicial authority.” Pet. App. 33a. Judge

13 Judge Nies also pointed out that a patentee could resort to a

statutory reissue procedure (35 U.S.C. §§ 251, 252) in order to

gain protection beyond the terms of the original patent. Because

the statutory procedure allows competitors to invoke “intervening

rights,” however, Judge Nies noted that “[t)he patentee is much

created out of the judiciary’s sense of ‘fairness."” Pet. App. 103a-

104a.

1* Judge Newman found that “the court’s decision today provides

no more certainty than did the 1950 decision in Graver Tank, leav-

ing in place the problems of application of the doctrine that have

concerned this court.” Pet. App. 45a.

Lourie expressed a similar view, stating that, “in light of

Graver, it may be that only the Supreme Court, writing

without the ing strictures of Graver, can deal

cleanly with this issue.” Pet. App. 79a n.3. And, in his

dissenting opinion, Judge expressed regret that the

Federal Circuit had failed to address more squarely the

widespread problems raised by the doctrine of equiva-

lents, observing that “[wJe and the Supreme Court are

the only two appellate courts with authority to do this.”

Pet. App. 56a. In his view, the inability of the Federal

Circuit to deal with the issue “leav[es] to the Supreme

Court the obligation of attending to the problem if it is

to be attended to at all.” /bid.

REASONS FOR GRANTING THE PETITION

A sharply divided en banc Federal Circuit decided one

of the fundamental questions of patent law in this case:

the scope of patent law's protection against “infringe-

ment.” See 35 U.S.C. § 271(a). The court held that the

Patent Act precludes a defendant's unauthorized making,

using, or selling of its product or process either if it comes

within the terms of the plaintiff's patent claim or if, though

outside the patent claim, it is found by a jury to lack a

“substantial difference” with the patented product or

process. Under the court's ruling, proof of infringement

through the “doctrine of equivalents” is a broadranging

and generally applicable supplement to proof of “literal”

infringement: it is freely available to any patentee as a

second theory of infringement when proof of literal in-

fringement fails.

_ This ruling warrants review, first of all, because of

its elemental importance to patent law and patent litiga-

Gon Ge ne ee tah, @ Oey Clee,

t scope Protection against infringement: that

is, whether infringement is tied to the patent claim that

gives the world notice of the legally protected monopoly:

or whether it extends more broadly to all products or

processes that a jury may later determine to be “substan-

tially equivalent.” The Federal Circuit’s adoption of the

latter broad view leads to obvious uncertainty and com-

plication both for inventors seeking to comply with the

patent laws and for litigants in patent disputes. Before

such a view becomes the definitive law of the land, this

Court should fully and freshly consider whether, with its

evident and substantial costs, the Federal Circuit's expan-

sive doctrine of equivalents is truly compatible with the

1952 Patent Act. That is particularly so because the

Federal Circuit, finding the “modern contours” of the

doctrine to be dictated by precedent of this Court pre-

dating the 1952 Act (see Pet. App. 7a), plainly did not

undertake such a complete examination of this funda-

mental issue.

Review is warranted, in addition, because the ruling

of the Federal Circuit is deeply flawed. By setting a

loose standard of “substantial” equivalence to condemn

products or processes that are concededly outside the scope

of a patent claim, the ruling undermines the Patent Act’s

insistence, as a core part of the general statutory bargain

offered inventors, that a patentee define with precision

the contours of what is claimed as the protected monop-

oly (35 U.S.C. § 112). Under the Act, it is the obli-

gation of the patentee to put the world on exact notice

of what is protected and what is freely available, as a

condition of securing the legal monopoly that excludes

others from even the most innocent infringement (35

U.S.C. § 271). See Bonito Boats v. Thunder Craft Boats,

489 US. 141, 150, 159 (1989) (noting “the bargain

held out by the federal patent system of disclosure in

exchange for exclusive use”); Universal Oil Prods. Co.

v. Globe Oil & Refining Co., 322 U.S. 471, 484 (1944)

(“quid pro quo” for monopoly is “precision of disclo-

sure”). The broad doctrine of equivalents also overrides

Congress’s specific provision granting protection for

“equivalents” for a targeted class of patents. 35 U.S.C.

$112. And, by allowing all patentees broad protection

beyond the terms of the claims that they wrote, the Fed-

eral Circuit’s ruling effectively allows for modification of

patent claims in disregard of Congress’s specifically lim-

ited provisions for modification (35 U.S.C. §§ 251, 252).

Contrary to the Federal Circuit’s view, this Court's

1950 decision in Graver Tank does not mandate or au-

thorize this upsetting of the congressional choices em-

bodied in the 1952 Patent Act. Moreover, neither Graver

Tank nor judicial concerns for flexibility in protecting

patentees can justify expansion of the patent monopoly

in situations, like the present, where (a) the patentee

clearly could have protected itself, but instead is invoking

the “equivalents” doctrine to cover what it deliberately

excluded from coverage in its claims, and (b) the defend-

ant has engaged in no fraud, knowing copying, or other

bad faith conduct, but instead created its product inde-

pendently of any knowledge of the patent or, indeed, of

the patented product or process. This Court should grant

review to reverse the Federal Circuit's broad definition

of the doctrine of equivalents, which creates infringement

liability, based on a jury determination of “insubstantial

differences,” even in such circumstances.

I. THE CASE PRESENTS A FUNDAMENTAL QUES-

TION OF PATENT LAW THAT THIS COURT

SHOULD RESOLVE.

1. The decision in this case is of extraordinary, wide-

spread importance in the field of patent law. The Federal

Circuit itself recognized the significance of the issues

presented, ordering sua sponte that the case be heard

en banc in order “to consider the important issues raised

concerning the doctrine of equivalents.” Pet. App. Sa.

Briefs amicus curiae were then filed by many, if not most,

of the major professional associations concerned with

patent law.” As one brief put it, the proper scope of the

“The various amici curiae included the American Intellectual

Property Law Association; the Federal Circuit Bar Association;

doctrine of equivalents presents a question “of national

public importance.” C.A. Brief for Amicus Curiae Amer-

ican Bar Ass’n at 1.

The reason that the issue is important is not hard to

fathom. Because the doctrine of equivalents allows patent

holders to claim protections beyond the terms of the

patent itself, the definition given to the doctrine may well

affect “the vast majority of patent infringement law-

suits.” C.A. Brief for Amicus Curiae American Bar Ass’n

at 2. See also C.A. Brief for Amicus Curiae Federal Cir-

cuit Bar Ass’n at 2, 10 (court’s resolution of “basic”

issues presented “will affect many users of the patent

system”). As commentators have noted, “the doctrine of

equivalents, once thought to be a narrow doctrine de-

signed to prevent ‘fraud on a patent,’ has become an

issue of fact to be resolved in virtually every patent suit.”

Martin Adelman & Gary Francione, The Doctrine of

Equivalents in Patent Law: Questions That Pennwalt Did

Not Answer, 137 U. Pa. L. Rev. 673, 699 (1989) (foot-

note omitted)."* Indeed, as one dissenting opinion stated

the problem, “[aJny patentee may invoke [the doctrine]

the American Bar Association; the Houston Intellectual Property

Law Association ; the Intellectual Property Law Institute; the Iowa

State Bar Association; and the California Association for the Ad-

vancement of Technology and Invention.

1 See Robert Bajefsky, Patent Equivalency: The Jury Ie Still In,

Legal Times, Sept. 4, 1995, at 28, 31 (“In recent years, decisions

of the Federal Circuit ha[d] suggested dissatisfaction with the

doctrine . . . [and its having] become the second prong in the

test for infringement in every patent infringement case. At least

some Federal Circuit judges wrote opinions limiting the availability

of the doctrine . . .”; discussing Loctite Corp. v. Ultraseal Ltd., 781

F.2d 861 (Fed. Cir. 1985); Valmont Industries, Inc. v. Reinke Mfg.

Co., 983 F.2d 1039 (Fed. Cir. 1998) ; London v. Carson Pirie Scott

& Co., 946 F.2d 1534 (Fed. Cir. 1991); Texas Instruments Inc. v.

United States Int'l Trade Comm'n, 806 F.2d 1558 (Fed. Cir. 1986) ;

Charles Greiner & Co. v. Mari-Med Mfg., 962 F.2d 1031 (Fed. Cir.

1992) ); William Rooklidge, Federal Circuit Unsettles Doctrine of

Equivalents, National Law Journal, Oct. 23, 1996, at C43 (same).

as a second prong to an infringement suit, in addition to

the statutory cause of literal infringement,” and today

“the doctrine is regularly used by patentees to seek

greater coverage for their patents than the patent statute

grants.” Pet. App. 53a (Plager, J., dissenting).”’

Although any resolution of the issue would involve a

matter of great importance, the actual resolution—giving

the doctrine of equivalents expansive reach as a supple-

ment to charges of literal infringement—necessarily will

have significant effects on patent holders and their po-

tential competitors. Indeed, the decision below stopped

in its tracks a process by which a number of panels of

the Federal Circuit, during the past decade, had suggested

limits on the reach of the doctrine of equivalents as a

broadly available second cause of action for infringement.

See note 16, supra. In pending as well as potential patent

litigation, the immediate effect of the decision is to pro-

mote great uncertainty about the scope of patent pro-

tection, because the scope of such protection now rou-

tinely depends on a jury’s broad freedom to determine

what differences between products or processes are “sub-

stantial.”"* Such uncertainty can be expected to spur

additional patent litigation, as patentees decide to pursue

suits against defendants who they recognize have not liter-

7“Tn recent years, perhaps in part due to the restatement, reset-

tling and strengthening of U.S. patent law by [the Federal Cir-

cuit’s) decisions (and in the absence of a strong countervailing

doctrine of patent misuse), some patentees have more frequently

alleged infringement of their patents by competitive devices, com-

positions or methods which are increasingly beyond the literal scope

of the patent claims—assertions which could be alleged only under

the doctrine of equivalents.” C.A. Brief for Amicus Curiae Ameri-

can Intellectual Property Law Ass’n at 5-6.

* See Pet. App. 1184 n.19 (Nies, J., dissenting) (noting sta-

tistics showing that well over half of patent trials are now tried

to jury, whereas tiny proportion were tried to jury in 1968-1970) ;

In re Lockwood, 50 F.3d 966, 980 n.1 (Fed. Cir. 1995) (Nies, J.,

dissenting from denial of rehearing en banc), vacated, 64 U.S.L.W.

3182 (Sept. 1, 1995).

ally infringed their patents. And this uncertainty like-

wise threatens to lengthen and complicate litigation, as

the parties and courts undertake a wide-ranging inquiry

into whether “substantial differences” exist between the

accused and patented products or processes. See Adel-

man & Francione, 137 U. Pa. L. Rev. at 699 (“the

factual nature of the equivalents inquiry makes summary

judgment very difficult to get in any case in which the

doctrine of equivalents is raised”).

The Federal Circuit’s ruling can be expected to have

adverse effects outside the system of patent litigation as

well. The Federal Circuit recognized that “[t]he ability

of the public successfully to design around—to use the

patent disclosure to design a product or process that does

not infringe, but like the claimed invention, is an im-

provement over the prior art—is one of the important

public benefits that justify awarding the patent owner

exclusive rights to his invention.” Pet. App. 13a. But

the greater the uncertainty about the precise scope of the

protected invention to be “designed around,” the greater

the inhibition on a new inventor’s ability and willingness

to try to invent in the area of the patent. The broad

doctrine of equivalents of the Federal Circuit is likely

to have just such a dampening effect on innovation,

because it makes inventors distinctly less able to rely

on the supposedly precise notice provided by patent claims

as to what is legally protected and what is not. Indeed,

the United States cited these adverse effects in urging

this Court in 1970 to reconsider and repudiate the doc-

trine of equivalents as “irreconcilable with fundamental

principles of congressional patent policy.” Brief for

United States as Amicus Curiae at 16, Standard Indus.

v. Tigrett Indus., No. 445, October Term 1969; see id.

at 14 (quoting United Carbon Co. v. Binney Co., 317

U.S. 228, 236 (1942)) (“‘{a] zone of uncertainty which

enterprise and experimentation may enter only at the

risk of infringement claims would discourage invention

only a little less than unequivocal foreclosure of the

field’ ”’).”°

2. This is not a case, moreover, in which it is appro-

priate to leave the Federal Circuit to its own devices in

settling an important question of patent law. In many

cases, of course, restraint in reviewing Federal Circuit

decisions on patent law is appropriately grounded in the

confidence that, with its grant of exclusive jurisdiction,

the Federal Circuit has authoritatively settled a question

of patent law uniformly for the Nation after full con-

sideration, in light of its accumulated expertise in the

area, of all relevant aspects of the question. C;. Bonito

Boats, 489 U.S. at 162 (exclusive jurisdiction io ensure

nationwide uniformity). But the premise of that defer-

ence is lacking here. The Federal Circuit plainly did

not feel itself empowered to solve the problems pre-

sented by the doctrine of equivalents; instead, at virtually

every turn, it invoked what it regarded as bindin ece-

dent of this Court. iam

. The majority thus repeatedly expressed the view that

it was constrained to reach its interpretation of the doc-

trine of equivalents by this Court’s Graver Tank decision

(and predecessor decisions). See, e.g., Pet. App. 6a-9a

(Graver Tank establishes “substantiality of the differ-

ences” test); id. at 9a-l14a (Graver Tank determines ele-

ments of “substantiality” inquiry); id. at 14a-17a (Graver

See Pet. App. 55a (Plager, J., dissenting) (“The obligation

on the inventor to particularly point out and distinctly claim what

the applicant regards as his invention, . . . the legitimate practice

of competitive designing around, and the opportunities given to the

public to benefit from the mandatory disclosures required of the

patentee, all are thrown into disarray by this unpredictable aspect

of current patent litigation.”’).

The Federal Circuit Bar Association explained to the Federal

Circuit in its amicus brief (at 12): “the current test is highly

indefinite and imposes severe costs on the public from a lack of

notice. It is a major source of uncertainty when assessing patent

disputes before and during litigation.” (footnote omitted).

Tank determines factual character of “equivalents” ques-

tion). Then, faced with the dissents’ detailing of a host

of fundamental difficulties presented by its broad doctrine

of equivalents (see pages 9-13, supra), the majority

did not respond either by denying the reality or serious-

ness of those difficulties or by undertaking its own thor-

ough analysis of the Patent Act and its requirements.

See Pet. App. 25a-32a. Instead, at each crucial point,

the majority responded in effect that it was not free to

rethink the doctrine because this Court’s precedents up

to and including Graver Tank supplied a controlling

answer. See Pet. App. 25a (fact question for jury); id.

at 26a-27a (Graver Tank declares doctrine of equivalents

to be consistent with the statutory insistence on precise

claiming); id. at 27a-28a (1952 Act did not displace

Graver Tank); id. at 28a-29a (Graver Tank precludes

addition of elements to “substantiality” test); id. at 30a

(Graver Tank “settled the question of the standard of

review in doctrine of equivalents cases, foreclosing the

dissent’s contention”); id. at 30a-31a (relying entirely on

Graver Tank for denial that doctrine of equivalents effec-

tively allows enlargement of claim scope); id. at 31la-32a

(further reliance on Graver Tank).

In this unusual circumstance, as the dissents pointed

out, authoritative resolution of the continuing force of

Graver Tank and of the continuing role and contours of

the doctrine of equivalents can come only, and should

come, from this Court. See Pet. App. 56a (Plager, J..

dissenting) (“in today’s opinion, the majority abdicates

this responsibility [to address the problems caused by its

readings of Supreme Court decisions], leaving to the Su-

preme Court the obligation of attending to the problem

if it is to be attended to at all”); id. at 68a-69a; id. at

79a (Lourie, J., dissenting). Judge Lourie put the point

most bluntly, stating that, “in light of Graver, it may be

that only the Supreme Court, writing without the con-

fining strictures of Graver, can deal cleanly with this

issue.” Pet. App. 79a n.3.% Indeed, a member of the

majority (Judge Newman), while lamenting that “the

court's decision today provides no more certainty than

did the 1950 decision in Graver Tank” (Pet. App. 45a),

nonetheless concluded that “any change in the legal and

factual fundamentals so explicitly laid out by the Supreme

Court is beyond our judicial authority.” Pet. App. 33a.”

II. THE DECISION OF THE COURT OF APPEALS IS

SERIOUSLY FLAWED ON THE MERITS.

1. The Federal Circuit’s decision, giving broad play to

a jury-determined protection against “substantial” _ do

alents,” is deeply inconsistent with the Patent Act. The

Federal Circuit seemed to view its interpretation of the

doctrine of “equivalents” as a construction of the provi-

sion protecting patentees against “infringement,” 35

U.S.C. § 271(a). Pet. App. 27a-28a. As apreen mat-

ter, however, that central provision of the statute, both

by its own terms and by the ordinary rules of statutory

construction, must be interpreted in light of and in ac-

cord with the remainder of the Patent Act. See John Han-

*° Judge Lourie went on to point out that “[a

why the bench and bar have struggled so much enmes ear sa

the (doctrine of equivalents] are the ambiguity of the Graver

opinion, the fact that many of today’s patent cases are tried to

juries and the Graver case did not involve a jury, and the greater

complexity of today’s patented high technology inventions compared

with those made 50 or more years ago.” Pet. App. 79a n.3. He con-

cluded that “Graver speaks to a time that is long past.” Jbid.

21 Judge Newman is not alone in poin rs) i

engendered by the decision below. Payton gn ein Bln = ‘the

Federal Circuit’s decision, by the principal author of the American

Bar Association’s amicus brief in the court of appeals, concludes:

‘The court’s decision . . . raises more issues for both the patent

bar and the business community than it resolves... . Most patent

cases that go to trial—the close cases—involve infringement under

the doctrine. . . . Hilton Davis adds little but uncertainty to the law

of patent infringement.” William Rooklidge, Federal Circuit Unset-

- Honig of Equivalents, National Law Journal, Oct. 28, 1995,

cock Mut. Life Ins. Co. v. Harris Trust & Sav. Bk., 114

S. Ct. 517, 523 (1993) (provision must be read in light

of entire statute). This familiar approach to statutory

construction shows that the Federal Circuit’s view of

protection against “equivalents” stands in sharp tension

with the Act as a whole.

By its terms, Section 271 defines “infringement” to

mean the unauthorized making, using, or selling of “any

patented invention.” 35 U.S.C. §271(a). Although the

Federal Circuit asserted that “the statutory definition of

infringement . . . makes no reference to claims at all”

(Pet. App. 27a), the meaning of the provision naturally

turns on what the “invention” is that may not be made,

used, or sold, and Section 112 directly addresses that

question in terms of “claims.” In particular, Section 112

requires the patent applicant (a patentee by the time of

the subsequent infringement litigation) to conclude its

“specification” “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 (emphasis added). The claims set forth in the

patent thus define the invention and, hence, the scope of

what is protected under Section 271. Yet, contrary to

that textual tying of “infringement” to the “claims” that

define the “invention,” the essence of the Federal Circuit’s

doctrine of equivalents is to provide protection in every

case for more than is set forth in the claims.

The doctrine of equivalents, as defined by the court

below, is inconsistent not only with the text of the Patent

Act but with well-established statutory policy as well. The

immediate purpose of the fundamental requirement of

precision in claiming is to give the world clear notice of

the exact scope of the federally protected monopoly—

a notice that must be precise if there is to be strict lia-

bility for infringement. “The doctrine of equivalents, if

22 See 35 U.S.C. § 271; Kewanee Oil Co. v. Bicron Corp., 416 U.S.

470, 478 (1974). Protection of patent rights, which are declared

applied broadly, can eviscerate both the claiming system

and the goal of providing notice to the public of the scope

of the patent. The doctrine achieves these results by en-

larging, in an unpredictable way, the scope of the patent

beyond the boundaries claimed by the applicant... .”

Adelman & Francione, 137 U. Pa. L. Rev. at 680. Thus,

as the United States explained to this Court in 1970,

“(t]he judicially-created doctrine of equivalents runs

counter to the statutory requirement that the subject of a

patent be precisely defined in the patent claims.” Brief

for United States as Amicus Curiae, supra, at 10-11.

. This Court has repeatedly made clear the fundamental

importance and purpose of precise definition of the pro-

tected claim, a requirement of patent law that long pre-

dates the 1952 Act. “The statutory requirement of par-

ticularity and distinctness in claims is met only when they

clearly distinguish what is claimed from what went before

in the art and clearly circumscribe what is foreclosed from

future enterprise.” United Carbon Co. v. Binney & Smith

Co., 317 US. 228, 236 (1942) (emphasis added);

id, at 232 (quoting General Elec. Co. v. Wabash Appli-

ance Corp., 304 U.S. 364, 369 (1938), and Permutit Co.

v. Graver Corp., 284 U.S. 52, 60 (1931)) (“The inventor

must ‘inform the public during the life of the patent of

the limits of the monopoly asserted, so that it may be

known which features may be safely used or manufac-

tured without a license and which may not.’”); Universal

Oil Prods. Co., 322 U.S. at 484 (in addition to serving

to enable others to make the invention when the legal

after careful and presumptively valid action by an administrative

agency seeking to define the ambit of the protected intellectual

property (35 U.S.C. § 282), contrasts sharply with the higher

standard of liability (requiring proof of copying) protecting copy

righted works, for which judicial definition of the scope of what

is protected is inevitable because no agency “claiming” system de-

fines the rights in advance. See Adelman & Franci

L. Rev. at 708-05. one, 187 U. Pa.

monoply expires, “precision of disclosure is likewise es-

sential to warn the industry concerned of the precise scope

of the monopoly asserted”). The Court has thus empha-

sized that “[t]he claim is a statutory requirement, pre-

- scribed for the very purpose of making the patentee define

precisely what his invention is; and it is unjust to the

public, as well as an evasion of the law, to construe it in

a manner different from the plain import of its terms.”

White v. Dunbar, 119 U.S. 47, 51-52 (1886). The Fed-

eral Circuit’s flexible doctrine of equivalents, however,

deprives the public of its ability to rely on the precisely

drafted claims as the reach of the legal monopoly.”

The importance of precise notice to the public underlies

what the Federal Circuit acknowledged to be the “well

settled” “rule against enlargement of claim scope during

claim construction.” Pet. App. 30a; see Aro Mfg. Co. v.

Convertible Top Replacement Co., 365 U.S. 336, 339-

40 (1961); Universal Oil Prods. Co., 322 U.S. at 484-

85; Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S.

(5 Otto) 274, 278-79 (1877). The court of appeals

managed to get around this rule, however, by the device

of declaring that inventions deemed to be “equivalents”

are actually “ ‘the same’” as the patented invention. Pet.

App. 30a, quoting Graver Tank, 339 U.S. at 608. But it

is mere wordplay, and bad wordplay at that, to say that

a product or process falling outside the protection of

“literal” infringement—precisely because it is different

from the invention as set forth in the patent claim—is,

in fact, the same as that invention. In so saying, the

court is doing nothing more or less than enlarging the

claim in exactly the manner forbidden by the rule against

23 The effect of the doctrine is readily apparent in this case.

Although respondent conceded that the process devised by petitioner

(which operates at a pH of 5.0) did not come within the litera!

terms of its patent (which claims a process operating at a pH

of approximately 6.0 to 9.0), it was able to obtain an injunction

against use of any pH below 9.01, as well as damages—al! under

the doctrine of equivalents.

expansion in claim construction. In both situations, “the

courts have no right to enlarge a patent beyond the scope

of its claim as allowed by the Patent Office .... When

the terms of a claim in the patent are clear and distinct

(as they always should be), the patentee, in a suit brought

upon the patent, is bound by it... . He can claim nothing

beyond it.” Keystone, 95 U.S. at 278."

2. The foregoing statutory policies, of course, are not

absolute. In the Patent Act itself, Congress wrote several

specific provisions giving patentees means to protect them-

selves against too narrow a protection. In particular, Con-

gress provided in Section 112 that “[a]n element in a

claim for a combination may be expressed as a means or

step for performing a specified function” and “such claim

shall be construed to cover the corresponding structure,

material, or acts described in the specification and equiv-

alents thereof.” 35 U.S.C. § 112 (emphasis added). In-

deed, the doctrine of equivalents was evidently the back-

ground against which this language was written into the

1952 Patent Act. See Pet. App. 102a & n.9 (Nies, J.,

dissenting) (legislative history reciting explanation from

Justice Department official). The decision below, how-

ever, allows a patentee to obtain protection for equiv-

alents even though they are not within the targeted statu-

tory provision on “equivalents.” As Judge Nies noted,

“{ilf a patentee chooses to draft a claim in other form,

it is reasonable to conclude Congress intended that the

patentee should be bound by the literal language of the

claim.” Pet. App. 102a-103a.

* There is no meaningful difference between defining the range

of equivalents protected by a rule of strict infringement liability

and defining the scope of the claim. Nevertheless, the Federal!

Circuit assigned the question of equivalents to the jury, even while

it elsewhere held—in a decision now under review in this Court—

that the construction of a patent claim is a matter of law for the

court. See Markman v. Westview Instruments, Inc., 52 F.3d 967

(Fed. Cir. 1995), cert. granted, 64 U.S.L.W. 3238 (No. 95-26:

granted Sept. 27, 1996).

Congress also provided in the Act for the very sort of

correction of mistakes that the judicial doctrine of equiv-

alents serves to accomplish. Section 251 expressly allows

for reissue of patents for that purpose, but only under

specified conditions, including that the application for

reissue be made within two years of the original grant

and that intervening rights of competitors be afforded

protection. See 35 U.S.C. §§ 251, 252. The Federal

Circuit’s doctrine of equivalents allows for judicial dis-

regard of the careful limits of these provisions in their

protection of patentees. See Pet. App. 102a-103a (Nies,

J., dissenting). As a consequence, “[t)he patentee is

much better off evading the reissue procedure which Con-

gress has provided, and resorting to its counterpart, the

doctrine of equivalents, created out of the judiciary’s

sense of ‘fairness.”” Id. at 103a-104a.

3. The Federal Circuit placed almost exclusive reli-

ance on Graver Tank in adopting a doctrine of equivalents

that is so deeply in tension with the Patent Act. Graver

Tank, however, cannot bear that weight as controlling

authority for allowing patentees to expand their legal

protection as the Federal Circuit held. At a minimum,

the decision requires fresh reconsideration, for at least

three reasons.

First, Graver Tank pre-dates the 1952 Patent Act,

which, as just noted, speaks with some specificity to at

least one problem of “equivalents” and thereby tends to

cast doubt on the sort of broad “equivalents” protection

recognized by the Federal Circuit. Second, the result in

Graver Tank was actually to restrict, rather than expand,

what the patentee had set forth in its patent claims. Al-

though that result was accomplished in two steps—first

an invalidation of certain claims as too broad, then an

“equivalents” expansion of the surviving claims—the fact

remains that the patent’s inclusion of the broad claims,

along with the patent’s specification, meant that the case

involved no failure of notice to the public: the “infringer

was on notice from the patent itself that it was taking an

embodiment of the invention.” Pet. App. 142a (Nies, J.,

dissenting); id. at 46a, 47a (Newman, J., concurring)

(Graver Tank “was an easy decision on its facts”; it did

not broaden the claim); see Adelman & Francione, 137

U. Pa. L. Rev. at 706-709 (Graver Tank actually nar-

rowed the claim). Third, Graver Tank itself relied chiefly

on older decisions, such as this Court’s 5-4 decision in

Winans v. Denmead, 56 U.S. (15 How.) 330 (1854),

construing earlier patent statutes that, at least as applied,

“did not require specificity in claiming.” Brief for United

States as Amicus Curiae, supra, at 12.“ The current vital-

ity and significance of Graver Tank thus should be re-

examined by this Court before it is accepted as governing

authority for the expansive doctrine adopted by the Fed-

eral Circuit.

4. Given the careful balance struck by the statutory

scheme itself, any departure from its provisions must be

taken with considerable restraint. According to the ma-

jority of the Federal Circuit, however, non-literal infringe-

ment may be proved in any case based on the answer to

a single question: are the differences between the two

products (or processes) substantial or insubstantial? If

25 See Pet. App. 110a-118a and C.A. Brief for Amicus Curiae

Federal Circuit Bar Ass’n at 15 (describing difference between

“central claiming” system, generally pre-dating 1870, which allowed

patentee to describe the “central” invention and left it to the courts

to define the outer boundaries of what was protected, and subse-

quent “peripheral! claiming” regime, which requires the patent itself

to specify the outer boundaries of the claimed protection). A doc-

trine of equivalents is not out of place under a central! claiming

system; indeed, under such a regime, the courts have little choice

but to undertake the job of defining the substance of the impre-

cisely defined invention. The doctrine, however, does not transpose

readily to a statutory scheme demanding that the patent itself

precisely define the line separating what is protected from what is

not and designating the Patent and Trademark Office, rather than

the judiciary, as the central forum for drawing that line.

the answer is the latter, the doctrine of equivalents is

available as a basis to impose liability for infringement

without regard to any other factors. The answer to the

determinative question, moreover, may be provided by a

jury, not by the court.

In our view, this definition of an essentially extra-

statutory basis for infringement liability casts the net too

far. As several of the dissenting judges suggest, it strikes

the wrong balance to reward the patent holder, and

punish its competitor, in every case where it is deter-

mined that only insubstantial differences exist between

their products. In particular, there is no good reason to

protect a patent holder from a failure to protect itself;

nor is it appropriate to impose liability on competitors

engaged in the very sort of creative behavior that the pa-

tent laws are intended to encourage. In such circum-

stances, even if a finding of insubstantial differences can

be made, the doctrine of equivalents—as an equity-based

form of relief, to be applied by the judge—should not be

available to impose liability for infringement.

There is thus no basis for invoking the doctrine to pro-

tect a patentee where the patentee should be expected to

have protected itself but failed to do so. See generally

Adelman & Francione, 137 U. Pa. L. Rev. at 711-29

(describing this as most frequent use of doctrine and

criticizing it). It fits with neither the Act nor any sensible

policy to protect a patentee against what it excluded from

its patent claim, where it could and should have been

responsible for making a well-considered decision to

exclude. In other words, the doctrine should not extend

patent protection to a variation from the claimed inven-

tion that the patentee reasonably could have anticipated

at the time it obtained its patent: the fundamental statu-

tory policy of precise notice, coupled with the strict liabil-

ity rule for infringement, should place the burden on the

patentee to explore and make careful decisions about

possible relaxations of the limitations that it writes into

its claim, thus ensuring that the limitations stated in the

claim ultimately issued to the public are the extent of

its claim.” That means, in particular, that a possible

relaxation of a limitation (here, for example, the possible

lowering of the 6.0 pH minimum) that was actually

considered and rejected for inclusion in the claim by

the patentee (here, in the documented process before

the PTO) should not later be judicially awarded the

patentee. Pet. App. 62a-63a (Plager, J., dissenting) (re-

spondent deliberately inserted 6.0 pH limit during pro-

cessing of patent application, which originally contained

no such limit); id. at 150a-1Sla (Nies, J., dissenting ).”’

On the other side of the equation, the Federal Circuit

was not justified in overriding the statutory commitment

to precision of notice where doing so would simultane-

ously impose liability on defendants who engage in the

sort of innovative efforts that the Patent Act is designed

to advance. Whether viewed in policy terms or as a sep-

arate equity-based cause of action (reflecting Graver

Tank’s concern with “fraud on a patent” (339 U.S. at

608)), any doctrine of equivalents should condemn only

bad faith “copying.” Independent inventors like peti-

tioner, who neither had nor should have had knowledge of

the patent, should not be held liable for non-literal in-

fringement; nor should defendants who, trying to “design

around” a patent, reasonably believed that their products

26 Mistakes can be corrected under Section 251, and some “equiva-

lents” protection can be obtained for claims drafted under the pro-

vision of Section 112 referring to “equivalents.” See page 25,

supra.

*TIn this specific circumstance, the restriction on non-literal

infringement protection may be phrased as a matter of “prosecu-

tion history estoppel” (see Pet. App. 130a-18la (Nies, J., dissent-

ing)), but that is merely a label for stating what is, by definition,

simply a limit on the availability of infringement protection under

the doctrine of equivalents: only what does not appear in the issued

patent claim can have been given up in the “prosecution.” The

reason for the change during the prosecution of the patent applica-

tion should be irrelevant to the obligation of the patent applicant

to protect itself.

were in fact substantially different (even if a factfinder

would now find that they were not). At most, only those

defendants who essentially knew that they were copying,

i.e., who lacked a good faith reasonable belief in non-

equivalence with the patented product or process, should

be liable. Such a rule would provide breathing space for

the very inventive practices encouraged by the Patent

Act and the Patent Clause of the Constitution, much as

the “knowledge of falsity” “reckless disregard” standard

of libel law provides breathing space for speech protected

by the First Amendment. See Gertz v. Robert Welch,

Inc., 418 U.S. 323, 342 (1974). In any event, the

Federal Circuit’s version of the doctrine is unjustifiably

sweeping and should be reviewed.

CONCLUSION

The petition for a writ of certiorari should be granted.

Respectfully submitted,

H. BARTOW Fark, III

(Counsel of Record)

RICHARD G. TARANTO

FARR & TARANTO

2445 M Street, NW

Washington, DC 20037

(202) 775-0184

J. ROBERT CHAMBERS

Kurt L. GROSSMAN

Woop, HERRON & EVANS

2700 Carew Tower

November 6, 1995 Cincinnati, OH 45202

APPENDICES

APPENDIX A

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

93-1088

HiLTON Davis CHEMICAL Co.,

Plaintiff-A ppellee,

Vv.

WARNER-JENKINSON COMPANY, INC.,

Defendant-A ppellant.

Appeal from U.S. District Court for the

Southern District of Ohio, Western Division

Judge Weber

DECIDED: August 8, 1995

Before ARCHER, Chief Judge,* RICH, Circuit Judge,

COWEN, Senior Circuit Judge, NIES, NEWMAN,

MAYER, MICHEL, PLAGER, LOURIE, CLEVEN-

GER, RADER, and SCHALL, Circuit Judges.**

Opinion of the court filed PER CURIAM. Concurring

opinion filed by Circuit Judge NEWMAN. Dissenting

* Circuit Judge Archer assumed the position of Chief Judge on

March 18, 1994, replacing Circuit Judge Nies.

** Circuit Judge Bryson, who e>tered on duty on October 7, 1994,

has not participated in the disposition of this case.

inion filed by Circuit Judge PLAGER, in which Chief

pane ARCHER and Circuit Judges RICH and LOURIE

join. Dissenting opinion filed by Circuit Judge LOURIE,

in which Circuit Judges RICH and PLAGER join. Dis-

senting opinion filed by Circuit Judge NIES, in which

Chief Judge ARCHER joins in part.

PER CURIAM.

Hilton Davis Chemical Co. sued Warner-Jenkinson Co.,

Inc. for infringement of U.S. Patent No. 4,560,746 (the

‘146 patent). The jury found that the “746 patent was not

invalid and that Warner-Jenkinson infringed under the

doctrine of equivalents. The trial court entered judgment

on the jury verdict. Hilton Davis Chem. Co. v. Warner-

Jenkinson Co., No. C-1-91-218 (S.D. Ohio June 22,

1992). Because substantial evidence supports the jury

verdict of infringement, the court en banc affirms.’

BACKGROUND

Hilton Davis and Warner-Jenkinson manufacture dyes,

including FD&C (food, drug, and cosmetic) Red Dye # 40

and Yellow Dye # 6. The process of making these dyes

yields impurities as byproducts. Manufacturers must re-

move these impurities from the dyes to meet stringent

governmental requirements for food and drug purity. His-

torically, Hilton Davis and Warner-Jenkinson used an

expensive and wasteful process known as “salting out to

purify the dyes. The “746 patent, assigned to Hilton Davis,

discloses an improved purification process that replaces

salting out with “ultrafiltration.” Ultrafiltration uses os-

1 The court took this case en banc to resolve specific questions

concerning the doctrine of equivalents. Consequently, the en banc

court has assigned the issue of validity of the “746 patent, raised

by Warner-Jenkinson, to the panel which initially heard the appeal.

The validity issue is decided in a separate panel opinion also issued

today. See Hilton Davis Chem Co. v. Warner-Jenkinson Co., No.

93-1088 (Fed. Cir. Aug. 8, 1995) (nonprecedential).

mosis to separate components of a solution by drawing

some of the components, but not others, through a mem-

brane. Thus, the “746 process filters impure dye solution

through a membrane at certain pressures, pHs, and pore

diameters. Impurities, but not dye molecules, pass

through the membrane, leaving a high purity dye product.

Hilton Davis began its search for an alternative to the

salting out process in 1982. The co-inventors of the ‘746

process, Drs. Cook and Rebhahn, led this project for

Hilton Davis. The inventors decided to investigate a mem-

brane separation process. Dr. Cook then hired Osmonics,

Inc., a filtration equipment manufacturer, to test the

process on a Hilton Davis Red Dye # 40 solution which

had been disclosed to Osmonics under a secrecy agree-

ment. The first test, in August 1982, did not succeed.

Dr. Cook then instructed Osmonics to perform a second

Red Dye # 40 test with specified changes in the test

membrane and filtration procedures. This second test, in

October 1982, succeeded. Osmonics successfully purified

Hilton Davis Yellow Dye # 6 under Dr. Cook’s instruc-

tions in January 1983.

The inventors filed their initial patent application based

on the October 1982 and January 1983 test results. After

further in-house testing by Dr. Cook, the inventors filed

a continuation-in-part application claiming a broader range

of membrane pore sizes. The "746 patent issued in 1985.

The °746 patent claims a process for purifying com-

mercial dyes including Red Dye # 40 and Yellow Dye

# 6. Claim 1, the only independent claim at issue, appears

in Jepson form. See In re Jepson, 1917 C.D. 62, 243

O.G. 525 (Ass’t Comm’r Patents 1917). Claim 1 recites:

In a process for the purification of a dye selected

from [a group including Red Dye # 40 and Yellow

Dye #6]... the improvement which comprises:

subjecting an aqueous solution . . . to ultrafiltration

a : pea et having a nominal pore diameter

of 5-15 Angstroms under a hydrostatic pressure of

approximately 200 to 400 p.s.i.g., at a pH from

approximately 6.0 to 9.0, to thereby cause separation

of said impurities from said dye, said impurities of a

molecular size smaller than the nominal pore diameter

passing [through] said membrane and said dye re-

maining in the concentrate, and when substantially

all said impurities have been removed from said

concentrate . . . recovering said dye, in approximately

90% purity from said concentrate by evaporation of

said concentrate to dryness.

(Emphasis added.) The inventors added the phrase “at a

pH from approximately 6.0 to 9.0” during prosecution to

distinguish U.S. Patent 4,189,380 to Booth et al. (the

Booth patent). The Booth patent discloses an ultrafiltra-

tion process that, among other differences from the ‘746

process, operates at a pH above 9 and preferably between

11 and 13.

Warner-Jenkinson developed its accused ultrafiltration

process for Red Dye # 40 and Yellow Dye # 6 in 1986.

Like the ’746 process, Warner-Jenkinson’s accused process

included ultrafiltration through a membrane. At trial,

Hilton Davis showed that Warner-Jenkinson’s process

operated at pressures somewhere in a range of 200 to

nearly 500 p.s.i.g. and a pH of 5. While Hilton Da

did not present actual pore size measurements for Warner-

Jenkinson’s membrane, several experts testified that a

membrane collecting Red Dye # 40 and Yellow Dye # 6

would have a nominal pore diameter of 5 to 15 Ang-

stroms

In 1982, Warner-Jenkinson had tested a membrane sepa-

ration process on a dye solution that had already been

salted out. Warner-Jenkinson, like Hilton Davis, hired

Osmonics under a secrecy agreement to perform its test.

Osmonics performed the Warner-Jenkinson test in August

1982, one week before it performed the first Hilton Davis

test. The Warner-Jenkinson test was not successful, how-

ever because it did not produce a sufficiently pure dye.

After the unsuccessful test, Warner-Jenkinson ceased

work on filtration of Red Dye #40 and Yellow Dye

#6 until 1986.

Warner-Jenkinson did not learn of the ‘746 patent

until October 1986, after it had begun commercial use of

its ultrafiltration process to purify Red Dye # 40. Hilton

Davis learned of Warner-Jenkinson’s process in 1989 and

sued Warner-Jenkinson for patent infringement in 1991.

After considering extensive evidence offered over nine

days, the jury found that the ‘746 patent was not invalid

and that Warner-Jenkinson infringed under the doctrine

of equivalents. The jury found that Warner-Jenkinson did

not willfully infringe, however, and awarded only 20% of

Hilton Davis’ request in damages. The district court then

denied Warner-Jenkinson’s post-trial motions, and entered

a permanent injunction prohibiting Warner-Jenkinson from

practicing ultrafiltration except at pressures above 500

p.s.i.g. and pHs above 9.01.

Warner-Jenkinson appealed the infringement and va-

lidity findings. After a panel of this court heard oral

argument on July 9, 1993, the court en banc decided to

rehear the appeal to consider the important issues raised

concerning the doctrine of equivalents. This court asked

the parties to brief three questions:

1. Does a finding of infringement under the doctrine

of equivalents require anything in addition to

proof of the facts that there are the same or

substantially the same (a) function, (b) way,

and (c) result, the so-called triple identity test of

Graver Tank [& Manufacturing Co.) v. Linde

Air Products Co., 339 U.S. 605 (1950), and

cases relied on therein? If yes, what?

2. Is the issue of infringement under the doctrine of

equivalents an equitable remedy to be decided

by the court, or is it, like literal infringement, an

issue of fact to be submitted to the jury in a jury

case?

3. Is application of the doctrine of equivalents by

the trial court to find infringement of the pat-

entee’s right to exclude, when there is no literal

infringement of the claim, discretionary in ac-

cordance with the circumstances of the case?

Oral argument directed to the en banc questions occurred

on March 7, 1994.

DISCUSSION

This case presents an opportunity to restate—not to

revise—the test for infringement under the doctrine of

equivalents. Courts have applied the doctrine of equiva-

lents to protect the substance of the patentee’s right to

exclude since the first few decades after enactment of the

Patent Act of 1790, ch. 7, 1 Stat. 109. Sitting as Circuit

Justice, Justice Story, the leading intellectual property

scholar of that era, siated:

Mere colorable differences, or slight improvements,

cannot shake the right of the original inventor.

Odiorne v. Winkley, 18 F. Cas. 581, 582 (C.C.D. Mass.

1814) (No. 10,432) (Story, C.J.). Indeed, the Supreme

Court has consistently recognized the doctrine of equiva-

lents as a protection for patent owners. See, e.g., Winans

v. Denmead, 56 U.S. (15 How.) 330, 343 (1854);

Sewall v. Jones, 91 U.S. 171, 184 (1875); Sanitary Re-

frigerator Co. v. Winters, 280 U.S. 30, 41-42 (1929).

Often the Supreme Court noted that an accused product

or process, to avoid infringement under the doctrine, must

include “substantial and not merely colorable” differences

from the patent claims. Singer Mfg. Co. v. Cramer, 192

U.S. 265, 286 (1904); see also McCormick v. Talcott,

61 U.S. (20 How.) 402, 405 (1858); Duff v. Sterling

Pump Co., 107 U.S. 636, 639 (1883).

The Supreme Court mapped the modern contours of the

doctrine of equivalents in its landmark Graver Tank deci-

sion. Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,

339 U.S. 605 (1950). In Graver Tank, the Court ad-

dressed whether Graver Tank’s use of a particular electric

welding flux infringed Linde Company’s patent. The pat-

ent claimed “essentially a combination of alkaline earth

metal silicate and calcium fluoride.” Jd. at 610. Graver

Tank’s accused flux substituted “silicates of calcium and

manganese—the latter not an alkaline earth metal—for

silicates of calcium and magnesium.” Id. Because only

exact duplicates literally infringe, id. at 607, the Court

recognized that infringement depended on the long-stand-

ing doctrine of equivalents. /d. at 608.

In explaining the bases for the doctrine, the Supreme

Court observed that limiting enforcement of exclusive pat-

ent rights to literal infringement “would place the inventor

at the mercy of verbalism and would be subordinating sub-

stance to form.” Graver Tank, 399 U.S. at 607. Such a

limitation, the Court reasoned, might even encourage

infringers “to make unimportant and insubstantial changes

and substitutions in the patent which, though adding noth-

ing, would be enough . . . [to evade] the reach of law.”

Id.

Based on these predicates, the Supreme Court con-

cluded, the doctrine applies if, and only if, the differences

between the claimed and accused products or processes are

insubstantial. Graver Tank, 339 U.S. at 610. The Court

expressed the doctrine in the following terms for the

Graver Tank case:

The question which thus emerges is whether the

substitution of the manganese which is not an alka-

necessary predicate for infringement under the doctrine of

equivalents.

In recent decisions, this court has also stressed the sig-

nificance of this “insubstantial differences” standard. Val-

mont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039,

1043, 25 USPQ2d 1451, 1454 (Fed. Cir. 1993); Charles

Greiner & Co. v. Mari-Med Mfg., Inc., 962 F.2d 1031,

1036, 22 USPQ2d 1526, 1529 (Fed. Cir. 1992); London

v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538, 20

USPQ2d 1456, 1458 (Fed. Cir. 1991); Slimfold Mfg. Co.

v. Kinkead Indus., Inc., 932 F.2d 1453, 1457 18 USPQ2d

1842, 1846 (Fed. Cir. 1991); Moleculon Research Corp.

v. CBS, Inc., 872 F.2d 407, 409, 10 USPQ2d 1390, 1392

(Fed. Cir. 1989); Pennwalt Corp. v. Durand-Wayland,

Inc., 833 F.2d 931, 935, 4 USPQ2d 1737, 1739 (Fed.

Cir. 1987) (en banc), cert. denied, 485 U.S. 961, and

cert. denied, 485 U.S. 1009 (1988); Perkin-Elmer Corp.

v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532, 3

USPQ2d 1321, 1324 (Fed. Cir. 1987). In many of these

cases, this court also relied on the so-called triple identity,

or function-way-result, test to measure the substantiality

of the differences. Valmont, 983 F.2d at 1043; London,

946 F.2d at 1538; Slimfold, 932 F.2d at 1457; Moleculon,

872 F.2d at 410; Pennwalt, 833 F.2d at 934-35. With

this case, this court explicitly holds that the application of

the doctrine of equivalents rests on the substantiality of

the differences between the claimed and accused products

Or processes, assessed according to an objective standard.

Il.

In applying the doctrine of equivalents, it is often

enough to assess whether the claimed and accused products

Or processes include substantially the same function, way,

and result. Courts recognized this principle as early as

1817, when Justice Bushrod Washington, riding circuit,

instructed a jury that “[wJhere the [claimed and accused |

machines are substantially the same, and operate in the

same manner, to produce the same result, they must be in

principle the same.” Gray v. James, 10 F. Cas. 1015

1016 (C.C.D. Pa. 1817) (No. 5,718); see also Sanitary

Refrigerator, 280 U.S. at 42 (“[G]enerally speaking, one

device is an infringement of another ‘if it performs sub-

stantially the same function in substantially the same way

to obtain the same result.’ . . . [The patent claim] is

nevertheless infringed by a device in which there is no

substantial departure from the description in the patent

but a mere colorable departure therefrom.” ) (quoting

Machine Co. v. Murphy, 97 U.S. 120, 125 (1877))

(emphasis added). Because examination of function, way,

and result often discloses the substantiality of the dif-

ferences between the accused and claimed products or

processes, many courts, including the Supreme Court

itself, have used this formulation to describe the doctrine

of equivalents. See, e.g., Graver Tank, 339 US. at 608

(quoting Sanitary Refrigerator, 280 U.S. at 42):

Co. v. Murphy, 97 U.S. at 125. . at 42); Machine

It goes too far, however, to describe the functi

‘ ° tion-way-

result test as “the” test for equivalency announced .

Graver Tank. The function-way-result test often suffices

to assess equivalency because similarity of function, way,

10a

and result leaves little room for doubt that only insubstan-

tial differences distinguish the accused product or process

from the claims. But evaluation of function, way, and

result does not necessarily end the inquiry. Indeed, the

Supreme Court explained that the function-way-result test

arose in an era characterized by relatively simple mechani-

cal technology. Graver Tank, 339 U.S. at 609 (reciting

history of doctrine). As technology becomes more sophis-

ticated, and the innovative process more complex, the

function-way-result test may not invariably suffice to show

the substantiality of the differences.

Thus evidence beyond function, way, and result is also

relevant to the doctrine of equivalents. In Graver Tank,

the Supreme Court identified and relied on factors in addi-

tion to similarity of function, way, and result. The Court

considered that persons reasonably skilled in the art knew

that the manganese in the accused flux was interchangeable

for the magnesium in the claimed flux. 339 U.S. at 609,

612. The Court also permitted the fact-finder to infer

infringing “imitation” from the lack of evidence that the

accused infringer independently developed its flux. /d.

at 612.

The Supreme Court’s reliance in Graver Tank on fac-

tors other than function, way, and result endorses consid-

eration of all evidence relevant to the substantiality of the

differences. Because “{e]quivalence, in the patent law, is

not the prisoner of a formula,” id. at 609, the available

relevant evidence may vary from case to case. When a

trial record presents only evidence of function, way, and

result, then application of the doctrine will necessarily

rest on function, way, and result alone. When a record

presents other evidence relevant to the substantiality of the

differences, however, the fact-finder must consider it.

In either event, the vantage point of one of ordinary

skill in the relevant art provides the perspective for as-

sessing the substantiality of the differences. Valmont, 983

F.2d at 1043. The test is objective, with proof of the sub-

lla

stantiality of the differences resting on objective evidence

rather than unexplained subjective conclusions, whether

offered by an expert witness or otherwise.

According to the Supreme Court, “[a]n importan -

tor” to be considered, quite apart AB Res ay nae —~

result, “is whether persons reasonably skilled in the art

would have known of the interchangeability of an ingre-

dient not contained in the patent with one that was.”

Graver Tank, 339 U.S. at 609. The precedent of this

court has also stressed the importance of evidence of

known interchangeability to show infringement under the

doctrine. See Corning Glass Works v. Sumitomo Elec.

U.S.A., Inc., 868 F.2d 1251, 1261, 9 USPQ2d 1962,

1969 (Fed. Cir. 1989); Thomas & Betts Corp. v. Litton

Sys., Inc., 720 F.2d 1572, 1579, 220 USPQ 1, 6 (Fed.

Cir. 1983). The known interchangeability of the accused

and claimed elements is potent evidence that one of ordi-

nary skill in the relevant art would have considered the

change insubstantial. Without such evidence, the patentee

will need other objective technological evidence demon-

Strating that the substitute nevertheless represents a change

that the ordinary artisan would have considered insub-

stantial at the time of infringement.

Evidence of copying is also relevant to infri

under the doctrine of equivalents, see Graver Tank, 339

U.S. at 612, not because the doctrine of equivalents rests

on the subjective awareness or motivation of the accused

infringer, but rather because copying suggests that the

differences between the claimed and accused products or

processes—measured objectively—are insubstantial. When

an attempt to copy occurs, the fact-finder may infer that

the copyist, presumably one of some skill in the art, has

made a fair copy, with only insubstantial changes. Such

an inference, of course, would not dominate the doctrine

of equivalents analysis. Instead, where the inference arises,

it must be weighed together with the other evidence rele-

vant to the substantiality of the differences.

12a

By considering evidence of copying, however, the Su-

preme Court did not imply that infringement under the

doctrine requires bad faith or some other subjective com-

ponent. Intent is not an element of infringement. See,

e.g., Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 478

(1974). A patent owner may exclude others from prac-

ticing the claimed invention, regardless of whether in-

fringers even know of the patent:

This question [of infringement] is one irrespective

of motive. The defendant may have infringed without

intending, or even knowing it; but he is not, on that

account, the less an infringer. His motives and knowl-

edge may affect the question of damages, to swell or

reduce them; but the immediate question is the simple

one, has he infringed?

Parker v. Hulme, 18 F. Cas. 1138, 1143 (C.C.E.D. Pa.

1849) (No. 10,740); see also Kewanee, 416 U.S. at 478;

Intel Corp. v. United States Int'l Trade Comm'n, 946

F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed. Cir. 1991).

The Supreme Court, in the exegesis of the doctrine in

Graver Tank, notably does not mention a threshold show-

ing of bad faith or evil intent. Proof of bad faith by an

infringer may entitle the patent owner to enhanced dam-

ages and attorney fees for willful infringement under 35

U.S.C. §§ 284-285 (1988). Evidence of culpable con-

duct, however, is not a prerequisite nor necessary for

application of the doctrine.

The Supreme Court applied the doctrine of equivalents

in Graver Tank to prevent “fraud on a patent,” 339 U.S.

at 608, not fraud by the accused infringer. As Graver

Tank demonstrates, preventing “fraud on a patent” in-

volves an objective assessment of the substantiality of the

differences between the claimed and accused products or

processes. The doctrine of equivalents does not rely on the

subjective awareness or intent of the accused infringer.

While the doctrine discourages the “unscrupulous copyist,”

l3a

339 U.S. at 607, its reach is not so limited. Thus, lack

of substantial differences, not the accused infringer’s mo-

tives or intent, triggers application of the doctrine of

equivalents.

Evidence of “designing around” the patent claims is

also relevant to the question of infringement under the

doctrine. The ability of the public successfully to design

around—to use the patent disclosure to design a product

Or process that does not infringe, but like the claimed

invention, is an improvement over the prior art—is one of

the important public benefits that justify awarding the

patent owner exclusive rights to his invention. Designing

around “is the stuff of which competition is made and

is supposed to benefit the consumer.” State Indus., Inc. v.

A.O. Smith Corp., 751 F.2d 1226, 1236, 224 USPQ

418, 424 (Fed. Cir. 1985). When a competitor becomes

aware of a patent, and attempts to design around its

claims, the fact-finder may infer that the competitor,

presumably one of skill in the art, has designed substan-

tial changes into the new product to avoid infringement.

Again. the strength of this inference may vary from case

to case. Evidence of designing around therefore weighs

— finding infringement under the doctrine of equiva-

Evidence that the accused infringer develo its prod-

uct or process through independent research yond directly

relevant to the question of infringement under the doctrine

of equivalents. Independent development is not designing

around. Independent development means that the accused

infringer had no knowledge of the patented invention

when it developed its product or process. Without knowl-

edge, the independent developer could not have set out to

make its product or process either similar to or different

from the claimed invention. Unlike copying or designing

around, therefore, independent development itself provides

no information about the substantiality of the differences

Furthermore, because intent is not an element of infringe-

ment, independent development does not excuse infringe-

14a

ment of the patent owner’s right to exclude. See Parker v.

me, 18 F. Cas. at 1143. An independently developed

yee no or process that falls within the patent claims or

includes only insubstantial differences nevertheless in-

fringes. See Kewanee, 416 U.S. at 478. In sum, those

who make only insubstantial changes to a patented product

or process are liable for infringement, regardless of their

awareness of the patent and its disclosure. a

idence of independent development is highly

ncaa to refute a patent owner’s contention that

the doctrine of equivalents applies because the accused

infringer copied, that is, intentionally appropriated the

substance of the claimed invention. In Graver Tank, the

Supreme Court linked the fact-finder’s inference of copying

to independent research. 339 U.S. at 612. Because the

record lacked evidence of independent development, the

fact-finder could infer copying or “imitation. Id. When

the patent owner asserts copying, evidence that the ac-

cused infringer developed its product or process without

knowing of the patent becomes relevant in rebuttal. For

this reason, the fact-finder must consider any evidence of

independent development in a case where the patent owner

alleges copying as probative of infringement under the

doctrine of equivalents.

Ill.

ingement, whether literal or under the doctrine of

e...... is a question of fact. Winans v. Denmead, 56

U.S. (15 How.) at 338; SRI Inti v. Matsushita Elec.

Corp., 775 F.2d 1107, 1125, 227 USPQ 577, 589 (Fed.

Cir. 1985) (en banc). The Supreme Court made this

abundantly clear in Graver Tank:

finding of equivalence is a determination of fact.

ber me “wip are in any form: through testimony

of experts or others versed in the technology; by docu-

ments, including texts and treatises; and, of course,

by the disclosures of the prior art. Like any other

15a

issue of fact, final determination requires a balancing

of credibility, persuasiveness, and weight of evidence.

(When tried to the trial court, it] is to be decided by

the trial court and that court’s decision, under gen-

eral principles of appellate review, should not be

disturbed unless clearly erroneous. Particularly is this

so in a field where so much depends upon familiarity

with specific scientific problems and principles not

usually contained in the general storehouse of knowl-

edge and experience.

339 U.S. at 609-10. The Supreme Court thus reempha-

sized that infringement under the doctrine of equivalents

is an issue of fact. When infringement is tried to the

court, as in Graver Tank, an appellate court reviews the

trial court’s infringement finding for clear error. When

tried to a jury, an appellate court reviews the jury verdict

for lack of substantial evidence. See, e.g., Genentech, Inc.

v. Wellcome Found, Ltd., 29 F.3d 1555, 1565, 31

USPQ2d 1161, 1168-69 (Fed. Cir. 1984).

In several recent opinions, this court has referred to the

doctrine of equivalents as “equitable.” * The term “equita-

2 See Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1089,

1043 n.1, 25 USPQ2d 1451, 1454 n.1 (Fed. Cir. 1993) (“the doc-

trine ‘is designed to do equity [but] it is not designed . . . to per-

mit a claim expansion that would encompass more than an insub-

stantial change’”) (quoting Perkin-Elmer Corp. v. Westinghouse

Elec. Corp., 822 F.2d 1528, 1532, 8 USPQ2d 1321, 1824 (Fed. Cir.

1987)); Texas Instruments Inc. v. United States Int’l Trade

Comm’n, 988 F.2d 1165, 1173, 26 USPQ2d 1018, 1024 (Fed. Cir.

1993) (“the doctrine of equivalents has been ‘judicially devised

to do equity’”) (quoting Loctite Corp. v. Ultraseal, Ltd., 781 F.2d

861, 870, 228 USPQ 90, 96 (Fed. Cir. 1985)); Charles Greiner &

Co. v. Mari-Med Mfg., Inc., 962 F.2d 1031, 1036, 22 USPQ2d 1526,

1529 (Fed. Cir. 1992) (“careful confinement of the doctrine of

equivalents to its proper equitable role... . promotes certainty

and clarity in determining the scope of patent rights”) ; London v.

Carson Pirie Scott & Co., 946 F.2d 1584, 1538, 20 USPQ2d 1456,

1458 (Fed. Cir. 1991) (“this equitable doctrine evolved from a

balancing of competing policies’’) .

l6a

re have many meanings. The Supreme Court ex-

yong in Graver Tank that the doctrine prevents the

unfairness of depriving the patent owner of effective pro-

tection of its invention, 339 U.S. at 607, thereby achieving

a fair or “equitable” result. Thus, in doctrine of equiva-

lents cases, this court’s allusions to equity invoke equity

in its broadest sense—equity as general fairness. —

recognizing the equity, or fairness, promoted by the ~~

trine of equivalents, furthermore, the Supreme Court a .

unequivocally that application of the doctrine is a aes

of fact. Id. at 609. This court has followed. SRI,

F.2d at 1118 (“It is settled that the question of infringe-

ment (literal or by equivalents) is factual. Graver

Tank.” ).

By referring to the doctrine as a doctrine of fairness,

ide the 2 dee Court nor this court has invoked the

myriad implications of an alternative to legal remedies.

In addition, neither the Supreme Court nor this court a

invoked equity in the technical sense of a set of princip -

originating in England to compensate for the ee y

harsh rules of common law. Graver Tank does not dis-

cuss any of the principles commonly attending the chan-

cellor’s invocation of equitable power, such as the “clean

hands” doctrine, the elevated burden of proof, the abuse

of discretion standard of review, or the mandatory balanc-

ing of the equities. Indeed, the Supreme Court has more

than once stated that every patent owner is entitled to a

voke the doctrine of equivalents—a proposition inimica

to the hypothesis that the doctrine is equitable. See Sani-

tary Refrigerator, 280 U.S. at 42; Seymour v. Osborne,

78 U.S. (11 Wall.) 516, 556 (1871) (“Patentees...

are entitled in all cases to invoke to some extent the doc-

trine of equivalents ... .”). Moreover, the Supreme

Court in Graver Tank credited the origin of the doctrine

of equivalents to its own decision in Winans v. Denmead

—a case at law, not equity. See Graver Tank, 339 US.

at 608; Winans v. Denmead, 56 U.S. (15 How.) at 338.

Therefore, by its terms, Graver Tank did not impliedly

17a

transform a legal basis for recovery into an equitable one.

In short, the Supreme Court’s cases on the doctrine of

equivalents foreclose a holding that the doctrine is a

matter of equity to be applied at the court’s discretion.

IV.

In answer to the first question posed by this court en

banc, a finding of infringement under the doctrine of

equivalents requires proof of insubstantial differences be-

tween the claimed and accused products or processes.

Often the function-way-result test will suffice to show the

extent of the differences. In such cases, the parties will

understandably focus on the evidence of function, way,

and result, and the fact-finder will apply the doctrine

based on that evidence. Other factors, however, such as

evidence of copying or designing around, may also inform

the test for infringement under the doctrine of equivalents.

No judge can anticipate whether such other factors will

arise in a given case. Instead, the presence of such factors

will depend on the way the parties frame their arguments.

Neither the Supreme Court nor this court limits the types

of evidence that either party may proffer in support of a

factor it considers probative of infringement under the

doctrine. The trial judge, however, has a duty to decide

whether the proffered evidence is relevant. This duty to

assess relevance is no different in a doctrine of equiva-

lents case than in any other type of case. Relevance will

be self-evident to the judge in a case tried to the bench.

In a jury trial, however, the judge must admit only rele-

vant evidence, and instruct the jury to consider only the

admitted evidence in reaching its decision.

In answer to the second question posed by this court

en banc, infringement under the doctrine of equivalents is

an issue of fact to be submitted to the jury in a jury trial

18a

ial j have dis-

the second question. The trial judge does not

cretion to choose whether to apply the doctrine of equiva-

lents when the record shows no literal infringement.

i rt reviews a jury verdict on the fact question of

tin under Pry theo of equivalents for preju-

dicial error in the jury instructions, Biodex Corp. v.

Loredan Biomedical, Inc., 946 F.2d 850, 854, 20 USPQ

2d 1252, 1254 (Fed. Cir. 1991), cert. denied, 112 S. Ct.

2957 (1992), and lack of substantial evidence supporting

the verdict, see Genentech, 29 F.3d at 1565.

While jury instructions must correctly state the law, they

need ald > sufficiently comprehensive to address the

issues of material fact raised by the record evidence.

Biodex, 946 F.2d at 854. Indeed, “[jJury instructions

must be confined to the issues as presented by the plead-

ings and evidence.” American Hoist & Derrick Co. v.

Sowa & Sons, Inc., 725 1350, 1363, 220 USPQ 763, 773

(Fed. Cir.), cert. denied, 469 U.S. 821 (1984).

The suffici of jury instructions is not tested in a

vacuum. “It yr established that [each] instruction

‘may not be judged in artificial isolation,’ but must ”

considered in the context of the . . . trial record. Estelle

v. McGuire, 502 U.S. 62, 72 (1991) (quoting Cupp v.

Naughten, 414 U.S. 141, 147 (1973)); see also Biodex,

946 F.2d at 862. The words of the instructions take on

meaning from the context of what happened at trial, -

cluding how the parties tried the case and their argumen

to the jury. Accordingly, we must examine the trial con-

text in which the jury instructions were given by the trial

court.

Hilton Davis offered evidence of and argued function,

way, and result in asserting the doctrine of equivalents.

Warner-Jenkinson responded in kind. Warner-Jenkinson

also offered evidence of independent development, contend-

19a

ing repeatedly that its lack of knowledge of the ’746

patent when it developed its ultrafiltration process excused

it from infringement under the doctrine. In its appeal

brief, Warner-Jenkinson summarized its interpretation of

the doctrine of equivalents:

ties.

tion of the doctrine, the patentee must put forth

proof of the equities, and the trial court must find the

type of conduct which triggers its application. London

v. Carson Pirie Scott & Co., (946 F.2d 1534, 1538.

20 USPQ2d 1456, 1458 (Fed. Cir. 1991)}: Charles

Greiner & Co. v. Mari-Med Mfg. Inc., 962 F.2d

1031, 1035-36, 22 [USPQ2d] 1526, 1529 (Fed.

Cir. 1992). As an equitable remedy, the doctrine is

an issue of law for the court, not the jury.

B. Here, no equitable basis exists for the appli-

cation of the doctrine. Warner-Jenkinson’s processes

were developed in cooperation with knowledgeable

and experienced vendors in the field including Os-

monics . . . . There was no copying or piracy.

As noted, however, the doctrine of equivalents is not an

equitable remedy available only on a showing of the equi-

ties. Lack of awareness of the patent or its disclosure does

not excuse infringement. Parker v. Hulme, 18 F. Cas. at

1143. Accordingly, Warner-Jenkinson could not succeed

in erecting an equitable defense to infringement.

In this context, the trial court instructed the jury about

the doctrine of equivalents in terms of function, way, and

result:

You may find infringement under the doctrine of

equivalents when the accused process and the claimed

invention perform substantially the same function in

substantially the same way to yield substantially the

20a

same result even though the processes differ in name,

form or shape.

(Emphasis added.) This formulation correctly stated that

the jury “may” rely on the function-way-result test, recog-

nizing that this test is often enough to show infringement

under the doctrine. In particular, the trial court tailored

its function-way-result instruction to the parties reliance

on evidence of function, way, and result in this case.

Moreover, the trial court’s instructions correctly re-

sisted Warner-Jenkinson’s effort to erect an equitable

threshold for application of the doctrine of equivalents.

The doctrine of equivalents has no equitable or subjective

component. The cases Warner-Jenkinson cites to the con-

, 946 F.2d at 1538, and Charles Greiner,

962 F.2d at 1035-36—reaffirm that the Graver Tank

objective criteria, as limited by prosecution history and

prior art, confine the range of equivalents. These cases do

not condition effective patent protection on proof of bad

faith. Accidental or “innocent” infringement is still in-

fringement. Intent becomes a requirement only if and

when the patent owner seeks enhanced damages or attor-

ney fees for willful infringement under 35 U.S.C. $§ 284-

285. In this case, for example, the jury took Warner-

Jenkinson’s lack of intent into account when it found that

Warner-Jenkinson did not willfully infringe. Therefore,

ages award, but did not provide a basis for avoiding

application of the doctrine. The evidence of independent

ence to such evidence in the jury instructions.

Zia

Under these circumstanes, the trial court’s function-way-

result instruction correctly guided the jury to consider the

relevant evidence. In a perfect world, the trial court might

have provided further guidance—by instructing the jury,

for instance, that Warner-Jenkinson’s independent develop-

ment was not an excuse to infringement. Nonetheless, the

trial court’s function-way-result instruction directed the

jury to consider, in assessing infringement, the onl i-

donee selpvant 0 Gio cubstantieliey of the Giltmenens Gat

was offered at trial. Significantly, Warner-Jenkinson did

not object to this instruction. Rather, Warner-Jenkinson

nay iy Safe yee tae mage diy equivalents question

, con ti

ment excused it from infrin reer ging. ee

The trial context left the jury to consider the evidence

of function, way, and result presented by both parties, the

only available evidence going to the substantiality of the

ae a Teens Of Gib Wiel, Gio instenstions

properly focused jury on the evidence relev

doctrine of equivalents.’ ae

nana ~ yyw +

~ ial differences in applying the doctrine of equivalents.

nsel for Hilton Davis extensively explained the doctrine to the

jury in terms of insubstantial differences:

What you are going to hear, what you are going to

Judge Weber tell you is he’s going to tell you cheat ap

of the doctrine of equivalents. Is one thing equivalent to

another for purposes of patent infringement. And what he’s

going to read to you the law is, is that the doctrine of equiv-

alents exists to prevent a fraud on the patent. It exists to

keep people from tickling the patent, from making a tiny

change that doesn’t make any difference at all and then trying

to convince people that there really is a difference there.

... So does the acid really make any difference in process

There is not a nickel’s worth of difference. ss

. . . So does it really make any difference? We saw f

Dr. Cook’s notebooks of all the tests they did there were pHs

all over the place, from 2 all the way up to 8, and they adjusted

22a

When a jury makes a finding on infringement under the

doctrine of equivalents, this court will uphold that finding

these intentionally to see what would happen, and it didn’t

make a nickel’s worth of difference. The process kept running

along processing the dye.

So, tickling the patent, cosmetic changes that don’t mean a

nickel’s worth of difference to what Hilton Davis’ patent had.

What he is really meaning is Warner-Jenkinson got caught

and now they are trying to come up with some excuses to

arque their way out of it. It is different, it is different, it is

different, but there is no difference at all. Thank you, ladies

and gentlemen.

(Emphasis added.) Counsel for Warner-Jenkinson relied on the

differences in function, way, and result between the claimed and

accused processes and on its independent development:

In any event, what else do they do? pH. They try to tell you

that pH doesn’t matter. This is interesting the way they did

this. Here’s what Mr. Schmit asked Mr. Cook on direct exami-

nation. Question, “In terms of whether or not the process

will work to separate the dye from the impurities, does it make

a difference what pH you operate at?[”) There is Mr. Cook’s

answer. “Not to my knowledge.” Okay. And Mr. Kinman

told you, “Not to my knowledge, pH doesn’t make a difference.”

And why did they tell you that? They tell you that because

they want you to think that our pH of 5 doesn’t really make a

difference; therefore, we are doing substantially the same thing

they are doing. ...

So this doctrine of equivalents, the reason I’m spending so

such time on it is that it had a special purpose in the law

and it is to get somebody where they see someone’s patent and

they say, “Gee, that’s a great idea.” Now, let’s just change

this little thing and that little thing and they are outside the

literal terms of the patent. That’s an unscrupulous infringer.

That's your fraud on the patent office. The person who does

that. It is not the person who develops their own thing, who

does their own thing for their own reasons and because they

have their own processes. .. .

(Emphasis added.) Thus, the jury received the case with emphasis

on the substantiality of the differences supplied in closing argu-

23a

if supported by substantial evidence. Genentech, 29 F.3d

at 1565. “It is not for this Court to even essay an in-

dependent evaluation of this evidence. This is the func-

tion of the trial court.” Graver Tank, 339 U.S. at 611.

Thus, the next question is the sufficiency of the evidence

to support the jury verdict.

The ’746 claims recite a pH “from approximately 6.0

to 9.0.” Warner-Jenkinson at times ian denn oH of

5.0. The claims also recite a pressure of “approximately

200 to 400 p.s.i.g.” Warner-Jenkinson used a

somewhere in a range of 200 to nearly 500 p.s.i.g.

pH of 6, as would any pH above 2. Even Warner-

Jenkinson’s expert agreed that Hilton Davis’ process would

operate at a pH of 5. The contains substantial evi-

dence that one of skill in the art would know that per-

forming ultrafiltration at a pH of 5 would allow the mem-

brane to perform the same function, in an equivalent way,

the cpg the same result as at a pH of approximately

Substantial evidence also supports the jury finding that

Warner-Jenkinson’s pressure for some of ‘its ietilibanes

was in the claimed range of approximately 200 to 400

p.s.i.g. Warner-Jenkinson argues for pressure measure-

ment at the high pressure pump instead of at the mem-

brane. Warner-Jenkinson’s pressure at the high pressure

pump may have been as high as nearly 500 p.s.i.g. The

specification, however, defines the pressure as “applied to

the upstream side of the membrane.” The ‘746 patent,

col. 6, lines 20-21. In any event, the record contains sub-

ments and -

focus on the function-way-result test supplied by jury

24a

stantial evidence that Warner-Jenkinson’s pressure per-

formed the same function—forcing the solution through

the membrane—in an equivalent way, to achieve the same

result.

As for pore size, the trial record details the difficulty

of measuring a membrane’s exact pore size in light of

variations in fluid and pressure conditions. The record

contains considerable evidence, however, about the pore

size necessary to separate dye molecules from smaller mole-

cular impurities. The record thus includes substantial evi-

dence that Warner-Jenkinson necessarily used membranes

of the claimed “nominal pore diameter of 5 to 15 Ang-

stroms” to accomplish ultrafiltration.

Nor does prosecution history estoppel preclude applica-

tion of the doctrine of equivalents in this case. “When-

ever prosecution history estoppel is invoked as a limita-

tion to infringement under the doctrine of equivalents,

‘a close examination must be made as to, not only what

was surrendered, but also the reason for such a sur-

render.’” Insta-Foam Prods., Inc. v. Universal Foam Sys.,

Inc., 906 F.2d 698, 703, 15 USPQ2d 1295, 1298 (Fed.

Cir. 1990) (quoting Bayer AG v. Duphar Int'l Research

B.V., 738 F.2d 1237, 1243, 222 USPQ 649, 653 (Fed.

Cir. 1984 )). The inventors amended the ‘746 claims to

recite “a pH from approximatel 6.0 to 9.0” to avoid the

disclosure in the Booth patent of an ultrafiltration process

operating at a pH higher than 9. This amendment sur-

rendered pHs above 9, but does not bar Hilton Davis

from asserting equivalency to processes such as Warner-

Jenkinson’s operating sometimes at a pH below 6.

Warner-Jenkinson performed the process disclosed in

the ‘746 patent—purifying dye by collecting relatively

large dye molecules on the concentrate side of a mem-

brane. Warner-Jenkinson did not use precisely the claimed

process parameters, but the jury found the differences be-

tween Warner-Jenkinson’s and the claimed processes insub-

stantial. The record contains substantial evidence support-

25a

ing this finding of infringement under the doctrine of

equivalents.

VL.

While agreeing that the substantiality of the differences

between the claimed and accused products or processes

is the ultimate question under the doctrine of equivalents,

one dissent contends that “[t)he authority to exercise the

unique remedy which is the doctrine of equivalents lies

exclusively in courts of equity.” This dissent argues that,

because the Patent Act of 1952 does not expressly provide

a general remedy for infringement under the doctrine of

equivalents, the doctrine must be, like other judge-created

extensions of inadequate legal remedies, purely equitable.

This reasoning, however, is a sharp departure from a

century of Supreme Court decisions issued under a stable

statutory regime.

The Supreme Court has long held that the question of

infringement, whether literal or by equivalents, is a ques-

tion of fact for the jury if properly demanded. For ex-

ample, in Coupe v. Royer, 155 U.S. 565 (1895), the

Court faced an accused infringer’s contention that the trial

court had improperly instructed the jury to the plaintiff's

advantage regarding the question of infringement under

the doctrine of equivalents. Remanding the case for a

new trial, the Court held that, despite the lack of a gen-

uine issue of fact regarding either the proper construction

of the patent claim or the nature of the accused device,

the question of infringement under the doctrine presented

@ question requiring trial to the jury. Id. at 579-80. In

so holding, the Court merely followed its decision in

Winans v. Denmead: “whether, in point of fact, the de-

fendant’s [devices] did copy the plaintiff's invention, in the

sense above explained [i.e., by an equivalent], is a ques-

tion for the jury.” Winans v. Denmead, 56 U.S. (15

How.) at 344. Citiations for this principle can, of course,

be multiplied. See, e.g., Royer v. Schultz Belting Co., 135

U.S. 319, 325 (1890); Tyler v. Boston, 74 US. (7

Wall.) 327, 330-31 (1869).

26a

is dissent also contends that the claiming requirement

cama tote the doctrine of equivalents by equitable

principles. The claiming requirement, however, was _

tained in the Patent Act of 1870, eighty years be .

Graver Tank. See Patent Act of 1870, ch. 230, § 26, “

Stat. 198, 201 (“[Blefore any inventor or discover sh :

receive a patent . . . he shall particularly point out an

distinctly claim the part, improvement, or combination

which he claims as his invention or discovery . . . .”); see

also Patent Act of 1836, ch. 357, § 6, 5 Stat. 117, 119

(requiring inventor to “particularly specify and point out

the part . . . which he claims”). Moreover the Supreme

Court in Graver Tank reached its decision over Justice

Black’s dissent which also invoked the statutory claiming

requirement against application of the doctrine. See

Graver Tank, 339 U.S. at 613-14 (Black, J., dissenting).

Supreme Court explained that the doctrine is not

Mlle with the requirement for explicit claims. Ac-

cording to Graver Tank, the “theory on which [the =

trine of equivalents] is founded is that ‘if two devices

the same work in substantially the same way, and accom-

plish substantially the same result, they are the same, even

though they differ in name, form, or shape.’” 339 U.S. at

608 (quoting Machine Co. v. Murphy, 97 U.S. at 125)

(emphasis added); see also Sanitary Refrigerator, 280

U.S. at 41-42 (“There is a substantial identity, constituting

stance the same thing.’”; quoting Burr v. Duryee, 68 U.S.

(1 Wall.) 531, 573 (1864)); Machine Co. v. Murphy,

97 U.S. at 125 (“Authorities concur that the substantial

27a

scribe the protected invention. See, e.g., 3 William C.

Robinson, The Law of Patents for Useful Inventions § 894

(1890) (discussing the identity theory underlying infringe-

ment by equivalents). In addition, by citing Machine Co.

v. Murphy for the concept of identity that undergirds in-

fringement by equivalents, the Court in Graver Tank,

decided eighty years after the advent of peripheral claim-

ing, relied on a case involving a patent granted in 1859,

97 U.S. at 121, eleven years before the advent of peri-

pheral claiming. Because the Statutory definition of in-

fringement has, as will be demonstrated below, remained

virtually unchanged since 1790, the Court could rely on

this pre-1870 case for the doctrine of equivalents. The

dissent’s equity model—and its underlying premise that

the advent of peripheral claiming in the Patent Act of

1870 dramatically altered the legitimacy or basis of the

doctrine of equivalents—would leave the Court’s reliance

on Machine Co. v. Murphy in Graver Tank utterly in-

explicable.

The dissent also suggests that Congress could have, but

has not, included the doctrine of equivalents in the Patent

Act of 1952, 35 U.S.C. $§ 1-376 (1988 & Supp. V 1993).

According to this dissent, “[i]f Congress wanted to pro-

vide for [infringement by] equivalents to what is claimed,

it knew how to do it.” This argument suffers at least

three fatal flaws. First, the statutory definition of infringe-

ment, which appears in 35 U.S.C. § 271(a), makes no

reference to claims at all. Thus, the definition of infringe-

ment is at best equivocal on the question of infringement

under the doctrine of equivalents. Second. the Supreme

Court itself has noted that “§ 271(a) of the new Patent

Code [of 1952], which defines ‘infringement,’ left intact

the entire body of case law on direct infringement.” Aro

Mfg. Co. v. Convertible Top Replacement Co., 365 US.

336, 342 (1961) (emphasis added). Thus, contrary to

the dissent’s inference that the Patent Act of 1952’s silence

repealed Graver Tank and its forebears, the Supreme

28a

Court in Aro states that section 271(a) left intact the

doctrine of equivalents.

Third, and perhaps most importantly, infringement was

defined and understood long before 1952. According to

section 4 of the Patent Act of 1790, anyone who without

authority “devise[d], ma[d]e, construct[ed], use[d], em-

ployed[ed], or vend[ed]” a patented invention was liable

to the patentee for “such damages as shall be asessed by

a jury.” Patent Act of 1790, § 4, 1 Stat. at 111. Simi-

larly, according to section 5 of the Patent Act of 1793,

anyone who “ma[dje, devise{d] and use[d], or s[old]” a

patented invention was liable to the patentee for a sum

“at least equal to three times the price, for which the

patentee has usually sold or licensed to other persons, the

use of said invention,” a liability to be adjudicated in a

legal, not equitable, “action on the case.” Patent Act of

1793, ch. 11, § 5, 1 Stat. 318, 322. Section 14 of the

Patent Act of 1836 simply provided for a legal “action for

damages for making, using, or selling” a patented inven-

tion without authority. Patent Act of 1836, § 14, 5 Stat.

at 123. Finally, section 59 of the Patent Act of 1870

simply provided “that damages for the infringement of any

patent may be recovered by action on the case.” Patent

Act of 1870, § 59, 16 Stat. at 207. Against this stable

backdrop of statutory definitions of infringement, defini-

tions which are virtually indistinguishable from the cur-

rent 35 U.S.C. § 271(a), the Supreme Court has recog-

nized actions at law for recovery for infringement under

the doctrine of equivalents since its Winans v. Denmead

decision in 1854. In light of this authority, this court

detects no basis to hold that the doctrine of equivalents

was rendered extrastatutory and thus equitable by virtue

of the silent repeal that the dissent finds in the Patent Act

of 1952.

A separate dissent concurs in our conclusion that the

function-way-result test is not “the” test for equivalents.

29a

This dissent, however, would prefer to treat the substantial-

ity of the differences as “only one of the factors accord-

ing to Graver, arguably the most important factor, which

a court should consider in deciding whether to apply the”

doctrine of equivalents. The Supreme Court, in our view,

made the fundamental question “whether under the cir-

cumstances the change [in the accused product or proc-

ess] was so insubtantial that . . . invocation of the doc-

py - "4 equivalents [is] justified.” Graver Tank, 339 U.S.

at r

In addition, this separate dissent argues that the accused

infringer’s intent is relevant to the question whether the

accused product or process infringes under the doctrine.

As clarified above, however, intent is not an element of

direct infringement, whether literal or by equivalents. Nei-

ther Graver Tank nor any other authority supports the

proposition that preventing “fraud on a patent,” 339 U.S.

at 608, turns on the subjective awareness or intent of the

accused infringer. Moreover, neither evidence of copy-

ing, independent development, not “designing around”

Owes its relevance in a doctrine of equivalents analysis to

the state of mind of the accused infringer. Infringement

is, and should remain, a strict liability offense.

the only evidence relevant to the substantiality of the dif.

ferences that the parties offered. No more is required.

See Biodex, 946 F.2d at 853-54.

A third dissent contends that “because we know what

the claim means and we know what process parameters

Warner-Jenkinson uses, the issue of infringement under the

30a

doctrine [of equivalents] . . . resolves itself into one of

law,” reviewable de novo on appeal. The Supreme Court

squarely renounced arrogation of the fact-finding function

in Graver Tank, however, recognizing that an appellate

court is not best qualified to assess the facts in a doctrine

of equivalents case:

A finding of equivalence is one of fact. . . . Like

any other issue of fact, final determination requires

a balancing of credibility, persuasiveness and weight

of evidence. It is to be decided by the trial court [in

a bench trial] and that court’s decision, under gen-

eral principles of appellate review, should not be dis-

turbed unless clearly erroneous. Particularly is this

so in a field where so much depends upon familiarity

with specific scientific problems and principles not

usually contained in the general storehouse of knowl-

edge and experience.

Graver Tank, 339 U.S. at 609-10 (emphasis added). In

short, the Supreme Court settled the question of the stand-

ard of review in doctrine of equivalents cases, foreclosing

the dissent’s contention.

This dissent also argues for adoption of a new “legal

limitation” on the doctrine of equivalents prohibiting “en-

largement of the claim.” The rule against enlargement

of claim scope during claim construction is well settled.

See, e.g., Keystone Bridge Co. v. Phoenix Iron Co., 95

U.S. 274, 278-79 (1877). This dissent errs, however, in

arguing that application of the doctrine of equivalents en-

larges the claim scope. Instead the doctrine of equiva-

lents provides the same protection to the substance of the

claim scope provided by the doctrine of literal infringe-

ment. As explained in Graver Tank, when there are no

substantial differences between the claimed and accused

products or processes, “they are the same” in the eyes of

the patent law. Graver Tank, 339 U.S. at 608 (quoting

Machine Co. v. Murphy, 97 U.S. at 125). The rule

3la

against enlargement, although an essential tenet of claim

construction, thus contributes nothing to the inquiry into

infringement under the doctrine.

This dissent also purports to discern in some of the

Supreme Court’s decisions a second “legal limitation” on

the doctrine of equivalents limiting “the range of infring-

ing substitutions to those in which components were substi-

tuted which were known to be equivalents” when the

patent issued. The dissent’s analysis is flawed, however.

The Court has recognized that post-issuance improvements

can infringe under the doctrine. See Sanitary Refrigera-

tor, 280 U.S. at 40-43. Our cases have followed the same

course. See, e.g., Moleculon, 872 F.2d at 409: Hughes

Aircraft Co. v. United States, 717 F.2d 1351, 1365, 219

USPQ 473, 483 (Fed. Cir. 1983). In Graver Tank, fur-

thermore, the Court recognized the ingenuity of would-be

pirates, who may always be expected to find new ways to

avoid the literal scope of a patent claim:

One who seeks to pirate an invention, like one who

seeks to pirate a copyrighted book or play, may be

expected to introduce minor variations to conceal

and shelter the piracy. Outright and forthright dupli-

cation is a dull and very rare form of infringement.

Graver Tank, 339 U.S. at 607. The doctrine “evolved in

response to this experience,” id. at 608, and stands as a

bulwark against such “insubstantial changes,” id. at 607.

Limiting the range of potentially infringing substitutions

to those known at the time of the patent’s issuance would

undermine the doctrine, denying patent owners protec-

tion of the substance of their inventions against new forms

of infringement.

Finally, this third dissent takes issue with the jury’s

evaluation of the evidence and this court’s refusal to apply

Prosecution history estoppel. Graver Tank bound this

court only to review the jury's fact findings and not to

rely on our independent views. As has been demon-

32a

strated, each of the jury’s fact findings is supported by

substantial evidence. Therefore this court must affirm the

jury’s fact findings, regardless of what result this court

might have reached had it been entrusted with fact find-

ing at trial. See Lavender v. Kurn, 327 U.S. 645, 653

(1946).

As for prosecution history estoppel, as explained, this

doctrine turns on the reasons for claim amendments dur-

ing prosecution. Insta-Foam, 906 F.2d at 703. That the

’746 inventors amended the claims to recite “a pH from

approximately 6.0 to 9.0” to avoid the prior art disclosure

of a process operating at a pH higher than 9 does not bar

Hilton Davis from asserting equivalency to Warner-Jenk-

inson’s process sometimes operating at a pH below 6.

CONCLUSION

Substantial evidence supports the jury verdict of in-

fringement under the doctrine of equivalents. The judg-

ment of the district court is affirmed.

COSTS

Each party shall bear its own costs.

AFFIRMED

33a

NEWMAN, Circuit Judge, concurring.

Co., 339 U.S. 605, 85 USPQ 328 (1950), have been re-

affirmed. Indeed, any change in the legal and factual

fundamentals so explicitly laid out by the Supreme Court

ical Competitiveness, 17 Rutgers Computer & Tech.

a 261 (1991); Zvi Griliches, Patents: Recent Trends

35a

ston eds., 1989). The technology-user community has al-

Odiorne v. Winkley, 18 F. Cas. 581, 582 (C.C_D. Mass.

1814) (No. 10,432) (charging the jury). As in ensuing

decisions, e.g., Winans v. Denmead, 56 US. (15 How.)

330, 343 (1854); Singer Mfg. Co. v. Cramer, 192 1° S.

265, 285-86 (1904): and Sanitary Refrigerator Co. y.

Winters, 280 U.S. 30, 41 (1921); the trier of fact was

directed to look to the substance of the i i

ascertain

tz, Evolution of the Claims of U.S.

Patents, 20 J. Pat. Off. Soc’y 457, 464 (1938). The

? The evolution from so-called “central” to “peripheral” claiming

was gradual, and apparently unrelated to the difference between the

wording of the 1836 phrase “particularly specify and point out the

part .. . which he claims,” Patent Act of 1836, ch. 857, §6, 5

Stat. 117, 119, and the 1870 phrase “particularly point out and

distinctly claim the part . . . which he claims,” Patent Act of

1870, ch. 230, § 26, 16 Stat. 198, 201. The history of H.R. No. 1714

(the Patent Act of 1870) suggests that the change in the words

Cong., 2d Sess. 2681

wrote that “[iJn 1870 the patent law was »

was in the nature of a consolidation of the statutes then in force.

37a

technologies. Indeed, the increasing specificity in claim

style probably made it easier for the “unscrupulous copy-

ist,” the words of Graver Tank, to appropriate the sub-

stance of the invention while evading the letter of the

claims.

The public notice aspect of what the patentee “claims,”

upon interaction with the patent examiner and on con-

sideration of the prior art, is a powerful argument for

strict literal reading of claims, even if the result is injustice

in particular cases. However, the patent system is of ever-

innovator has shown the way, the harshness of modern

competition, and the ever-present need for industrial in-

centives. These factors weigh on the side of the innovator,

and thus favor a rule that tempers the rigor of literalness.

See Patlex Corp. v. Mossinghoff, 758 F.2d 594, 599. 225

USPQ 243, 247 (Fed. Cir.) (“encouragement of .uvest-

ment-based risk is the fundamental purpose of the patent

grant"), modified, 771 F.2d 480, 226 USPQ 985 (Fed.

Cir. 1985).

The principle of equivalency thus serves a commercial

purpose, as it adjusts the relationship between the origi-

nator and the second-comer who bore neither the burden

of creation nor the risk of failure. However, there is also

the major consideration of the progress technology.

How does the existence of a “doctrine” that transcends the

And if not, what's all the fuss about?

38a

Innovation and Equivalency

Despite our national dependence on technologic ad-

vance, there is a sparseness of practical study of whether

and how the doctrine of equivalents affects modern in-

dustrial progress and the public welfare. However, a help-

ful debate is developing among scholars, centered upon the

optimum scope of patent claims. For example, Robert P.

Merges and Richard R. Nelson, On the Complex Eco-

nomics of Claim Scope, 90 Colum. L. Rev. 839 (1990),

suggest that the optimum claim scope is that which will

promote “competition in research”; while Edmund W.

Kitch, The Nature and Function of the Patent System,

20 J.L. & Econ. 265, 275-80 (1977), suggests that since

competition in research is inefficient, broad claims to the

originator would provide optimum incentives and serve the

larger social welfare. These analyses have drawn thought-

ful commentary and further development. For example,

touching on the complexity of the issue of equivalency in

Patent Law and Rent Dissipation, 78 Va. L. Rev. 305,

348 (1992), Mark F. Grady and Jay I. Alexander write

that the “doctrine of equivalents is really the method

through which the extent of an invention’s technological

signal is established.” These and other controversial the-

ories aid our understanding, although practical

tation seems to be quite elusive, for determination of the

national interest is as complex as the many forms of tech-

nology and the varied research and industrial strategies

of their development.

& William D. Nordhaus, Economics 658 (12th ed. 1985)

(in general, a higher return is required for higher risk

than for lower risk investment). The goal on which we

must concentrate is the public welfare, as summarized in

Mazer v. Stein, 347 U.S. 201, 219, 100 USPQ 325, 333

(1954):

39a

The economic philosophy behind the clause empower-

ing Congress to grant patents and copyrights is the

conviction that encouragement of individual effort

by personal gain is the best way to advance public

welfare through the talents of authors and inventors

in “Science and useful Art.”

The principle is today of international force, as the United

States seeks to enhance its national strength and interna-

tional trade with the aid of intellectual property. Indeed,

recent economic history illustrates the stagnation of the

economy coinciding with periods of diminished industrial

investment in technologic advance. Professor Griliches,

supra, at 291, wrote “Among the many explanations for

the worldwide productivity slowdown in the 1970s, the

exhaustion of inventive and technological opportunities

remains a major suspect.”

Persons who appropriate the patentee’s concept may

nology to enhance that of the patentee, .

40a

patentee’s access to the remedy of equivalency imposes

upon the appropriator the risk of litigation, damages, and

injunction.

Most (but perhaps not all) students of technologic in-

novation today accept the proposition that there is a

larger welfare benefit when the inventor is protected

against appropriability by a competitor who did not bear

the commercial risk. The cost of substantially imitating

an established product, with or without improvements, is

usually lower, and always less risky, than the originator’s

cost of creating, developing, and marketing the new prod-

uct. Such a competitor can act in a shorter time than

was needed by the patentee, and undercut the return to

the patentee. See Edwin Mansfield, Mark Schwartz &

Samuel Wagner, Imitation Costs and Patents: An Em-

pirical Study, 91 Econ. J. 907 (1981). Because of the

diminished risk-weighted incentive to the originator, it has

generally been concluded that “total welfare, but not the

welfare of consumers, would be increased by making it

more difficult to produce close substitutes for existing

products.” Stanley M. Besen & Leo J. Raskind, An In-

troduction to the Law and Economics of Intellectual

Property, 5 J. Econ. Persp. 3, 5 n.2 (1991).

These and other economic studies support the role of

the doctrine of equivalents as a mechanism that makes

it more difficult to produce close substitutes, whether by

imitation or improvement. There are additional policy

refinements, however, for improvements occur on a con-

tinuum between minor and major. Not all improvements

are equal, and neither are their implications for techno-

logic growth. Much of the current writing on the eco-

nomic and developmental implications of the scope of

patent rights is directed to technologies that are rapidly

evolving, primarily in the fields of biotechnology and elec-

tronics. There is a growing body of interesting thinking

about how to adapt the traditional modes of patenting

to the scientific and commercial needs of these technolo-

4la

gies. See, e.g., Pamela Samuelson, Randall Davis, Mitchell

D. Kapor & J.H. Reichman, A Manifesto Concerning the

Legal Protection of Computer Programs, 94 Colum. L.

Rev. 2308 (1994) (proposing a “hybrid” protection for

computer software beyond that available from existing

legal regimes); Dan L. Burk, Biotechnology and Patent

Law: Fitting Innovation to the Procrustean Bed, 17

Rutgers Computer & Tech. L.J. 1 (1991). Indeed, some

of the analyses relating equivalency and _scientific/

technologic advance, in the context of modern innova-

tion practices, suggest the thought that the doctrine of

equivalents today serves the unexpected purpose of being

the only readily available tool for application of the law

to new technologies. See, e.g., Yusing Ko, An Economic

Analysis of Biotechnology Patent Protection, 102 Yale

L.J. 777 (1992) (analyzing decisions that applied the

doctrine of equivalents).

If minor improvements are likely to be captured by the

doctrine of equivalents, this might cause the would-be com-

petitor to move to diverging areas instead of simply tag-

ging along at the periphery of the patentee’s claims. On

this theory the doctrine of equivalents, like the grant of

broad claims, could encourage “leapfrogging” advances in-

stead of minor improvements and substantial imitation.

This would enhance the growth of technology overall, and

thus serve the public welfare. The patentee too may be

encouraged by the broader commercial protection of the

doctrine of equivalents, particularly if the optimum com-

mercial form turns out to be at the edge of the patent’s

claims. A patentee may alse, be encouraged to continue

to study and invest in fine turning the invention, with the

added security that the investment, if the project is suc-

cessful, will be protected even if the patentee’s improve-

ments are not separately patentable. See Suzanne Scotch-

mer, Standing on the Shoulders of Giants: Cumulative

Research and the Patent Law, 5 J. Econ. Persp. 29

(1991) (discussing whether patent protection provides

incentives for cumulative research). Conversely, it is of

42a

course possible that the originator will allow the tech-

nology ‘to stagnate, or that would-be competitors would

simply be diverted from the field; these possibilities, how-

ever, appear to depend less on the patent system than on

many other factors. Each industry has its particular mo-

tivations, resources, and competitive situations. They have

been well studied for fields that have high research costs,

for these fields tend to be more dependent on the patent

system as an innovation incentive. See, e.g., Henry G.

Grabowski, The Determinants of Industrial Research and

Development: A Study of the Chemical, Drug, and Petro-

leum Industries, 76 J. Pol. Econ. 292 (1968). Merges

and Nelson, supra, at 871, discussing the economic models

broadly applicable to various types of claim scope, sug-

gest that there is a point at which the available claims

are so narrow that the advantages to imitation (as com-

pared to innovation) become sufficiently large that erst-

while innovators will simply wait for something to imitate.

Such a scenario is not uncommon for mature technologies.

No analysis is generally applicable to all fields of tech-

nology and all competitive relationships, as illustrated in

the growing literature on the function of patent-type eco-

nomic incentives. See generally John W. Schlicher, Patent

Law: Legal and Economic Principles (1992).

Competition and Equivalency

In thinking about the effect of the doctrine of equiva-

lents on both innovators and competitors, one must con-

sider how technology, the patent system, and competition

interact. The question of equivalency is presented to

judges after the competitive situation has crystallized, and

thus we tend to focus on the technologic issues as they

reach us in a lawsuit, and not on how the technology got

to that stage. However, technologic advance, like scien-

tific advance, usually proceeds in small, incremental steps,

building on what has gone before, building on one’s own

work and the work of others. The steps, accumulating,

may eventually produce the next generation of techologic

43a

progress. Yet each step, viewed alone, may be an insub-

stantial change. Even minor improvements can displace

the originator while adding little to advancing the field.

See Besen & Raskind, supra, at 5 & n.2. It is the insub-

stantial change that is caught by the law of equivalency.

Competition in research and development is important

to the nation. There are important distinctions between

competition in the research (inventing) stage and in com-

mercial activity. Competition in research, however in-

efficient its economics, serves the advancement of knowl-

edge in myriad ways. It is often observed that investment

in commerialization tends to be more risk-sensitive than

investment in research, apparently since the costs of prod-

uct development and capital plant often dwarf the cost

of making the invention. Yet industrial innovation is

served by the patent system when the commercial invest-

ment is made. To the extent that the doctrine of equiva-

lents enlarges the value of the patent to the innovator it

also increases the net social value, as well as serving as

a risk-reducing factor in commercial investment. The rele-

vant economic theories on these points are varied, and the

analyses are interesting. See, e.g., Janusz A. Ordover,

Economic Foundations and Considerations in Protecting

Industrial and Intellectual Property, 53 Antitrust L.J. 503,

506-07 (1985) (discussing the effects on innovative efforts

of competition in research and development).

The complexities of these relationships far exceed the

highlights I have touched. On the present state of the

law I have concluded that the doctrine of equivalents, on

balance, serves the interest of justice and the public inter-

est in the advancement of technology, by supporting the

creativity of originators while requiring appropriators to

adopt more than insubstantial technologic change.

44a

Equivalency and Risk

Patent law provides rules of exclusion, priority, and

competition that are understood by today’s industrial en-

terprises. Whether from the viewpoint of the originator

of technology or the appropriator, the impact of the doc-

trine of equivalents is as only one of many commercial

uncertainties and possibilities. I doubt if much, or any,

reliance is placed by orginators on the doctrine of equiva-

lents when specific investment decisions are made; at

least not by those who have studied precedent. The effect

of the doctrine of equivalents as an innovation incentive

is more generalized, more subtle.

I believe that the major contribution of the doctrine of

equivalents is now, and always has been, to the idea of a

fairer, less technocratic, more practical patent system; one

that is oriented toward encouraging technologic innovation

and discouraging free riding; one that is not at the “mercy

of verbalism,” in the words of Graver Tank. In this way

the doctrine of equivalents can contribute a degree of

added investment confidence to the inherently risky en-

vironment of new technology. However, it will not serve

that function if its application is so unpredictable that it

can not be relied upon. Indeed, the determination of tech-

nologic equivalency should be reasonably predictable by

not only the innovator but also the competitor. When

applied to a particular patented invention, it should be

reasonably predictable whether a specific device will be

found “equivalent.”

The possibility of infringement litigation is a risk fac-

ter for both the patentee and the appropriator. The paten-

tee will have weighed the strength, breadth, and enforce-

ability of the patent, along with other market benefits and

risks, before making a major investment in commerciali-

zation. In contrast, for the second-comer these risks are

evaluated only after the patentee’s product has been

45a

proved successful in the marketplace. A competitor who

operates within the “penumbra” of the claims, appropriat-

ing the inventor’s contribution while skirting the claims,

may be deemed to have taken a calculated commercial risk

that includes possible litigation. The degree of uncertainty

of the outcome necessarily affects the commercial risk; the

very existence of a “doctrine” that is applied variably by

judges, and at great expense to the parties, has an effect

on business decisions,

Some amici curiae complained that as lawyers they can

not advise clients with confidence about how close they

can come to a patentee’s invention, because of the doctrine

of equivalents. However, no amicus guided us to resolu-

tion of the interests and rights of clients on both sides of

the issue, or the national interest. Industry has been

silent, except of course for Hilton Davis and Warner-

Jenkinson, who have competently argued their positions,

each finding sound support in this court’s precedent. Un-

certainty at the margins of competing policies is not

unique to patent law, and is probably no more prevalent

than in other commercial causes of action. However, the

court’s decision today provides no more certainty than

did the 1950 decision in Graver Tank, leaving in place the

problems of application of the doctrine that have con-

cerned this court.

Uncertainty in the law always disserves the larger pub-

lic interest, although usually one side or the other is served

by it. The uncertainty in judicial application of the doc-

trine of equivalents surely serves the patentee, perhaps

disproportionately. See Louis Kaplow, Rules versus

Standards: An Economic Analysis, 42 Duke L.J. 557,

568-77 (1992) (discussing how the cost of compliance

with law increases with imprecision of the law). A few

authors have offered interesting suggestions for reducing

the uncertainty while retaining the just purposes of the

doctrine of equivalents, although most authors simply

criticize the past without helpful suggestions for the future.

46a

Economic analysis is reasonably consistent in its con-

clusion that technologic, commercial, and public interests

coincide to favor law that favors the innovator as against

the second-comer. However, the application of this analy-

sis to the complexities of patent-dependent innovation is

not fully understood. And the cases that reach us rarely

present a simple choice, even when the “doctrine” is

viewed solely as an instrument of justice between specific

parties. Graver Tank was an easy decision on its facts.

Hilton Davis v. Warner-Jenkinson is not, in my view, an

easy decision on its facts.

Rethinking the Doctrine

Reviewing past decisions that turned on equivalency,

one perceives a few dominant scenarios. Usually the ac-

cused infringer was already in the commercial field of the

invention, and the patented invention was making inroads

into its business, providing competitive pressure for tech-

nologic response. Occasionally, although rarely, the sec-

ond-comer made the invention independently.’ I have

made a rough classification of four of the principal cir-

cumstances in which the doctrine of equivalents has ap-

peared in litigation.

1. The patent actually claimed the aspect that is sought

to be reached under the doctrine of equivalents, but:

8 The patent statute permits an independent inventor to establish

its prior right through an “interference” proceeding. Although

Warner-Jenkinson states that it had the idea first and independ-

ently, it apparently did not attempt to provoke a patent interfer-

ence with Hilton Davis. Part of the policy justification of the

doctrine of equivalents is that if a person who is practicing sub-

stantially the same invention can not obtain priority as of right,

through the statutory interference process, that person has no

right to operate at the fringes of the prior invention. That is, the

doctrine of equivalents assures no greater right to one who does

not contest priority, than to one who loses a priority contest.

47a

(a) the broad claim that would have been literally

infringed was held invalid, and the patentee seeks to

recover part of that broader scope under the doc-

trine of equivalents; and example is Graver Tank;

(b) the broad claim that included literally the ele-

ment for which equivalency is at issue is not

infringed because of other limitations, and the paten-

tee seeks to recover that broader scope through the

doctrine of equivalents; ar example is Malta v.

Schulmerich Carillons Inc., 952 F.2d 1320, 21

USPQ2d 1161 (Fed. Cir. 1991).

2. The patent claims did not include a known substi-

tute for a component of the claimed combination:

(a) in Rite-Hite Corp. v. Kelley Co., 819 F.2d

1120, 2 USPQ2d 1915 (Fed. Cir. 1987), a known

ratchet and pawl mechanism in the claim was re-

placed with a known rack and pinion mechanism in

the accused device;

(b) in Perkin-Elmer Corp. v. Westinghouse Elec-

tric Corp., 822 F.2d 1528, 3 USPQ2d 1321 (Fed.

Cir. 1987), a known tap transformer in the claim

was replaced with a known loop transformer in the

accused device.

3. “Obvious” changes are made in the patentee’s device,

avoiding the literal scope of the claims:

(a) the accused device is in the space between the

patent's granted claim and the originally filed claim,

which the examiner deemed overly broad and re-

quired to be narrowed; as in Laitram Corp. v. Cam-

bridge Wire Cloth Co., 863 F.2d 855, 9 USPQ2d

1289 (Fed. Cir. 1988);

(b) the accused device is in the space between the

patent’s claim and the prior art; as in Wilson Sport-

48a

ing Goods Co. v. David Geoffrey & Assoc., 904 F.2d

677, 14 USPQ2d 1942 (Fed. Cir. 1990).

4. Usually because of developments in technology, a part

of the claimed combination is modified or becomes unnec-

essary:

(a) a step in a multistep process is combined with

another step, as in Corning Glass Works v. Sumi-

tomo Elec. U.S.A., Inc., 868 F.2d 1251, 9 USPQ2d

1962 (Fed. Cir. 1989);

(b) a step in a multistep process is omitted, as in

Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d

931, 4 USPQ2d 1737 (Fed. Cir. 1987) (en banc).

In each of these four examples, infringement by equiva-

lency was found in (a) but not in (b). It is not the

doctrine of equivalents, but the uncertaintly of its applica-

tion that causes the uncertainty in commercial relation-

ships. Our decision today, while rejecting the proposed

equitable considerations that would have added further

uncertainty, does not answer the difficult question of im-

proving the predicatability and reducing the uncertainty

of technologic decisionmaking. For this reason, I have

wondered whether it may be possible to devise a better

way to meet the needs now served by the doctrine of

equivalents.

For example, the patent law places strong pressure on

filing the patent application early in the development of

the technology, often before the commercial embodiment

is developed or all of the boundaries fully explored. Since

the patentee is barred from enlarging the claims after two

years from the date of issuance, later developments are

excluded from the patent system unless they independently

meet the criteria of patentability. From the originator’s

viewpoint, the inability to protect such developments may

be a factor in recourse to the doctrine of equivalents. And

49a

from the viewpoint of the potential competitor, there is no

opportunity to test possible encumbrances on later devel-

opments.

Most legal documents can be reformed, or amended, or

supplemented. However, the available mechanisms for

patent documents are extremely limited, for neither the

reissue nor reexamination procedure permits adding to the

disclosure. Thus some technologic variants can be

reached only through litigation invoking the doctrine of

equivalents. I invite creative thinking by the bar and tech-

nology communities, for if there were statutory proce-

dures whereby patentees could protect their continuing

work, there might be justification for limiting infringement

to the literal scope of claims thus obtained.‘ A statutory

system that could accommodate the major factual scenarios

of technologic equivalency could provide added certainty

both to patentees and to those seeking to build on the

subject matter of the patent. I commend the various sug-

gestions already made in recent literature, for they start

us on the path to a more useful mechanism for resolution

of the question of technologic equivalency.

Summary

The patent law is directed to the public purposes of

fostering technological progress, investment in research

and development, capital formation, entrepreneurship, in-

novation, national strength, and international competitive-

ness. Our review of the doctrine of equivalents takes place

in this context, not as an abstraction insulated from com-

mercial reality. The questions before us are not simple.

However, until the technology community provides a bet-

ter answer, I know of no improvement upon the Court's

* For example. some countries have handled the issue of con-

tinuing developments through a statutory form called a “patent

of addition”, 2 mecheniem whereby a patentee can add additional

disclosure and claim” to a patent after it has issued.

50a

holding that the doctrine of equivalents may be invoked

when needed to “temper unsparing logic and prevent an

infringer from stealing the benefit of an invention.” Graver

Tank, 339 U.S. at 608, 85 USPQ at 330 (quoting Royal

Typewriter Co. v. Remington Rand, 169 F.2d 691, 692,

77 USPQ 517, 518 (1948)).

Sla

PLAGER, Circuit Judge, with whom Chief Judge

ARCHER and Circuit Judges RICH and LOURIE join,

The court today tells us some important things about

the doctrine of equivalents. We are told that application

of the doctrine turns on one primary test: the substantial-

ity of the differences between the claimed and accused

products.’ The function-way-result test, so often recited

since Graver Tank as the controlling test, is not “the” test.

Rather, in assessing substantiality, other objective indicia

may be considered, such as the known interchangeability

of the accused and claimed elements by persons reason-

ably skilled in the art; whether there is evidence of inten-

tional copying; and whether there is evidence of an at-

tempt to design around the patented matter.

Function-way-result still plays a part, although exactly

what that part is may seem obscure to some. That test,

it is explained, arose in days of relatively simple mechan-

ical technology. More sophisticated and innovative prod-

ucts may require more sophisticated analysis and thus

different evidence, although it would appear that this de-

pends as much on the lawyer and the judge as on the

product: the trial judge will decide whether the additional

evidence, if any, offered by the patentee is ‘relevant’ to the

case. Straight function-way-result turned out to be suffi-

cient for the ultrafiltration through osmosis technology

involved in this case.

The court also tells us that the burden is on the patentee

to produce the necessary evidence of insubstantiality, and

that these evidentiary questions are questions of fact.

Taken singly, most of these propositions are familiar.

Packaged as they are, they may come as a revelation to

The term “product” is used here to refer to any category of

patentable subject matter. See 35 U.S.C. § 101 (1988).

52a

many in the bar, as they no doubt do to the parties in this

case. The court’s statement that “[t}his case presents an

opportunity to restate—not to revise—the test for in-

fringement under the doctrine of equivalents” is difficult

to take literally. What the court has given us is a recipe

in which familiar ingredients are to be mixed in a differ-

ent way, to produce what must be presumed to be a better

product. But there is no reason to suppose that the new

product will in fact be better. The mixing is still to be

done in the dark, by the multiple hands of a jury under

minimal instruction. When that product, an announced

“yes, it infringes” or “no, it does not” arrives at this court,

we will remain as blinded as we are now in our ability to

pierce the doctrinal veil. If we are to know where we

are going with the doctrine of equivalents, we must know

whence it came. The court denies that the doctrine has

its roots in a court’s traditional equity powers, but pro-

vides no substitute explanation for its origin. As a result,

we are left with two major problems that are not satisfac-

torily resolved: what are the controlling bounds of the

doctrine, and what are the proper respective roles of judge

and jury.

As a preliminary matter, it may be asked why the court

needs to undertake this inquiry into the doctrine of equiv-

alents at all. Is something broke that needs fixing? The

short answer is yes.” One problem is that, whatever role

the doctrine of equivalents may have played in earlier

? For commentary on the doctrine, and specific criticisms, see,

e.q., Peter Blackman, Doctrine of Equivalents; Ruling Unlikely to

Resolve Tension in Patent Law, N.Y.L.J., July 21, 1994, Corporate

Update, at 5: Rudolph P. Hofmann, Jr., The Doctrine of Equiv-

alents: Twelve Years of Federal Circuit Precedent Still Leaves

Practitioners Wondering, WM. MITCHELL L. Rev. 1083 (1994);

Paul C. Craane, Comment, At the Boundaries of Law and Equity:

The Court of Appea!s for the Federal Circuit and the Doctrine of

Equivalents, 138 N. Itt. U. L. Rev. 105 (1992).

53a

times—and while that is not immaterial it is largely irrele-

vant—today the doctrine is regularly used by patentees to

seek greater coverage for their patents than the patent stat-

ute grants. Their demands are presented to a jury which

is told to decide the issue based on a formulaic chant—

function, way, result—which, as Judge Lourie so aptly de-

scribes in his dissent, provides little in the way of guid-

ance, and in some cases may be of no persuasive signifi-

cance at all.

A related problem is that our current case law imposes

no substantial constraints on the availability of the doc-

trine. Any patentee may invoke it as a second prong to an

infringement suit, in addition to the statutory cause of

literal infringement. Prior to 1870, the date when inven-

tors were first statutorily required to particularly and dis-

tinctly claim their invention, see Act of July 7, 1870,

§ 26, 16 Stat. 201, the scope of protection turned on the

embodiments disclosed in the specification. Courts read

these specifications broadly, to include equivalents, in or-

der to give the patentee the full scope of the invention.

Over the past hundred or so years, that practice has given

way to a focus on precisely what the inventor claims as

the invention. The specification remains important, not as

the definition of the invention, but as a description of it

and as an aid in interpreting the language of the claims.

By today’s opinion, the majority essentially blesses the

continued unfettered use of the doctrine of equivalents, at

the discretion of a jury, noting that in some cases at least

the ritual chant will be quite sufficient justification for a

rewriting of the claimed limitations. This ignores the fact

that, after 1870, claims, not their equivalents, are the

determinants of the scope of protection granted by the

patent. Claiming practice today serves a purpose which

the earlier practice did not, namely providing competitors

with notice of the precise invention that they may not

make, use, or sell.

S4a

Another problem with the doctrine is that appellate re-

view of many of these doctrine of equivalents cases is

largely pro forma. Federal district judges, perhaps under-

standably, by and large make little pretense of liking these

patent infringement cases, and are quite content to give

them, and all the issues in them, to juries to decide. The

cases typically come to us on appeal with nothing more

than a general verdict finding infringement. There is no

explanation by the jury of the rationale behind their ver-

dict, if any exists. This case is a good example.*

In our review we must assume that the jury understood

the technology, understood the law of patents and the poli-

cies that underlie it, understood the function, way, and

result of the matter, and arrived at a considered decision.

It is enough to sustain a jury verdict of infringement by

equivalents if the trial court’s instructions are without

prejudicial error (oftentimes this translates into the less

said the better), and if there is any substantial evidence

in the record which the hypothetical reasonable juror

could have believed, and so believing, arrived at the ver-

dict. A plaintiff must have a virtually impossible case,

or incompetent counsel, to fail to have something in the

record which can be argued is substantial enough. In

short, though the opinions we write, with their routine

recitations of our standard of review followed by the

8 The jury’s findings on infringement consisted in its entirety

of the following:

We the Jury, unanimously find that plaintiff Hilton Davis

has proved by a preponderance of the legal evidence that de-

fendant Warner-Jenkinson has infringed upon the following

claims of the Hilton Davis Patent:

Claim 1 Yes (infringed) X No (not infringed) —

Claim 2 Yes (infringed) X No (not infringed) —

Claim 8 Yes (infringed) X No (not infringed) —

Claim 13 Yes (infringed) X No (not infringed) —

Claim 14 Yes (infringed) X No (not infringed) —

55a

inevitable citations, may tend to obscure the reality, the

reality is that the doctrine of equivalents is a virtually un-

controlled and unreviewable license to juries to find in-

fringement if they so choose. And this is done largely

without regard to and independent of the express limita-

tions of the patent claims which may have brought about

their allowance by the Patent and Trademark Office

(PTO) in the first place. See Perkin-Elmer Corp. v. West-

inghouse Elec. Corp., 822 F.2d 1528, 1532-33, 3 USPQ

2d 1321, 1324-25 (Fed. Cir. 1987) (“One must start with

the claim, and, though a ‘non-pioneer’ invention may be

entitled to some range of equivalents, a court may not,

under the guise of applying the doctrine of equivalents,

erase a plethora of meaningful structural and functional

limitations of the claim on which the public is entitled to

rely in avoiding infringement. . . . The statement should

not be interpreted as sanctioning the treatment of claim

limitations as insignificant or immaterial in determining

infringement. ‘It is . . . well settled that each element of

a claim is material and essential, and that in order for a

court to find infringement, the plaintiff must show the

presence of every element or its substantial equivalent in

the accused device.’”) (quoting Lemelson v. United

States, 752 F.2d 1538, 1551, 224 USPQ 526, 533 (Fed.

Cir. 1985) (footnote omitted)). The obligation on the

inventor to particularly point out and distinctly claim

what the applicant regards as his invention, discussed be-

low, the legitimate practice of competitive designing

around, and the opportunities given to the public to bene-

fit from the mandatory disclosures required of the pat-

entee, all are thrown into disarray by this unpredictable

aspect of current patent litigation.

Responsibility for these problems and for the unsatis-

factory situation they create lies with the judges. It is the

result of how we have interpreted Supreme Court opin-

ions on the matter, and how, largely by default, we have

permitted the practice of patent litigation to take the

56a

shape it now is in. It is our responsibility to address the

situation, and to take effective corrective action. We and

the Supreme Court are the only two appellate courts with

authority to do this. It is regrettable that, in today’s

opinion, the maj

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