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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 1997
- **Citation:** 520 U.S. 17

## Text

FILED
| © Z2BNOV 6 - 1995
(\) 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)

—_

iv

13

15

21

iv
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

v

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

ee

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.

2

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.

3

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.

4

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

5

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.

6

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.

Tr

7

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.

8

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,

9

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.

10

“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

11

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

12

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.

13

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-

14

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

15

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;

16

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).

17

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).

18

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

19

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).

20

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

21

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,

22

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

23

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.

24

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.

25

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).

26

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

27

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.

28

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

29

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.

30

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

la

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.

2a

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).

3a

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:

4a

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

Sa

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?

6a

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
1.

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

7a

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

9a

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.

V.

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 Ҥ 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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385013_0663%3A02. Public record. Not legal advice.