Amicus Curiae Brief — Warner-Jenkinson Co. v. Hilton Davis Chemical Co.

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\\ Supreme Court, U.S,

. FILED

No. 95-728 APR LL 1B

. CLERK

IN THE em _—

Supreme Court of the United States

OCTOBER TERM, 1995

WARNER-JENKINSON COMPANY, INC.,

Petitioner,

v.

HILTON DAVIS CHEMICAL CO.

ON WRIT OF CERTIORARI TO THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL CIRCUIT

BRIEF FOR INFORMATION TECHNOLOGY INDUSTRY

COUNCIL AND INTEL CORPORATION AS AMICI

CURIAE IN SUPPORT OF PETITIONER

JOHN F. COONEY JOEL M. FREED

WILLIAM D. COSTON Counsel of Record

VENABLE, BAETIJER, JERROLD J. GANZFRIED

HOWARD & CIVILETTI RICHARD H. KJELDGAARD

1201 New York Ave, N.W. HOWREY & SIMON

Washington, D.C. 20005 1299 Pennsylvania Ave., N.W.

(202) 962-4800 Washington, D.C. 20004

(202) 783-0800

Counsel for Amicus Curiae

Information Technology PETER N. DETKIN

Industry Council ISABELLA E. FU

INTEL CORPORATION

2200 Mission College Boulevard

Santa Clara, California 95052

Counsel for Amicus Curiae

Intel Corporation

TABLE OF CONTENTS

THE DOCTRINE OF EQUIVALENTS SHOULD BE

CORRECTLY DEFINED IN ORDER TO FULFILL

ITS PIVOTAL ROLE IN PATENT INFRINGEMENT

THE ROLE OF JUDGES IN DETERMINING

INFRINGEMENT WHEN EQUIVALENCY IS AT

ISSUE PROPERLY PARALLELS THE ROLE OF

JUDGES IN CONNECTION WITH LITERAL

OS ITS xrcnsssncsiicsesnesinliioeenabsanesiimmnietennssssunessnnseinsens -11

A. Equivalency, Like Literal Infringement, Is

A Two-step Inquiry -- One Legal Step

FO EE ee -11

Case-Specific Instructions On

Function/Way/Result Must Be Required

AN AMORPHOUS, SEPARATE TEST FOR

The Amorphous Substantiality Test Was

Not Mandated By This Court In Graver

An Amorphous, Separate Insubstantiality

Test That Contributes To Confusion and

Uncertainty Is The Legacy Of The Federal

Circuit's Incorrect View Of The Doctrine

CONCLUSION

TABLE OF AUTHORITIES

CASES

Autogiro Co. of America v. United States, 384 F.2d

391 (Ct. Cl. 1967)......0.c.crcrcscsservsercnrerersrecesenssssssessssesoseses 6

Burroughs Wellcome Co. v. Barr Laboratories, Inc.,

40 F.3d 1223 (Fed. Cir. 1994), cert. denied, 116

S. Ct. 771 (1996) ....c.ccrscvcersorerorerererererenenesessessnssssesssenseees 6

Coupe v. Royer, 155 U.S. 565 (1895).....11, 14, 15, 16, 18, 19

Graver Tank & Manufacturing Co. v. Linde Air

Products Co., 339 U.S. 605 (1950) .....-.-sessesesvereenees passim

Lear Siegler, Inc. v. Sealy Mattress Co., 873 F.2d

1422 (Fed. Cir. 1989)...........:.0cscscsrsesseserssessnsnsssesees 19, 20

Machine Co. v. Murphy, 97 U.S. 120 (1877) ....-.0vessveeveerenes 7

Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320

(Fed. Cir. 1991), cert. denied, 504 U.S. 974

OI ccnncescsccvnvsevsesscscenesesovevvcvsosoveqnsescccepocsovesesssensssnenenene 20

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

967 (Fed. Cir.), cert. granted,

116 S. Ct. 40 (1995) .....ererececerocecvrvrereceerererernrssressnsere 12, 16

Roton Barrier, Inc. v. The Stanley Works, 37

U.S.P.Q.2d (BNA) 1816 (Fed. Cir. 1996).......... 8, 24, 25

Sanitary Refrigerator Co. v. Winters, 280 U.S. 30

Ce i ictdicctiiedercenticeivesnsesesovsinsnninencececovccsscconecenetes 6,7, 11,25

Towne v. Eisner, 245 U.S. 418 (1918)........-cccesceseeeeeeeennennes 6

il

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

IF Cie encanserccecccscensecsnssescsnernssnsnsenensccsseqsesssceseets passim

Zygo Corp. v. Wyko Corp., No. 94-1445, 1996 U.S.

App. LEXIS 5614 (Fed. Cir. Mar. 26, 1996)............... 25

CONSTITUTION AND STATUTES

NR ee 18

a init csricenemenensetinienienisecbieigmmmennnens 5,15

Patent Act of 1836, ch. 357, § 6, 5 Stat. 117 (1836).......... 13

Patent Act of 1870, ch. 230, § 26, 16 Stat. 198

Tir trhinintniianiasiensieementhiunearenensennemmagpesensensanemmennepmeceans 15

pT _____________________j

IN THE

Supreme Court of the United States

OCTOBER TERM, 1995

No. 95-728

WARNER-JENKINSON COMPANY, INC.,

Petitioner,

Vv.

HILTON DAVIS CHEMICAL CO.

ON WRIT OF CERTIORARI TO THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL CIRCUIT

BRIEF FOR INFORMATION TECHNOLOGY INDUSTRY

COUNCIL AND INTEL CORPORATION AS AMICI

CURIAE IN SUPPORT OF PETITIONER

INTEREST OF AMICI CURIAE

With the consent of the parties, amici curiae the

Information Technology Industry Council (ITI) and

Intel Corporation (Intel) submit this brief in support of

petitioner Warner-Jenkinson Company, Inc.' ITI is an

association that represents leading United States

providers of information technology products and

services. Its members employ more than one million

people in the United States and have aggregate annual

revenues in excess of $350 billion. ITI’s mission

1 Letters reflecting written consent of the parties to the

submission of this brief have been filed with the Clerk of Court.

o2-

includes advocacy of policies that protect intellectual

property. Intel, a manufacturer of semiconductors and

related products, is a member of ITI.

As providers of information technology

products and services, ITI members have acquired

substantial patent litigation experience which affords

them an impartial vision of the central issue in this case:

the role of the doctrine of equivalents in patent

infringement litigation. Having faced that issue both as

patentee and as accused infringer, ITI members are

intimately familiar with the pressing practical need for

a clear and correct understanding of a doctrine that has

immense significance to inventors, corporate and

financial decisionmakers, and counsel who advise

them.

The doctrine of equivalents has assumed a

pivotal role in delineating a measure of patent

protection beyond that specified by the literal words of

patent claims. It is, therefore, imperative that the

doctrine be defined and implemented to preserve a

proper balance between the rights of patentees to the

fruits of their inventions and the rights of business

rivals to operate outside of literal patent claim

language. It is also imperative that the doctrine be

given a clear, precise definition to avoid unwarranted

transaction costs and litigation. Only then will

consumers be assured the optimum benefits of

innovation and competition in a free marketplace. If

the balance is struck incorrectly -- or is implemented

erratically -- innovation, technology and the economy

will all suffer. Amici have a vital interest in avoiding

that unfortunate result.

sie

SUMMARY OF ARGUMENT

The Federal Circuit’s current perspective on the

doctrine of equivalents is fundamentally wrong --

whether viewed through the eyes of a patentee or

through the eyes of an accused infringer. The decision

below introduces needless confusion into the

substantive standard for applying the doctrine of

equivalents. To prevent equivalency determinations

from producing random or haphazard results, the

governing legal standard must be correctly defined and

trial judges must take a more active role in

implementing that standard than the bystander role

assigned them under the decision below. The

splintered views expressed in the multiple opinions of

the Federal Circuit in this case fail to provide clear,

correct or adequate guidance for future cases.

Under the decision below, uncertainty in the

resolution of equivalency questions will frustrate and

impede investment decisions by technology companies.

The doctrine of equivalents affects a host of significant

business decisions, including: whether to launch

products into or remove them from commerce; whether

or how to alter designs of products, processes, and

machines; and whether to seek or grant licenses. Those

decisions influence not only enormous financial

commitments but also momentous changes in

investment directions.

For years prior to the decision below, the

function /way/result test previously enunciated by this

Court was well settled as the standard for determining

equivalency. That function/way/result test can

continue to provide a workable framework for

equivalency analyses. It is, by a wide margin,

ofc

preferable to the formless standard constructed by a

majority of the Federal Circuit in this case: a freeform

assessment of the “substantiality” of differences

between the alleged infringement and what is claimed

in the asserted patent. The amorphous analysis

mandated by the decision below is exacerbated by the

Federal Circuit's requirement that the entire matter of

whether there is infringement under the doctrine of

equivalents is a fact question to be decided by the jury

without clear guidance as to its meaning. See Pet. App.

17a.

By departing from established precedent, the

decision below greatly and unnecessarily increases

uncertainty in equivalency determinations.

Reaffirmation of this Court’s precedent on the

substantive standard and guidance on its application

by judges and juries is essential. In short, this Court

should hold that the tripartite function /way /result test

is the standard by which the doctrine of equivalents is

to be applied. In any particular case, the test for

admissibility of evidence should be whether the

evidence is relevant to one of the three prongs

(function, way or result).

The Court should also specify that the correct

allocation of responsibility between judge and jury

under the doctrine of equivalents includes the same

allocation that exists in cases of literal infringement.

First, the trial court should decide, as a matter of law,

the parameters of function, way and result applicable in

the circumstances of each case; this decision is

analogous to the court’s role in ascertaining the

meaning of the words in a patent claim. Then, guided

by correct instructions, the jury may resolve the factual

question whether the allegedly infringing product falls

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within those applicable parameters defined by the

court. Under this analytical framework and

decisionmaking mechanism, the dual objectives of

innovation and competition can advance in tandem as

intended by the framers of the Constitution and the

drafters of the patent law. And they can advance

rationally and predictably, based on sound application

of policy, not chance.

ARGUMENT

lL THE DOCTRINE OF EQUIVALENTS SHOULD BE

CORRECTLY DEFINED IN ORDER TO FULFILL ITS

PIVOTAL ROLE IN PATENT INFRINGEMENT

LITIGATION

As a general proposition, infringement is

determined by reference to the literal language of

patent claims. Those claims are to be well drafted to

“particularly point[] out and distinctly” state “the

subject matter which the applicant regards as his

invention.” 35 U.S.C. § 112 (1994). The claim language

serves a vital notice function by differentiating what is

foreclosed from what is not. When an accused

infringement falls clearly within the claim language, as

properly interpreted, liability is established and that

ends the inquiry. See Graver Tank & Mfg. Co. v. Linde

Air Prods. Co., 339 U.S. 605, 607 (1950). Informed

business decisions, in the information technology field

as elsewhere, are based on the paramount significance

the law attaches to the notice provided by the claim

language.

The doctrine of equivalents is an exception

(albeit an important one) to the otherwise dispositive

ofje

import of the literal language of patent claims. This

Court has long recognized that wooden adherence to

the confines of literal infringement could pose a

genuine risk that an inventor wouid forfeit the fruits of

a meritorious technological advance because of

inevitable limitations of language? Therefore, the

doctrine of equivalents “‘temper[s] unsparing logic’”

otherwise associated with treating the literal claim

language as the sole measure of infringement. See

Graver Tank, 339 U.S. at 608 (quoting Sanitary Refrig. Co.

v. Winters, 280 U.S. 30, 42 (1929)).

44a

Consistent with this Court’s opinions, the

doctrine had devolved to a well-established standard:

measurement of the identity between what is claimed

and what allegedly infringes under a tripartite test that

focuses on substantial identity of function, way and

result. When what is claimed and what is accused

perform substantially the same function in substantially

the same way to accomplish substantially the same

result, the law treats them as the same even though

2 Inventions are conceptual and not merely physical

embodiments amenable to determination of precise physical

boundaries or verbal description. “Conception is the touchstone

of inventorship, the completion of the mental part of invention.”

Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-28

(Fed. Cir. 1994), cert. denied, 116 S. Ct. 771 (1996). And words are at

best imperfect tools for communicating concepts. “A word is not a

crystal, transparent and unchanged, it is the skin of a living

thought and may vary greatly in color and content according to

the circumstances and the time in which it is used.” Towne v.

Eisner, 245 U.S. 418, 425 (1918) (Holmes, J.) Furthermore, “(t]he

lucidity of a claim is determined in light of what ideas it is trying

to convey. Only by knowing the idea, can one decide how much

shadow encumbers the reality.” Autogiro Co. of America v. United

States, 384 F.2d 391, 396 (Ct. Cl. 1967).

-J-

they differ in name, form or shape. Graver Tank, 339

U.S. at 608; Sanitary Refrig., 280 U.S. at 42; Machine Co. v.

Murphy, 97 U.S. 120, 125 (1877). The longevity and

stability of that test is attributable to its reliance on

familiar and objective considerations. When coupled

with adequate guidance to the fact finder in applying

this standard to a particular dispute, the

function/way/result test provides an indispensable

level of certainty and predictability to both

patentholders and their competitors when they make

investment and marketing assessments of the scope of

patents.

That predictability was impaired in multiple

ways by the decision below. First, the Federal Circuit

announced that the tripartite function/way/result test

is no longer the measure of equivalency. Instead, the

Federal Circuit adopted a different and less stable test.

Under the decision below, the tripartite test has

been subsumed into or replaced by an amorphous

inquiry that asks, with no analytical point of focus,

whether or not the differences between the patent claim

and the alleged infringement are “substantial.” The

role of the traditional tripartite test within this

undefined analytical matrix is far from clear. No longer

the established standard for measuring equivalency,

the function/way/result formula may be all or part of

the “substantiality” determination. Pet. App. 10a.

Exactly how much a part of that determination is at

best vague and is not articulated with either clarity or

precision in the decision below. That lack of guidance

has already been reflected in subsequent decisions of

the Federal Court. For example, a panel of that court

recently treated the formless “substantiality” analysis

as having so marginalized the old test that an

«ie

undisturbed finding of triple identity (which

previously would have been dispositive on the issue of

infringement) was trumped by evidence that the

accused infringer intended to design around the patent

-- thereby making the product of that design effort a

noninfringement. See Roton Barrier, Inc. v. The Stanley

Works, 37 U.S.P.Q.2d (BNA) 1816, 1827 (Fed. Cir. 1996)

(applying Hilton Davis).°

Moreover, in concluding that identity in

function/way/result might not be sufficient to

establish equivalency, the decision below fails to offer

any clear explanation of what is to be the standard for

proving infringement under the doctrine of

equivalents. The elements of the tripartite test are

apparently now to be balanced in some nebulous way

against other evidence supposedly bearing on the

“substantiality” of the differences. But the Federal

Circuit has provided no guidance on how to proceed.

Litigants and lower courts have been handed a puzzle:

how to construct, calibrate and decipher the balancing

scales. See Pet. App. 10a. Increased uncertainty is the

inevitable consequence.

A further aspect of the decision below that will

also spawn greater uncertainty is the diminished role of

the trial judge. This Court’s precedents envision and

3 The discussion of the doctrine of equivalents in Roton Barrier is

rather opaque. Although the Federal Circuit did not expressly

overturn the finding of triple identity, some may view the court's

analysis as having done so implicitly. In either event, Roton Barrier

illustrates the quagmire surrounding the tripartite test. Absent a

definite vision whether that test is necessary, sufficient, or merely

incidental to the issue of infringement, further cryptic decisions

like Roton Barrier will inevitably follow.

ofthe

prescribe a significant role for the judge in shaping

issues for the fact finder to resolve. According to the

Federal Circuit, however, the entire question whether

there is infringement under the doctrine of equivalents

is a fact issue for the jury. Pet. App. 17a. In the view of

the Federal Circuit, there are no attendant legal issues

within the province of the court. For example, there is

no requirement for trial judges to determine or to

explain to jurors the substance of the “function,”

“way,” or “result” to be scrutinized in deciding

whether differences are “substantial.”

Under this regime, juries are destined to be cast

adrift on uncharted waters with no maps and no

navigational tools* That environment greatly increases

the likelihood that infringement under the doctrine of

equivalents will be determined on the basis of random

4 Whether juries must be given the responsibility to apply the

legal standard for equivalence to the particular facts is a separate

question. Four dissenting judges below suggested that unlike

literal applicability of patent claims to accused infringements

(uniformly acknowledged to be a jury question), no component

whatsoever of equivalency disputes is required to be submitted to

juries because the doctrine of equivalents is entirely “equitable.”

Pet. App. 65a-66a (Plager, J., dissenting). Amici take no position

on that matter, except to urge that if equitable discretion is deemed

by this Court to be any part of the calculus, the need for more (not

less) certainty dictates setting specific limits on its exercise, beyond

a general commission to “do equity.” See id.

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and subjective considerations. Effective judicial review

of those determinations would be a virtual

impossibility® These circumstances, which no business

should be forced to face, would be especially injurious

to sound investment decisionmaking in the technology

industry.

In direct contrast to the decision below, which

essentially eliminates whatever certainty and

predictability the established tripartite test can afford,

prior decisions of this Court reflect a more discerning

approach to the doctrine of equivalents. This Court has

neither held nor suggested that the triple identity test

be abandoned in favor of a formless consideration of

substantiality. Equally as important, the decisions of

this Court do not relegate trial judges to the role of

bystander when equivalency is at issue in jury trials.

Rather, this Court has enunciated and

consistently applied the function/way/result test of

equivalency.® See, e.g., Winans v. Denmead, 56 U.S. (15

> In dissent, Judge Plager stated that the majority below has

come up with a recipe “in which familiar ingredients are to be

mixed” differently, but “[t]he mixing is still to be done in the dark,

by the multiple hands of a jury under minimal instruction,” and

those charged with review of the outcome “will remain [ ]

blinded.” Pet. App. 52a.

6 It has been suggested that function/way/result is not always

an appropriate equivalency test. For example, it might be

particularly inapplicable when considering patents on new

chemical compounds. See Pet. App. 73a (Lourie, J., dissenting).

However, neither that perceived deficiency nor the recognition

that determinations of equivalency ought not be a “prisoner of a

formula,” Graver Tank, 339 U.S. at 609, justifies the amorphous

“substantiality” test announced by the Federal Circuit. Permitted

departures from the function/way/result test should not be

freeform; they need to be both justified and subject to defined

x?

How.) 330, 338-44 (1853); Coupe v. Royer, 155 U.S. 565,

579-80 (1895); Sanitary Refrig., 280 U.S. at 42-43; Graver

Tank, 339 U.S. at 608-09. And, in jury trials, this Court

has placed squarely on the shoulders of trial judges the

obligation to decide (as a matter of law) and to instruct

the jury on the appropriate parameters of function, way

and result. Winans, 56 U.S. (15 How.) at 338; Couve, 155

U.S. at 579-80. When correctly instructed, juries can

then apply those parameters to the alleged

infringement and thereby determine whether the fact of

equivalency has been established.

Il. THE ROLE OF JUDGES IN DETERMINING

INFRINGEMENT WHEN EQUIVALENCY IS AT

ISSUE PROPERLY PARALLELS THE ROLE OF

JUDGES IN CONNECTION WITH LITERAL

INFRINGEMENT

A. Equivalency, Like Literal Infringement, Is

A Two-step Inquiry -- One Legal Step And

One Factual Step

The correct allocation of responsibility between

judge and jury under the doctrine of equivalents should

replicate the allocation that exists in literal infringement

cases. It is a well-settled proposition that the literal

infringement inquiry is a two-step process. First, the

court determines what the words of the claim mean -- a

limits. For example, in chemical compound cases, equivalency can

be measured by a well-defined test of substantial similarity of

structure and properties (rather than function/way/result). To be

found equivalent, accused compounds would have to be

structurally similar (e.g., homologs, analogs, isomers) and would

have to share substantially similar properties despite relocations

or substitutions of substituents, moieties or functional groups.

-122-

matter of law. Next, the trier of fact determines

whether the words of the claim, as so construed, apply

to the allegedly infringing product. Markman v.

Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir.)

(en banc), cert. granted, 116 S. Ct. 40 (1995). In bench

trials, both tasks are performed by the court. In jury

trials, only the factfinding role is assigned to the jury.

The inquiry into infringement under the doctrine

of equivalents should involve a similar two-step

process. First, the court should determine the legal!

parameters of function/way/result that constrain the

assessment of substantial identity. Then, the factfinder

must determine whether those delineated parameters

apply to the allegedly infringing product. In collapsing

this two-step process into a single inquiry that is

entirely in the hands of the jury, the Federal Circuit

departed from this Court’s seminal decision in Winans.

See Graver Tank, 339 U.S. at 608.

The patent in Winans involved car bodies for

transporting coal. Binding of the contents during

discharge was a problem the invention sought to solve.

The way it achieved its objective was to employ a

circular car body. The function of the circular form was

to distribute the load pressure uniformly outward. As

a result, complete discharge occurred upon removal of

the bottom. Winans, 56 U.S. (15 How.) at 339 (“by

reason of the circular form of the car body, the pressure

of the load outwards was equal in every direction,”

facilitating “the complete discharge of the load through

the aperture, when the bottom was removed”). There

was no literal infringement in Winans because the car

body of the allegedly infringing device was octagonal,

not circular.

_ *

This Court held that the absence of literal

infringement did not preclude all further inquiry.

Unless “form and substance are inseparable,” both

“courts and juries” must “look through the form for the

substance of the invention;” and where “found, ... it is

not a defence, that ... [an infringement] is embodied in a

form not described, and in terms claimed by the

patentee.” Id. at 343.

That judicial “look through the form for the

substance” is today known as the doctrine of

equivalents. From its inception in Winans, equivalency

was a two-component inquiry, one part law and one

part fact. The law question “ascertained what is the

structure described, the mode of operation it embodies,

and the practical result attained.” Id. at 340. After that,

“the next inquiry is, does the specification of claim|{’]

cover the mode of operation by which this result is

effected?” Id.

That second inquiry is factual, and it is to be

resolved in jury cases only upon instructions from the

court that circumscribe the appropriate

function/way/result parameters. Winans dictates and

is wholly compatible with this approach. This Court

there addressed first the governing

function / way /result parameters, and then described as

the jury’s sole function the determination whether “in

point of fact” the accused car bodies were substantially

the same in “the sense above explained.” Id. at 344.

The Court elaborated (id. at 344):

? The statute then in force required a patentee to “particularly

specify and point out the part, improvement or combination which

he claims as his own invention or discovery.” Patent Act of 1836,

ch. 357, § 6, 5 Stat. 117, 119 (1836).

-14-

In our judgment, the only answer that can be

given to these questions is, that it must be so

near to a true circle as substantially to embody

the patentee’s mode of operation, and thereby

attain the same kind of result as was reached by

his invention. It is not necessary that the

defendant's cars should employ the plaintiff's

invention to as good advantage as he employed

it, or that the result should be precisely the same

in degree. It must be the same in kind, and

effected by the employment of his mode of

operation in substance. Whether, in point of

fact, the defendant's cars did copy[* the

plaintiff’s invention, in the sense above

explained, is a question for the jury, and the

court below erred in not leaving that question to

them upon the evidence in the case, which

tended to prove the affirmative.

The approach this Court employed in Winans

was jettisoned by the Federal Circuit in the decision

below. That departure from precedent cannot be

justified or rationalized. It is no explanation to say that

amendments to the patent statutes warrant

abandonment of the approach employed in Winans.

This Court reiterated and endorsed the same two-step

approach in Coupe v. Royer, 155 U.S. 565 (1895), a

doctrine of equivalents case decided under a statute

enacted after the statute at issue in Winans. Moreover,

8 The word “copy” was used there not in any pejorative sense,

but in the sense of “duplicate.”

9 It is unnecessary and perhaps impossible to pin down with

any degree of certainty when the complete transition from central

to peripheral claiming occurred in our patent system. See Pet.

App. 36a n.2 (Newman, J., dissenting). In the final analysis, that

- *

Coupe approved the approach set forth in Robinson on

Patents, an 1890 Treatise that urged trial judges to

“define[] the patented invention as indicated by the

language of the claims,” (not as limited by the claims),

and for the jury to “judge whether the invention so

defined covers” what is accused. 155 U.S. at 579

(emphasis added). In short, the two-step inquiry

prescribed in Winans was recapitulated.

Coupe also adhered to the approach in Winans in

additional respects. When discussing appropriate jury

instructions, this Court specifically referred to

“instructions as to the nature and scope of the plaintiff's

patent”, id. at 580, which there meant accounting for the

ing mention of a vertical shaft in the claims and

for “differences . . . arising out of difference in

position,” as well as other differences. Id. at 576, 580.

In other words, a court first fixes the parameters of

equivalency and only then is the jury to determine “the

question of infringement.” Id. at 579-80. Thus, Coupe

inquiry is not productive because the doctrine of equivalents was

part of the system throughout the transition. The outcome im this

case should therefore not be mired in an analysis of changes in

statutory language and incomplete anecdotal! references to prior

practices. Under the Act of 1870, the claiming requirement placed

on a patentee was that he shall “particularly point out and

distinctly claim the part, umprovement, or combination which he

claims as his invention or discovery.” Patent Act of 1870, ch. 230, §

26, 16 Stat. 198, 201 (1870) (emphasis added). Notwithstanding the

somewhat different language in the prior statute, the doctrine of

equivalents survived. The current statute also calls for

“particularly pointing out and distinctly claiming the subyect

matter which the applicant regards as his invention.” 35 U.S.C. §

112 (1994) (emphasis added). The inclusion in the current statute

of language virtually identical to the 1870 language hardlv signals

the demuse or alteration of the doctrine of equivalents.

eM.

confirms that this Court’s two-step approach is

applicable to determinations of equivalency.

When the pedigree of the two-step law/ fact

inquiry is properly understood, it is clear that the

Federal Circuit has no basis for placing unwarranted

reliance on this Court's later statement that “‘[a] finding

of equivalence is a determination of fact.’” Pet. App.

14a (quoting Graver Tank, 339 U.S. at 609). Nothing in

Graver Tank transforms the trial judge’s responsibility to

fix the legal parameters of function/way/result into a

purely factual inquiry. Indeed, the quoted passage

from Graver is entirely in accord with Winans and

Coupe, both of which recognize that the only question

for the jury is whether the evidence shows that the

parameters as set by a judge in fact embrace the

allegedly infringing product. By failing to adhere to

that allocation of responsibility between judge and jury,

the Federal Circuit erred.

B. Case-Specific Instructions On

Function/Way/Result Must Be Required

In a literal infringement case, a jury cannot be

expected to determine whether the words of the claim

in fact apply to the allegedly infringing product unless

correctly instructed on the law. See Markman, 522 F.3d

at 988-89.10 Likewise, a jury cannot be expected to

10 At the time this brief is filed, Markman remains sub judice and

its disposition unknown. In Markman, this Court may or may not

ultimately decide that, even though the literal meaning of words

in the claim is a matter of law, there are some underlying fact

issues for the jury. Even if this Court decides in Markman that

some underlying fact issues must go to the jury, juries would need

correct instructions to apply a particular meaning to claim

language depending on their finding of particular facts

-17-

determine whether the parameters. of

function/way/result in fact apply to the allegedly

infringing product unless correctly instructed on the

law defining those parameters. The trial judge needs to

lay out for the jury the substance of the

function/way/result parameters that may lawfully be

scru

Judge Plager’s dissenting opinion below makes a

compelling case that trial judges must be required to

give such case-specific instructions on equivalency; and

that, in the absence of correct instructions, equivalency

determinations will be both uncontrolled and

unreviewable. The dissent observed (Pet. App. 54a-

55a):

e “Federal district judges, perhaps

understandably, by and large make little

pretense of liking these patent infringement

cases, and are quite content to give them, and all

the issues in them, to juries to decide.”

© “The cases typically come ... on appeal with

nothing more than a general verdict finding

infringement. There is no explanation by the

jury of the rationale behind their verdict, if any

exists.”

e “[{Appellate] review ... assume[s] that the jury

understood the technology, understood the law

commended to them for resolution. Likewise, in some

equivalency cases, when the legal determination of the

appropriate function/way/result parameters depends on

underlying factual disputes, juries should be instructed to apply

particular parameters depending on their finding of particular

facts commended to them for resolution.

- 18 -

of patents and the policies that underlie it,

understood the function, way, and result of the

matter, and arrived at a considered decision.”

e “It is enough to sustain a jury verdict of

infringement by equivalents if the trial court's

instructions are without prejudicial error

(oftentimes this translates into the less said the

better), and if there is any substantial evidence in

the record which the hypothetical reasonable

juror could have believed, and so believing,

arrived at the verdict.”

e “A plaintiff must have a virtually impossible

case, Or incompetent counsel, to fail to have

something in the record which can be argued is

substantial enough ....”

e “(T]he reality is that the doctrine of

equivalents is a virtually uncontrolled and

unreviewable license to juries to find

infringement if they so choose.”

That untoward result should be foreclosed as it will

contribute neither to certainty nor to the progress of the

useful arts, which is the constitutional basis of the

patent system. U.S. CONST. art. L, § 8, cl. 8.

What will contribute both to the useful arts and

to necessary certainty in infringement cases is a return

to the equivalency determinations mandated by this

Court in Winans and Coupe. When assigning to the jury

the role of determining whether an accused infringer

used a patentee’s invention “in the sense above

explained,” this Court in Winans clearly called for an

explanation to the jury of the specific

function/way/result parameters to be considered by

-19-

them. 56 U.S. (15 How.) at 344. When requiring the

submission of an equivalency question to the jury “with

proper instructions as to the nature and scope of the

plaintiff's patent as hereinbefore defined,” 155 U.S. at

580, this Court in Coupe was likewise calling for an

explanation to the jury of the specific

function/way/result parameters to be considered by

them.

Before that approach was abandoned in the

decision below, other Federal Circuit decisions more

closely followed this Court’s precedent. In Lear Siegler,

Inc. v. Sealy Mattress Co., 873 F.2d 1422 (Fed. Cir. 1989),

a jury had found that the patent-in-suit was infringed

under the doctrine of equivalents. The court of appeals

reversed because the plaintiff had not produced

evidence at trial showing the function, way and result

of the invention and the accused products. As the court

explained (id. at 1425-1426):

[aJbsent the proper Graver Tank context, i.e., a

showing of how plaintiff compares the function,

means, and result of its claimed invention with

those of the accused device, a jury is more or less

put to sea without guiding charts when called

upon to determine an infringement under the

doctrine. While we do not doubt the ability of a

jury to decide the factual issue of equivalence, to

enable the jury to use its ability, ... the three

Graver Tank elements must be presented in the

form of particularized testimony and linking

argument.

The court expanded on its ruling (id. at 1427) by stating:

[I]f a jury is to rationally find all three elements

of equivalence, it must be told what evidence

establishes the equivalence of the claimed and

accused devices as to each element. Otherwise,

there is too much risk [and] the jury will simp+>

compare the two inventions as to overall

similarity, in violation of Graver Tank.

Plainly, the court recognized the importance of fully

informing juries on the pertinent function/ way /result

of both the claimed invention and the accused product

before they could determine equivalency.

The Federal Circuit reiterated that theme in

Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320 (Fed.

Cir. 1991), cert. denied, 504 U.S. 974 (1992). There, a jury

had found the patent-in-suit to be infringed by reason

of equivalency. The Federal Circuit affirmed the entry

of judgment notwithstanding the verdict, stating that

“what is clearly lacking in that testimony is a sufficient

explanation of both why the overall function, way, and

result of the accused device are substantially the same

as those of the claimed device and why the

plastic/slotted, plastic/felt arrangement is the

equivalent of the claimed buttons limitation.” Id. at

1327. Thus, in Malta, the Federal Circuit also had a

clear understanding that infringement under the

doctrine of equivalents could not be determined by

juries in the absence of a particularized explanation of

the proper function/way/result parameters to be

considered.

In both Lear Siegler and Malta, the Federal Circuit |

“signalled the need for a more disciplined analysis in”

oM-

jury trials of equivalency cases. Pet. App. 68a n.8

(Plager, J., dissenting). Yet, despite these prior signals,

and despite this Court’s precedent which points to a

requirement for case-specific instructions by trial

judges on the parameters of the three prongs of the

tripartite test, and despite the adverse impact on

reliability, the Federal Circuit has opted to send the

entirety of all equivalency questions to juries with

virtually no guidance.

In the information technology field as

elsewhere, the reliability of legal advice on equivalency

questions can be only as good as the system for

resolving doctrine of equivalents disputes. This Court

previously established a system that tends to enhance

such reliability by dividing the equivalency issue into

legal and factual components, and by providing for

case-specific jury instructions on the legally applicable

function/way/result parameters before the factual

component is submitted to juries. That satisfactory

approach is well-established and offers stability. It has

not been altered by Congress and the decision below

offers no legal or practical justification for its departure.

The Federal Circuit’s rejection of that established

approach should be reversed.

Il. AN AMORPHOUS, SEPARATE TEST FOR

INSUBSTANTIALITY OF DIFFERENCES IS

NEITHER REQUIRED NOR APPROPRIATE

A. The Amorphous Substantiality Test Was

Not Mandated By This Court In Graver

The decision below further undermines certainty

and predictability by abandoning the dispositive role of

2.

the tripartite test without providing a coherent

replacement. Prior to the Federal Circuit’s en banc

decision in this case, inventors, corporate and financial

decisionmakers and their counsel could base

assessments on the scope of patent protection on the

tripartite function/way/result test. That test was

firmly established and long recognized as the sole

standard for the patent protection afforded by the

doctrine of equivalents. After the decision below, it is

far from clear what role the function/way/result

inquiry now plays. Equally unclear are the parameters

and standards of the newly-created inquiry.

The Federal Circuit’s erroneous departure from

precedent is plainly revealed in its opinion. At its core,

the error in the decision below derives from a

misreading of Graver Tank’s comment that the

substitution of manganese for magnesium was an

insubstantial change “under the circumstances.” See

Graver Tank, 339 U.S. at 610. The Federal Circuit

transformed that comment into the launching pad for a

separate, wholly new and altogether amorphous test of

“substantiality.” Pet. App. 7a-8a. According to the

Federal Circuit’s reading of Graver Tank:

The Court defined the doctrine of equivalents in

terms of the substantiality of the differences

between the claimed and accused products or

processes. The Supreme Court in Graver Tank

thus made insubstantial differences the

necessary predicate for infringement under the

doctrine of equivalents.

Id. at 8a. But the Federal Circuit paid no attention to

this Court’s specific reference in Graver Tank to the

“circumstances” of that case. See 339 U.S. at 609. Nor

-%-

did the court of appeals advert to the earlier discussion

in Graver Tank of those very circumstances in the

context of a function/way/result analysis of

equivalency. Those omissions are significant. When

Graver Tank is correctly read in its entirety, with those

omissions restored, there is no room to doubt that this

Court required substantiality to be measured by the

tripartite test. See id. at 608-609.

Graver Tank focused directly on the tripartite test.

See id. at 608. It was precisely in connection with that

very test that the Court referred to “the wholesome

realism” of the doctrine of equivalents. Id. This Court

also concentrated on the established tripartite test in

analyzing the particular equivalency issues involved in

Graver Tank. See id. at 610. Similarly, the Court

evaluated “insubstantial change” in the context of

function/way/result, not separately and not as an

umbrella test. See id. at 610-11. All evidence the Court

suggested as relevant to weighing substantiality bore

directly on the tripartite test. See id. at 609-11.

It is, therefore, not surprising that the Federal

Circuit found and cited no direct support in Graver

Tank for a separate, umbrella test for weighing the

substantiality of differences between the patented and

accused products. The standard conjured up in the

decision below has no roots in Graver Tank. Graver Tank

was all about satisfaction of the triple test - no more,

no less.

-24-

B. An Amorphous, Separate Insubstantiality

Test That Contributes To Confusion and

Uncertainty Is The Legacy Of The Federal

Circuit’s Incorrect View Of The Doctrine

of Equivalents

The decision below also shrouds in mystery the

continuing status of the function/way/result test in the

new “substantiality” inquiry. The first question set

forth in the Federal Circuit’s opinion was whether

something more than satisfaction of the tripartite test is

required to prove equivalency. Pet. App. 5a. But the

only answer the Federal Circuit could muster was

“maybe” id. at 17a -- leaving considerable confusion in

its wake.

For example, a panel of the Federal Circuit has

already applied Hilton Davis to reverse an equivalency

determination where the district court found that the

tripartite identity test was met and where that finding

was left undisturbed on appeal. See Roton Barrier, Inc. v.

The Stanley Works, 37 U.S.P.Q.2d (BNA) at 1827-28. The

stated basis for the Federal Circuit’s decision in Roton

was evidence that the alleged infringer intended to

design around the patent. Id. at 1827 Relying on the

proposition from Hilton Davis that such evidence can

support an inference of substantiality of difference, the

Federal Circuit proceeded to draw that inference on

appeal even though no such inference had been drawn

by the finder of fact in the district court. Id. In short,

the court of appeals in Roton viewed the substantiality

of differences between what was claimed and what was

accused to be an established fact -- notwithstanding the

trial findings of insubstantial differences in function,

way, and result.

-25-

Adding to the confusion, a concurring opinion in

Roton offered a further novel basis for the judgment.

The concurring opinion observed that the accused

infringer had a patent of its own, and elevated that

patent to the status of controlling evidence of

substantiality of the differences between what was

claimed by plaintiff and what was being done by the

defendant. Id. at 1828 (Nies, J., concurring).!! Not only

is that conclusion contrary to this Court’s holding in

Sanitary Refrig. Co. v. Winters, 280 U.S. 30, 43 (1929),}?

but it also places the Patent and Trademark Office, not

a trial judge and not a jury, in the pivotal position of

decisionmaker on the question of substantiality.!°

Neither the opinions below in this case nor the

more recent opinions in Roton clearly delineate the

factors of the amorphous “substantiality” test, the limits

(if any) of those factors, or how such factors are to be

applied. Equally as important, the Federal Circuit has

failed to explain where the function/way/result test

(the standard amenable to analysis at the time business

decisions are made) now stands. There is no way of

11 This same view was expressed in a later Federal Circuit panel

decision. See Zygo Corp. v. Wyko Corp., No. 94-1445, 1996 U.S. App.

LEXIS 5614, at *20 - *21 (Fed. Cir. Mar. 26, 1996).

12 In Sanitary Refrigerator, where the tripartite test was factually

met, this Court held that factual finding to be “controlling”, and

infringement could not be avoided “by any presumptive validity

that may attach” to the accused infringer’s own patent. 280 U.S. at

43.

13 That approach will end up yielding protracted sideshows over

validity of an accused infringer’s patent. Failure to produce such a

sideshow would be at the risk that ex parte Patent and Trademark

Office rulings in which one litigant had no participation will

control the outcome of the litigation.

-M-

knowing when other so-called evidence of

substantiality or insubstantiality will or will not trump

evidence that in the past would have been dispositive

under the function/way/result test. Decisionmakers in

industry and finance are now without judicial guidance

on how such “other evidence” may be weighed against

the function/way/result test. When business decisions

made in this vacuum are tested in court, the litigants,

judges and juries will lack objective and predictable

criteria for resolving the confusion.

For example, the decision below notes that

evidence of “copying” can support an inference that

differences are “insubstantial” but evidence of

“designing around” can support an inference that the

same differences are “substantial.” Pet. App. lla, 12a,

13a. The critical flaw of this formulation is that

“copying” is not necessarily distinguishable from

“designing around.” These activities exist on a

spectrum where their separation “is often a matter of

degree.” Pet. App. 76a (Lourie, J., dissenting). “Both

involve focusing on the patented invention,” and

discerning copying from designing around depends

“upon whether one succeeds or not in getting far

enough away from the claims .... Both ... attempt to

make as little change ... as possible to retain or improve

on the properties of the invention, while avoiding

infringement.” Id.

It is, therefore, futile to expect that a jury will

accurately analyze the copying/designing-around

spectrum if the court fails to provide spectrograph

equipment. It is also incorrect to assume that the choice

between “copying” and “designing around” is an all or

nothing proposition. An alleged infringer might

“copy” a result, while intentionally “designing around”

. PB

the way it is accomplished. Similarly, it is also wrong

to assume (as does the majority below) that

independent development is necessarily relevant only

to rebut charges of copying. See Pet. App. 1la-l4a. In

his dissenting opinion, Judge Lourie aptly observed

that “[d]istance from ... a patent ... and the history and

purpose of one’s product development ... are ... not

synonymous ....” Id. at 76a.

Whether, when and how factors such as

“copying,” “designing around,” or “independent

development” should be considered in resolving

equivalency disputes is clearly problematic.'* The lack

of guidance can only spawn further uncertainty and

instability.

In order to restore stability and enhance

certainty in the application of the doctrine of

equivalents, this Court should reverse and rectify at

least two crucial errors in the Federal Circuit’s en banc

decision in this case. First, the amorphous

“substantiality” test should be rejected and the

function/way/result test previously adopted by this

Court should be reinstated. Next, this Court should

explain with clarity and precision what “other

evidence” of “substantiality” or “insubstantiality” may

be considered, and clarify that such evidence is

considered only when it can be shown to be logically

4 This brief takes no position on such questions except to urge

this Court to decide conclusively whether these factors may be

considered in applying the doctrine of equivalents. If the Court

holds that these factors are permissible considerations, it should

then provide specific guidance on when and how these factors are

to be weighed in the analysis.

-28-

related to one or more of the prongs of the

function / way / result test.

CONCLUSION

The judgment of the Federal Circuit should be

reversed.

Respectfully submitted.

JOHN F. COONEY JOEL M. FREED

WILLIAM D. COSTON Counsel of Record

VENABLE, BAETJER, JERROLD J. GANZFRIED

HOWARD & CIVILETTI RICHARD H. KJELDGAARD

1201 New York Ave, N.W. HOWREY & SIMON

Washi D.C. 20005 1299 Pennsylvania Ave., N.W.

(202) 962-4800 Washi D.C. 20004

(202) 785-0800

Counsel for Amicus Curiae

Information Technology PETER N. DETKIN

Industry Council ISABELLA E. FU

INTEL CORPORATION

2200 Mission College Boulevard

Santa Clara, California 95052

April 1996 Counsel for Amicus Curiae

Intel Corporation