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

In the Supreme Cour

OF THE

United States

OCTOBER TERM, 1996

WARNER-JENKINSON COMPANY, INC.,

Petitioner,

vs.

HILTON Davis CHEMICAL Co.,

Respondent.

BRIEF OF AMICUS CURIAE ON BEHALF OF

SEAGATE TECHNOLOGY, INC.

IN SUPPORT OF PETITIONER IN WHICH THE

FOLLOWING CORPORATIONS JOIN:

3COM CORPORATION

BORLAND INTERNATIONAL, INC.

CHEVRON CORPORATION

Cisco SYSTEMS, INC.

COHERENT, INC.

EASTMAN MEDICAL PrRopucts, INC.

Giro Sport DEsIGn, INC.

HEWLETT-PACKARD COMPANY

READ-RITE CORPORATION

STORAGE TECHNOLOGY CORPORATION

SUN MICROSYSTEMS, INC.

UNION CARBIDE CORPORATION

WESTERN DIGITAL CORPORATION

Wyko CORPORATION

CARRIE L. WALTHOUR EDWARD P. HELLER, III

(Counsel of Record) Patent Counsel

KARL A. LIMBACH Seagate Technology, Inc.

DEBORAH BAILEY-WELLS 920 Disc Drive

Herp! L. KEEFE Scotts Valley, CA 95066

LIMBACH & LIMBACH L.L.P. Tel. (408) 439-2699

2001 Ferry Building Of Counsel

San Francisco, CA 94111

Tel. (415) 433-4150

Counsel for Amicus

Seagate Technology, Inc.

BOWNE OF SAN FRANCISCO. INC. + 343 SANSOME ST + SF. CA 94104 + (415) 362-2300

TABLE OF CONTENTS

STATEMENT OF THE AMICI CURIAE .......

STATUTORY PROVISIONS INVOLVED ......

SUMMARY OF ARGUMENT .................

re Oe eee

I.

CONTRARY TO THE DECISION OF THE

FEDERAL CIRCUIT, GRAVER TANK

CONFIRMS THAT THE DOCTRINE OF

EQUIVALENTS RESTS SOLELY IN

PT SiADue ads chbtersstegeserees seco:

A. Finding Infringement Under The Doctrine

Of Equivalents Is As Much An Equitable

Remedy For The Court Alone As Is The

Reformation Of A Contract .............

B. That A Finding Of Equivalents Involves A

Determination Of Fact Makes The Doctrine

Of Equivalents No Less An Equitable

ET nudbdh seed paweecedhédud ewe ee <<

APPLICATION OF THE DOCTRINE OF

EQUIVALENTS SHOULD ALWAYS

INCLUDE CONSIDERATION OF

CERTAIN EQUITABLE FACTORS........

A. Actions Of The Patentee Should Be

Considered Before Application Of The

Doctrine Of Equivalents ................

B. The Doctrine Of Equivalents Is But A

Substitute For A Reissue Which Is Itself An

EE sc cnconepevescereeness

C. Both Statutes And Case Law Require That

The Relief Available For Infringement By

Equivalents Should Involve The Same

Equitable Considerations That Apply To

Infringement Of A Reissue Patent .......

SG ck ae hbbckndsceeunwente ve en

~~

wanwif

10

13

16

17

20

TABLE OF AUTHORITIES

Cases

Page(s)

Andrews v. Essex Fire & Marine Ins. Co.,

1 F. Cas. 885, 3 Mason 10 (1822)............. 11

Baltzer v. Raleigh & Augusta Railroad Co.,

115 U.S. 634 (1885) ..... 6c eee e eee eee eee 10, 11

Barton v. Barbour,

104 U.S. (14 Otto) 126 (1881) .... 6... cece 13

Bate Refrigerating Co. v. Sulzberger,

O57 ULE, 0 CEGBS) 2. ccc cavscsccccccccccecs 10

Camp v. Boyd,

229 U.S. 530 (1913) ......... eee 5, 6, 10, 12, 21, 25

Chauffeurs, Teamsters & Helpers, Local No. 391 v.

Terry,

DG UID. BEB LIGTS) 6. wwe cescctevtscvvcvsees 14

Craig v. Leslie,

16 U.S. (3 Wheaton) 563 (1818) ...........-. 6

Curtis v. Loether,

415 U.S. 189 (1974) ..... cece eee eeeeceeees 14

Granfinanciera, S.A. v. Nordberg,

492 U.S. 33 (1989) ..... ccc ecccccceeeeeeees 14

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

339 US. GOS (1950)... ccccccccccccccvveces passim

Hearne v. New England Mutual Marine Ins. Co.,

87 U.S. (20 Wall.) 488 (1874) .......... ee eee 12

Hilton Davis Chemical Co. v. Warner-Jenkinson

Co., Inc.,

62 F.3d 1512 (Fed. Cir. 1995) ......... 2, 9, 16, 17, 23

Interstate Circuit v. United States,

904 US. SS (1938)... cc ccccccccccccvccveees 14, 16

Ivinson v. Hutton,

98 U.S. (8 Otto) 79 (1878) .. 0... 6. eee eee ees 10, 11

TABLE OF AUTHORITIES

Cases

Page(s)

Katchen v. Landy,

NE ee 13

Keystone Bridge Co. v. Phoenix Iron Co.,

95 U.S. (5S Otto) 274 (1877) ................. 18

Los Angeles Gas & Electric Corp. v. Railroad Com.

of California,

Ee 16

McClure v. United States,

ES 13

Miller v. Bridgeport Brass Co.,

104 U.S. (14 Otto) 350 (1881) ............... 20-23

Mitchell v. Robert DeMario Jewelry, Inc.,

I 14

Moore v. United States,

91 U.S. (1 Otto) 270 (1875) ................. 13,14

Northern Assurance Co. v. Grand View Building

Assoc.,

EE 10, 11

Parsons v. Bedford, Breedlove & Robeson,

28 U.S. (3 Pet.) 433 (1830) ................. 13

Philippine Sugar Estates Development Co. v.

Government of Philippine Islands,

Neen TT se cc eees 11

Royal Typewriter Co. v. Remington Rand, Inc.,

168 F.2d 691 (2d Cir. 1948) ................, 6-8, 10

S & E Contractors, Inc. v. United States,

10

Snell v. Atlantic Fire & Marine Ins. Co. of

Providence,

98 U.S. (8 Otto) 85 (1878) .................. 11

iv

TABLE OF AUTHORITIES

Cases

Tull v. United States,

408 UAE, GBB CIGRTD 2. cccccccsccscccsccccoss 13,14

Union Carbide Corp. v. Graver Tank & Mfg. Co.,

Inc.,

196 F.2d 103 (7th Cir. 1952),

cert. denied, 343 U.S. 967 (1952),

reh'g denied, 344 U.S. 849 (1952) ...........+. 23

United States v. Colorado Anthracite Co.,

TBS UB. 289 CIDE) 2c ccccccecccccccccccees 5

United States v. Milliken Imprinting Co.,

SED UTD. B60 CUTER cc cccccccccccecceccecce: 11

United States v. Old Settlers,

Se Farr rte 12

Walden v. Skinner,

101 U.S. (11 Otto) 577 (1879) ..........-.--. 11,15

Winans v. Denmead,

56 U.S. (15 How.) 330 (1853) ........... 7, 12, 15, 18

Rules and Statutes

9B UBC. 6 OED... ccccccccccccvcccscccesccees 2, 15, 18

BG UB. OFFE nc cccccccccccccccccccccceseses 3, 24

BB CREE. OTB oc cccccccccescccescesesess 3, 18, 20, 24

Equity Rule 70Va...... 2. cc cee cece ccc ccccceeees 15

Federal Rules of Civil Procedure, Rule 52 ........ 15

Treatise

J. Calamari, Law of Contracts, (2d ed. 1997) ..... 10

No. 95-728

In the Supreme Court

OF THE

United States

OcTOBER TERM, 1996

WARNER-JENKINSON COMPANY, INC.,

Petitioner,

vs.

HILTON Davis CHEMICAL Co.,

Respondent.

BRIEF OF AMICUS CURIAE ON BEHALF OF

SEAGATE TECHNOLOGY, INC.

IN SUPPORT OF PETITIONER IN WHICH THE

FOLLOWING CORPORATIONS JOIN:

3COM CORPORATION

BORLAND INTERNATIONAL, INC.

CHEVRON CORPORATION

Cisco Systems, INc.

COHERENT, INc.

EASTMAN MEDICAL Propucts, INC.

Giro Sport Desicn, INc.

HEWLETT-PACKARD COMPANY

READ-RITE CORPORATION

STORAGE TECHNOLOGY CORPORATION

SUN MICROSYSTEMS, INC.

UNION CARBIDE CORPORATION

WESTERN DIGITAL CORPORATION

WyYko CORPORATION

2

STATEMENT OF THE AMICI CURIAE

The parties listed above as amici curiae file this brief in

the appeal of Hilton Davis Chemical Co. v. Warner-Jenkin-

son Company, Inc., 62 F.3d 1512 (Fed. Cir. 1995). Written

consent to the filing of this brief has been obtained from the

petitioner and the respondent and is being filed herewith.

Amici consist of several high technology companies

which owe much of their success to their innovative technol-

ogy. Collectively, these amici are the owners of thousands of

patents, and thus, share the same interest in having a

reliable patent system as an integral part of the intellectual

property landscape. As such, amici need to have some

measure of certainty in determining their own strengths and

vulnerabilities when reviewing their own patent portfolios,

and likewise, when a patent has been asserted against them.

The Federal Circuit’s decision in Hilton Davis errone-

ously makes the doctrine of equivalents an unreasonable

part of the infringement analysis in every patent case. Now,

the review of every allegedly infringed patent must include

not only an evaluation of the scope of the stated claims, but

must also somehow incorporate use of a crystal ball to

“guesstimate” how far a given case will be stretched by the

doctrine of equivalents.

Amici urge the Court to reverse the Federal Circuit's

decision in Hilton Davis.

STATUTORY PROVISIONS INVOLVED

35 U.S.C. § 112, second paragraph, provides in pertinent

part that:

The specification shall conclude with one or more

claims particularly pointing out and distinctly claiming

the subject matter which the applicant regards as his

invention.

3

35 U.S.C. § 251, 4th paragraph, provides that:

No reissued patent shall be granted enlarging the

scope of the claims of the original patent unless applied

om iron Pao, yous Sraen the game of the eriginal

patent.

35 U.S.C. § 252 of the patent statute provides that:

The surrender of the original patent shall take

effect upon the issue of the reissued patent, and every

reissued patent shall have the same effect and operation

in law, aD bye Neen ali A aimee

arising, as same have been originally ted in

such amended form, but insofar as the > sag the

original and reissued patents are identical, such surren-

der shall not affect any action then pending nor abate

any cause of action then existing, and the reissued

patent, to the extent that its claims are identical with

the original patent, shall constitute a continuation

thereof and have effect continuously from the date of

the original patent.

No reissued patent shall abridge or affect the right

of any person or his successors in business who made,

purchased or used prior to the grant of a reissue

anything patented by the reissued patent, to continue

the use of, or to sell to others to be used or sold, the

specific thing so made, purchased or used, unless the

making, using or selling of such thing infringes a valid

claim of the reissued patent which was in the original

patent. The court before which such matter is in

question may provide for the continued manufacture,

use or sale of the thing made, purchased or used as

specified, or for the manufacture, use of sale of which

substantial preparation was made before the grant of

the reissue, and it may also provide for the continued

practice of any process patented by the reissue, prac-

4

ticed, or for the practice of which substantial prepara-

tion was made, prior to the grant of the reissue, to the

extent and under such terms as the court deems equita-

ble for the protection of investments made or business

commenced before the grant of the reissue.

SUMMARY OF ARGUMENT

The doctrine of equivalents is an equitable exception to

the rule that the literal terms of patent claims define

infringement. A favorable application of the doctrine can

afford a remedy to the patentee beyond that which could

have been provided had the patent claims been literally

applied. In this way, application of the doctrine acts in much

the same manner as reformation of a contract. In both cases,

the court alone goes beyond the literal letter of the law to

afford the injured party a remedy in equity. In both cases,

the court considers appropriate equitable factors before

determining whether the remedy is even warranted.

In Graver Tank & Mfg. Co. v. Linde Air Products Co., 339

U.S. 605 (1950), this Court recognized that the following

factors should be considered before application of the doc-

trine: (1) whether the accused device was the result of

copying or independent development; (2) whether those

skilled in the art had knowledge of the interchangeability of

the contested elements; and (3) the pioneer or primary

status of the claimed invention. To the Graver Tank factors,

Judge Lourie, in his dissent below, suggested that the

following factors be added: (1) anything done by the paten-

tee that would impair the ability of the public to reasonably

understand from the claims what is being patented; and

(2) the failure of the patentee to seek reissue of the original

patent to cover the accused embodiment. Hilton Davis, 62

F.3d at 1547 (Lourie, J., dissenting).

Thus, application of the doctrine of equivalents should

involve weighing of equitable factors on both sides, those

5

favoring the patentee and those favoring the alleged in-

fringer. Moreover, the actions of the patentee (e.g., his

failure to seek a reissue or his excessive delay in bringing the

infringement action) may figure prominently in the equities

determining the applicability of the doctrine, while the

actions of the accused infringer (e.g., whether there was

copying or independent development or traditional grounds

for intervening rights) may have more impact in the result-

ing relief aspect of the case involving damages and injunc-

tions. Furthermore, as a matter in equity, application of the

doctrine (both in the decision to apply the doctrine and the

resulting relief) lays within the province of the judge, not a

jury.

Despite this Court’s clear precedents, the Federal Circuit

failed to recognize and apply the Graver Tank factors in the

manner instructed by this Court. It also ignored the equita-

ble status of the doctrine, and instead erroneously left to the

jury the task of going outside the patent claims to provide an

equitable remedy for the patentee.

ARGUMENT

I.

CONTRARY TO THE DECISION OF THE FEDERAL

CIRCUIT, GRAVER TANK CONFIRMS THAT THE

DOCTRINE OF EQUIVALENTS RESTS SOLELY IN

EQUITY.

This Court has long acknowledged and heeded the age-

old adage that “equity regards as done that which ought to

be done.” Camp v. Boyd, 229 U.S. 530, 559 (1913); United

‘In a case where there is no literal infringement and the only relief

available is equitable relief under the doctrine of equivalents, there

should be no right to a jury trial under classic application of the Seventh

Amendment to the U.S. Constitution

6

States v. Colorado Anthracite Co., 225 U.S. 219, 223

(1912); Craig v. Leslie, 16 U.S. (3 Wheaton) 563, 578

(1818). Courts are often called upon to go beyond the “law”

(particularly when interpreting legal documents such as

contracts) to provide a remedy which will insure that the

application of the “literal” law does not result in injustice.

Craig, 16 U.S. at 578. When a court does so, it is acting in

“equity.” While making reference to the learned and often

quoted Second Circuit Judge Learned Hand in Royal Type-

writer Co. v. Remington Rand, Inc., 168 F.2d 691, 692 (2d

Cir. 1948), this Court confirmed, in the seminal decision of

Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S.

605, 608 (1950), that where the legal document was a

patent, the goal of “equity” is the same: to do “that which

ought to be done.” Camp, 229 U.S. at 559.

This Court recognized that a rigid application of patent

law can at times be strict and unbending and may deny relief

where it should be justly awarded. To prevent such injustice,

this Court, in Graver Tank, again gave its approval to the

then century old “doctrine of equivalents.” Jd. The Court

acknowledged that the doctrine had evolved to prevent “a

fraud on a patent” where a patentee is unable to prove literal

infringement. Jd. Thus, the doctrine of equivalents clearly

came into being in order to provide a remedy in certain

circumstances where the patentee’s legal claim of literal

infringement had failed.

This Court in Graver Tank used words like “piracy” and

“fraud” to both explain the basis for the doctrine and to

impress that resort to the doctrine should only be had in

extreme or extraordinary circumstances. In further explain-

ing the basis for the doctrine, the Court embraced the

wisdom of Judge Learned Hand in Royal Typewriter, and

quoted with approval his decision to apply the doctrine of

equivalents “[t]o temper unsparing logic and prevent an

infringer from stealing the benefit of the invention.” Graver

7

Tank, 339 U.S. at 608. To be sure, Judge Hand viewed and

applied the doctrine of equivalents as one in equity, and this

om has expressly approved of his reasoning in doing so.

Nevertheless, the Federal Circuit wrestled needlessly with

the question of whether the doctrine of equivalents was one

in “equity” or one in “law.” It unfortunately reached the

wrong conclusion. The majority below had only to look to

Graver Tank and this Court’s approval of Judge Learned

Hand’s cision in Royal Typewriter. Judge Hand’s opinion

rested on a long line of precedent from this Court, including

Winans v. Denmead, 56 U.S. (15 How.) 330 (1853)

* Winans v. Denmead was the first ocassion where this Court went

outside of the patent claims to find infringement and held a defendant

liable for infringement despite the fact that it was not infringing a

specific claim limitation. In reaching its decision, the Court appears to

have relied upon the language in the claim that referred back to the

specification to apply the traditional “central claiming” rule of construc-

tion which provides that when a patentee claims his invention as

described, he is understood to claim not only the particular machine

described, but all other embodiments of the machine even though there

is a change in form. 56 U.S. at 341.

However, the majority position was taken over a vigorous dissent by

four Justices, including Justice Taney. The dissent, written by Justice

Campbell, would have held the patentee to his express claim limitation.

The dissent noted that under the Patent Act, the patentee is obliged “to

describe his invention, in such full, clear, and exact terms, that from the

description, the invention may be constructed and used. Its principle and

modes of operation must be explained; and the invention shall particu-

larly ‘specify and point’ out what he claims as his invention.” Moreover,

the dissent feared that “a relaxation of these wise and salutary requisi-

tions of the act of Congress” would result in “mischievous, . . . oppres-

sive and costly litigation,... exorbitant and unjust pretensions and

vexatious demands.” Jd., at 347 (Campbell, J, dissenting).

However, the majority’s holding can be explained by noting that the

defendant was a clear pirate, who (after visiting the patentee’s railroad

yard, measuring and taking notes) reproduced its own substitute railroad

car with the same gauge steel (a critical benefit of the invention) as the

————

Judge Hand enunciated the doctrine as one exercised in

equity in order to obtain a “just result,” and noted that:

[A] patent is like any other legal instrument; but it is

peculiar in this, that after all aids to interpretation have

been exhausted, and the scope of the claims has been

enlarged as far as the words can be stretched, on proper

occasions courts make them cover more than their

meaning will bear. If they applied the law with inexora-

ble rigidity, they would never do this, but would remit

the patentee to his remedy of re-issue, and that is

exactly what they frequently do. Not always, however,

for at times they resort to the “doctrine of equivalents”

to temper unsparing logic and prevent an infringer from

stealing the benefit of the invention. No doubt, this is,

strictly speaking, an anomaly; but it is one which courts

have frankly faced and accepted almost from the begin-

ning. All patents are entitled to its benefit to an extent,

measured on the one hand by their contribution to the

art, and on the other by the degree to which it is

necessary to depart from the meaning to reach a just

result.

Royal Typewriter, 168 F.2d at 692 vee, eanens added) (in-

ternal citations omitted).

Similarly, in order to reach a “just result,” this Court in

Graver Tank applied the same doctrine to ensure that

“fraud on a patent” would not lie when the essence of a

claimed invention had been appropriated. Graver Tank, 339

U.S. at 608. The same balance enunciated by Judge

Learned Hand thus laid the foundation for this Court’s

decision in Graver Tank, and continues to this day undis-

turbed as the rationale for granting relief to a patentee where

patentee’s car. The defendant varied only the shape of the car, an

immaterial element, from the shape claimed.

9

literal infringement cannot be proven, and the letter of the

law affords no relief.

Notwithstanding this clear precedent, the Federal Circuit

became confused. It no doubt took this Court’s holding that

“[{a] finding of equivalence is a determination of fact” to

mean that only a “jury” can make such determinations. This

flawed reasoning resulted in the Federal Circuit’s declara-

tion that this Court has not previously dealt with the

“doctrine of equivalents” as one in “equity.” It then errone-

ously categorized the doctrine as one at “law,” thus leaving

factual determinations in the arena of the jury, when a jury

is used. With this initial error, the majority in Hilton Davis

went on to conclude that:

By referring to the doctrine as a doctrine of fairness,

neither the Supreme Court nor this court has invoked

the myriad implications of an alternative to legal reme-

dies. In addition, neither the Supreme Court nor this

court has invoked equity in the technical sense of a set

of principles originating in England to compensate for

the historically harsh rules of common law. Graver

Tank does not discuss any of the principles commonly

attending the chancellor’s invocation of equitable

power, such as the “unclean hands” doctrine, the ele-

vated burden of proof, the abuse of discretion standard

of review, or the mandatory balancing of the equities.

Hilton Davis, 62 F.3d at 1521 (emphasis added).

The majority, thus, completely misunderstood the Graver

Tank Court’s instructions and rationale for applying the

doctrine of equivalents. Once the majority committed the

fatal error of not understanding the doctrine as one in

“equity,” it had set itself upon a course of reasoning from

which there was no return.

10

A. Finding Infringement Under The Doctrine Of

Equivalents Is As Much An Equitable Remedy For

The Court Alone As Is The Reformation Of A

Contract.

As was acknowledged by Judge Learned Hand, “a patent

is like any other legal instrument.” Royal Typewriter,

168 F.2d at 692. An appropriate analogy can be drawn

between a patent and a contract where a patent is viewed in

the classic sense as a contract between the United States

government and the patentee. See, e.g, S & E Contractors,

Inc. v. United States, 406 U.S. 1, 15 (1972); Bate Refriger-

ating Co. v. Sulzberger, 157 U.S. 1 (1894).

Just as equity occasionally intercedes to correct an error

in a contract in order to provide a remedy where none exists

at law (i.e., performance within the four corners of the

agreement), equity at times intervenes to provide a remedy

for a patentee where the legal remedy has failed (i.e., literal

infringement of the claims). In both instances, equity is said

to intervene to do “that which ought to be done.” Camp v.

Boyd, 229 U.S. at 559.

In the case of a contract, the general rule of law is that the

terms, conditions and remedies of the contracting parties are

defined within the four corners of the written agreement. J.

Calamari, Law of Contracts, (2d ed. 1977). Thus, where the

parties have freely entered into the contract, they must live

with its terms, since a court is only capable of enforcing the

contract as it is written. However, the reality of the harsh-

ness of this rule has been long recognized by this Court. See,

e.g., Ivinson v. Hutton, 98 U.S. (8 Otto) 79, 82 (1878).

For nearly a century this Court has been mindful that in a

contract, “a mistake cannot be corrected, in conformity with

our judicial system, in a court of law.” Northern Assurance

Co. v. Grand View Building Asso., 183 U.S. 308, 334

(1901); see also, Baltzer v. Raleigh & Augusta Railroad Co.,

11

115 U.S. 634, 645 (1885). However, preferring not to leave

the contracting parties without a remedy, due solely to a

mistake in their agreement, the Northern Assurance Court

went beyond the terms of the contract to fashion a remedy

in equity and noted that:

No one can doubt that, in a proper case of this kind, an

equitable remedy exists. ‘There cannot be, at the pre-

sent day,’ says Mr. Justice Story, ‘any serious doubt

that a court of equity has authority to reform a contract,

where there has been an omission of a material stipula-

tion by mistake. . .

Northern Assurance Co., 183 U.S. at 334 (citing Andrews v.

Essex Fire & Marine Ins. Co., 1 F. Cas. 885, 3 Mason 10,

(1822)); see also, Walden v. Skinner, 101 U.S. (11 Otto)

577, 583 (1879).

Thus, this Court has before it nearly two centuries of

precedents for providing a remedy in equity to relieve

contracting parties of their mutual mistakes. Typically, the

remedy has been to reform the contract to reflect the parties’

true intent. Accordingly, “[i]t is well settled that courts of

equity will reform a written contract where, owing to mutual

mistake, the language used therein did not fully or accu-

rately express the agreement and intention of the parties.”

Philippine Sugar Estates Development Co. v. Government of

Philippine Islands, 247 U.S. 385, 389 (1918) (citing Snell v.

Atlantic Fire & Marine Ins. Co. of Providence, 98 U.S. (8

Otto) 85, 88-91 (1878)); Baltzer, 115 U.S. at 645.

Furthermore, this Court has carefully mandated that

“reformation is not an incident to an action at law, but can

be granted only in equity.” United States v. Milliken Im-

printing Co., 202 U.S. 168, 173 (1906); see also, Ivinson, 98

U.S. at 82 (“Power to reform written contracts for fraud or

mistake is everywhere conceded to courts of equity, and it is

equally clear that it is a power which cannot be exercised by

12

common law courts”); Hearne v. New England Mutual

Marine Ins. Co., 87 U.S. (20 Wall.) 488, 490 (1874).

As in the case of a contract, mistakes in a patent can be

corrected in court only in equity. To be sure, the Graver

Tank Court was fully cognizant that the remedy that it was

called upon to provide was not one which was available at

law. That is, the remedy did not flow from the literal claims

of the patent and the Court acknowledged as much when it

observed that: “[i]f accused matter falls within the claims,

infringement is made out and that is the end of it.” Graver

Tank, 339 U.S. at 607. But, that was not “the end of it” in

Graver Tank. That the Court in Graver Tank knew that it

was initially confronted with a remedy which could only be

rendered in equity, was clear when it pointed out the many

equitable considerations which must go into the balance in

applying the doctrine of equivalents.

Even prior to Graver Tank, this Court approved of a

resort to equity to provide a remedy to the patentee where it

was clear that were the patentee to be held to the letter of

his claims, an injustice would result. Winans v. Denmead, 56

U.S. (15 How.) 330 (1853). This remedy of patent refor-

mation (as it may be called) has come to be known as the

doctrine of equivalents and it “regards as done that which

ought to be done.” Camp v. Boyd, 229 U.S. at 559. The

doctrine allows a court to look beyond the four corners of

the patent and the literal language of the claims (as the law

mandates) to determine exactly what it was (what was the

invention) that the parties intended to protect. In exercising

its equitable powers to afford justice, the court then grants to

the patentee the entire invention which both parties (the

patentee and the government) must have intended be cov-

ered in the original patent. See, e.g., United States v. Old

Settlers, 148 U.S. 427, 464 (1893) (holding a court has the

discretion to reform a contract in order to render a judgment

which is right between claimants and the government); see

13

also, McClure v. United States, 116 U.S. 145, 149 (1885)

for the same proposition. This is equity and nothing more.

B. That A Finding Of Equivalents Involves A Determi-

nation Of Fact Makes The Doctrine Of Equivalents

No Less An Equitable Remedy.

It is well settled that “the right of trial by jury does not

extend to cases of equity jurisdiction.” This Court has held

that:

If it be conceded or clearly shown that a case

belongs to this class [equity], the trial of questions

involved in it belongs to the court itself, no matter what

may be its importance or complexity.

Katchen v. Landy, 382 U.S. 323, 337 (1966) (citing Barton

v. Barbour, 104 U.S. (14 Otto) 126, 133-34 (1881)); see

also, Moore v. United States, 91 U.S. (1 Otto) 270 (1875).

Thus, once a matter is properly in equity, all issues whether

they be of fact or law are to be decided by the court alone.

Moore, 91 U.S. at 273.

As such, the right to a jury trial guaranteed to cases at law

by the Seventh Amendment to the United States Constitu-

tion has no application to equity cases. The Seventh

Amendment provides in pertinent part that: “In suits at

common law, where the value in controversy shall exceed

twenty dollars, the right of trial by jury shall be preserved.”

The phrase “at common law” refers to “suits in which /ega/

rights [are] to be ascertained and determined, in contradis-

tinction to those where equitable rights alone [are] recog-

nized, and equitable remedies [are] administered.” Parsons

v. Bedford, Breedlove & Robeson, 28 U.S. (3 Pet.) 433, 447

(1830) (emphasis in original).

In order to determine whether legal rights are involved,

courts resort to the well-established two-prong test enunci-

ated in Tull v. United States, 481 U.S. 412 (1987). “First,

we compare the statutory action to |18th-century actions

14

brought in the courts of England prior to the merger of the

courts of law and equity. Second, we examine the remedy

sought and determine whether it is legal or equitable in

nature.” Jd. at 417-18 (internal citations omitted). “The

second stage of this analysis is more important than the

first.” Granfinanciera, S.A. v. Nordberg, 492 US. 33,

42 (1989).

As previously noted, the doctrine of equivalents (which

has no statutory basis), is most analogous to contract refor-

mation. In 18th-century England, contract reformation was

clearly an action at equity.

More importantly, the remedy sought under the doctrine

of equivalents is equitable. It is of no consequence in

applying this remedy that factual issues must be determined.

This Court has long held that in equity, issues of fact are

properly determined by the court alone. Moore, 91 U.S. at

273; Interstate Circuit v. United States, 304 US. S55,

56 (1938).

Furthermore, it matters not in the least that in the

application of this remedy where the court is “reforming”

the patent, that the patentee is awarded money damages in

the form of restitution, since this Court has similarly recog-

nized that money damages can be equitable. Chauffeurs,

Teamsters & Helpers, Local No. 391 v. Terry, 494 U.S. 558,

570 (1990); Curtis v. Loether, 415 U.S. 189, 197 (1974).

Likewise, this Court has instructed that “a monetary award

‘incidental to or intertwined with injunctive relief’ may be

equitable.” Curtis, 415 U.S. at 197 (citing Tull, 481 U.S. at

424); see also, Mitchell v. Robert DeMario Jewelry, Inc.,

361 U.S. 288, 292 (1960). As such, the fact that money

may change hands makes the remedy no less equitable and

the issue no less a matter for the court acting alone.’

> As with a contract, the reformation of a contract may well result in

the court awarding money damages as a part of the remedy, yet the

15

Through application of the doctrine of equivalents, a paten-

tee is generally secking relief in the form of an injunction

and compensation for infringement which would have been

available had there been literal infringement. However,

since the patentee did not claim his invention as broadly as

he could have, in compliance with the mandate of 35 U.S.C.

§ 112, he is forced now to rely solely on the equitable

remedy of the doctrine of equivalents.* See, Winans v.

Denmead, 56 U.S. at 347 (Campbell, J., dissenting).

Inasmuch as application of the doctrine of equivalents

affords an equitable remedy (affording a remedy where none

exists at law), there is no Seventh Amendment right to a

jury. The job, then, is one for the court alone, acting in

equity.

The Federal Circuit was apparently not listening to this

Court's explicit instructions and guidance in applying the

equitable doctrine of equivalents. Instead, the Federal Cir-

cuit continually referred to the fact that there were “factual

determinations” which it said required application of the

doctrine of equivalents to be made by a jury. The court

refused to accept that a court sitting in equity is not only

fully capable of making factual determinations, but is re-

quired to do so. As this Court has previously noted, old

Equity Rule 70%, which essentially became Fed. R. Civ.

Pro. 52, provided: “In deciding suits in equity, including

those required to be heard before three judges, the court of

first instance shall find the facts specially and state sepa-

matter of reforming that contract and handing out damages as a result

remains a remedy which only a court may apply. See, Walden v

Skinner, 101 U.S. 577 (1879).

“Section 112, second paragraph, of the Patent Statute provides in

pertinent part that a patent specification shall:

conclude with one or more claims particularly pointing out and

distinctly claiming the subject matter which the applicant regards

as his invention.

16

rately its conclusions of law thereon.” /nterstate Circuit, 304

U.S. at 56 (1938) (emphasis added); see also, Los Angeles

Gas & Electric Corp. v. Railroad Com. of California, 289

U.S. 287, 328-29 (1933) (Butler, J., dissenting).

Consequently, the involvement of facts in the determina-

tion of whether or not to apply the doctrine of equivalents is

immaterial to the question of whether application of the

doctrine is left to a judge or jury. Rather, the doctrine must

be seen as one in equity which affords an equitable remedy.

The equitable decision of whether or not to apply the

doctrine, and then how to apply it in individual cases, must

be made by a court, as there is no right to a jury trial in

equity cases.

APPLICATION OF THE DOCTRINE OF

EQUIVALENTS SHOULD ALWAYS INCLUDE CON-

SIDERATION OF CERTAIN EQUITABLE FACTORS.

Since application of the doctrine of equivalents favors an

equitable result at the expense of legal certainty (at least as

far as the meaning and scope of patent claims are con-

cerned), it is appropriate to consider specific equitable

factors to determine whether or not application of the

doctrine is warranted. This Court’s Graver Tank decision is

instructive on a number of these factors; yet, the Federal

Circuit again misread Graver Tank and completely missed

the mark in applying, or rather in not applying those factors

in Hilton Davis, 62 F.3d at 1521.

Although the majority may have been confused in its

reading of Graver Tank, Judge Lourie’s dissent shows that

he fully comprehended this Court’s decision and its applica-

tion to the fundamental tenets of patent law. In his dissent,

Judge Lourie recognized the doctrine of equivalents for

what it is, an equitable remedy which is an exception to the

17

rule that patentees are limited to what they literally claim.

Hilton Davis, 62 F.3d at 1550 (Lourie, J., dissenting).

Moreover, Judge Lourie correctly pointed out that in

Graver Tank, this Court enumerated many factors beyond

and unrelated to the “substantiality of the differences” test

which should be considered before a court decides to go

beyond the literal meaning of a patent claim and delve into

the realm of equity. These other factors included:

(1) whether the accused device was the result of copying or

independent development; (2) whether those skilled in the

art had knowledge of the interchangeability of contested

elements; and (3) the pioneer or primary status of the

claimed invention. Graver Tank, 339 U.S. at 607-8. As

Judge Lourie so keenly recognized, these additional factors

go far beyond a determination of the “substantiality or

insubstantiality of the differences” between the accused

product or process and what is covered by the patent, and

unquestionably place the doctrine of equivalents in the

realm of “equity.” It is clear that this Court in Graver Tank

viewed these factors as critical parts of the balancing test

which determine where the equities lie when deciding

whether the circumstances of the case justify a remedy for

the patentee beyond the failed legal remedy.

A. Actions Of The Patentee Should Be Considered

Before Application Of The Doctrine Of Equivalents.

In addition to the Court’s Graver Tank factors, Judge

Lourie noted two additional factors which should be consid-

ered by courts in their decisions to grant equitable relief

where there is no literal infringement. These factors focus on

activities of the patentee and include: (1) anything done by

the patentee that would impair the ability of the public to

reasonably understand from the claims what is being pat-

ented; and (2) the failure of the patentee to seek reissue of

the original patent to cover the accused embodiment. Hilton

Davis, 62 F.3d at 1547 (Lourie, J., dissenting).

Inasmuch as a patent applicant is required by 35 U.S.C.

§ 112, second paragraph, to conclude the patent specifica-

tion with “one or more claims particularly pointing out and

distinctly claiming the subject matter which the applicant

regards as his invention,” the only time that the doctrine of

equivalents becomes an issue is when the patentee has failed

to obtain a claim which is narrow enough to be valid, yet

broad enough to be literally infringed. See Winans v. Den-

mead, 56 U.S. at 347 (Campbell, J., dissenting).

Thus, the underlying assumption in all doctrine of

equivalents cases is that the patentee could have, but did

not, obtain a claim in the Patent Office which would literally

read on the accused product or process. Hilton Davis, 62

F.3d at 1549 (Lourie, J., dissenting). Clearly then, this

factor ought to weigh against the patentee and in favor of

the public (including the unknowing infringer) in consider-

ing whether or not the doctrine of equivalents should even

be considered as a remedy.

As Judge Lourie so aptly pointed out in his dissent, the

fact that the patentee has not undertaken to have the

original patent reissued in order to get claims which more

accurately notify the public of what is being claimed, should

act as a form of laches. Jd. Again, this factor should likewise

weigh against application of the doctrine of equivalents as it

does in all other cases of equity. See, Keystone Bridge Co. v.

Phoenix Iron Co., 95 U.S. (5 Otto) 274, 278 (1877);

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

Thus, where the patentee has failed to claim the invention

under 35 U.S.C. § 112 as well as he should have and to avail

himself of the benefits of 35 U.S.C. § 252 to correct that

problem, the patentee should bear some accountability for

the dilemma he creates for the public, which will not know

from the patent claims exactly what is covered by the

patent. Merrill v. Yeomans 94 U.S. at 573. This factor

weighs against application of the doctrine since there is a

19

compelling public interest to permit industry and those

skilled in the art to operate with some degree of certainty,

particularly in making decisions about investments in new

products and other developments. It is imperative that

businesses have a sense of security to operate and develop

their activities without the chilling effect of a potential mega

jury verdict for infringement of a patent claim that was

never literally infringed and of which it had no prior notice.’

Another factor which should be placed in the balance is

consideration of the time at which the accused infringer

becomes aware of the infringement. In many instances, the

alleged infringer may become aware of his liability for

infringing a claim (not previously examined by the Patent

Office) long after this infringement has begun. The alleged

infringer has no way of knowing he is in trouble until the

patentee finally gets around to bringing suit, and the court

decides to apply the doctrine of equivalents to find infringe-

ment. Again, since the patentee made the decision not to

return to the Patent Office to seek reissue, this factor as

another form of laches, should weigh against going beyond

the literal claims to afford the patentee a remedy. The delay

* Indeed Justice Black appreciated this dilemma for the public, when,

in his Graver Tank dissent he expressed the following concern:

The Court’s ruling today sets the stage for more patent “fraud” and

“piracy” against business than could be expected from faithful

observance of the congressionally enacted plan to protect business

against judicial expansion of precise patent claims. Hereafter a

manufacturer cannot rely on what the language of a patent claims.

He must be able, at the peril of heavy infringement damages, to

forecast how far a court relatively unversed in a particular techno-

logical field will expand the claim’s language after considering the

testimony of technical experts in that field. To burden business

enterprise on the assumption that men possess such a prescience

bodes ill for the kind of competitive economy that is our professed

goal.

Graver Tank, 339 U.S. at 617 (Black, J. dissenting).

20

was occasioned by the patentee and it should not inure to his

benefit.

B. The Doctrine Of Equivalents Is But A Substitute

For A Reissue Which Is Itself An Equitable

Remedy.

As early as 1881, this Court recognized the reissuance of

a patent pursuant to § 252° of the current Patent Act (and

its predecessor statutes) to be an equitable remedy, in

exchange for which the patentee had to show that he had

proceeded with “due diligence” and without “unreasonable

delay” if the goal was to broaden the patent claims. Miller v.

*Section 252 of the patent statute provides that:

The surrender of the original patent shall take effect upon the issue of

the reissued patent, and every reissued patent shall have the same effect

and operation in law, on the trial of actions for causes thereafter arising,

as if the same have been originally granted in such amended form, but

insofar as the claims or the original and reissued patents are identical,

such surrender shall not affect any action then pending nor abate any

cause of action then existing, and the reissued patent, to the extent that

its claims are identical with the original patent, shall constitute a

continuation thereof and have effect continuously from the date of the

original patent.

No reissued patent shall abridge or affect the right of any person or his

successors in business who made, purchased or used prior to the grant of

a reissue anything patented by the reissued patent, to continue the use

of, or to sell to others to be used or sold, the specific thing so made,

purchased or used, unless the making, using or selling of such thing

infringes a valid claim of the reissued patent which was in the original

patent. The court before which such matter is in question may provide

for the continued manufacture, use or sale of the thing made, purchased

or used as specified, or for the manufacture, use or sale of which

substantial preparation was made before the grant of the reissue, and it

may also provide for the continued practice of any process patented by

the reissue, practiced, or for the practice of which substantial prepara-

tion was made, prior to the grant of the reissue, to the extent and under

such terms as the court deems equitable for the protection of invest-

ments made or business commenced before the grant of the reissue.

21

Bridgeport Brass Co., 104 U.S. (14 Otto) 350, 352 (1881).

Noting that where a specific device or combination is

claimed in a patent, the public has a right to rely on the

“implied disclaimer” of all that is omitted from the claims,

the Miller Court held that:

This legal effect of the patent cannot be revoked unless

the patentee surrenders it and proves that the specifica-

tion was framed by real inadvertence, accident, or

mistake, without any fraudulent or deceptive intention

on his part; and this should be done with all due

diligence and speed. Any unnecessary laches or delay in

a matter thus apparent on the record affects the right to

alter or reissue the patent for such cause.

Id. at 352 (emphasis added).

Without question, the issuance of a reissue patent, like

reformation of a contract, is an equitable remedy which

benefits the patentee by permitting it to claim something

other than that which was literally claimed in the original

patent. Furthermore, the Miller Court went to great lengths

to convey that the whole intent behind the reissue statute is

to grant to the patentee that which “ought to have been

done” in the first instance. Camp, 229 U.S. at 559. The

Court’s use of terms such as “due diligence,” “laches,”

“inadvertence,” “mistake,” “slept upon his rights” to de-

scribe the conduct of the patentee and “reliance” in connec-

tion with the public’s conduct, clearly places the reissue

proceeding in “equity.” Miller, 104 U.S. at 352-6. Moreover,

the Miller Court was careful to characterize the level of

conduct by a patentee which would justify the broadening of

claims in a reissue, to be “a real bona fide mistake, inadver-

tently committed; such as a Court of Chancery, in cases

within its ordinary jurisdiction, would correct.” Jd. at 355.

22

Such characterization squarely places this relief as well in

the realm of “equity.”

That there is a clear analogy between the doctrine of

equivalents and the reissue procedure appears self evident.

Nevertheless, this relationship was expressly acknowledged

by Justice Hugo Black in his dissent to this Court's Graver

Tank decision.’ Although disagreeing with this Court's

application of the doctrine of equivalents, Justice Black

recognized that the doctrine could and would be used as a

way to contravene the Court's imposition of a two year

limitation to broaden claims in a reissue patent. Graver

Tank, 339 U.S. at 616.’

"Again, the analogy to contract reformation is apparent since the

patentee in a reissue proceeding is able to return to the government and

get claims to cover his entire invention. The patentee must, however,

establish that the equities are in his favor (i.e., no unreasonable delay,

fraud, etc.), and that he is entitled to the claims sought.

*In addition to pointing out the analogy between the doctrine of

equivalents and the reissue procedure, Justice Black noted his concern

that the doctrine of equivalents would permit a patentee to broaden his

claims even beyond what might be considered a reasonable period.

Miller, 104 U.S. at 350 (the Court found the period of time to be

unreasonably long for patentee to return to the Patent Office to broaden

claims). Graver Tank, 339 U.S. at 615 (Black J., dissenting). Moreover,

Justice Black even suggested that patentees would be wise to simply

bypass the reissue procedure and await the day when courts would

enlarge the claims under the doctrine of equivalents, without regard to

the passage of time. Jd. at 616.

* Justice Black feared that: “One need not be a prophet to suggest that

today’s rhapsody on the virtue of the ‘doctrine of equivalents’ will, in

direct contravention of the Miller case supra, make enlargement of

patent claims the ‘rule’ rather than the ‘exception.’ Graver Tank, 339

U.S. at 616 (Black J., dissenting).

23

C. Both Statutes And Case Law Require That The

Relief Available For Infringement By Equivalents

Should Involve The Same Equitable Considerations

That Apply To Infringement Of A Reissue Patent.

Inasmuch as the doctrine of equivalents, like the provi-

sions for reissuing patents, is clearly an equitable remedy,

any relief granted to the patentee thereunder should be

based on the traditional equitable principles, such as those

which would have been considered by the early Court of

Chancery. Graver Tank, 339 U.S. at 607-9; Miller, 104 U.S.

at 355.'°

Thus, the same factors which the Graver Tank Court

enumerated as being appropriate for inquiry to determine if

the doctrine of equivalents should apply at all should like-

wise be considered in fashioning any relief for the patentee.

As was previously noted, the importance of these factors was

recognized and appreciated by Judge Lourie; yet, their

significance was lost on the majority in Hilton Davis.

Moreover, the Legislature has provided for amendment or

correction of the claims in a patent through the reissue

process. This same type of claim correction is accomplished

by the court in equity when infringement is found by the

doctrine of equivalents. The Legislature has further provided

that when patent claims are changed during reissue, relief

for infringement would be controlled by equitable considera-

tions, both as to past and future infringement."

'© Although not binding on this Court, the Seventh Circuit’s opinion in

the Union Carbide Corp. v. Graver Tank & Mfg. Co., Inc., 196 F.2d 103

(7th Cir. 1952), cert. denied, 343 U.S. 967 (1952), reh'g denied, 344

U.S. 849 (1952) (case involved the damages issues, including the issue

of willful infringement) is enlightening as to the equities which should

be weighed in fashioning a remedy where infringement is proven by the

doctrine of equivalents.

'' See, footnote 6, supra.

24

The first sentence of the second paragraph of section 252

provides absolute freedom from liability for any infringe-

ment which took place before the claims were changed, and

the second sentence provides for continued freedom on

equitable terms. To be sure, the Legislature could not have

made it more explicit that it was providing for equitable

relief when it provided that “[t]he court... may also pro-

vide for the continued manufacture... and... continued

practice of any process patented by the reissue... under

such terms as the court deems equitable...”. (emphasis

added).'* Therefore, a patentee should not be permitted to

avoid the Legislative imposition of equitable relief by wait-

ing to invoke the doctrine of equivalents in litigation.

Furthermore, it is generally the patentee that controls the

timing of the infringement action and, thus, the timing of

application of the doctrine of equivalents. It would therefore

seem equitable that the accused infringer be afforded the .

benefit of similar “intervening rights” as those provided in

§ 252 for a reissued patent.'’ Equity compels this result.

There can be no justification for placing a patentee who is

aware of an infringement, and yet waits to rely on the

doctrine of equivalents, in a better position than one who

takes the reissue route. At least with the reissue, the public

is notified of broader claims within two years of the date of

the original patent.'* In the latter instance, the public is put

on notice of the change in patent claims. Clearly, Justice

Black appreciated the value of early notice to the public and

of the examination of claims by the Patent Office instead of

"2 See, footnote 6, supra.

"See, footnote 6, supra.

“Section 251, 4th paragraph, of the patent statute provides that: “No

reissued patent shall be granted enlarging the scope of the claims of the

original patent unless applied for within two years from the grant of the

original patent.”

25

the courts. Graver Tank, 339 U.S. at 617 (Black, J,,

dissenting). And, even though Justice Black was expressing

a minority view, there can be no doubt that the majority in

Graver Tank intended to strike an equitable balance be-

tween the patentee and the public.

CONCLUSION

For the foregoing reasons, amici request that this Court

reverse the Federal Circuit’s decision and, in so doing,

reaffirm its Graver Tank holding that the doctrine of

equivalents acts in equity to do “that which ought to be

done.” Camp, 229 US. at 559.

Respectfully submitted,

CARRIE L. WALTHOUR

(Counsel of Record)

KARL A. LIMBACH

DEBORAH BAILEY-WELLS

Herp L. KEEFE

LiMBACH & LIMBACH L.L.P.

2001 Ferry Building

San Francisco, CA 94111

Tel. (415) 433-4150

Counsel for Amicus

Seagate Technology, Inc.

EDWARD P. HELLER, III

Patent Counsel

Seagate Technology, Inc.

920 Disc Drive

Scotts Valley, CA 95066

Tel. (408) 439-2699

Of Counsel