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

rm | Supreme Court, U.

V4 FILED

No. 95-728 APR 11 1996

a we

In THE

Supreme Court of the United States

OCTOBER TERM, 1995

WARNER-JENKINSON COMPANY, INC.,

Petitioner,

Vv.

HiLTon Davis CHEMICAL Co.,

Respondent.

On Writ of Certiorari to the

United States Court of Appeals

for the Federal! Circuit

BRIEF AMICUS CURIAE OF

INTELLECTUAL PROPERTY OWNERS

IN SUPPORT OF PETITIONER

CARTER G. PHILLIPS *

MARK E. HADDAD

JOSEPH R. GUERRA

ANN K. ADAMS

SIDLEY & AUSTIN

1722 Eye Street, N.W.

Washington, D.C. 20006

(202) 736-8000

Counsel for Amicus Curiae

April 11, 1996 * Counsel of Record

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

TABLE OF CONTENTS

TABLE OF AUTHORITIES

INTEREST OF AMICUS CURIAB -..0.0..00.00.0.000ccccs0ee —

INTRODUCTION AND SUMMARY OF ARGU-

I. A PATENT IS INFRINGED WITHIN THE

MEANING OF 35 U.S.C. §271 WHEN A

PARTY “MAKES, USES OR SELLS” A DE-

VICE OR METHOD THAT DOES NOT

DIFFER FROM THE PATENTED INVEN-

TION IN ANY SUBSTANTIAL WAY

A. The Doctrine Of Equivalents Developed In

Conjunction With The Statutory Claiming

Requirement As An Aid To Construing The

Scope And Meaning Of Patent Claims

B. The 1952 Patent Act Made No Change In

The Law Of Infringement And Left The

. THE SCOPE OF AN INVENTION SHOULD

_ BE DETERMINED BY THE SAME OBJEC-

TIVE FACTORS USED TO CONSTRUE

CLAIMS IN ANY LITERAL INFRINGEMENT

A. Undue Reliance On, And A Wooden Appli-

cation Of, The Function-Way-Result Test

A Determination Of Equivalence Should Be

Based On (1) The Clarity And Breadth Of

The Claim Language; (2) The Prosecution

History; (3) The Prior Art And The Inven-

tion’s Status Within That Art; And (4) The

ii

TABLE OF CONTENTS—Continued

1. Clarity and breadth of the claim lan-

guage should be a significant guide to

3 ; determining equivalence

2. Prosecution history estoppel is a vital

public basis for determining the proper

scope of the invention

8. Prior art limitations restrict the sweep

of the patent claims

4. Obvious substitutes must be included

within the equivalence analysis ...

5. Intent of the infringer is irelevant to

determining liability

C. InA Jury Trial, The Judge Should Determine

The Scope Of The Invention

CONCLUSION

iii

TABLE OF AUTHORITIES

CASES Page

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

365 U.S. 836 (1961) 11,12

Autogiro Co. of Am. V. United States, 384 F.2d 391

(Ct. Cl. 1967), cert. denied, 484 U.S. 1061

(1978) 6, 7,19

Belding Mfg. Co. Vv. Challenge Corn Planter Co.,

152 U.S. 100 (1894) x

Burr Vv. Duryee, 68 U.S. (1 Wall.) 581 (1864) ...... i)

Case V. Brown, 69 U.S. (2 Wall.) 820 (1864) .... 8

Claude Neon Lights, Inc. v. E. Machlett & Son, 36

F.2d 574 (2d Cir. 1929), cert. denied, 281 U.S.

my ewes 17

Clough V. Barker, 106 U.S. 166 (1882) ............. 24

Computing Scale Co. of Am. V. Automatic Scale

Co., 204 U.S. 609 (1907) ....... 22

Continental Paper Bag Co. v. Eastern Paper Bag

Co., 210 U.S. 405 (1908) —........ 23

The Corn-Planter Patent, 90 U.S. (23 Wall.) 181

(1874) oan x

Coupe Vv. Royer, 155 U.S. 565 (1895) semmnnctshinitinioe 8, 27

Duff Vv. Sterling Pump Co., 107 U.S. 686 (1882)... 8, 28

Exhidit Supply Co. v. mate _amalntae 315 U.S.

126 (1942) 9

Gil v. Wells, 89 U.S. (22 Wall.) ] _ saa 8

Gould Vv. Rees, 82 U.S. (15 Wall.) 187 (1872) ....... 8

Graham V. John Deere Co., 388 U.S. 1 (1966) ..... = 26

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

339 U.S. 594 (1950) 8, 9, 16, 24

Halliburton Oil Well Cementing Co. v. Walker,

829 U.S. 1 (1946) 4,18

Hobbes Vv. Beach, 180 U.S. 388 (1901) 00000. x

Imhaeuser V. Buerk, 101 U.S. 647 (1879)... 8, 24

Ives V. Hamilton, 92 U.S. 426 (1875) s

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

274 (1877) 9, 10, 20, 23

Keystone Driller Co. Vv. Northwest Eng’g Corp.,

CEE ee 8, 21

Machine Co. V. Murphy, 97 U.S. 120 (1877) —........... 8

iv

TABLE OF AUTHORITIES—Continued

Page

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

967 (Fed. Cir.), cert. granted, 116 S. Ct. 40 (Sept.

27, 1995) (argued Jan. 8, 1996) —................... 18, 26

McCormick v. Talcott, 61 US. (20 How.) 402

Se Tee 9

Mercoid Corp. V. Mid-Continent Inv. Co., 320 U.S.

Es Ee ree ee 26

Midlantic Nat'l Bank v. New Jersey Dep’t of Envtl.

Protection, 474 U.S. 494 (1986) 13

Minerals Separation Ltd. v. Butte & Superior Min-

ing Co., 250 U.S. 886 (1919) ...... sage 20, 22, 24

Roberts v. Ryer, 91 U.S. 150 (1875) ..................... x

Royer V. Schultz Belting Co., 135 U.S. 319 (1890) .... 8

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

0 SE Sis SU ses Ee 7, 8, 24

Schriber-Schroth Co. v. Cleveland Trust Co., 311

te F ae ere ree 8, 21

Sewell v. Jones, 91 U.S. 171 (1875) —.................... ~

Seymour Vv. Osbourne, 78 U.S. (11 Wall.) 516

0 EE a x

Singer Mfg. Co. v. Cramer, 192 U.S. 265 (1904) .... s

Smith v. Magic City Kennel Club, Inc., 282 US.

YO ————————————E 21

Square D Co. Vv. Niagara Frontier Tariff Bureau,

Inc., 476 US. 400 (1966) .................-..........-...... 15

Sutter v. Robinson, 119 U.S. 580 (1886) _............. 21

Tyler v. Boston, 74 U.S. (7 Wall.) 327 (1868) 8

Water-Meter Co. Vv. Desper, 101 U.S. 882 (1879)... 11, -

White v. Dunbar, 119 U.S. 47 (1886) —................... 10

Wilson Sporting Goods V. David Geoffrey & Assocs.,

904 F.2d 677 (Fed. Cir.), cert. denied, 498 U.S.

| en Se ee 22

Winans V. Denmead, 56 U.S. (15 How.) 380 (1853). 8, :

23,

Vv

TABLE OF AUTHORITIES—Continued

STATUTORY, LEGISLATIVE AND REGULATORY

AUTHORITIES Page

ET I

CC iddnadinnenmmeatis passim

Se a 26

§ 271, as amended by Act of Dec. 8, 1994. passim

§ 284 25

Patent Act of July 4, 1836, ch. 356, $6, 5 Stat. 117

ES A a 9

Patent Act of July 8, 1870, ch. 230, § 26, 16 Stat.

198 (1870) .. 10

Patent Act of July 19, 1952, ch. 950, 66 Stat. 811

(1962) ........... SE NS ey SS eee 11

Cong. Globe, 41st Cong., 2d Sess. 2854 (1870) ) 10

Patent Law Codification and Revision: Hearings

on H.R. 3760 Before Subcomm. No. 3 of the

Comm. on the Judiciary, obey Are teeioes

IN eS ier a ein ni Re la «eit 14

S. Rep. No. 1979, 82d Cong., 2d Sess. (1952), re-

printed in 1952 U.S.C.C.A.N. 2394 _. 12

2. Xt LS Se 26

MISCELLANEOUS

Dean O. S. Coleclough, A New Patent Act—But the

Same Basic Problem, 35 J. Pat. Off. Soc’y 501

(July 1953) . 12

Clarence B. Des Jardins, The Year 1952 ond the

Patent and Trade-Mark Law, 35 J. Pat. Off.

Soc’y 517 (July 1953) TOE EE Sa ee 14

Stephen G. Kalinchack, Obviousness and the Doc-

trine of Equivalents in Patent Law: Striving for

Objective Criteria, 43 Cath. U. L. Rev. 577

(1994). 17

Giles S. Rich, Infringement Under Section 271 of

the Patent Act of 1952, 35 J. Pat. Off. Soc’y 476

EE ST ee 12

John W. Schlicher, Patent Law: Legal and Eco-

nomic Principles (1995) . 10

Arthur H. Swanson, A Discussion of the Appli-

cation of the Doctrine of Equivalents in the

Graver v. Linde Case, 33 J. Pat. Off. Soc’y 19

SN AAD AN: ETE 17, 21, 24

Supreme Court of the United States

OctToser Term, 1995

No. 95-728

WARNER-JENKINSON COMPANY, INC.,

. Petitioner,

Hi_tow Davis CHEMICAL Co.,

Respondent.

On Writ of Certiorari to the

United States Court of Appeals

for the Federal Cireuit

BRIEF AMICUS CURIAE OF

2

to this brief.’ IPO is a non-profit association exempt from

federal income tax under Internal Revenue Code § 501

(c) (6).

Although neither IPO nor any of its members has a

direct interest in the outcome of this case, IPO and its

members have a substantial interest in the problem this

case presents: the lack of certainty in the law on non-

literal patent infringement. IPO’s members, as patent

owners and assignees themselves, and as participants

in technologically competitive industries, frequently must

determine the scope of protected patent rights—both

their own and others—as they make decisions about de-

veloping and protecting new technologies. Unfortunately,

modern application of the doctrine of equivalents has

made this determination an unduly hazardous enterprise.

Consequently, IPO members are unable to predict with

any reasonable degree of certainty the potential legal sig-

nificance of technological innovations or improvements or

the risk of liability associated with developing new

products.

IPO does not believe that the proper judicial re-

sponse to the problems that modern patent law has

spawned lies in abandoning the equivalents doctrine

wholesale. Indeed, this course of action is foreclosed by

Congress’s ratification of the longstanding doctrine when,

in 1952, Congress reenacted without change the law of

infringement. IPO, however, believes that the doctrine

needs to be returned to its original roots as a means of

protecting the rights of patentees by condemning insub-

stantial deviations from the patent claims. IPO also be-

lieves that consistency in the application of the doctrine—

and the legal and economic certainty such consistency

provides—can be achieved only if the doctrine is once

again employed as a part of patent claim construction

by the courts, based on objective factors such as the

1 Pursuant to Rule 37.3 of the Rules of this Court, letters of

consent to the filing of this brief have been filed with the Clerk

of the Court.

INTRODUCTION AND SUMMARY OF ARGUMENT

Section 271(a) of Title 35 defiues infringement as the

unauthorized making, using or selling of “any patented

invention.” 35 U.S.C. § 271(a), as amended by Act of

Dec. 8, 1994. IPO disagrees with the suggestion, made

by petitioner in its petition for a writ of certiorari

(“Pet.”), that the doctrine of equivalents is an “extra

statutory” “second cause of action for infringement”

(Pet. 28, 17) that is “inconsistent not only with the

text of the Patent Act but with well-established statu-

tory policy as well.” Jd. at 22. To the contrary, the

doctrine is a longstanding and congressionally accepted

method of determining whether an accused infringer is in

fact making, using or selling a “patented invention.”

The doctrine of equivalents developed in conjunction

with the statutory requirement that patents include claims

that particularly point out and distinctly claim the subject

matter of the invention and is entirely consistent with this

“claiming” requirement. As developed by this Court, the

doctrine fully protects patent claims, but prohibits expan-

sion of the scope of the patented invention. When Con-

gress added § 271(a)’s proscription of infringement in the

1952 Patent Act, it left this century-old doctrine and its

role in determining direct infringement completely un-

4

Indeed, Congress evinced its awareness and endorse-

ment of the doctrine in § 112 of the 1952 Patent Act.

In that provision, Congress authorized the granting of

patent claims that recite an element in a combination as

an unspecified “means or step” for performing a function,

without any recital of the structure, material or acts that

support those means or steps. 35 U.S.C. § 112, 4 6.

Overruling this Court’s decision in Halliburton Oil Well

Cementing Co. v. Walker, 329 U.S. 1 (1946), that such

claims were impermissibly vague, Congress provided that

a claim employing such open-ended language “shall be

construed to cover the corresponding structure, material,

or acts described in the specification and equivalents

thereof.” 35 U.S.C. § 112, 46 (emphasis added). Con-

gress thus expressly recognized that “equivalence” is a

proper part of construing claim language. It would be

improper to hold that Congress endorsed the doctrine of

equivalents for the construction of facially vague claim

language, yet (without a single indication that it was

doing so) eliminated the doctrine’s century long role in

construing all other claims.

IPO does agree with petitioner, however, that modern

application of this longstanding doctrine has engendered

uncertainty that undermines the congressional and consti-

tutional purposes underlying the patent laws. The solu-

tion to these problems lies not in abandoning the doctrine,

however, but in making its application, both substan-

tively and procedurally, more certain. Substantively,

the doctrine’s historical origins as a measure of the

protected rights of the patentee make clear that deter-

minations of equivalence should be governed by the

same objective considerations that govern claim construc-

tion. Thus, the determination of whether a variation from

the literal requirements of a claim is substantial or in-

substantial must be made with the understanding of one

of ordinary skill in the relevant art in light of the breadth

and clarity of the claim language, the specification, the

patent prosecution history, the prior art (and the patent's

5

status within it), and the obviousness of substituting the

accused element for that recited in the claim. Proce-

durally, like the question of claim construction itself,

the determination of equivalence ordinarily should be

made by a court, not by a jury.

In order to bring the same level of certainty to deter-

minations of equivalence that inheres in any “literal”

infringement analysis, subjective factors that do not bear

on the scope of the invention itself, such as the motiva-

tion of an accused infringer, should play no role. Only

by excluding subjective factors can both patent holders

and inventors seeking to avoid infringement determine

how to proceed based on readily available, objective in-

formation. Such a rule is also consistent with the histori-

cal development of the doctrine of equivalents as a mode

of claim construction, rather than an equitable remedy.

Thus, while intent may be a relevant consideration in as-

sessing the proper level of damages, it is irrelevant to a

determination of liability.

ARGUMENT

I. A PATENT IS INFRINGED WITHIN THE MEAN-

ING OF 35 U.S.C. §271 WHEN A PARTY “MAKES,

USES OR SELLS” A DEVICE OR METHOD THAT

DOES NOT DIFFER FROM THE PATENTED IN-

VENTION IN ANY SUBSTANTIAL WAY.

Petitioner suggests in its petition that the doctrine of

equivalents is an “extra statutory” “second cause of action

for infringement.” Pet. 28, 17. First added to the patent

laws in 1952, and subsequently amended in 1994,

§ 271(a) defines infringement as follows:

Except as otherwise provided in this title, whoever

without authority makes, uses, offers to sell, or sells

any patented invention, within the United States or

imports into the United States any patented inven-

tion during the term of the patent therefor, infringes

the patent.

6

35 U.S.C. § 271(a). The statute does not, by its express

terms, proscribe only “literal” infringement, nor does it

prohibit merely the infringement of “patent claims.” In-

deed, as the majority below noted (Pet. 22), § 271(a)

does not mention patent “claims” at all. Similarly, the

statute does not, by its terms, foreclose infringement by

equivalents, despite the fact that the doctrine was well

established prior to 1952.

In asserting that infringement by equivalents never-

theless falls outside the prohibition of § 271(a), peti-

tioner relies on the statutory requirements that each patent

application include a “specification” (35 U.S.C. $111),

and that each such specification “conclude with one or

more claims particularly pointing out and distinctly claim-

ing the subject matter which the applicant regards as his

invention.” 35 U.S.C. § 112, €2. Because the claims

define the “patented invention,” petitioner suggests that

infringement occurs only where the unauthorized manu-

facture, use, or sale of a “patented invention” satisfies

the literal requirements of the claims. Thus, petitioner

argues, the doctrine of equivalents provides protection

“for more than is set forth in the claims.” Pet. 22.

The suggestion that the doctrine of equivalents is in-

consistent with the “claiming requirement” of § 112 is

historically inaccurate, and rests on the mistaken assump-

tion that patent claims always have clear and unequivoca!

“literal” meanings that the doctrine is used to “expand.”

Inventions often involve complex technical concepts that

typically “exist[] most importantly as a tangible structure

or a sevies of drawings,” (Autogiro Co. of Am. v. United

States, 384 F.2d 391, 397 (Ct. Cl. 1967), cert. denied,

434 U.S. 1051 (1978)), and the claims that attempt to

capture these concepts are drafted against a backdrop of

prior art in the field of technology to which they relate.

As a result, the meaning and scope of patent claims is

derived through a process of claim “construction” not

dissimilar to judicial construction of statutes, and indeed

7

“the inability of words to achieve precision is . . . more

acute with claims” than it is with statutes. Jd. at 398.

Given the often unavoidable ambiguity of claim lan-

guage, the necessity of construing claims has existed since

Congress introduced the requirement of patent claims in

1836. The doctrine of equivalents, which has the same

historical lineage, developed as part of this process of

claim construction and, properly understood and applied,

relies on essentially the same interpretive tools that are

employed in determining literal infringement. It is clear

that in the 1952 Patent Act passed a century later, Con-

gress left the doctrine of equivalents, and its essential

roie in construing patent claims, undisturbed.

A. The Doctrine Of Equivalents Developed In Conjunc-

tion With The Statutory Claiming Requirement As

An Aid Te Construing The Scope And Meaning Of

Patent Claims.

More often than not, a defendant in a patent infringe-

ment suit will point to some difference between its method

or device and the patent claims and the question will

arise: “is that difference substantial?” The doctrine of

equivalents is nothing more or less than the tool devel-

oped by the judiciary to answer this basic question.

Cognizant of the limits of verbalism (particularly in the

area of scientific endeavor), this Court developed the

doctrine “to benefit the inventor’s genius and not the

scrivener’s talents” (Autogiro, 384 F.2d at 399), and

thereby to prevent the elevation of form over substance.

The doctrine is thus predicated on the recognition “ ‘that

the substantial equivalent of a thing, in the sense of the

patent law, is the same as the thing itself.’” Sanitary

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

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

(1877)).

Consistent with these intellectual underpinnings, the

doctrine developed not as an equitable remedy that al-

lowed courts to reform or amend patent claims, but

8

rather as a way of construing claims to determine their

proper scope and meaning. Beginning with its first recog-

nition of the doctrine in the 1853 decision of Winans v.

Denmead, 56 U.S. (15 How.) 330 (1853), this Court

has viewed equivalence as a determination of whether a

“claim . . . can fairly be construed” as encompassing a

particular accused element or process. Jd. at 341. The

doctrine is thus an aid in determining “the fair meaning

of [the claim’s] language when taken in connection with

the whole specification,” and a finding of equivalence re-

flects the determination that “[a] literal construction is

not to be adopted [because] it would be repugnant to

the manifest sense and reason of the instrument.” The

Corn-Planter Patent, 90 U.S. (23 Wall.) 181, 221

(1874); see also Hobbs v. Beach, 180 U.S. 383, 400

(1901) (“another construction, which would limit these

words to the exact mechanism described in the patent,

would be so obviously unjust that no court could be ex-

pected to adopt it”).

From the time of the Winans decision until the pas-

sage of the 1952 Patent Act, this Court repeatedly ap-

plied the doctrine, both to uphold and reject claims of

infringement.” The suggestion that this Court adopted the

2 See, e.g., Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,

339 U.S. 605 (1950) ; Schriber-Schroth Co. v. Cleveland Trust Co.,

311 U.S. 211 (1940); Keystone Driller Co. vy. Northwest Eng’g

Corp., 294 U.S. 42 (19385); Sanitary Refrigerator Co. v. Winters,

280 U.S. 30 (1929); Singer Mfg. Co. v. Cramer, 192 U.S. 265

(1904) ; Coupe v. Royer, 155 U.S. 565 (1895); Belding Mfg. Co. v.

Challenge Corn Planter Co., 152 U.S. 100 (1894) ; Royer v. Schultz

Belting Co., 185 U.S. 319 (1890); Duff v. Sterling Pump Co., 107

U.S. 636 (1882) ; Imhaeuser v. Buerk, 101 U.S. 647 (1879) ; Machine

Co. Vv. Murphy, 97 U.S. 120, 125 (1877) ; Ives v. Hamilton, 92 U.S.

426 (1875); Sewell v. Jones, 91 U.S. 171 (1875); Roberts v. Ryer,

91 U.S. 150 (1875); The Corn-Planter Patent, 90 U.S. (23 Wall.)

181 (1874); Gill v. Wells, 89 U.S. (22 Wal.) 1 (1874); Gould v.

Rees, 82 U.S. (15 Wall.) 187 (1872); Seymour v. Osbourne, 78

U.S. (11 Wall.) 516 (1870); Tyler v. Boston, 74 U.S. (7 Wall.)

327, 330-31 (1868) ; Case v. Brown, 69 U.S. (2 Wall.) 320 (1864) ;

9

doctrine prior to the enactment of a statutory claiming re-

quirement (Pet. 27), and then thoughtlessly perpetuated

the doctrine despite a fundamental change in the statutory

regime governing patent drafting, is historically inaccu-

rate." The requirement that patents include claims that

specify the scope of an invention dates not from the

Patent Act of 1870, but, as this Court long ago recog-

nized, from language first added to the patent statute in

1836. “[S]ince the act of 1836, the patent laws require

that an applicant for a patent shall not only, by a specifi-

cation in writing, fully explain his invention, but that he

‘shall particularly specify and point out . . . his own in-

vention or discovery.’ Keystone Bridge Co. v. Phoenix

Tron Co., 95 U.S. 274, 278 (1877).* The 1870 statute’s

requirement that the inventor “particularly point out and

Burr v. Duryee, 68 U.S. (1 Wall.) 531 (1863); McCormick v.

Talcott, 61 U.S. (20 How.) 402 (1857).

3 In fact, well over 50 years ago this Court was asked to find that

the doctrine of equivalents was “incompatible with the statutory re-

quirements for the grant of a patent.” Exhibit Supply Co. v. Ace

Patents Corp., 315 U.S. 126, 131-82 (1942). The Court specifically

declined to address this contention (id. at 136), and continued to

apply the doctrine. See, e.g., Graver Tank, 339 U.S. 605.

* The 1836 Patent Act stated, in relevant part:

[A]ny person or persons having discovered or invented .. .

any new and useful improvement . . . may make application

in writing to the Commissioner of Patents. ... But before

any inventor shall receive a patent for any such new invention

or discovery, he shall deliver a written description of his

invention or discovery ... in such full, clear, and exact terms,

avoiding unnecessary prolixity, as to enable any person skilled

in the art or science to which it appertains . . . to make, con-

struct, compound, and use the same; and in case of any ma-

chine, he shall fully explain the principle and the several modes

in which he has contemplated the application of that prin-

ciple . . .; and shall particularly specify and point out the

part, improvement, or combination, which he claims as his

own invention or discovery.

Patent Act of July 4, 1836, ch. 356, § 6, 5 Stat. 117, 119 (1836)

(emphasis added).

10

distinctly claim the part, improvement, or combination

which he claims as his invention or discovery,” Act of

July 8, 1870, ch. 230, § 26, 16 Stat. 198, 201 (1870),

is essentially the same as the requirement set forth in its

1836 predecessor.” See John W. Schlicher, Patent Law:

Legal and Economic Principles § 7.04[5], at 7-44 (1995)

(“After 1870, the form of patent claims did not change

dramatically.”). The modern claiming requirement is con-

sistent with both the 1836 and 1870 statutes: “The spe-

ification shall conclude with one or more claims particu-

larly pointing out and distinctly claiming the subject mat-

ter which the applicant regards as his invention.” 35

U.S.C. § 112.

Thus, as propounded by this Court, the doctrine of

equivalents has always co-existed with the requirement

that patents include claims that specify the scope of an

invention, and has developed as an integral aspect in con-

struing the scope and meaning of such claims.’ Prior to

5 Additionally, there is no support in the legislative history of

the 1870 statute for petitioner’s suggestion that Congress funda-

mentally changed the U.S. patent law from a “central claiming”

system to a “peripheral claiming” system. Pet. 27 n.25. During

House debates on the 1870 bill, which was reported from the Com-

mittee on Patents, a Committee member stated:

The propositions submitted by the committee are few,

clear, definite, and precise in their language. .. .

The committee have also considered the effect of the pro-

posed revision upon all existing legal rights, and... they

have carefully preserved every existing right. ... That is

the principle by which the committee has been governed in

offering amendments to the bill and also in considering the

report of the commissioners of revision. Their object has

been, not to disturb any existing rights or to take away any

remedies, but to enlarge the remedies in every case where

they could do so consistently with the principle of the law.

Cong. Globe, 41st Cong., 2d Sess. 2854 (1870).

*Of course, in some cases claim language is so clear and un-

ambiguous that it forecloses infringement by equivalents. See,

e.g., Keystone Bridge, 95 U.S. 274; White v. Dunbar, 119 U.S. 47

(1886). While both decisions are frequently cited by those seeking

11

the 1952 Patent Act, infringement by equivalents was an

established and well developed basis of patent infringe-

ment supported by a substantial body of case law. It is

indisputably clear that Congress did not in any way dis-

turb this well-settled doctrine when, in 1952, it made the

ministerial change in the patent laws that added § 271 (a).

B. The 1952 Patent Act Made No Change In The Law

Of Infringement And Left The Doctrine Of Equiva-

lents Intact.

Section 271(a) of Title 35 U.S.C. was first added to

the statute by the Patent Act of 1952, ch. 950, 66 Stat.

811. In adding this provision, Congress did not elim-

inate, narrow or otherwise change the doctrine of equiva-

lents or in any way disapprove the longstanding principle

it reflects—that, properly construed, patents encompass

devices or methods that differ from the claims in only in-

substantial ways. To the contrary, as this Court noted in

Aro Mfg. Co. vy. Convertible Top Replacement Co., 365

U.S. 336 (1961), section 271(a) “left intact the entire

body of case law on direct infringement” (id. at 342) and

in fact was nothing more than a “ ‘declaratory’ ” provision

“adopted ‘for completeness.”” Jd. at 342 n.8 (quoting

the reviser’s notes, 35 U.S.C.A., following § 271, and

Federico, Commentary on the New Patent Act, 35

U.S.C.A., preceding § 1, at p. 51).” Justice Black, a

dissenter in Graver Tank, agreed, stating:

to cast doubt on the doctrine (see Pet. 24; Brief for United States

as Amicus Curiae, Standard Indus. vy. Tigrett Indus., No. 445 (Oc-

tober Term 1969) 8, 10, 21 (cited in Pet. 18)), it was the clarity of

the claim language, and not any renunciation or disparagement of

the doctrine of equivalents, that accounts for the decisions. Indeed,

the author of both decisions, Justice Bradley, applied the doctrine in

cases subsequent to Keystone Bridge. See Water-Meter Co. Vv.

Desper, 101 U.S. 332, 337 (1879) (“We can only decide whether any

part omitted by an alleged infringer is supplied by some other device

or instrumentality which is its equivalent. We think no such

equivalent is supplied in this case.”’).

’ The Court referred to “direct” infringement only to distinguish

it from “contributory” infringement, which was also at issue in

the law in any way or

laws?’ Senator McCarran, Chniatson of the Teciciory

Committee which had been in charge of the bill for

the Senate, replied, ‘It codifies the present patent

laws.”

Aro Mfe., 365 U.S. at 347 n.2 (Black, J., concurring)

(quoting 98 Cong. Rec. 9323 (July 4, 1952)).

The Senate Report accompanying the bill explained

that the 1952 Act made only two “major” changes in the

patent laws—‘“incorporating a requirement for invention

in § 103 and the judicial doctrine of contributory infringe-

ment in § 271.” S. Rep. No. 1979, 82d Cong., 2d

Sess. (1952), reprinted in 1952 US.C.C.A.N. 2394,

2397. Contemporary analyses agreed with this Court

that the 1952 Act, including §271(a), worked no

change in the law of infringement. See, e.g., Giles S.

Rich, Infringement Under Section 271 of the Patent Act

of 1952, 35 J. Pat. Off. Soc’y 476, 491 (July 1953)

(§$ 271(a) “is present only for the sake of completeness.

We got along without it for 162 years and we could

again”); Dean O. S. Colclough, A New Patent Act—But

the Same Basic Problem, 35 J. Pat. Off. Soc’y 501, 508

(July 1953) (“from a careful reading of the 1952 Act.

[it may be said] that Congress has not changed the law

basically”). It is simply inconceivable that, without men-

tioning that it was doing so, Congress swept aside a

century of this Court’s decisions defining infringement by

Fe

HL

¢

i

the case. See Aro Mfg., 365 U.S. at 341-42; see also Giles 8. Rich,

Infringement Under Section 271 of the Patent Act of 1952, 35

J. Pat. Off. Soc’y 476, 491 (July 1953) (§271(a) “defines direct

infringement”); cf. 35 U.S.C. §271(d) (patent holder entitled to

relief for “infringement or contributory infringement” ).

13

equivalents. See Midlantic Nat'l Bank v. New Jersey

Dept. of Envtl. Protection, 474 U.S. 494, 501 (1986)

(“The normal rule of statutory construction is that if

merely colorable but not substantial ways.

Nor can such a fundamental change in the law of

infringement be derived from the fact that Congress added

the concept of equivalents to § 112 as a basis for sus-

taining previously unsustainable “means” claims—i.e.,

those that simply state “means for performing” a specified

function.” In fact, if § 112 proves anything, it is that

Congress was aware of, and endorsed, the doctrine of

equivalents. Section 112, 4 6 provides:

An element in a claim for a combination may be

expressed as a means or step for performing a speci-

fied function without the recital of structure, material,

or acts in support thereof, and such claim shall be

construed to cover the corresponding structure, ma-

terial, or acts described in the specification and equiv-

alents thereof.

35 U.S.C. § 112, 46 (emphasis added). The purpose

of this provision was to restore to patent holders the ability

to use broad “means plus function” language in their

claims, which this Court had condemned as unduly vague

in Halliburton Oil Well Cementing Co. v. Walker, 329

If, as some suggest, the doctrine was controversial at the time

of the 1952 Act (see Pet. App. 102a n.9 (Nies, J., dissenting)

(quoting Department of Justice statement during House hearings

on the legislation) ), it is all the more implausible that Congress

resolved the controversy without uttering a single word on the

subject.

* Cf. Pet. 14; Pet. App. 102a-103a.

14

U.S. 1 (1946). In so doing, Congress did not cabin

the doctrine of equivalents to this single category of pre-

viously impermissible patent claims. Rather, it extended

the doctrine’s application to an entirely new area. Before

§ 112, € 6, the doctrine had been used only to determine

whether an accused device or process was equivalent to

claim elements, in order to save open-ended claim lan-

guage from undue vagueness, § 112, 46 extended the

doctrine to a determination of whether an accused device

or process was equivalent not to a claim element,

but to the “structure, material, or acts described in the

specification.”

This statutory provision thus demonstrates that Con-

gress was well aware of the doctrine of equivalents and

its role in construing claim language, and adapted the

doctrine to a new purpose: salvaging vague claim language

by extending the consideration of equivalents to acts or

devices disclosed in specifications. There simply is no

basis for concluding that, by affording this new protection

to patentees, Congress sub silentio stripped inventors of

protection against the appropriation of their inventions

through insubstantial changes. A contrary conclusion,

moreover, would lead to the perverse result that patentees

who employ the vaguest claim language would be afforded

the benefits of the doctrine of equivalents, while those

who attempt particularly to point out and distinctly to

claim their inventions (as well as those who employ

% Patent Law Codification and Revision: Hearings on H.R. 3760

Before Subcomm. No. 8 of the Comm. on the Judiciary, 82d Cong.,

Ist Sess. 45 (1951) (Report of the Laws and Rules Comm. of the

American Patent Law Ass’n on H.R. 3780, 82d Cong.) (“[s)ection

112 in the last paragraph recognizes the validity of combination

claims wherein the novelty is expressed in functional terms and

.. . Offset{s] the much criticized theory of the Halliburton case’).

See also Clarence B. Des Jardins, The Year 1952 and the Patent

and Trade-Mark Law, 35 J. Pat. Off. Soc’y 517, 529 (July 1953)

($112 “is a statutory overruling of the Halliburton case’’).

15

single element claims) are deprived of the doctrine’s bene-

fits. Such a result cannot be sustained in the absence of

any evidence that Congress intended it.

Finally, advocates for the abolition of the doctrine of

equivalents argue that it defeats the notice purposes of

the claiming requirement. The short answer is that this

policy argument provides no basis for eliminating a judi-

cial construction of a statute that Congress left undis-

turbed in both 1952 and 42 years later when it amended

§271(a)."" See Square D. Co. v. Niagara Frontier

Tariff Bureau, Inc., 476 U.S. 409, 419, 421-22 (1986)

(upholding “continued viability” of prior case law that

“represents a longstanding statutory construction that

Congres has consistently refused to disturb, even when

revisiting this specific area of law”). The more complete

answer, discussed below, is that it is not the doctrine of

equivalents itself, but its modern application by juries, that

has undermined the goal of providing notice to the world

of where the boundaries of patents lie. This is a problem

this Court can and should address, by confining the doc-

trine to its original purpose.

Il. THE SCOPE OF AN INVENTION SHOULD BE

DETERMINED BY THE SAME OBJECTIVE FAC-

TORS USED TO CONSTRUE CLAIMS IN ANY

LITERAL INFRINGEMENT ANALYSIS.

The doctrine of equivalents, borne from the necessity

to provide full protection to inventors, has not been

applied in a clear and consistent manner. In large measure

this confusion has arisen because lower courts have de-

parted from this Court’s carefully drawn standards for

'! The 1994 amendment added the following language to § 271 (a):

“Except as otherwise provided in this title, whoever without au-

thority makes, uses, offers to sell, or sells any patented invention,

within the United States or imports into the United States any

patented invention during the term of the patent therefor, infringes

the patent.” 35 U.S.C. § 27la (emphases added).

16

determining equivalence and substituted a simple incanta-

tion of “function-way-result.”. The majority below cor-

rectly rejected the function-way-result test as the only

proper determinant of equivalence, and properly identi-

fied “substantiality” as the appropriate focus. The majority

erred, however, in not tying the determination of sub-

stantiality to the factors that governed such judgments

prior to 1952. These factors, all of which must be viewed

from the perspective of one of ordinary skill in the

relevant art, are the clarity and breadth of the claim

language, the specification, the patent prosecution history,

the prior art, and the obviousness of the substitution. The

majority below further erred in vesting responsibility for

such determinations with juries, rather than courts. Under

the proper test, it is clear that the judgment below must

be reversed.

A. Undue Reliance On, And A Wooden Application Of,

The Function-Way-Result Test Has Led To Unpre-

dictable Results.

In its oft-cited decision in Graver Tank, this Court

upheld a finding of equivalence based on “the disclosures

of the prior art,” the fact that “[s]pecialists . . . under-

stood that manganese was equivalent to and could be

substituted for magnesium in the composition of the

patented” process, and the testimony of experts in the

field that, “‘in the sense of the patent’ manganese could

be included” within the scope of the patent’s terms. 339

U.S. at 611-12 (citation omitted). In the years following

this decision, however, this careful consideration of such

factors was ignored in favor of the Court’s pithy recita-

tion of the so-called “function-way-result” test. Used as

a shorthand in Graver Tank, the test took on a life of its

own, but has proved to be largely inadequate as a method-

ology for determining the scope of an invention. For

example, as Judge Lourie pointed out in his dissent be-

low, “one normally knows why each electronic or me-

chanical element is present in a product and what it does.”

Pet. App. 74a (Lourie, J., dissenting). By contrast:

17

New chemical compounds differ structurally from old

compounds (that is what makes them new) and yet

they may perform the same function (have the same

use), provide the same result, and do so in the same

way. The fact that they do so in the same way does

not make them substantially the same in the way they

are defined, i.e., by structure.

ld. at 73a. Judge Lourie’s illustration indicates that the

function-way-result test has been overextended as applied

beyond simple mechanical or electrical structures and

processes,”

In fact, the function-way-result test, something of an

anachronism in a modern era of highly technical, complex

invention, was never intended to serve as a talisman for

equivalence determinations. As Judge Learned Hand once

observed: “The usual ritual, which is so often repeated

and which has so little meaning, that the same result must

follow by substantially the same means, does not help

much in application; it is no more than a way of stating

the problem.” Claude Neon Lights, Inc. v. E. Machlett

& Son, 36 F.2d 574, 576 (2d Cir. 1929), cert. denied,

281 U.S. 741 (1930). Movement away from the reflexive

and wooden application of this test, which has led to

unpredictable results, is the first step toward bringing

much needed certainty to the law of infringement. As

one commentator has stated in comparing the analyses

for obviousness and equivalence: “The current obvious-

ness analysis based on objective criteria provides judicial

opinions properly based on relevant facts. The doctrine

of equivalents should likewise consistently require analy-

sis of objective facts . . . to avoid the uncertainty presently

2 One commentator opined that Justice Black’s dissent in Graver

Tank, which predicted that manufacturers would not be able to

rely on claim language, “seem[ed] less foreboding, at least in

respect to mechanical and electrical cases.” Arthur H. Swanson,

A Discussion of the Application of the Doctrine of Equivalents in

the Graver v. Linde Case, 383 J. Pat. Off. Soc’y 19, 29 (Jan. 1951).

18

surrounding its application.” Stephen G. Kalinchack, Ob-

viousness and the Doctrine of Equivalents in Patent Law:

Striving for Objective Criteria, 43 Cath. U. L. Rev. 577,

606 (1994).

The majority below seemingly took this first step by

declaring that function-way-result is not “the” test of

equivalence (Pet. App. 9a), and that the ultimate deter-

minant must be the substantiality of the differences be-

tween the accused device or method and the literal terms

of the patent claims. Jd. at 7a-9a. Indeed, the majority

explained that “the vantage point of one of ordinary skill

in the art provides the proper perspective for assessing the

substantiality of the differences.” Jd. at 10a. Inexplicably,

however, the majority upheld a jury verdict of infringe-

ment in which, as it candidly acknowledged, “the only

available evidence going to the substantiality of the differ-

ences” was “evidence of function, way, result,” and in

which the jury received no further guidance for determin-

ing whether a person of skill in the art would deem the

difference between pH values of 5.0 and 6.0 substantial.

Plainly, competitors cannot reasonably or predictably

determine the scope of protected patent rights when such

rights are ultimately based on a lay jury’s unguided assess-

ment of whether there is “ ‘a nickel’s worth of difference’ ”

between an accused device or process and the literal terms

of a patent claim. Pet. App. 2la n.3 (quoting respond-

ent’s closing argument as evidence that the jury was

“properly focused . . . in applying the doctrine of equiv-

alents”). Rather, competitors and patentees can only

make reasoned business judgments if the objective con-

siderations that previously governed the doctrine of equiv-

alents, and continue today to govern claim construction

generally (see Markman v. Westview Instruments, Inc.,

52 F.3d 967, 979-81 (Fed. Cir.) (listing factors), cert.

granted, 116 S. Ct. 40 (Sept. 27, 1995) (argued Jan.

8, 1996), are once again consistently employed. Under

such an objective regime as determined by a court,

19

in addition to interpreting the patent claims and specifica-

tion with the understanding of one of ordinary skill in

the art, consideration would be given to the prosecution

history, prior art, and the existence of obvious substitutes.

Once an invention’s scope is defined based on these objec-

tive criteria, a factual comparison of the accused device to

the patented device will determine the existence of in-

fringement by equivalents.

B. A Determination Of Equivalence Should Be Based

On (i) The Clarity And Breadth Of The Claim

Language; (2) The Prosecution History; (3) The

Prior Art And The Invention’s Status Within That

Art; And (4) The Existence Of Obvious Substitutes.

1. Clarity and breadth of the claim language should

be a significant guide to determining equivalence.

As with statutes, the process of claim construction must

begin with the language of the claims itself. The analogy

of statutory construction, however, must be tempered by

the recognition that claims are drafted by and for inven-

tors and must speak not to judges or the public at large,

but to those of skill in the relevant field of art. “The

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.” Auto-

giro, 384 F.2d at 396.

With its decision in Winans, this Court recognized the

basic principle of claim construction that a patentee may

use language so precise and unambiguous to “restrict

his claim as to cover less than what he invented, or [to]

limit it to one particular form . . ., excluding all other

use language so precise and unambiguous to “restrict

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

341 (1853). Since Winans, the Court also has acknowl-

edged that, by claiming a combination of elements or

parts, the patentee may render each such element or part

material, and a court therefore “cannot declare that any

one of these elements is immaterial.” Water-Meter Co. v.

20

Desper, 101 U.S. 332, 337 (1879). Similarly this Court

has held that where inventors claim as their invention a

process, the patent “is not and cannot be on the result,—

and the scope of their right is limited to the means they

have devised and described as constituting the process.”

Minerals Separation Ltd. v. Butte & Superior Mining Co.,

250 U.S. 336, 349 (1919).

Here, respondent’s claim recites use of a “‘pH from

approximately 6.0 to 9.0.’” Pet. 5. The question that

arises, therefore, is whether persons of skill in the art

would understand that use of a pH of 5.0 would be an

insubstantial difference from use of a pH of 6.0. The

plain language of the claim does not provide a conclu-

sive answer. The word “approximately” introduces some

flexibility and certainly demonstrates that the inventors

did not exclude all pH values below 6.0. Cf. Keystone

Bridge Co. v. Phoenix Iron Co., 95 U.S. (5 Otto) 274,

275-76 (1877) (“{w]ords cannot show more plainly that

the claim of the inventor does not extend to any other

eye-bars or chords”).

Thus, to resolve the issue, resort must be had to the

prosecution history and prior art, and the extent to which

persons of skill in the art would deem it obvious to

substitute different pH ranges. In this case, these factors

all demonstrate that a “‘pH from approximately 6.0 to

9.0°” (Pet. 5) does not permit the patentees to treat a

PH of 5.0 as equivalent to 6.0.

2. Prosecution history estoppel is a vital public

basis for determining the proper scope of the

invention.

It is necessary in any infringement analysis to consider

the public, written record of what occurred between the

patentee and the PTO. The patentee, when construing

his or her claims, must be estopped from presenting an

interpretation of the scope of the invention that contra-

dicts positions taken before the PTO. This Court has

long found that

21

[a] comparison of the patent as granted with the

application very conclusively establishes the limits

within which the patentee’s claims must be confined.

He is not at liberty now to insist upon a construction

of his patent which will include what he was ex-

pressly required to abandon and disavow as a condi-

tion of the grant.

Sutter v. Robinson, 119 U.S. 530, 541 (1886). See also

Schriber-Schroth Co. v. Cleveland Trust Co., 311 USS.

211, 220-21 (1940); Keystone Driller Co. v. Northwest

Eng’g Corp., 294 U.S. 42, 48-49 (1935); Smith v. Magic

City Kennel Club, Inc., 282 U.S. 784, 799-90 (1931);

Arthur H. Swanson, A Discussion of the Application of

the Doctrine of Equivalents in the Graver v. Linde Case,

33 J. Pat. Off. Soc’y 19, 21-22 (Jan. 1951) (“The Su-

preme Court has . . . ruled repeatedly that claims sur-

rendered by amendment in the Patent Office may not be

recaptured by recourse to the Doctrine of Equivalents.” ).

Here, to overcome the PTO’s rejections, the inventors

affirmatively amended their claims to add the limitation

of a pH range “ ‘from approximately 6.0 to 9.0.’” Pet. 5.

The Federal Circuit concluded that this amendment was

irrelevant, because it was made only to avoid rejection

based on a patent that disclosed a process operating at

PH levels above 9.0. Pet. App. 32a. But, as this Court

has made clear, such an amendment establishes that the

pH range is a material element of the claim and that vari-

ations from the specified range are presumptively substan-

tial. “The applicant having limited his claim by amend-

ment and accepted a patent, brings himself within the rules

that if the claim to a combination be restricted to specified

elements, all must be regarded as material.” Magic City

Kennel Club, 282 U.S. at 790. Accordingly, in this case

the patentee’s conduct before the PTO indicates that varia-

tions from a pH of 6.0 must be deemed to be material in

any determination of equivalence, particularly in view of

the fact that, under the pH scale, a single digit reflects a

22

ten fold difference in the level of acidity. Pet. 4 n.3. Cer-

tainly, a second inventor should be able to rely upon

this history in deciding whether to proceed with a new

process that uses a lower pH level.

3. Prior art limitations restrict the sweep of the

patent claims.

Related to prosecution history estoppel is the limitation

placed on an invention in light of the prior art. The

patentee cannot claim an invention that would have been

unpatentable during the prosecution stage. Thus, an ele-

ment is not equivalent if its substitution in the claim

would invalidate the claim in light of prior art. “ ‘[I]t

is well settled that the claim as allowed must be read and

interpreted with reference to . . . the prior state of the

art, and cannot be so construed as to cover either what

was rejected by the Patent Office or disclosed by prior

devices." Computing Scale Co. of Am. Vv. Automatic

Scale Co., 204 U.S. 609, 617 (1907) (quoting Hubbell

v. United States, 179 U.S. 77, 80 (1900)) (emphasis

added ).*

Similarly, the patent’s status in light of the prior art

is relevant to the breadth of construction of its claims.

See, e.¢., Minerals Separation, 250 U.S. at 345 (as

13 One approach courts have used to conduct a prior art analysis

is to create a

hypothetical patent claim, sufficient in scope to literally cover

the accused product. The pertinent question then becomes

whether that hypothetical claim could have been allowed by

the PTO over the prior art. ...

Viewing the issue in this manner allows use of traditional

patentability rules and permits a more precise analysis than

determining whether an accused product (which has no claim

limitations on which to focus) would have been obvious in

view of the prior art.

Wilson Sporting Goods v. David Geoffrey & Assocs., 904 F.2d 677,

684 (Fed. Cir.), cert. denied, 498 U.S. 992 (1990).

23

“patentees came late into the field” of “fully developed”

prior art, “the scope of their right is limited to the means

they have devised and described”); Continental Paper Bag

Co. Vv. Eastern Paper Bag Co., 210 U.S. 405, 415 (1908)

(“the range of equivalents depends upon and varies with

the degree of invention”); Duff v. Sterling Pump Co., 107

U.S. 636, 639 (1882) (“in view of the state of the art,

the invention must be restricted”); Water-Meter, 101 U.S.

at 336 (“[t]he patent, as it stands, occupies very narrow

ground”); Keystone Bridge, 95 U.S. at 278-79 (a court

“may ... resort to prior use and the general history of

the art. . . to restrain [the patent’s] construction”).

A patentee’s competitors will typically be familiar with

the prior art, and will be able to recognize the breadth

or narrowness of the invention. Judicial recognition of

this factor will thus facilitate competitors’ evaluations of

the boundaries of inventions. Here, while there is no

indication that respondent’s claim would have been in-

valid had it recited a pH of 5.0, it is clear from the

PTO’s repeated rejection of the patent application that

respondent’s invention is a narrow one in a crowded field.

The narrowness of the invention would strengthen a com-

petitor’s view that a pH value of 5.0 is substantially

different from a pH value of “ ‘approximately 6.0’” (Pet.

rs , further militating against a broad construction of the

claims.

4. Obvious substitutes must be included within the

equivalence analysis.

The constellation of infringing equivalents should en-

compass substitutes known to one skilled in the art.

In Winans, the Court concluded that an inventor’s claims

should not be unnecessarily restricted because it is a

“reasonable presumption” that “having a just right to

cover and protect his whole invention, he intended to do

so.” 56 U.S. (15 How.) at 341. Thus, where it would be

24

obvious to a person of ordinary skill to substitute one

material or device for another recited in a claim that com-

bines several known materials or devices, the claim is

properly construed to encompass this merely colorable or

insubstantial difference. Graver Tank & Mfg. Co. V.

Linde Air Prods. Co., 339 U.S. 594, 609 (1950) (“An

important factor is whether persons reasonably skilled in

the art would have known of the interchangeability of

an ingredient not contained in the patent with one that

was.”). See also Clough v. Barker, 106 U.S. 166, 178

(1882); Imhaeuser v. Buerk, 101 U.S. 647, 656 (1879)

(“the substitution of the one for the other cannot be re-

garded as invention” )."*

In this case, use of a pH of 5.0 cannot be considered

a substitution that would have been obvious to one

skilled in the art. One of the co-inventors testified that

the claimed process could work to separate impurities at

pH values as low as 2.0, but that any solution with a

pH below 5.0 would cause “ ‘tremendous foaming prob-

lems.” Pet. App. 62a (Plager, J., dissenting). This

Court’s precedents make clear that the substitution of an

unclaimed material that causes “tremendous problems”

for a claimed substance that does not cause such prob-

lems simply cannot be considered an “obvious” equiva-

lent. See, e.g., Minerals Separation, 250 U.S. at 353

(“It is difficult to see how a process so wasteful and

%*The majority below, citing Sanitary Refrigerator Co. V.

Winters, 280 U.S. 30 (1929), correctly concluded that the range

of infringing elements should not be limited solely to those sub-

stitutes known when the patent issued. Pet. App. 3la. Support

for the notion that equivalent infringement includes equivalents

unknown at the time of the patent has a historical basis. In

Graver Tank, “the Supreme Court recognized an old principle . . .

stated by Robinson in his ‘Treatise on the Law of Patents,’ as

follows: ‘. . . it (the equivalency) must have been known as such

at the date of the patent, or have since become known without the

exercise of inventive skill.’” Arthur H. Swanson, A Discussion

of the Application of the Doctrine of Equivalents in the Graver v.

Linde Case, 33 J. Pat. Off. Soc’y 19, 22 (Jan. 1951) (footnote

omitted) (emphasis added).

25

inefficient as that of the respondent . . . can be other

than substantially different from that of the petitioners.” ).

5. Intent of the infringer is irrelevant to determin-

ing liability.

The above-listed factors provide objectivity and greater

certainty in the determination of patent infringement by

equivalents. As a necessary adjunct, it is important to

eliminate subjective factors from the liability analysis,

specifically the element of intent. The doctrine of equiva-

lents is part of construing claims, and if the claim lan-

guage is to provide notice as to the scope of the invention,

the meaning of the language cannot vary depending upon

the intent of various infringers. A patentee should not face

the possibility of different answers to the question of in-

fringement of liability for different defendants.

Furthermore, there is no statutory basis for the propo-

sition that a patentee’s right to exclude should hinge on the

intent of the infringer. The majority below correctly noted

that “[a] patent owner may exclude others from practicing

the claimed invention, regardless of whether infringers

even know of the patent” (Pet. App. 12a), and that a

defendant may infringe “‘without intending, or even

knowing it; but he is not on that account, the less an

infringer.”” Jd. (quoting Parker v. Hulme, 18 F. Cas.

1138, 1143 (C.C.E.D. Pa. 1849) (No. 10,740))."

Similarly, there is likely to be little difference in intent

between a defendant that intends to copy a patent with

only minor differences and one that intends to design

around the patent—in each case, the dispositive question

will be whether the differences introduced by the defend-

ant are in fact substantial, and not the nature of the

intent that produced them. Thus, as Justice Jackson

sagely observed in an earlier patent case: “The less legal

rights depend on someone’s state of mind, the better.”

‘5 Intent may be relevant, of course, to an assessment of damages

once liability is established. 35 U.S.C. § 284.

26

Mercoid Corp. v. Mid-Continent Inv. Co., 320 U.S. 661,

679-80 (1944) (Jackson, J., dissenting).

* * * a

The use of these objective criteria and the elimination

of intent as a factor in determining liability for infringe-

ment should build more certainty into the law on infringe-

ment while remaining consistent with Congress’s intent

to provide broad protection to patent rights.

C. In A Jury Trial, The Judge Should Determine The

Scope Of The Invention.

As IPO has argued elsewhere, it is the proper role of

the judge to determine claim construction. See Brief

Amicus Curiae of Intellectual Property Owners in Mark-

man Vv. Westview Instruments, Inc., No. 95-26 (U.S.

argued Jan. 8, 1996). The rationale for this approach

derives from the nature of the public right created by

Congress in the patent laws and Congress’s reliance upon

the Patent and Trademark Office to ensure that each

invention complies with the requirements of the patent

laws. See 35 U.S.C. $$ 111, 112, 131; 37 C.F.R. § 1.104

(a). See also Graham v. John Deere Co., 383 US. 1,

18 (1966). Because the patent confers a significant

governmental grant of exclusivity, it is vital that the

metes and bounds of the grant be clear. Moreover, given

the highly structured nature of the patentability decision

made by the PTO as an expert agency, the Federal Cir-

cuit’s analogy in Markman between patent construction

and statutory interpretation is precisely on point. Mark-

man, 52 F.3d at 987. In both situations it is vital that the

scope of the protected right be certain and consistent.

Such consistency is only possible if the issue is decided

by the trial court with de novo review by an appellate

court.

Defining the scope of equivalents is, without question,

part of claim construction. Accordingly, the judge should

27

determine the scope of the invention in a patent infringe-

ment suit based on the doctrine of equivalents. Carving

out this role for the judge is consistent with the Court’s

opinion in Winans, where the respective roles of judge

and jury in a patent infringement case were defined:

On such a trial, two questions arise. The first is,

what is the thing patented; the second, has that thing

been constructed, used, or sold by the defendants.

The first is a question of law, to be determined by

the court, construing the letters-patent, and the de-

scription of the invention and specification of claim

annexed to them. The second is a question of fact,

to be submitted to a jury.

56 U.S. (15 How.) at 338."° See also Coupe v. Royer,

155 U.S, 565, 579 (1895) (following Robinson’s treatise

on patents: “ ‘the court defines the patented invention as

indicated by the language of the claims; the jury judge

whether the invention so defined covers the art or article

employed by the defendant’ ”).

In nevertheless ruling that the doctrine of equivalents

should be applied by juries, the majority below relied

on this Court’s statement in Graver Tank that “ ‘[a] find-

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

14a (quoting Graver Tank, 339 U.S. at 609). But, as

the majority itself acknowledged, a finding of infringe-

ment, whether literal or under the doctrine of equivalents,

is always a question of fact. /d. (citing Winans, 56 U.S.

(15 How.) at 338). This characterization of the ultimate

finding does not dictate that juries must determine the

scope of equivalents, any more than it dictates that, in

cases involving literal infringement, juries must construe

the claims. Winans makes clear that the construction of

patent claims, including the determination of equivalents,

16 However, even if the jury is assigned the task of determining

the scope of the invention, jurors likewise need guidance to promote

certainty and consistency in verdicts. The objective criteria pro-

posed would instruct a jury as well as a judge.

28

is a question of law for the courts, even though a jury

may ultimately make the factual determination that a de-

fendant infringes the properly construed claims. This

Court did not abandon this division of responsibility in

Graver Tank, a case in which both issues were decided

by the trial court.

* * * *

The outcome in this case illustrates that the lack

of objectivity in an infringement analysis often leads to

the wrong result. In particular, the Federal Circuit erred

in failing to give proper consideration to the PTO’s

rejections of respondent’s applications, the materiality of

the amendment respondent incorporated in response to

those rejections, the narrowness of the invention in light

of the amendment and the prior art, and the non-obvious

nature of substituting a pH value of 5.0 in light of the

inventors’ own difficulties in developing the patented

process. This failure to analyze these objective factors

led to the majority’s conclusion that the inventors’ amend-

ment “to avoid the prior art disclosure of a process oper-

ating at a pH higher than 9 does not bar Hilton Davis

from asserting equivalency to Warner-Jenkinson’s process

sometimes operating at a pH below 6.” Pet. App. 32a.

Furthermore, this case reveals the inherent problem

that arises if the issue is left to the unbounded discretion

of the jury based on nothing more than an instruction

that “substantial” deviations from a claim that has not

publicly available factors identified above—claim lan-

guage, prosecution history, and prior

is or does and whether it falls within the claim

by the court. It seems likely that this approach will

29

permit a significantly larger number of patent infringement

issues to be decided on summary judgment and clearly

will enhance certainty in patent law.

For example, in this case there seems to be no dispute

that petitioner does not use a pH above 6.0. Thus, once

the claim is properly construed as limited to a pH range

between 6.0 and 9.0, or as not extending to pH values

there is nothing left for the jury

decide. The jury would only have an issue to decide

was a dispute between the parties concerning

levels petitioner actually uses. In that case the

jury clearly would decide that specific question. But reli-

ance on the jury for that issue in no way undermines

the consistency and clarity that arises from the court's

determination of the precise definition of the claim based

upon the objective and publicly available information cited

above.

:

ee

CONCLUSION

For all the foregoing reasons, the judgment of the

court of appeals should be reversed.

Respectfully submitted,

CARTER G. PHILLIPS *

MARK E. HADDAD

JOSEPH R. GUERRA

ANN K. ADAMS

Smoiey & AUSTIN

1722 Eye Street, N.W.

Washington, D.C. 20006

(202) 736-8000

Counsel for Amicus Curiae

April 11, 1996 * Counsel of Record

APPENDIX

la

APPENDIX

MEMBERS OF BOARD OF DIRECTORS OF

INTELLECTUAL PROPERTY OWNERS *

Marc S. Adler Geoffrey M. Karny

Rohm & Haas Company Genetic Therapy, Inc.

Robert L. Anderson John J. Klocko, III

FMC Corporation E.L. DuPont de Nemours & Co.

Norman L. Balmer Edward T. Lentz

Union Carbide Corporation |§ SmithKline Beecham Corp.

Erwin F. Berrier, Jr. William F. Marsh

General Electric Company Air Products & Chemicals, Inc.

Francine J. Berry Roger L. May

AT&T Ford Motor Company

W. Dexter Brooks Alexander J. McKillop

Mobil Oil Corporation

Robert E. Muir

Caterpillar Inc.

Wallace L. Oliver

Amoco Corporation

Garo A. Partoyan

Mars Incorporated

Harold R. Patton

Medtronic, Inc.

Jacobus C. Rasser

Procter & Gamble

Peter C. Richardson

Pfizer, Inc.

Allen W. Richmond

Phillips Petroleum Company

Melvin J. Scolnick

Pitney Bowes Inc.

three-fourths majority of directors present and voting.

Victor Siber

IBM Corporation

Roger S. Smith

Morgan & Finnegan

Howard C. Stanley

Monsanto

Gary D. Street

Hoechst Marion Roussel