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

Supreme Court brief1997

Ask Donna

What actually matters in this document.

Text

(

No. 95-728 aan

IN THE

Supreme Court of the Gnited States

OCTOBER TERM, 1995

WARNER-JENKINSON COMPANY, INC.,

Petitioner,

HILTON DAVIS CHEMICAL Co.,

Respondent.

On Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

BRIEF OF GATEWAY TECHNOLOGIES, INC.,

AS AMICUS CURIAE IN SUPPORT OF PETITIONER

RICHARD GRANT LYON, Esq.

Counsel of Record

GIBSON, DUNN & CRUTCHER

1717 Main Street

Suite 5400

Dallas, Texas 75201

(214) 698-3100

Attorney for Amicus Curiae

PRESS OF BYRON S. ADAMS, WASHINGTON, D.C. 1-800-347-8208

Statutes and Miscellaneous

TABLE OF AUTHORITIES

35 U.S.C. § 112, 42....ceeeeneereneeeerennernneescnnnneerseees

Cases

— 3S U.S.C. § 251....ccseeeceeeserenceeeernnsesenenssennnssereees

Brenner v. United States, 773 F.2d 306 (Fed.Cir. ; —

aa esciitia iis a cllisiisessepscecnees 9 Fed. B. Civ. P. 4D -n.0enrorevonrererenersorersororsoverers

Graver Tank & Mfg. Co. v. Linde Air Products Fed. R. Civ. P. 50 .....ccecceeceeeeersenenennsensenennrsecers

Co., 339 U.S. GOS (1950) .....csccsccccccccccscres passim

Hilton Davis Chemical Co. v. Warner-Jenkinson

Co., 62 F.3d 1512 (1995) (en banc) ............. passim

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

EES TR 5 EE 7

Lear Siegler, Inc. v. Sealy Mattress Co. of

Michigan, Inc., 873 F.2d. 1422 (Fed. Cir.

ESE AS ey ee 11

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

Tistdhditintididabebndddinanbettichessenerescococecoces 8

Spectra Corp. v. Lutz, 839 F.2d 1579 (Fed.Cir.

SU Aiiidiiniehtindiessineenasiubennieesastenesesecoscecee 11

SUIT niduaibendndesdsnesscewsesseqceenensssesecceveccscccocees 6

Zenith Laboratories, Inc. v. Bristol-Myers Squibb

Co., 19 F.3d 1418 (Fed.Cir.), cert. denied,

U.S. ES ra 2

INTEREST OF AMICUS

Gateway Technologies, Inc., is a privately held company!

that has developed, manufactures, and sells a

telecommunication system that is based upon a patented

invention to the corrections market. As a

telecommunications niche supplier, patent protection and

research and development are crucial to its success. It is

currently involved in patent litigation as both plaintiff and

defendant. Amicus has a keen and immediate interest in the

role of the doctrine of equivalents in patent litigation.2

SUMMARY OF ARGUMENT

This case gives the Court the opportunity to reexamine

completely the applicability and scope of the doctrine of

equivalents. In the more than forty-five years since the

Court’s last explication of the doctrine, in Graver Tank &

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

patent litigation has grown exponentially in volume,

complexity, and importance. Misuse of the doctrine of

equivalents has contributed to this growth. Patentee

plaintiffs have added charges of infringement by

equivalents as a matter of routine, making the doctrine the

"second prong” of virtually any infringement claim. This

expansive use of a judicially created doctrine intended by

this Court strictly as a means to avoid “piracy” and

1 Gateway has no subsidiaries.

2 Gateway has no financial or other direct interest in the

outcome of this case. Consents of the parties to this brief have

been filed with the Clerk.

3 Sen insite Mitetet Os « Cpietines Gn. 62

F.3d 1512, 1537 (Plager, J., dissenting); see also Pet. at 16

n. 16.

mindless formalism has brought consequences that do

violence to a basic principle of the patent system, the

notion that the patent claims define the metes and bounds of

the monopoly grant of a patent.4

The consequences to companies and individuals whose

livelihood depends upon invention are equally obvious and

“designing around" a patent as praiseworthy and a benefit

to society from the disclosure of an invention required to

obtain a patent monopoly. That healthy activity is

jeopardized by the threat of defending a new product

against an infringement claim based upon a general charge

of infringement by equivalents. As demonstrated by the

facts of this case, even the result of independent

development, with no copying at all, can be subject to an

injunction under such an indefinite standard.

It is high time, therefore, that this Court restores the

doctrine to its proper, limited place in patent litigation.

The Federal Circuit felt itself constrained from a

comprehensive reassessment of the doctrine by this Court’s

decision in Graver Tank. Having agreed to review the

Federal Circuit’s decision, this Court can and should

provide that reassessment in light not only of this Court’s

precedent, but also the practicalities of today’s patent

litigation and the policies of the Patent Act.

equivalents may be applied; and (ii) to list the factors that

4 See 35 U.S.C. § 112, 42; Zenith Laboratories, Inc. v.

Bristol-Myers Squibb Co., 19 F.3d 1418, 1430 (Fed.Cir.), cert.

denied, U.S.___ (1994).

to wht count end jury’ choi consider 2 mips

infringement by equivalents in such cases. _ Court

should provide a clear admonition to trial judges strictly to

control the circumstances in which infringement by

equivalence may be found.

STATEMENT OF THE CASE AND

FACTS

The facts underlying the infringement dispute in this

lawsuit are accurately stated in the Petition. Amicus would

emphasize the following facts:

i) Petitioner developed iits filtration process

. independently of Respondent's patent, Respondent's

process, and Respondent’s development activities.

Petitioner began its research in 1982, more than

three years before the patent issued and four years

before it actually became aware of the patent.

There is no evidence that “copying” played any part

in Petitioner’s development or refinement of its

(ii) Petitioner’s process added significant value to the

approximately 6.0" without encountering the

foaming” that appeared to have limited the range

claimed in Respondent’s patent.

(iii) The difference between the pH used in Petitioner’s

process (5.0) was material from that claimed in the

patent (“approximately 6.0 to 9.0"). A change in

one numerical pH value “represents a relative

change in the acidity equal to a factor of 10," and

greater changes are even more substantial since the

pH scale is logarithmic. 62 F.3d at 1580 n.35

(Nies, J., dissenting).

Similarly, we emphasize certain aspects of the prior

proceedings in this litigation:

(i) This case went to the jury only on a claim of

infringement by equivalents. At trial Respondent

disclaimed its original charge of literal

infringement.

(ii) The Court of Appeals felt itself bound by this

Court’s Graver Tank decision. Indeed a dissenting

judge chided the majority for adhering to Graver

Tank rather than giving the doctrine of equivalents

an overhaul for this Court to evaluate. 62 F.3d at

1545 (Plager, J., dissenting).

(iii) All of the judges of the Federal Circuit who

participated in the en banc decision recognized the

need for the doctrine of equivalents against piracy

and the unscrupulous copier. The differences

among the judges went to the factors to be

considered in applying and undertaking an

equivalency analysis, and to whom—judge or

jury—should make the analysis.

(iv) Applying the doctrine of equivalents to a particular

case requires determination of underlying facts.

This was also the unanimous view of the judges of

the Federal Circuit.

ARGUMENT

THE DOCTRINE OF EQUIVALENTS

SHOULD BE LIMITED IN

APPLICATION TO PREVENT

"INVENTION" BY COPYING

The facts involved in Graver Tank support the view that

the doctrine of equivalents was intended to be, and should

be, carefully limited to prevention of “piracy” by an

“unscrupulous copyist"“—a so called “invention” that

consists primarily of manipulation, more of words than of

substance, around the literal scope of a valid patent claim.

At issue in Graver Tank was the trial court’s finding of

infringement by equivalents of Linde’s patent claims

covering an electric welding composition. The patented

invention and the alleged infringing composition were

“alike” in all respects except that the infringing product

used silicates of calcium and manganese rather than silicates

of calcium and magnesium. The patent claimed a flux

“containing a major proportion of alkaline earth metal

silicate.” Manganese is not an alkaline earth metal. 339

U.S. at 610. The trial judge found the two compositions

“substantially identical in operation and in result,” based

upon evidence including:

(1) Expert testimony that manganese and magnesium

were similar in many of their reactions (id. );

(2) Expert testimony that alkaline earth metals are often

found in manganese ores in their natural state that

they serve the same purpose in fluxes (id. at

610-11);

(3) Contemporaneous prior art references that disclosed

use of manganese silicate in welding fluxes (id. at

611);

(4) The fact that "the record contains no evidence of

any kind to show that [the infringing product] was

developed as the result of independent research or

experiments” (id.).

On the basis of these findings, which the Court upheld as

not clearly erroneous, the Court concluded that “it is

difficult to conceive of a case more appropriate for

application of the doctrine of equivalents," and that:

"[w]ithout some explanation or indication

that [the infringing product] was developed

by independent research, the trial court

could properly infer that the accused flux is

the result of imitation rather than

experimentation or invention."

Id. at 612.

Since its origination by the courts’ the doctrine of

equivalents has been intended primarily if not exclusively to

prevent “fraud on a patent." That it has been taken far

beyond this limited purpose is beyond doubt. It has been

used, and was used in this case, to attempt to enlarge a

patent beyond limits specifically demarcated (in this case

numerically) in the applicable patent claim. It has been

used, and was used in this case, to attempt to circumvent

the doctrine of Patent Office or prosecution history

estoppel. It has been used, and was used in this case, to

7 The doctrine in this country dates back at least to this

Court’s decision in Winans v. Denmead, 56 U.S. (15 How.) 330

(1854). Several dissenting judges in the Federal Circuit trace its

genesis back to the English Court of Chancery. See, e.g., 62

F.3d at 1540-41 (Plager, J., dissenting).

enjoin further use of a product that was independently

developed and added material value to the invention

Claimed in the patent. Misuse of the doctrine, as in this

case, undermines the statutory requirement of clear

claiming in patent applications.* Such expansionist use of

this judicially created doctrine has cast uncertainty on the

innovation that is a crucial and necessary part of a

technology in other industries.

The pace of research and development and of the search

for new and better products is not likely to be retarded by

this uncertainty. Success in many marketplaces (certainly

those in which amicus competes) depends upon continual

technological advances and new and better products. What

this uncertainty unquestionably adds, though, is the cost

and risk of many unjustifiable lawsuits. In this case the

Court should make clear the limited applicability of the

doctrine of equivalents to cases in which copying, rather

than independent invention, is the principal issue.

BY DIRECTING A DOCTRINE OF

EQUIVALENTS ANALYSIS TO

SPECIFIC FACTORS DESIGNED TO

DISTINGUISH COPYING FROM

INDEPENDENT DEVELOPMENT,

MANY EQUIVALENTS CASES CAN BE

RESOLVED EXPEDITIOUSLY

In Graver Tank, the Court enunciated what has come to

be known as the triple identity test: “a patentee may invoke

this doctrine to proceed against the producer of a device 'if

it performs substantially the same function in substantially

8 Post-issuance enlargement of claims is prohibited by the

Patent Act, 35 U.S.C. § 251, and forbidden to the courts in

patent litigation. Keystone Bridge Co. v. Phoenix Iron Co., 95

U.S. 274, 278 (1877).

the same way to obtain the same result.'" eae

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

42 (1929). The Court listed the following factors as

relevant to conducting a function-way-result analysis:

(1) ". . . the purpose for which an ingredient is used in

a patent, the qualities is has when combined with the

other ingredients, and the function which it is

intended to perform" (339 U.S. at 609);

(2) Whether persons skilled in the art would have

known of the interchangeability of the ingredient

claimed to be equivalent (id.);

(3) Whether the accused product “was developed as a

result of independent research or experiments” (id.

at 611);

(4) Whether the accused product was “the result of

imitation rather than experimentation or invention"

(id. at 612);

(5) The degree to which the changes differed from those

claimed in the patent (id. ).

The Court of Appeals in this case focused on the first and

last of these factors, which it summarized as “the

icant Oe eee SO Pe ee

accused or ee 3d at .

also Sout a load then, and deemed relevant

evidence of whether the alleged infringer had knowingly

copied the patent in suit. The majority judges, however,

held that evidence of independent development (embodied

in the third and fourth factors listed above) was relevant

only to disprove a patentee’s evidence of copying by the

alleged infringer. The majority also rejected any evidence

of the intent of the alleged infringer. The dissenting judges

would have included both of these as relevant, and would

also have trial courts consider

(6) whether use of the doctrine is prohibited by the

rationale of prosecution history estoppel;

(7) prior art limitations; and

(8) whether the claim of infringement serves to enlarge

the patent claim.

Amicus would add a further factor, by rephrasing a

combination of items (1) and (5): whether the accused

product or process adds utility to the patented invention.

Amicus believes that all of the above factors, and perhaps

others, have their place, both in considering whether the

case is one of those few to which the doctrine of

equivalents may be applied, and, if so, in undertaking the

factual analysis? necessary to determine equivalency.

In many cases in which a patentee asserts infringement by

equivalence, careful control by the trial judge will permit

prompt resolution of these issues and simplification of the

matters ultimately to be determined by the fact finder.

Many factual matters, even in complicated lawsuits

involving complicated subject matter, are subject to

summary resolution by the trial court, "in a patent case as

in any other." Brenner v. United States, 773 F.2d 306,

307 (Fed. Cir. 1985). Amicus believes that many of the

doctrine of equivalents factors listed above will be

susceptible of such resolution in many of the cases in which

equivalency infringement is now asserted.

9 Two aspects of the doctrine of equivalents cited by this

Court in Graver Tank, 339 U.S. at 609, were acknowledged as

correct by all the judges of the Court of Appeals in this case:

——"Equivalence in the patent law, is not the prisoner of the

formula and is not an absolute to be considered in a

vacuum.”

-—"A finding of equivalents is a determination of fact."

—_—_—_—_—_—_— a ee ee. Ae

Trial courts can employ several of these criteria to

determine whether the doctrine is available at all. In our

view there is no place for the doctrine if the record reveals:

(i) significant independent development by the alleged

infringer, or

(ii) significant value added by the ingredient outside the

patent claim but alleged to be equivalent; or

(iii) claim of equivalence as to a matter which could

have been, but was not, claimed in the patent, or

which could not have been claimed in light of the

prior art. !0

Often sufficient evidence of one or more of these items

will be available early in a patent case; indeed (as in this

case), the patent prosecution history may disclose it. More

often, such evidence will be developed during discovery,

and available before trial for resolution by the Court on

summary judgment.

Other criteria relevant to an equivalence

analysis—substantiality of the differences in the two

products, the extent of copying versus designing around,

and the defendant’s intent—are less susceptible of bright

line rules, but may nevertheless be ruled on summarily by

the trial judge, either on a pretrial motion for summary

judgment or a post-verdict motion for judgment as a matter

of law (JMOL) under Fed. R. Civ. P. 50. Merely because

factual determinations are involved does not preclude

summary resolution if there is insufficient evidence to

present the fact finder with a material issue of fact for

determination. For example, the triple identity test is

conjunctive, and lack of evidence on any of its prongs will

10 As noted above, supra, pages 3-4, there was undisputed

evidence of all three of these criteria in this case.

s oes

cause claimed equivalence to fail. There will be situations

where no reasonable juror could find substantial identity. !!

See, e.g., Spectra Corp. v. Lutz, 839 F.2d 1579, 1581-82

(Fed. Cir. 1988). In cases where a factual issue remains

for the jury a carefully crafted jury charge!2 and answers to

special interrogatories (Fed. R. Civ. P. 49) may yield a

factual foundation for a legal conclusion of JMOL.

For four distinct reasons, amicus prefers a summary

judgment standard to the equitable threshold test proposed

by the dissenting judges in the Court of Appeals. See 62

F.3d at 1544-45 (Plager, J., dissenting); 62 F.3d at 1549

(Lourie, J., dissenting). First, summary judgment is the

norm in all civil cases, and no one has advanced a

compelling reason why there should be a special rule, the

equivalent of an equitable writ, just for patent cases.

Second, the threshold test proposed by the dissenters turns,

as they acknowledge, not on traditional equitable

considerations, divorced from the merits of the ultimate

determination of equivalency, but rather on the applicability

of the equivalency criteria themselves. Third, equating the

doctrine to an equitable writ will generate needless

litigation over collateral issues (clean hands, for example)

11 Amicus believes the difference in pH between Petitioner’s

process and Respondent’s patent claim makes that true of this

case.

od The jury charge in this case (quoted at 52 F.3d 1561

(dissenting opinion of Judge Nies)) was conclusionary and

plainly inadequate, really nothing more than a summary

restatement of the triple identity test. A trial judge must fashion

the charge to the relevant circumstances of the particular case to

provide the jury adequate guidance for a substantiality

determination. See Lear Siegler, Inc. v. Sealy Mattress Co. of

Michigan, Inc., 873 F.2d. 1422, 1425-26 (Fed. Cir. 1989) ("a

jury must be separately directed to the proof of each Graver

Tank element").

that are part of traditional equity jurisprudence but usually

irrelevant to a patent suit. Fourth, and most importantly,

the standards of review by a Court of Appeals of a

an equitable writ. The Federal Circuit will be

future cases to adapt these standards to the criteria

enunciated by this Court as appropriate for equivalency

The application of the equivalence criteria to any case

requires careful control by a trial judge. Trial judges have

been accused, even by certain judges of the Federal

Circuit,!3 of translating a dislike of patent cases or a lack

of technical expertise into a predilection to pass off difficult

issues to the jury whenever possible. If this occurs it is

indefensible whatever one’s views of the role of the jury in

patent litigation. Patent litigation has sprouted like the

leaves of the green bay tree. Restricting the doctrine of

equivalents as amicus proposes may not stem this growth,

but it should eliminate one excess that defies the regime

established by Congress for promotion of the useful arts.

Under either an equitable threshold standard or the ordinary

rules for summary judgment, JMOL, and jury charges, the

trial judge must keep the doctrine of equivalents in its

proper, limited place.

13 See, e.g., 62 F.3d at 1538, 1542 (Plager J., dissenting).

CONCLUSION

The Court should limit use of infringement by equivalents

to cases of “invention” by copying, and set out the criteria

for application of the doctrine of equivalents in that limited

class of cases. Under the standards proposed by amicus,

the judgment of the Court of Appeals should be reversed.

April 15, 1996

RICHARD GRANT Lyon, ESQ.