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

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2 FT ED

. MAY 13 1996

No. 95-728 | |

In The Supreme Court

OF THE

United States

CN Rie ee

* ar ‘

OcTOBER TERM 1995

WARNER-JENKINSON COMPANY, INC.,

Petitioner,

vs.

Hilton Davis Chemical Co.,

Respondent.

On Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

BRIEF OF AMICUS CURIAE

OHIO STATE BAR ASSOCIATION

IN SUPPORT OF RESPONDENT

Eugene P. Whetzel,

General Counsel

Counsel of Record

Albert L. Bell, Of Counsel

Ohio State Bar Association

1700 Lake Shore Drive

Columbus, OH 43204

(614) 487-2050

Counsel for Amicus Curiae

Bowne of Cleveland, Inc., Legal-Financial Printers. (216) 621-8384

’

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TABLE OF CONTENTS

„ „, ee errr epee

I. Determining Similarity of an Accused

Device to the Patented Invention Has

Long been a Factual Determination for

P Cree re eee

II. The Markman Rule Does Not Alter

the Manner In Which A Jury

Determines Equivalence of An Accused

Device to A Patented Invention. .....

III. Petitioner and Supporting Amici Fail

to Demonstrate Any Public Policy

Reason for Overturning the Right to

Jury Determination of Infringement

Under the Doctrine of Equivalents. ...

[ee oct dN thes ve eke whens en duke

Page

TABLE OF AUTHORITIES

Cases: Page

Atlantic Works v. Brady, 107 U.S. 192 (1883) ....... 6

General Electric Co. v. Wabash Appliance Corp.,

„„ „ 6

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

Ca., 3399 U.B. GOS ee)) 4, 6, 11

Halliburton Oil Well Cementing Co. v. Walker,

„„ „„ 6

Markman v. Westview Instruments, Inc.,

„„ „„ „„ 8

Odiorne v. Winkley, 18 F. Cas. 581

(C.C.D. Mass. 161: 4

Pennwalt Corporation v. Durand-Wayland, Inc.,

833 F.2d 931 (Fed. Cir. 1987y))))) 4,5

Reutgen v. Kanowrs, 20 F.Cas. 555

(C.C.D. Nh) 4

SRI International y. Matsushita Elec. Corp. of America,

775 F.2d 1107 (Fed. Cir. 1985) (en banc)... ..... 9

Universal Oil Products Co. v. Globe Oil &

Refining Co., 322 U.S. 471 (1944))))ik1w.J cues 6

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

„„ 4, 6, 7, 8, 11

Statutes:

Patent Act of 1836, 5 Stat. 117, 119, 07 5

Patent Act of 1870, 16 Stat. 198, 201, § 26......... 5

bbb „0 5

bbb 5, 6

Other Sources:

R. Lempert, Civil Juries and Complex Cases: Taking Stock

after Twelve Years in VERDICT: ASSESSING THIE CIVIL

Jury SysTeM 181 (R. Litan ed. 1993))0)h)) ) 12

No. 95-728

In The Supreme Court

OF THE

United States

OcToOBER TERM 1995

On Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

BRIEF OF AMICUS CURIAE

OHIO STATE BAR ASSOCIATION

IN SUPPORT OF RESPONDENT

INTEREST OF THE AMICUS CURIAE

The Ohio State Bar Association is an unincorporated

association of more than 25,000 members. Its membership

includes lawyers, judges and associate members. It speaks on

behalf of thousands of practitioners from a wide range of

industrial, urban, and rural areas in a populous state, and on

behalf of the six hundred members of its Intellectual

Property Law Section, many of whom devote their careers

largely to the procurement and enforcement of United

States patents. The Association carefully guards the right to

trial by jury in civil actions, and seeks to defend the use of

this well-tested “common-sense” engine of justice against

encroachments in the name of purported efficiency or

certainty or predictability. This brief is authorized by the

Board of Governors of the Association’s Intellectual Prop-

erty Law Section and by the Board of Governors of the

Association itself. Counsel for Petitioner and Respondent

have consented to the filing of this brief.

The doctrine of equivalents is an important adjunct to

enforcement of the patent laws and should not be abolished.

Other amici (e., the United States, the Intellectual Prop-

erty Owners, the American Intellectual Property Law Asso-

ciation [““AIPLA’’]) have stated well the rationale for the

doctrine, and this Amicus will not add to those statements.

The doctrine of equivalents should not be applied de-

pending on the conduct, motive or intent of the accused

infringer. Other amici have adequately stated the reasons

why this limitation upon use of the doctrine proposed by

dissenters below should be rejected as contrary to the very

concept of uniformity in enforcing patent claims otherwise

sought by Petitioner. This Amicus will not further address

that question.

This Amicus seeks to address only the Petitioner’s chal-

lenge to the submission of the equivalence issue to a jury.

The Federal Circuit determined, following many years of

unbroken precedent, that the question whether an accused

product infringes a patent under the doctrine of equivalents

is a question of fact to be decided by a jury when a jury

demand has been made. Two of the dissenting opinions

suggested that the determination of infringement by equiva-

lence should be removed from jury consideration and given

to the trial court. Dissent by Plager, J., 62 F.3d at 1543;

dissent by Lourie, J., 62 F.3d at 1549. Several amici support

the dissenters on this point. This Amicus urges continuance

of the present role of the jury in equivalents determinations.

SUMMARY OF ARGUMENT

The doctrine of equivalents has long been applied by the

courts of the United States through submission of the

question of similar or equivalent structure to juries. This

well-established practice has continued notwithstanding

many revisions of the patent statutes, showing legislative

recognition of and acquiescence in the doctrine. The princi-

pal cases of this Court clearly characterize equivalence

analysis as a question of fact not of law, to be decided by a

jury when demanded.

The Markman decision does not alter the accepted

practice of submitting to the jury the question of equiva-

lence after the court construes the words of the claims in its

instructions to the jury. The doctrine of equivalents is not a

separate construction of the patent that draws separate

boundaries for the claims. Rather, the doctrine of

equivalents assumes that the accused product or process falls

outside the boundary drawn by the court in construing the

claims, and merely asks the jury to determine whether the

beyond-boundary difference in the accused product or pro-

cess is so insubstantial as to make it equivalent in substance

to the patented invention. This determination is not part of

construing a written instrument, for which judges are

particularly adept, but is a factual determination at which

jurors are presumed to excel.

Neither the facts of this case nor the opinions in the

court below or the briefs submitted to this Court demon-

strate any pattern of substantial injustice or unconscionable

results that would justify altering the long-standing doctrine

of equivalents. However, certain comments made by dissent-

ers below suggest a hostility to the use of juries in complex

cases, a suggestion that should be rejected by this Court as

inimical to the fundamental role of juries in all manner of

civil actions in this country.

ARGUMENT

I. Determining Similarity of an Accused Device to the

Patented Invention Has Long been a Factual Determi-

nation for the Jury.

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

Co., 339 U.S. 605 (1950), is considered to be the definitive

authority for the modern doctrine of equivalents, the con-

cept of putting to the jury the question whether the accused

product is so similar to the patented invention as to infringe

the inventor’s rights has been a part of American patent

jurisprudence virtually from the beginning. This concept

can first be found in a jury charge of Justice Bushrod

Washington, sitting as a Circuit Justice in Reutgen v.

Kanowrs, 20 F. Cas. 555 (C.C.D. Pa. 1804), in which

George Washington’s nephew instructed the jury to deter-

mine whether the defendants were using a machine similar

to the one mentioned in the plaintiff's patent and specifica-

tion. Jd. at 556. Similarly, Justice Story, sitting as Circuit

Justice in Odtorne v. Winkley, 18 F. Cas. 581 (C. C. D. Mass.

1814), charged the jury to consider whether the machines

used by the defendant are substantially, in their principles

and mode of operation, like the plaintiff's machines. Id. at

582. He then defined the material question as not whether

the same elements of motion, or the same component parts

are used, but whether the given effect is produced substan-

tially by the same mode of operation, and the same combi-

nation of powers, in both machines. Id. Many other early

cases requiring findings of similarity or equivalence are cited

in Circuit Judge Newman’s commentary in Pennwalt Corpo-

ration v. Durand-Wayland, Inc., 833 F.2d 931, 957-70

(Fed. Cir. 1987).

The doctrine of equivalents first appeared in a Supreme

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

330, 342-43 (1853). At that time, the existing patent

statute did not formally require distinct claims, but merely

required that the patentee

particularly specify and point out the part, im-

provement, or combination, which he claims as

his own invention or discovery.

Patent Act of 1836, 5 Stat. 117, 119, § 6. Thereafter in the

Patent Act of 1870, 16 Stat. 198, 201, § 26, Congress

amended the critical statutory language to require the

patentee to

particularly point out and distinctly claim the

part, improvement, or combination which he

claims as his invention or discovery.

While the 1870 statute is considered the genesis of the

principle that the metes and bounds of an invention are set

forth in the claims, see, e g., Pennwalt Corp. v. Durand-

Wayland, Inc., supra, 833 F.2d at 959, the previous statute

under which the doctrine originated contained closely simi-

lar language requiring specificity in setting forth the claimed

invention. In comparison, the present statute, 35 U.S.C.

§ 112, provides:

The specification shall conclude with one or

more claims particularly pointing out and dis-

tinctly claiming the subject matter which the

applicant regards as his invention.

Nothing in the text of the present statute suggests that

the role of the jury in determining whether the accused

product is the same as, or insubstantially distinct from, the

claimed invention should differ from the manner in which

juries were used under the previous patent statutes.

More important than § 112 for defining the manner in

which infringement is to be determined is the infringement

statute, § 271, which provides that “whoever without

authority makes, uses, offers to sell or sells any patented

invention . . during the term of the patent therefor,

infringes the patent.” This provision, last amended on

January 1, 1996, does not say “whoever makes, uses or sells

a claimed invention”’ or “whoever practices any claim of

a patent. Nothing in the statute requires that the factual

determination of infringement occur exclusively within the

explicit bounds of a claim,’ even though § 271 has been

amended repeatedly since the Graver Tank decision —

most recently after the Federal Circuit announced its deci-

sion in this case. Congress accepts the manner in which

infringement is determined under the doctrine of

equivalents.

There is thus no reason within the patent statute for this

Court to overrule the holding in Graver Tank that [a

finding of equivalence is a determination of fact,” 339 U.S.

at 609-610, upon which the court below grounded its

decision, 62 F.3d. at 1520.

Amicus AIPLA asserts that the seminal Winans decision

supports its view that the scope of equivalents is a question

of law. To the contrary, Winans held precisely the opposite,

namely, that the lower court erred in taking the question of

infringement away from the jury because even though there

could be no literal infringement of the claims, there was

evidence to show that defendant’s octagonal railcars

achieved substantially the same result as the plaintiff's

patented round railcars by substantially embodying his

mode of operation. 56 U.S. (15 How.) at 343-44. The

Court stated:

In Graver Tank, Petitioners raised the spectre of uncertainty, asserting that if

the doctrine of equivalents were not repudiated, then the claims of the

patent no longer will serve to warn the public of the area closed to it, citing

General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 369 (1938)

and Universal Oil Products Co. v. Globe Oil & Refining Co., 322 U.S. 471,

484-85 (1944), and asserting that businesses will face “fears and apprehen-

sions of concealed liens and unknown liabilities,” citing Atlantic Works v.

Brady, 107 U.S. 192, 200 (1883), and Halliburton Oil Well Cementing Co.

v. Walker, 329 U.S. 1, 12 (1946). Brief of Petitioners on Rehearing at 60.

In deciding the Graver Tank case, this Court made an unequivocal determi-

nation that the need for business certainty is an insufficient reason to

repudiate the doctrine of equivalents. The business-certainty argument has

not changed since then, and the doctrine of stare decisis should dispose of it.

It may safely be assumed, that neither the

patentee nor any other constructor has made, or

will make, a car exactly circular. In practice,

deviations from a true circle will always occur.

How near to a circle, then must a car be, in order

to infringe? May it be slightly elliptical, or other-

wise depart from a true circle, and, if so, how far?

In our judgment, the only answer that can be

given to these questions is, that it must be so near

to a true circle as substantially to embody the

patentee’s mode of operation, and thereby attain

the same kind of result as was reached by his

invention. It is not necessary that the defendant’s

cars should employ the plaintiff's invention to as

good advantage as he employed it, or that the

result should be precisely the same in degree. It

must be the same in kind, and effected by the

employment of his mode of operation in sub-

stance. Whether, in point of fact, the defendant's

cars did copy the plaintiff's invention, in the sense

above explained, is a question for the jury, and the

court below erred in not leaving that question to

them upon the evidence in the case, which tended

to prove the affirmative.

56 U.S. (15 How.) at 343-44 (emphasis added). Amicus

AIPLA seizes upon isolated passages referring to the lav

as somehow supporting its position that the “scope of

equivalents” is a matter of law for the judge. To the

contrary, in these passages, the Court was merely stating its

conclusion, in opposition to that reached by the lower court,

that non-literal infringement could be actionable: that it was

recognized in law. This is made clear by putting these

passages in context:

Where form and substance are inseparable, it is

enough to look at the form only. Where they are

separable; where the whole substance of the in-

vention may be copied in a different form, it is

the duty of courts and juries to look through the

form for the substance of the invention — for

that which entitled the inventor to his patent, and

which the patent was designed to secure; where

that is found, there is an infringement; and it is

not a defence, that it is embodied in a form not

described, and in terms claimed by the patentee.

Patentees sometimes add to their claims an

express declaration to the effect that the claim

extends to the thing patented, however its form

or proportions may be varied. But this is unneces-

sary. The law so interprets the claim without the

addition of these words.

56 U.S. (15 How.) at 343 (emphasis added). Here

again, the Winans Court reserved a role for the jury, not

merely to apply the scope of equivalents as set forth by the

court, but to look to the substance of the patent and make

its own determination of whether the defendant had in-

fringed it, despite the absence of literal infringement.

Il. The Markman Rule Does Not Alter the Manner In

Which A Jury Determines Equivalence of An Accused

Device to A Patented Invention.

This Court held in Markman v. Westview Instruments,

Inc., 116 S.Ct. 1384 (1996), that claim construction is

purely a question of law to be decided by the court. Claims

are construed by the court without reference to the accused

product or process. The court instructs the jury on the

proper construction of the claims. Then the jury determines

whether the accused product or process falls within the

scope of the claims as properly construed. This test of literal

infringement is a factual determination.

Under the Markman rule, the same procedure must occur

in cases asserting infringement by equivalents that is pre-

scribed for cases of literal infringement. The court instructs

the jury as to the proper construction of the claims. Then

the jury determines whether, if the accused product or

process does not fall within the literal scope of the claims,

the difference between the accused product or process is so

insubstantial as to make it equivalent to the patented

invention. This is a finding of fact.

Amicus AIPLA erroneously asserts that the doctrine of

equivalents should encompass a two-step process in which

the trial court first determines the scope of equivalents, and

then the jury determines whether the accused product falls

within that scope. Such proposed rule (which has no case-

law support) contains a serious flaw — it assumes that the

doctrine of equivalents operates to draw a boundary which is

different than the boundary drawn by the language of the

claims. Under such a rule, the judge would describe two

boundaries for the jury: a boundary for literal infringement

and a wider boundary for infringement by equivalents — a

wholly anomalous result which can only confuse a jury.

The doctrine of equivalents does not involve construing

the scope of a patent separate from the scope of the claims

as literally construed. There is no second boundary to be

drawn by the court. Rather, the doctrine of equivalents

assumes that the accused product or process falls outside the

boundary drawn by the court in its instructions to the jury.

If so, then the jury may determine whether the beyond-

boundary difference in the accused product or process is so

insubstantial as to be equivalent to the claimed invention.

There is nothing inconsistent in assigning to the court

the task of construing the claim and then allowing a jury in

an appropriate case to determine equivalents. To do other-

wise would improperly degrade the process of claim con-

struction. Proper claim construction is performed without

reference to the accused device or process. M International

v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1118

(Fed. Cir. 1985) (en banc). However, equivalence cannot

be determined in a vacuum, without reference to an accused

device. The question whether a device falling outside the

scope of the claims has such an insubstantial difference as to

be equivalent cannot begin to be addressed without consid-

ering the characteristics of the accused device and the scope

of the claims as construed by the court. Thus the suggestion

of the AIPLA that the court also construe the scope of

equivalents, apparently without reference to the nature of

the accused device, flies in the face of accepted patent law

procedures.

The rationale of the Markman decision assigning claim

construction exclusively to the court rested upon the pre-

mise that courts are more adept than juries at construing

written legal instruments. This rationale is inapplicable to

the determination whether a product or process is equivalent

to the patented invention.’ Juries are assigned by law and

the Constitution the task of determining whether an ac-

cused device or process falls within the claim, and similarly

they should function at least as well as judges in deciding

whether, though not within the claim, the accused product

or process is so close as to be equivalent. The latter

determination is a question of fact, to be distinguished from

construing a claim, as described by Circuit Judge Nies in

dissent, 62 F.3d at 1578.

III. Petitioner and Supporting Amici Fail to Demon-

strate Any Public Policy Reason for Overturning the

Right to Jury Determination of Infringement Under

the Doctrine of Equivalents.

Neither the facts of this case, nor the briefs filed by

Petitioner or the supporting amici, nor any of the opinions

written by the judges of the court below, have presented any

concrete instances in which submission of the question of

infringement under the doctrine of equivalents to a jury has

resulted in a fundamentally unjust verdict, or an anomalous

If the applicability of the doctrine of equivalents to an accused product or

process is circumscribed by prosecution history estoppel, then the court can

make that determination using its expertise in construing written instru-

ments, and can inform the jury of the limitations imposed by the contents of

the prosecution history. This case does not squarely present a question of

prosecution history estoppel to this Court.

result when compared to another case, or any example of

the theoretical parade of horrors presented by those who

would remove the determination of equivalents from a jury.

All is speculation, theory, hypotheticals. The doctrine of

equivalents is not a new development. Many years have

passed in which, if all of the terrible results such as

inconsistent application of patents to similar products, lack

of certainty, and runaway juries were a natural consequence

of allowing juries to consider infringement by equivalents,

surely such results would have surfaced somewhere among

the many cases decided under the patent laws. Before the

longstanding and long-applied principle of Winans and

Graver Tank is overruled, a petitioner should be required to

demonstrate concretely that the present rule is producing

results that are unjust, and that a change will produce more

just results. Nothing in this record shows that switching the

determination of infringement by equivalents from a jury to

the trial judge will improve the quality of justice in patent

cases.

The dissenting judges below do make reference to a very

unfortunate public policy argument — an argument to

which this Amicus takes emphatic exception. The sugges-

tion that juries are too unsophisticated to decide complex

issues should be rejected by this Court. In particular, Circuit

Judge Lourie’s expressed hostility to a jury considering the

greater complexity of today’s patented high technology

inventions,” 62 F.3d at 1549 n. 3, and his statement that an

equivalence determination should be reserved to the court

because of the need to exercise “discretion,” id. at 1549, is

a flat condemnation of the ability of juries to decide hard

cases and do justice. Juries routinely decide complex matters

in many fields of law. They consider voluminous complex

financial and economic evidence in securities fraud and

antitrust cases, complex scientific forensic evidence in crimi-

nal cases, complex medical evidence in personal injury cases,

and complex technological evidence in products liability

cases. Complexity exceptions to the right to jury trial in a

civil action, widely debated in the early 1980's, were never

adopted by this Court. R. Lempert, Civil Juries and Com-

plex Cases: Taking Stock after Twelve Years, in VERDICT:

ASSESSING THE CIVIL JURY SYSTEM (R. Litan ed. 1993).

To a lesser extent, Circuit Judge Plager’s peroration (62

F.3d at 1538) that the decision below is a virtually

uncontrolled and unreviewable license to juries to find

infringement if they so choose“ assumes that jurors cannot

adequately decide when an accused product contains a

significant change from the patented invention. He cites no

past experience, no cases from many years of doctrine of

equivalents jurisprudence, to support his assertion that jury

determinations under the doctrine of equivalents are uncon-

trollable. The right to a jury determination of equivalents

should not be overturned on such a thin showing as the

record and arguments made in this case.

CONCLUSION

For all of the above-stated reasons, the decision of the

court below should be affirmed.

Respectfully submitted,