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

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QUESTIONS PRESENTED

(1) Should this Court abandon the traditional rule recognized in

Graver Tank & Manufacturing Co. v. Linde Air Prods., 339 U.S.

605 (1950), under which patent infringement may be found

whenever the accused product or process is “equivalent” to the

invention claimed in the patent, as determined by a jury guided by

proper instructions from the court as to function, way, and result?

(2) If this Court were to abandon or modify Graver Tank and its

earlier precedents to the same effect, would it be free to disregard

the settled expectations of patent holders who relied on Graver

Tank in seeking patents and thereby disclosing their inventions to

the public?

TABLE OF CONTENTS

INTEREST OF AMICUS CURIAE ............0000e000::

INTRODUCTION AND SUMMARY OF ARGUMENT .....

THE DOCTRINE OF EQUIVALENTS

a J bik, te peedodeccecooce

| IRAE oo ococenceccccccccccccecccce.

C. Under Markman and this Court’s 19th-Century

Predecents, Application of the Doctrine of

Equivalents Must Be Left for the Jury .............

ill

TABLE OF AUTHORITIES

Cases: Page

Administrators of Calthorp v. Waymans,

84 Eng. Rep. 966 (K.B. 1676) ..........0.000eeene 8, 18

Alden v. Dewey, | F. Cas. 329 (C.C.D.Mass. 1840)

Gh BD ocndatibbdeinnncaecdds buseuddee cocesses 21

Armstrong v. United States, 364 U.S. 40 (1960) ........ 28-29

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

Se es SE « Cewedeneytdens cee eeW iS vet tb nce 15

Atlas Powder Co. v. E.1. Du Pont De Nemours & Co.,

750 F.2d 1569 (Fed. Cir. 1984) .......... 6c ccc ee een 14

Bischoff v. Wethered, 9 Wall. 812 (1870) .............--. 21

Blanchard’s Gun-Stock Turning Factory v. Warner,

3 F. Cas. 653 (C.C.D.Conn. 1846) (No. 1,521) ......... 20

Blonder-Tongue Laboratories, Inc. v. University of Illinois

Foundation, 402 U.S. 313 (1971) ..........66656005- 23

Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

Gs Be ee Sb ahh db cee Re ehRRa ccc dccticvoccs 7

Boyden Power-Brake Co. v. Westinghouse,

FF ee ED oncetneadstbdsoceccocccccceces 10

Burr v. Duryee, 68 U.S. (1 Wall.) 531 (1864) .......... 9, 13

Cantrell v. Wallick, 117 U.S. 689 (1886) .............4.. 13

Carver v. Hyde, 41 U.S. (16 Pet.) 513 (1842) ............. 20

Chisom v. Roemer, 501 U.S. 380 (1991) ..........665065- 15

Cimiotti Unhairing Co. v. American Fur Refining Co.,

Se ED 6 ctbdecbndebddéoucceedasecccess 9

Clough v. Barker, 106 U.S. 166 (1882) ..............065- 13

Cochrane v. Deener, 94 U.S. 780 (1877) ..........-.6455. 13

Continental Paper Bag Co. v. Eastern Paper Bag Co.,

Se cdccdapecudecccessiecssccces 10, 23

Coupe v. Royer, 155 U.S. 565 (1895) ................ 20, 25

Daubert v. Merrill Dow Pharmaceuticals, Inc.,

ee, Ne oe ee cedgsdesateodin 25

iv

Cases (continued) Page

Davis v. United States, 495 U.S. 472 (1990) .............. 15

Decca Lid. v. United States, 544 F.2d 1070 (Ct. Cl. 1976) ... 14

De La Rue v. Dickenson, Goodeve’s Pat. Cas. 164 (1857) ... 19

Dolan v. City of Tigard, 114 S. Ct. 2309 (1994) ........... 28

Eastman Kodak Co. v. Image Technical Services, Inc.,

ERE a eS ee 17

Feed Serv. Corp. v. Kent Feeds, Inc., 528 F.2d 756 (7th Cir.),

cert. denied, 429 U.S. 870 (1976) .............06055. 10

General Elec. Co. v. Wabash Appliance Corp.,

ED Sea ti uBukebebdcscecccecccscee 10

Gould v. Rees, 82 U.S. (15 Wall.) 187 (1872) .......... 9, 20

Graver Tank & Manufacturing Co. v. Linde

Air Prods., 339 U.S. 605 (1950) ................ passim

Gray v. James, 10 F. Cas. 1015 (C.C.D.Pa. 1817)

heck Subba gue CEWueGieecdecccccccses 9

Halliburton Oil Well Cementing Co. v. Walker,

EEE eee 16

Harper v. Virginia Dept. of Taxation,

ED sc Leas bine ed Seccccewe cece 29

Harper & Row v. Nation Enterprises, 471 U.S. 539 (1985) .. 16

Hawaii Housing Auth. v. Midkiff, 467 U.S. 229 (1984) ..... 28

Heckler v. Community Health Services, 467 U.S. 51 (1984). . 29

Hill v. Thompson and Forman,

DP POU cccccccccccccccccessese 18

Hoyt v. Horne, 145 U.S. 302 (1892) ..........66 202 eeee 1]

Huddart v. Grimshaw, | Webs. Pat. Cas. 85 (1803) ........ 18

Hughes Aircraft Co. v. United States,

Whe | fk. 4 eee 14

Hughes v. Washington, 389 U.S. 290 (1967) .............. 28

Imhaeuser v. Buerk, 101 U.S. (11 Otto) 647 (1879) ........ 11

Insta-F oam Products, Inc. v. Universal Foam Systems, Inc.,

906 F.2d 698 (Fed. Cir. 1990) ................5-055- 14

Ives v. Hamilton, 92 U.S. (2 Otto) 426 (1875) ........... 9-10

Jones v. Pearce, 1 Webs. Pat. Cas. 122 (1832) ......... 18-19

Vv

Cases (continued) Page

Kaiser Aetna v. United States, 444 U.S. 164 (1980) ........ 29

Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974) .... 6-7

Keyes v. Grant, 118 U.S. 25 (1886) ..... 6... ce cece eens 20

Kokomo Fence Mach. Co v. Kitselman, 189 U.S. 8 (1903)... 10

Laitram Corp. v. NEC Corp.,

ee erverrriyis 14

Landgraf v. USI Film Prods., 114 S. Ct. 1483 (1994) ....... 30

Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861

ee ere rrr. 14

London v. Carson Pirie Scott & Co.,

946 F.2d 1534 (Fed. Cir. 1991) ...............000008. 7

Lucas v. South Carolina Coastal Council,

Se cass dbdeshdondcdcccscccecss 28

Markman v. Westview Instruments, Inc., No. 95-26,

64 U.S.L.W. 4263 (Apr. 23, 1996) .. 2-3, 9, 10, 17-18, 21-25

Mason v. Graham, 90 U.S. 261 (1875) ..............555. 13

May v. County of Fond Du Lac, 27 F. 691

Ee IE wkcc dS besos cdbc dbddsiccccccss 20, 25

Miles v. Apex Marine Corp., 498 U.S. 19 (1990) .......... 29

Moeller v. Ionetics, Inc., 794 F.2d 653 (Fed. Cir. 1986) ..... 14

Morgan v. Seaward, Goodeve’s Pat. Cas. 307 (1835) ....... 19

NLRB vy. Bell Aerospace Co., 416 U.S. 267 (1974) ......... 29

Omark Indus., Inc. v. Textron, 688 F.2d 1242

et AR a 14

Ordiorne v. Winkley, 18 F. Cas. 581

(C.C.D.Mass. 1814) (No. 10,432) ................045. i)

O'Reilly v. Morse, 56 U.S. 62 (1854) ... 2.2.2... 6c eee eee 13

Patterson v. McLean Credit Union, 491 U.S. 164 (1989) ..... 17

Payne v. Tennessee, 501 U.S. 808 (1991) ............555. 26

Penn Central Transp. Co. v. City of New York,

SE o HSU So ad oWbe sb Geks cuseseces 27

Pierce v. Underwood, 487 U.S. 552 (1988) ............... 15

Plaut v. Spendthrift Farm, Inc., 115 S. Ct. 1447 (1995) ..... 29

Cases (continued) Page

Raley v. Ohio, 360 U.S. 423 (1959) .... 2... ee ec ee 29

Regional Rail Reorganization Act Cases,

BE Ee 28

Richmond Screw Anchor Co. v. United States,

IID, oi Ss kanbwveededhescecececs 27-28

Royer v. Schultz Belting Co., 135 U.S: 319 (1890) ......... 20

Ruckelshaus v. Monsanto Co., 467 U.S. 986 (1984) ........ 26

Sanitary Refrigerator Co. v. Winters,

EE 4,9, 13,14

Santobello v. New York, 404 U.S. 257 (1971) ............ 29

Sarkisian v. Winn-Proof Corp., 697 F.2d 1313 (9th Cir. 1983) 7

Seymour v. Osborne, 78 U.S. (11 Wall.) 516 (1870) ......... 9

Silsby v. Foote, 55 U.S. (14 How.) 218 (1852) ....... 4, 21-22

Smith v. Pearce, 22 F. Cas. 619 (C.C.D.Ohio 1840)

OE = 8 ee ee 20-21

Square D. Co. v. Niagara Frontier Tariff Bureau, Inc.,

IN GS cb ak ddhosicheccecececcteccc: 15

SRI Intern. v. Matsushita Corp. of America, 775 F.2d 1107

(Fed. Cir. 1985) (em banc) .............200005- 4, 14, 27

Standard Oil v. United States, 221 U.S.1 (1911) .......... 30

Stevens v. City of Cannon Beach, 114 S. Ct. 1332 (1994) ... 28

Tatham v. Le Roy, 23 F. Cas. 718 (C.C.S.D.N.Y. 1850)

e.g BOS dveSi cs bbe cb eddess 20

Texas Instruments, Inc. v. United States Int’! Trade Comm'n,

805 F.2d 1558 (Fed. Cir. 1986) .................. 13-14

Textile Workers v. Lincoln Mills of Alabama,

EE 29-30

Tidal Oil Co. v. Flanigan, 263 U.S. 444 (1924) ........... 28

Tower v. Glover, 467 U.S. 914 (1984) .............00555- 16

Tucker v. Spalding, 80 U.S. (13 Wall.) 453 (1872) ......... 19

Tyler v. Boston, 74 U.S. (7 Wall.) 327 (1869) ............. 20

Union Paper-Bag Machine Co. v. Murphy,

nn ocd adeccdbeset ite sudale 5, 9, 13, 26

United States v. Dubilier Condenser Corp.,

EE con duneadéechoéeucsccsccacecess 7

Vii

Cases (continued) Page

Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039

CO GE BED nwo bends cea eat cedbe een’ ovis i 16

Walton v. Potter & Horsfall, 1 Webs. Pat. Cas. 585 (1841) .. 19

Webb’s Fabulous Pharmacies, Inc. v. Beckwith,

ons cccocoucechbetsestoctiece ce 28

Whitney v. Carter, 29 F. Cas. 1070, 1078 (C.C.D.Ga. 1810)

Ok ee eee, ee eer en 4

William Cramp & Sons Ship & Engine Bldg Co. v. Int'l Curtis

Marine Turbine Co., 246 U.S. 28 (1918) .............. 27

Wilson Sporting Goods Co. v. David Geoffrey & Assocs.,

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

GR ES ee eee ee 27

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

CEE ctidacdid ddCethweb ddd wee ddua ctide 4, 9, 18, 19, 22

Wyeth v. Stone, 30 F. Cas. 723 (C.C.D.Mass. 1840)

Bie, TR cise Saas CSSN EL. HACER oi cdc ob 0K KON ]

Constitutional Provisions, Statutes, and Rules: Page

tN er Years tr riers oe 6

Act of Apr. 10, 1790, 1 Stat. 109... 2... cece eens 11

Act of July 4, 1836, 5 Stat. 117 2.2... 6c eee 11

Patent Act of 1870, 16 Stat. 198 .............0.0 ccc eee 12

Ps ao civics cvcdaedsbecdeseede 17

Pub. L. 94-131, 89 Stat. 691 .......... ccc cece eee eee 17

Rb Saie dic de Codie cvidesct ie 2, 7, 16, 17

I EE TTT Pe 7

8 RS RASS Te ee 4, 24

a eT eee ee ee 24

i il od tall i clntedevdebeuuedeebs 4, 24

Miscellaneous: Page

Donald S. Chisum, PATENTS (1995) .............250005- 11

viii

Miscellaneous (continued) Page

LIPSCOMB’S WALKER ON PATENTS (3d ed. 1987) ....... 10, 13

Karl Lutz, Evolution of the Claims of U.S. Patents,

20 J. PaT. Orr. Soc’y 457 (1938) ............00000 0, 12

Christine MacLeod, INVENTING THE INDUSTRIAL REVOLUTION:

THE ENGLISH PATENT SYSTEM 1660-1800 (1988) ........ s

Chief Judge Howard T. Markey, The Federal Circuit and

Congressional Intent, 41 AM. U.L. REV. 577 (1992) ..... 27

Chief Judge Howard T. Markey, On Simplifying Patent Trials,

eT ee ee cbeeetecce 25

Charles Eliot Mitchell, Commissioner of Patents, An Address

Delivered at the Proceedings of the Congress on the “Birth

and Growth of the American Patent System” (1890), reprinted

in PATENT CENTENNIAL CELEBRATION PROCEEDINGS AND

SITUS bad cbeusebecécccescosceess 12

Sean Moorhead, The Doctrine of Equivalents: Rarely Actionable

Non-Literal Infringement of the Second Prong of Patent

Infringement Charges?, 53 Onl0 ST. L.J. 1421 (1992) .... 8

John Norman, NORMAN ON PATENTS (1853) .............. 19

Bernard R. Pravel, Why the United States Should Adopt the

First-to-File System for Patents,

22 ST. MARY'S L.J. 797 (1991) ... 2... eee eee ee 8

William C. Robinson, THE LAW OF PATENTS FOR USEFUL

ED noc cocéubscevcecccbccoscoece 10, 18

Albert H. Walker, TEXT-BOOK OF THE PATENT LAWS

DE CERENvAdedeeSebdasteedasetecosceasce 10, 12-13

BRIEF OF LITTON SYSTEMS, INC. AS

AMICUS CURIAE IN SUPPORT OF RESPONDENT

INTEREST OF AMICUS

With the consent of the parties,’ amicus curiae Litton Systems,

Inc. (“Litton”), hereby submits this brief in support of respondent

Hilton Davis Chemical Co., to urge this Court to affirm the en banc

decision of the Federal Circuit regarding infringement under the

doctrine of equivalents. Although Litton has no interest in the

outcome of the specific case at bar, it has a strong and abiding

interest in the questions presented: (1) whether this Court should

abandon the traditional understanding of the doctrine of equivalents

as elaborated in almost two centuries of judicial development,

culminating in Graver Tank & Manufacturing Co. v. Linde Air

Prods., 339 U.S. 605 (1950), and in hundreds of subsequent cases

in the lower courts; and (2) whether — if this Court were to discard

or modify the doctrine of equivalents — it would be free to ignore

the settled expectations of patent holders, who have disclosed their

inventions to the public through the patent process in the

expectation that those inventions would be protected by the

doctrine of equivalents as historically understood.

These questions have wide ramifications and enormous

practical importance for many parties. For example, Litton is a

technology-based company whose business activities depend

heavily on innovation and intellectual property. Litton sought and

obtained its patents on the express and judicially induced

expectation that their enforceability was defined in part by the

doctrine of equivalents as enunciated in Graver Tank. To deprive

a patentee of that protection after the fact would constitute an

impermissible taking of its property for public use without just

compensation.

INTRODUCTION AND SUMMARY OF ARGUMENT

Petitioner urges “[a] clean abandonment of the ‘doctrine of

equivalents’” and maintains that there is no good reason for this

Letters reflecting written consent of the parties to the submission of this

brief have been filed with the Clerk of the Court.

2

Court to “follow Graver at all.” Pet. Br. 12. According to

petitioner, the doctrine of equivalents “flout[s]” the principle that

a patent holder’s property right is defined by its patent claim (id. at

11), and the doctrine must at minimum be dramatically pruned.

Thus, petitioner urges this Court to ignore settled law and

radically narrow, if not abolish altogether, a long-accepted feature

of patent law judicially crafted to protect patentees from

infringement by devices and methods that use substantially the

same means, working substantially the same way, to accomplish

substantially the same result . This Court should reject petitioner’ s

request and affirm the en banc decision of the Federal Circuit.

I. The doctrine of equivalents reflects principles of English

common law and has been painstakingly elaborated through almost

two centuries of federal judicial development. The doctrine

protects the patents of inventors who have made substantial

investments to develop new products and processes, and who have

chosen to disclose their inventions to the world through the patent

application process. Without the doctrine of equivalents, patent

holders would be “at the mercy of verbalism,” and courts would be

forced to “subordinat[e] substance to form.” Graver Tank, 339

U.S. at 607. :

Congress has never displaced the equivalents doctrine by statute

or expressed any opposition to it. And when Justice Black raised

virtually all of petitioner’s objections to the doctrine of equivalents

almost half a century ago in Graver Tank, a majority of this Court

flatly rejected his arguments. Although Congress has repeatedly

amended the patent code in the intervening decades, it has not

accepted or acted on Justice Black’s criticisms. Accordingly, this

Court should continue to reject those arguments today and should

defer to Congress if there is a need to alter a doctrine on which

current patentees have relied in good faith.

Petitioner contends that the doctrine of equivalents clashes with

a patentee’s duty to describe the invention in detail and with

sufficient clarity to satisfy the statutory criteria of 35 U.S.C. § 112.

The central fallacy in this argument is that it confuses two distinct

elements of patent infringement actions. As this Court made clear

just last month in Markman v. Westview Instruments, Inc., No. 95-

3

26, 64 U.S.L.W. 4263 (Apr. 23, 1996), “[t]he two elements of a

simple patent case [are] [1] construing the patent and [2]

determining whether infringement occurred.” Jd. at 4267.

Petitioner assumes that the doctrine of equivalents relates to the

first element and that it operates to enlarge a patent claim. But in

fact the doctrine is logically confined to the second element —

determining whether infringement has occurred — and has always

been invoked solely in that context. Accordingly, the doctrine is

completely consistent with the patent scheme devised by Congress.

Indeed, in the Markman decision, this Court stated that a patent

“functions to forbid not only exact copies of an invention, but [also]

products that go to ‘the heart of the invention but avoid the literal

language of the claim by making a noncritical change’” or

“deviat[e) from the core design in some noncritical way.” Id. at

4264 & n.1.

Notably, both the United States and the American Intellectual

Property Law Association take the position, in briefs submitted

doctrine of equivalents or replaced it with a judicial inquiry into the

alleged infringer’s state of mind. Even several of petitioner’s own

amici decline to endorse its sweeping argument. The Intellectual

Property Owners observe that the doctrine of equivalents “is

entirely consistent with th[e] [statutory] ‘claiming’ requirement”

and that petitioner's argument “is foreclosed by Congress’s

ratification of the longstanding doctrine when, in 1952, Congress

reenacted without change the law of infringement.” Br. Amicus

Curiae at 2, 3. The Information Industry Counsel and Intel

Corporation similarly agree that the doctrine of equivalents has not

been superseded by Congress.

In short, there is no real support for petitioner’s request that this

Court effectively abolish the doctrine of equivalents. Nor is there

any merit to petitioner’s alternative suggestion that this Court

radically restructure the doctrine by introducing heretofore

unknown limits on its application. Such restructuring would

eviscerate the ability of the doctrine to protect patentees from

infringement. Br. of the United States 21-23 & n.7. In addition,

petitioner’s argument flies in the face of longstanding precedent.

4

See, e.g., Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42

(1929) (later patented improvement infringed earlier patent under

the doctrine of equivalents); SRI Intern. v. Matsushita Corp. of

America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (“The law

does not require the impossible. Hence, it does not require that an

applicant describe in his specification every conceivable and

possible future embodiment of his invention.”’).

Finally, the Court of Appeals correctly held that application of

the doctrine of equivalents is a matter for the jury, subject to proper

instructions from the court. That traditional rule has been observed

since the doctrine’s inception. And there is a sound Seventh

Amendment reason for it: The doctrine of equivalents is part of the

inquiry into whether infringement has occurred. As this Court held

in Markman, and as it has held repeatedly since the 19th century,

the infringement inquiry is one of fact committed to the jury. See,

e.g., Silsby v. Foote, 55 U.S. (14 How.) 218, 225 (1852); Winans v.

Denmead, 56 U.S. (15 How.) 330, 344 (1853).

Following precedent does not mean, as petitioner and some

amici suggest, that the jury is free to decide the equivalents

question at whim; rather, the courts give juries ample guidance

through the clear and focused instructions that have been customary

at least since Graver Tank. Any fear of an irrational jury is

groundless, because a trial court has the authority to grant judgment

as a matter of law or a new trial where the requirements of Fed. R.

Civ. P. 50 and 59 are satisfied. But this case does not present an

opportunity to complain about the guidance given the present jury,

or to criticize the jury charge, for it is undisputed that Warner-

Jenkinson did not object to the jury instruction in this case. Pet.

App. 21a.

II. In any event, if this Court were to make any significant

alteration in the doctrine of equivalents, such a ruling would have

to be purely prospective and applicable only to patent applications

filed after this Court’s decision, or at most to patents issued after

‘that date. In deciding to invest the substantial sums necessary to

develop patents, and in deciding to file patent applications that

disclose their otherwise secret inventions to the world, patent

holders justifiably rely on the fabric of legal rules available to

5

enforce their property rights. The doctrine of equivalents is more

than a strand in that fabric; it is fundamental to the very design. To

abolish or significantly diminish the doctrine retroactively would

disregard the basis of the bargain on which the patent holder was

induced to rely. Accordingly, a retroactive ruling in this case

would constitute a impermissible taking of property for public use

without just compensation, and would also violate due process.

ARGUMENT

I. THE COURT OF APPEALS’ VIEW OF THE DOCTRINE

OF EQUIVALENTS WAS CORRECT

The Court of Appeals for the Federal Circuit properly

recognized that “[t]his case presents an opportunity to restate — not

to revise — the test for infringement under the doctrine of

equivalents.” Pet. App. 6a. The doctrine of equivalents is a settled

principle of patent law, and there is no reason to disturb it.

A. The Court of Appeals’ Decision Is Correct under Graver

Tank

The Court of Appeals held that “[o]ften the function-way-result

test will suffice to show the extent of the differences” between the

claimed and accused products and, although it noted that “[o]ther

factors, . . . such as evidence of copying or designing around, may

also inform the test,” it reasoned that, ultimately, “a finding of

infringement under the doctrine of equivalents requires proof of

insubstantial differences.” Pet. App. 17a.

That decision is a faithful restatement of this Court’s ruling in

Graver Tank, which held that the doctrine of equivalents could be

invoked “against the producer of a device ‘if it performs

substantially the same function in substantially the same way to

obtain the same result.’” 339 U.S. at 608 (citation omitted). This

Court explained that “[t]he theory on which it is founded is that ‘if

two devices do the same work in substantially the same way, and

accomplish substantially the same result, they are the same, even

though they differ in name, form or shape.’” Jd. (quoting Union

Paper-Bag Machine Co. v. Murphy, 97 U.S. 120, 125 (1877)). This

6

Court added that the doctrine was above all one of “wholesome

realism,” and that “[wJhat constitutes equivalency must be

determined against the context of the patent, the prior art, and the

particular circumstances of the case. Equivalence, in the patent

law, is not the prisoner of a formula and is not an absolute to be

considered in a vacuum.” Jd. at 609. This approach is precisely the

one taken by the Federal Circuit.

Furthermore, in Graver Tank, this Court was unpersuaded by

the very arguments that petitioner advances here, almost all of

which were offered in dissent by Justice Black in Graver Tank.

Justice Black argued that the doctrine of equivalents is inconsistent

with the congressionally devised patent scheme and its requirement

of specific claiming, 339 U.S. at 613-14 (dissenting opinion); that

the doctrine is inconsistent with the principle that “the function of

claims . . . is to exclude from the patent monopoly field a!! that is

not specifically claimed,” id. at 614; that there is no neec for the

doctrine in light of the statutory provision for reissue of patents, id.

at 614-15; that the doctrine would produce uncertainty and foster

litigation, id. at 617; and that in any event it could not be applied in

that case because the defendants in the infringement action were

not accused of acting in subjective bad faith. Jd. at 613.

Recognizing that an infringer could change the form while

infringing the substance of a patent claim, this Court decisively

rejected those arguments 46 years ago, and it should reject them

again today. Graver Tank was correct as a matter of logic,

precedent, and policy. On countless occasions since 1950,

patentees, district courts, and courts of appeals have relied on it as

the authoritative exposition of the doctrine of equivalents.

1. The stated objective of the Constitution in granting Congress

the power to legislate in the area of intellectual property is to

“promote the Progress of Science and useful Arts.” Art. I, § 8, cl.

8. “The patent laws promote this progress by offering a right of

exclusion for a limited period as an incentive to inventors to risk

the often enormous costs in terms of time, research, and

development.” Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470,

480 (1974). “In return for the right of exclusion . . . the patent laws

impose upon the inventor a requirement of disclosure.” Jd. The

7

patent laws require that the patent application shall include a full

and clear description of the invention and “of the manner and

process of making and using it,” 35 U.S.C. § 112, so that any

person skilled in the art may make and use the invention at the

expiration of the period of exclusion. 35 U.S.C. § 154(a)(2). This

disclosure requirement ensures that “the knowledge of the

invention enures to the people, who are thus enabled without

restriction to practice it and profit by its use.” United States v.

Dubilier Condenser Corp., 289 U.S. 178, 187 (1933). Thus, the

inventor must choose between retaining his invention as a trade

secret or putting in the public’s hands and receiving a patent. “As

Judge Learned Hand once put it: . . . ‘he must content himself with

either secrecy or legal monopoly.’” Bonito Boats, Inc. v. Thunder

Craft Boats, Inc., 489 U.S. 141, 149 (1989) (citation omitted).

The doctrine of equivalents plays a vital role in ensuring that the

patent holder is not robbed of the benefit of this congressional

bargain. For example, it may be impossible to foresee all of the

development of new technologies — like microprocessors — that

might permit competitors to infringe the substance of a patent while

circumventing its literal terms. The doctrine of equivalents assures

that patent holders are not “at the mercy of verbalism,” and that

courts are not forced to “subordinat{e] substance to form.” Graver

Tank, 339 U.S. at 607. “[Tjhe purpose of the doctrine of

equivalents is to secure for the inventor a just reward for his or her

invention.” Sarkisian v. Winn-Proof Corp., 697 F.2d 1313, 1321

(9th Cir. 1983). The doctrine reflects the sound view that “the

patentee should not be deprived of the benefits of his patent by

competitors who appropriate the essence of an invention while

barely avoiding the literal language of the claims.” London v.

Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991).

Further, the doctrine of equivalents encourages competitors to

innovate, by preventing mere copying and forcing would-be

infringers to “invent{] around a patent by making a substantial

change.” Id.

As Judge Newman remarked in the Federal Circuit, “the major

contribution of the doctrine of equivalents is now, and always has

been, to the idea of a fairer, less technocratic, more practical patent

system; one that is oriented toward encouraging technologic(al]

innovation and discouraging free riding.” Pet. App. 44a

(concurring opinion). “[{T)he doctrine of equivalents can contribute

a degree of added investment confidence to the inherently risky

environment of new technologies.” Jd. So long as patentees have

confidence in the patent system, they will continue to patent and the

body of knowledge released to the public will continue to grow,

even if petitioner were right that copyists might lose confidence in

predicting whether their acts infringe. If, on the other hand,

patentees lose confidence in the system and choose to keep their

inventions secret, the body of knowledge released to the public will

stagnate, even if increased copying promoted short-term price

competition. Sean Moorhead, The Doctrine of Equivalents: Rarely

Actionable Non-Literal Infringement of the Second Prong of Patent

Infringement Charges?, 53 Onto ST. LJ. 1421, 1427-28 (1992).

International comparisons demonstrate the importance of the

doctrine of equivalents in fostering techological innovation. See

Bernard R. Pravel, Why the United States Should Adopt the

First-to-File System for Patents, 22 St. MARY'S LJ. 797, 807

(1991) (“{T)he doctrine of equivalents . . . is not available in most

countries .... Thus, foreign patents are often so restricted in their

protection that they are of insignificant or no value.”).

2. Petitioner nonetheless contends that Graver Tank “stands in

unavoidable and well-recognized tension with [a] long line of this

Court’s cases.” Pet. Br. 43. To the contrary: the doctrine of

equivalents is a traditional principle of patent law employed since

the beginning of patent litigation. The doctrine traces to English

common law, appearing, for example, in Administrators of

Calthorp v. Waymans, 84 Eng. Rep. 966, 966 (K.B. 1676)

(differences between patented engine and accused device “not

material,” because “though it vary in some circumstances so it be

the same in the main”), and with respect to a 1695 patent granted

by Parliament. See Christine MacLeod, INVENTING THE

INDUSTRIAL REVOLUTION: THE ENGLISH PATENT SYSTEM 1660-

1800, at 73 (1988). In the United States, the doctrine was reflected

in Justice Story’s charge to a jury, as circuit justice, that “[mJere

colorable differences, or slight improvements, cannot shake the

9

right of the original inventor.” Ordiorne v. Winkley, 18 F. Cas. 581,

582 (C.C.D.Mass. 1814) (No. 10,432). Justice Bushrod

Washington similarly instructed a jury that, “[wJhere the accused

and patented] machines are substantially the same, and operate in

the same manner to produce the same result, they must in principle

be the same.” Gray v. James, 10 F. Cas. 1015, 1016 (C.C.D.Pa.

1817) (No. 5,718); see also Whitney v. Carter, 29 F. Cas. 1070,

1078 (C.C.D.Ga. 1810) (No. 17,583) (using similar language);

Wyeth v. Stone, 30 F. Cas. 723, 726 (C.C.D.Mass. 1840) (No.

18,107) (Story, Circuit Justice) (“[eJach [device) performs the same

service, substantially in the same way’).

In the seminal decision of Winans v. Denmead, 56 U.S. (15

How.) 330 (1853) — on which the unanimous opinion in Markman

relied (see 64 U.S.L.W. at 4267) — this Court held that the

question of infringement turned on whether the accused device

could be said “substantially to embody the patentee’s mode of

operation, and thereby attain the same kind of result as was reached

by his invention.” 56 U.S. at 344. In Union Paper-Bag Mach. Co.

v. Murphy, 97 U.S. (7 Otto) 120 (1877), this Court found that

“[a)uthorities concur that the substantial equivalent of a thing, in

the sense of the patent law, is the same as the thing itself; so that if

two devices do the same work in substantially the same way, and

though they differ in name, form, or shape.” Jd. at 125.

By the time of Cimniotti Unhairing Co. v. American Fur Refining

Co., 198 U.S. 399, 406 (1905), this Court was able to describe the

doctrine of equivalents as “well settled.” Two decades later, this

Court reafffirmed the doctrine in Sanitary Refrigerator Co. v.

Winters, 280 U.S. 20, 41-42 (1929).? Noted commentators of all

* See also Burr v. Duryee, 68 U.S. (1 Wall.) 531, 572 (1864) (“An

by the terms, ‘same principle,’ same ‘modus operandi,’ or any other.”);

Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 556 (1870) (patentees “are

entitled in all cases to invoke to some extent the doctrine of equivalents”);

Gould v. Rees, 82 U.S. (15 Wall.) 187, 192 (1872) (inventors “have the . . .

right to suppress every other subsequent improvement, not substantially

different from what they have invented and secured by letters-patent.”); /ves

10

eras have also approved of the doctrine of equivalents. See |

William C. Robinson, THE LAW OF PATENTS FOR USEFUL

INVENTIONS §§ 245-258, at 334-54 (1890); Albert H. Walker,

TEXT-BOOK OF THE PATENT LAWS §§ 349-367, at 252-67 (1895);

6 LIPSCOMB’S WALKER ON PATENTS §§ 22:34-22:40, at 541-56 (3d

ed. 1987); see also Feed Serv. Corp. v. Kent Feeds, Inc., 528 F.2d

756, 764 (7th Cir.) (Stevens, J., dissenting in part) (applying

doctrine of equivalents), cert. denied, 429 U.S. 870 (1976).

3. In response to this overwhelming body of authority,

petitioner insists that the doctrine of equivalents is inconsistent with

the statutory requirement that the subject of a patent be precisely

defined in the patent claims. 35 U.S.C. § 112. But this supposed

inconsistency is a mirage. The central fallacy in petitioner’s

argument is that it confuses the question of claim construction with

the issue of patent infringement.

To be sure, patents “‘must comply accurately and precisely with

the statutory requirements as to claims of invention and

discovery.”” Pet. Br. 19 (quoting General Elec. Co. v. Wabash

Appliance Corp., 304 U.S. 364, 369 (1938)). But, as this Court

observed only recently in Markman, there are two distinct elements

of a patent claim: construing the patent, and determining whether

infringement has occurred. See 64 U.S.L.W. at 4267. The doctrine

of equivalents has always been applied as part of the second

inquiry.’

v. Hamilton, 92 U.S. (2 Otto) 426, 430 (1875) (“whether the defendants use

the same or equivalent means; that is, the same, or substantially the same,

combination of mechanical devices”); Boyden Power-Brake Co. v.

Westinghouse, 170 U.S. 537, 569 (1898) (doctrine covers infringer who

“reach[es} the same result” by “substantially the same or similar means”);

Kokomo Fence Mach. Co v. Kitselman, 189 U.S. 8, 24 (1903) (test is whether

the devices at issue share “that identity of means and identity of operation

which must be combined with identity of result to constitute infringement”);

Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 421

(1908) (doctrine of equivalents is not limited to pioneer inventions).

* See, e.g., Kokomo Fence Mach. Co v. Kitselman, 189 U.S. 8, 23 (1903)

(“the question is whether the specific improvements of the one actionable

invaded the domain of the other,” ie¢., whether there “was a substantial

11

Accordingly, petitioner’s alleged inconsistency is a figment of

its imagination. There is no conflict between requiring patentees

to spell out the specific metes and bounds of their patent claims

with as much specificity as possible — and then applying the

doctrine of equivalents to determine whether an accused device has

trespassed upon that defined property zone. See Br. of United

States 14-15. On the contrary, the doctrine of equivalents is a vital

supplement to the congressionally devised scheme of specific

claiming. “[A]s a prescription against sterile literalism . . . the

doctrine of equivalents is fully consistent with the notion that the

claim measures the scope of the patent monopoly.” 4 Donald S.

Chisum, PATENTS § 18.04[1], at 18-74 (1995).

4. Similarly, petitioner’s suggestion that the doctrine of

equivalents somehow disappeared with the adoption of the 1870

Patent Act (Pet. Br. 15-18) ignores the fact that the doctrine has

been consistently enforced by the courts in the ensuing 126 years.

Petitioner argues that a sea change swept away the doctrine of

equivalents. In truth, the sea stayed still.

The patent laws have long contained a requirement that a

patentee spell out the invention in sufficient detail to distinguish

the prior art and to notify the public of the protection the patent

confers. The very first patent act required that letters patent

“describ[e] the said invention or discovery, clearly, truly, and

fully.” Act of Apr. 10, 1790, ch. 7, § 1, 1 Stat. 109. The applicant

for a patent was at the time required to submit “a specification in

writing, containing a description . . . of the thing or things by him

or them invented or discovered, . . . which specification shall be so

particular . . . as . . . to distinguish the invention or discovery from

other things before known and used.” Jd. § 2. The Patent Act of

1836 similarly required that the applicant “shall particularly specify

and point out the part, improvement, or combination, which he

claims as his own invention.” Act of July 4, 1836, ch. 357, § 6, 5

Stat. 117. Specific claiming was already the practice, even in 1836.

difference between the inventions”); Hoyt v. Horne, 145 U.S. 302, 308 (1892)

(infringement issue includes equivalence inquiry); Imhaeuser v. Buerk, 101

U.S. (11 Otto) 647, 664 (1879) (same).

12

See Karl Lutz, Evolution of the Claims of U.S. Patents, 20 J. PAT.

Orr. Soc’ y 457, 464 (1938).

The Patent Act of 1870 modified the statutory language only

slightly, substituting the phrase “particularly point out and

distinctly claim the part . . . which he claims.” Patent Act of 1870,

ch. 230, § 26, 16 Stat. 198, 201. Not surprisingly, the history of the

Patent Act of 1870 suggests that the change in statutory text was

not understood by anyone to have anything like the significance

that petitioner would now attribute to it. The alteration was not

mentioned in the records of the enactment. See Cong. Globe, 41st

Cong., 2d Sess. 2681-83 (1870). The Commissioner of Patents

subsequently wrote that “[iJn 1870 the patent law was revised, but

the revision was in the nature of a consolidation of the statutes then

in force.” Charles Eliot Mitchell, Commissioner of Patents, An

Address Delivered at the Proceedings of the Congress on the

“Birth and Growth of the American Patent System” (1890),

reprinted in PATENT CENTENNIAL CELEBRATION PROCEEDINGS AND

ADDRESSES 52 (1891).

Thus, the doctrine of equivalents was developed alongside a

system in which patentees were required to detail the nature and

scope of their claims. And increasing specificity in claim style

makes the need for the doctrine of equivalents more urgent, not

less; as Judge Newman commented in the Federal Circuit, “the

increasing specificity in claim style probably made it easier for the

‘unscrupulous copyist,’ the words of Graver Tank, to appropriate

the substance of the invention while evading the letter of the

claims.” Pet. App. 37a (concurring opinion).

5. Petitioner alternatively urges that, if this Court does not

abandon the doctrine of equivalents altogether, it should

nonetheless hold that the doctrine does not extend to matters

surrendered during the patent application process (whatever the

reason) or to matters not disclosed as equivalent in the patent

application. But most of this Court’s decisions in the course of the

doctrine’s lengthy development did not even mention the principles

proposed by petitioner, let alone apply them in holdings.‘ And

* See, e.g., Albert H. Walker, TEXT-BOOK OF THE PATENT LAWS §§ 354-55,

13

Graver Tank’s holding cannot be so restricted. Graver Tank

reaffirmed Sanitary Refrigerator (see 339 U.S. at 608), which

expressly rejected limiting equivalents to those disclosed as such in

the patent. Graver Tank also refused to adopt any rigid “formula”

(339 U.S. at 609) such as that proposed by petitioner. 7

Moreovev, the facts of Graver Tank cannot be used to narrow

the doctrine, for they prove just the opposite of what petitioner

claims. As Justice Black observed, “the similar use of manganese

in prior expired patents, referred to in the Court's opinion, raises far

more than a suspicion that its elimination from the valid claims

stemmed from fear that its inclusion by name might result in denial

or subsequent invalidation of respondent’s patent.” 339 U.S. at

616-17 (dissenting opinion). He concluded that “it would be

frivolous to contend that failure specifically to include that

substance in a precise claim was unintentional.” Jd. at 616. Yet a

majority of this Court was willing to apply the doctrine of

equivalents because there had been no surrender to overcome a

prior art reference.

Hence, it is well established that the doctrine of equivalents is

not limited to equivalents disclosed in the patent. Indeed, “[i]n

order to be an equivalent of another, it is not necessary that the

device have been known at the time of the machine which contains

the latter.” 6 LIPSCOMB’S WALKER ON PATENTS §§ 22:34-22:40,

at 541-56 (3d ed. 1987). The patent owner is not expected to

at 256-59 (1885) (“Whether a device, in order to be an equivalent of another,

must have been known at the time of invention or of the patent . . . [is a] view

that seems to have originated in the mind of Justice Clifford . . . [A]fter

formulating the doctrine he was content to ignore it... . No other Supreme

tribunal. Several cases have been adjudicated in that court, which called for

the application of that doctrine, if it is a true one, but it has never been applied

to any necessary issue pending therein.”).

5 See Cantrell v. Wallick, 117 U.S. 689, 695 (1886); Clough v. Barker, 106

U.S. 166, 177-78 (1882); Machine Co. v. Murphy, 97 U.S. 120, 125 (1878);

Cochrane v. Deener, 94 U.S. 780, 790 (1877); Mason v. Graham, 90 U.S.

261, 275 (1875); Burr v. Duryee, 68 U.S. (1 Wall.) 531, 573 (1864); O'Reilly

v. Morse, 56 U.S. 62, 123-24 (1854); Texas Instruments, Inc. v. United States

14

“predict all future developments which enable the practice of his

invention in substantia)/y the same way.” Hughes Aircraft Co. v.

United States, 717 F.2d 1351, 1362 (Fed. Cir. 1983). This Court

has held that a later improvement, even if patented, may still violate

the doctrine of equivalents if it satisfies the function-way-result

test. See Sanitary Refrigerator Co. v. Winters, 280 U.S. 20, 40, 43

(1929); see also Atlas Powder Co. v. E.l. Du Pont De Nemours &

Co., 750 F.2d 1569, 1580-81 (Fed. Cir. 1984). Otherwise,

unforeseeable technological developments with wide applications,

like microprocessors, digital (rather than analog) systems,* or new

chemical processes, would in effect sweep away existing patents

altogether. See Br. of United States 21-23 & n.7.

In addition, it is settled law that file wrapper estoppel prevents

a patentee from reclaiming, through the doctrine of equivalents,

what was willfully surrendered before the Patent Office only if the

reason for the limiting argument or amendment was to delete prior

art embodiments that would otherwise have invalidated the patent.’

This Court should reject petitioner’s cavalier attempt to make

radical revisions in the doctrine of equivalents without due regard

for the careful development of the law in the Federal Circuit.

Int’l Trade Comm'n, 805 F.2d 1558, 1563 (Fed. Cir. 1986); SRI Intern. v.

Matsushita Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc).

* See, e.g., Decca Lid. v. United States, 544 F.2d 1070, 1080-81 (Ct. Cl.

1976) (digital devices infringed claims relating to analog devices, even though

later-developed digital devices were not predicted by, let alone eliminated

from the scope of, the patent).

” See, e.g., Laitram Corp. v. NEC Corp., 952 F.2d 1357, 1358 (Fed. Cir.

1991); Insta-Foam Products, Inc. v. Universal Foam Systems, Inc., 906 F.2d

698, 703 (Fed. Cir. 1990); Moeller v. lonetics, Inc., 794 F.2d 653, 658-60

(Fed. Cir. 1986); Loctite Corp. v. Ultraseal Led., 781 F.2d 861, 871 (Fed. Cir.

1985); Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1362 (Fed. Cir.

1983); Omark Indus., Inc. v. Textron, 688 F.2d 1242, 1251-52 (9th Cir.

1982).

15

B. Congress Did Not Displace Graver Tank in the 1952

Patent Act

Petitioner argues that the 1952 Patent Act should be construed

as displacing a century of well-settled, judge-made law under the

doctrine of equivalents. This argument is flatly wrong as a matter

of basic principles of statutory construction.

There is no suggestion that anything in the text of the 1952

Patent Act or in its legislative history remotely shows that Congress

intended to overrule Graver Tank. It is barely conceivable, and far

too speculative to proceed on the assumption, that Congress would

have intended to displace so longstanding a feature of patent law

without any explicit textual reference or other contemporaneous

indication of its decision to do so. This is therefore one of those

instances where “Congress’ silence . . . can be likened to the dog

that did not bark.” Chisom v. Roemer, 501 U.S. 380, 396 n.23

(1991).

To the contrary, this Court has already determined that the 1952

Patent Act “left intact the entire body of case law on direct

infringement.” Aro Mfg. Co. v. Convertible Top Replacement Co.,

365 U.S. 336, 342 (1961). That body of case law included the

doctrine of equivalents. No less an authority than Justice Black (a

dissenter in Graver Tank) acknowledged that the purpose of the

1952 Act in relevant part was to codify extant patent law. Aro

Mfg., 365 U.S. at 347 n.2 (Black, J., concurring). And even

petitioner concedes the principle that “a law designed substantially

(even though not entirely) to codify and restate prior law generally

is understood to incorporate then-existing judicial interpretations.”

Pet. Br. 42 (citing Davis v. United States, 495 U.S. 472, 482 (1990);

Pierce v. Underwood, 487 U.S. 552, 566-68 (1988)). Indeed, this

Court has frequently held, in setting forth ground rules that shape

as well as describe how Congress proceeds, that Congress legislates

against the background understanding that its enactments

incorporate longstanding principles of judge-made law.*

® See, e.g., Square D. Co. v. Niagara Frontier Tariff Bureau, Inc., 476 U.S.

409, 419, 421-22 (1986) (upholding “continued viability” of prior case law

16

The only remotely relevant change in the 1952 Patent Act

confirms that Congress did not intend to displace the doctrine of

equivalents. Paragraph 6 of § 112 added the concept of equivalents

as a basis for sustaining previously invalid “means” claims

regarding elements in a combination. 35 U.S.C. § 112,46.’ The

plain purpose of this provision was to restore to patentees the

ability to use in their claims broad “means plus function” language,

which this Court had held was unduly vague. Halliburton Oil Well

Cementing Co. v. Walker, 329 U.S. 1 (1946). Thus, this statutory

change confirms that Congress was fully aware of the concept of

equivalents and simply adapted it to a new function: salvaging

vague claims by extending the consideration of equivalents to

products or processes disclosed in specifications. As petitioner’s

Own amici recognize, it would be perverse to afford the benefits of

the doctrine of equivalents to patentees who use the vaguest claim

language, while denying it to those who set forth their claims

clearly and distinctly. Br. of Intellectual Property Owners 14-15.

Moreover, since 1952, the lower courts have applied the

doctrine of equivalents in hundreds of decisions.” Congress has

taken no action indicating that it disagrees with this interpretation

of the patent laws, even though Congress has felt the need to amend

that “represents a longstanding statutory construction that Congress has

consistently refused to disturb, even when revisiting this specific area of

law”); Harper & Row v. Nation Enterprises, 471 U.S. 539, 549 (1985)

(concluding that Congress meant to incorporate in the Copyright Act the

common law regarding “fair use”); Tower v. Glover, 467 U.S. 914, 920

(1984) (inferring from legislative silence that Congress did not intend to

abrogate common-law immunities for governmental officers when it imposed

liability under 42 U.S.C. § 1983).

® Although equivalence analysis under § 112, 4 6 is not the same as that

under the doctrine of equivalents, see Valmont Indus., Inc. v. Reinke Mfg. Co.,

983 F.2d 1039, 1043 (Fed. Cir. 1993), the statutory change indicates that

” By our count, the doctrine has been applied since 1952 in 177 published

decisions in the courts of appeals and 342 decisions in the district courts.

17

the patent code on numerous occasions during this time.”

Congressional acquiescence in this established judicial practice —

and Congress’ ability to change it prospectively at any time —

counsel heavily against departing from the doctrine of equivalents.

“Considerations of state decisis have special force . . . [where]

Congress remains free to alter what [this Court] ha[s] done.’”

Eastman Kodak Co. v. Image Technical Services, Inc., 504 U.S.

451, 479 n.29 (1992) (quoting Patterson v. McLean Credit Union,

491 U.S. 164, 172-73 (1989)).

C. Under Markman and this Court’s 19th-Century

Predecents, Application of the Doctrine of Equivalents

Must Be Left for the Jury

In Markman v. Westview Instruments, Inc., No. 95-26, 64

U.S.L.W. 4263 (Apr. 23, 1996), this Court clarified the respective

roles of the judge and jury in suits for patent infringement. This

Court began by observing that “there is no dispute that infringement

cases today must be tried to a jury, as their predecessors were more

than two centuries ago.” Id. at 4265. This Court further noted that,

at common law, juries were charged with the responsibility of

deciding not only the historical question of whether infringement

occurred, but also factual questions relating to enablement (whether

the specification described the invention well enough to permit

members of the trade to reproduce it) and novelty (whether any

essential part of the patent had been previously disclosed to the

public). Jd. at 4266. This Court indicated that these sometimes

complex and technical questions were solely for the jury.

But this Court found that there was insufficient evidence

regarding 18th-century practice in patent cases “to support an

argument by analogy that today’s construction of a claim should be

a guaranteed jury issue.” Jd. This Court focused on the fact that

claims interpretation is essentially an exercise in reviewing

documentary evidence, and it remarked that “in other kinds of cases

during this period judges, not juries, ordinarily construed written

" Section 112, for example, was amended in 1965, see Pub. L. 89-83, § 9,

79 Stat. 261, and again in 1975. Pub. L. 94-131, § 7, 89 Stat. 691.

18

documents.” Jd.

This Court also consulted 19th-century American practice, and

it found instructive Justice Curtis’ explication of the elements of a

patent infringement claim: “construing the patent . . .‘is an issue of

law, to be determined by the court,’” while “determining whether

infringement occurred . . . ‘is a question of fact, to be submitted to

a jury.’” Id. at 4267 (emphasis added and quoting Winans v.

Denmead, 56 U.S. at 338). All of the considerations invoked in

Markman demonstrate that application of the doctrine of

equivalents is properly reserved for the jury.

1. Unlike claim construction, the doctrine of equivalents has

always been a matter for the jury as part of the inquiry into whether

infringement has occurred.” The doctrine of equivalents is not part

of the process of claim construction, which this Court held in

Markman was properly reserved for the court. Rather, just as the

jury must determine literal infringement through its common sense

and understanding of technical issues, so it must also decide

infringement under the doctrine of equivalents using the same tools

it would use to resolve the issue of literal infringement.

The rule is long-settled that “whether two arts or devices are

‘equivalent’ is a matter of fact for the jury.” 1 William C.

Robinson, THE LAW OF PATENTS FOR USEFUL INVENTIONS § 246, at

336 n.1 (1890). The doctrine of equivalents was applied in a 1676

infringement action tried before a jury. Administrators of Calthorp

v. Waymans, 84 Eng. Rep. 966 (K.B. 1676). Consistent with

English common-law practice,” Justices Story and Washington,

"2 Although sometimes described as “equitable,” the doctrine of equivalents

has that flavor only in the broadest sense of reflecting “general fairness,” not

in the sense of the law-equity distinction for Seventh Amendment purposes.

Pet. App. 16a. Notably, Graver Tank did not characterize the doctrine as

“equitable.”

"° See Huddart v. Grimshaw, 1 Webs. Pat. Cas. 85, 95 (1803) (jury to

determine whether “the same effect in substance is produced”); Hill v.

Thompson and Forman, | Webs. Pat. Cas. 239, 242 (1818) (jury asked

“whether the mode of working by the defendant has, or has not, been

essentially or substantially different”); Jones v. Pearce, 1 Webs. Pat. Cas. 122,

19

riding circuit in 1814 and 1817, held that juries were to apply the

doctrine of equivalents. See pp. 8-9, supra. And when the full

Court first encountered the doctrine — in a legal action for

infringement — it squarely held that the question of “whether, in

point of fact, the defendant’s [devices] did copy the plaintiff's

invention, in the sense above explained [i.e., by an equivalent], is

a question for the jury.” Winans v. Denmead, 56 U.S. (iS How.)

330, 344 (1853). This Court has never retreated from that basic

principle where the jury is the trier of fact.

In Tucker v. Spalding, 80 U.S. (13 Wall.) 453, 455 (1872), for

example, this Court explained that disputed factual issues on the

question of the “diversity or identity” of the patented and accused

devices “must be submitted to the jury, if there is so much

resemblance as raises a question at all.” This Court added:

And though the principles by which the question must be

decided may be very largely propositions of law, it still

remains the essential nature of the jury trial that while the

court may on this mixed question of law and fact, lay down

to the jury the law which should govern them, so as to guide

them to truth, and guard them against error, and may, if they

disregard instructions, set aside their verdict, the ultimate

response to the question must come from the jury.

124 (1832) (jury instructed: “if you think it is applied in the same way as

according to the plaintiff's patent . . . then the want of two or three

circumstances in the defendant’s wheel, which are contained in the plaintiff's

specification,” would not preclude infringement); Morgan v. Seaward,

Goodeve’s Pat. Cas. 307, 307 (1835) (“You [the jury] are to look to the

substance and not to the mere form”); Walton v. Potter & Horsfall, 1 Webs.

Pat. Cas. 585, 587 (1841) (jury to “see whether in reality, in substance, and in

effect, the defendants have availed themselves of the plaintiff's invention”);

De La Rue v. Dickenson, Goodeve’s Pat. Cas. 164, 166 (1857) (whether “the

defendant has used substantially the same means to obtain the same result” is

question “which the judge is bound to submit to the jury”); John Norman,

NORMAN ON PATENTS *134 (1853) (“{T]Jhe jury must consider whether the

defendant’s machine is only colourably different. . . . [T]he jury should look

to the substance, and not the mere form; and if it is in substance an

infringement, they ought to find it so.”).

20

Id. So too in Gould v. Rees, 82 U.S. (15 Wall.) 187 (1872) — on

which this Court relied in Graver Tank, 339 U.S. at 608 — this

Court explained a century and a quarter ago that “if the ingredient

substituted performs substantially the same function as the one

withdrawn it would be correct to instruct the jury that such a

substitution of one ingredient for another would not avoid the

charge of infringement.” 82 U.S. at 193 (emphasis added).

Similarly, in Coupe v. Royer, 155 U.S. 565 (1895), this Court

remarked that it had “had occasion, more than once, to reverse the

trial courts for taking away from the jury the question of

_infringement,” including whether differences between the devices

are “material.” Id. at 577, 579; see also Royer v. Schultz Belting

Co., 135 U.S. 319, 325 (1890) (“whether the defendant's machine

infringed [the patentee’s] claims, was a question of fact for the jury

to determine, on a!] the evidence which the case might present. It

was not a matter of mere judicial knowledge that the mechanical

differences between the two machines were material”); Keyes v.

Grant, 118 U.S. 25, 36 (1886) (whether patent and publication

“described the same thing . . . was a question of fact properly left

for determination to the jury”); Tyler v. Boston, 74 U.S. (7 Wall.)

327, 330-31 (1869) (“whether one compound of given proportions

is substantially the same as another compound varying in the

proportions — whether they are substantially the same or

substantially different — is a question of fact and for the jury”);

Carver v. Hyde, 41 U.S. (16 Pet.) 513, 520 (1842) (“whether the

manner was the same in substance or not, was a question of fact for

the jury”).

™ See also May v. County of Fond Du Lac, 27 F. 691, 697 (C.C_B.D.Wis.

1886) (“whether the defendant has used substantially the same means, or

is a question for the jury to determine.”); Tatham v. Le Roy, 23 F. Cas. 718,

719 (C.C.S.D.N.Y. 1850) (No. 13,762) (jury was charged to decide whether

devices “were substantially different from those of the plaintiffs”);

Blanchard’s Gun-Stock Turning Factory v. Warner, 3 F. Cas. 653, 658

(C.C.D.Conn. 1846) (No. 1,521) (“We think it was a questiom of fact for the

jury whether this was a substantial variation or not”); Smith v. Pearce, 22 F.

21

2. Submitting the issue of equivalents to the jury is but a logical

corollary of the rule that, as this Court recognized in Markman,

factual disputes relating to the question of infringement have, under

the Seventh Amendment, always been decided by a jury when it is

the trier of fact. 64 U.S.L.W. at 4265, 4267. Indeed, in Markman,

this Court discussed the decision in Bischoff v. Wethered, 9 Wall.

812 (1870), in precisely these terms. This Court explained that

Bischoff is “a case in which the Court drew a line between issues of

document interpretation and product identification, and held that

expert testimony was properly presented to the jury on the latter,

ultimate issue, whether the physical objects produced by the patent

were identical.” 64 U.S.L.W. at 4268 In Markman, this Court

acknowledged that Bischoff had recognized the primacy of the jury

over questions regarding “‘the character of the thing invented,

which is sought in questions of identity and diversity of

inventions.”” Jd. (quoting Bischoff, 9 Wall. at 816).

Also instructive in this respect is Silsby v. Foote, 55 U.S. (14

How.) 218 (1852), where the opinion for the Court was delivered

by Justice Curtis, the very jurist whose views this Court found

authoritative in Markman. See 64 U.S.L.W. at 4267. In Silsby,

Justice Curtis held for the Court that a trial judge properly “left . .

. matter[s} of fact to the jury” in determining that the jury was to

decide whether an accused device had infringed upon a patented

stove. 55 U.S. at 225.

The issue in Silsby was almost identical to that under the

doctrine of equivalents: whether the defendant had made a

substantial change from the patent claim. In Silsby, the trial court

had ruled that the patent covered “a combination of such of the

described parts as were combined and arranged for producing a

particular effect, viz., to regulate the heat of the stove.” Jd. at 225.

But this construction of the patent claim still left a dispute as to

Cas. 619, 620 (C.C_D.Ohio 1840) (No. 13,089) (“The jury are to judge by an

inspection of the models and from the evidence, whether the two machines

differ in principle.”); Alden v. Dewey, | F. Cas. 329, 330 (C.C_D.Mass. 1840)

(No. 153) (Story, Circuit Justice) (asking jury, “Are the means used

substantially the same, although not in every minute particular?”’).

22

which parts were necessary to regulate the heat of a stove. The trial

court left this question to the jury. The defendants objected,

“desir[ing] the Judge to instruct the jury that the index, the

detaching process, and the pendulum, were constituent parts of this

combination.” Jd.

But this Court rejected that challenge: “How could the Judge

know this as a matter of law? . . . [I]t therefore became a question

for the jury, upon the evidence of experts, or an inspection by them

of the machines, or upon both, what parts described did in point of

fact enter into, and constitute an essential part of this combination.”

Id. at 226. This Court explained that it was “a question of fact

which of the described parts are essential to produce that result; and

to this extent, not the construction of the claim, strictly speaking,

but the application of the claim, should be left to the jury.” Jd.

Silsby, in conjunction with Winans — authored by the same

Justice one year later — makes historical practice clear. In Winans,

this Court reversed a circuit court that had refused to submit the

equivalence question to the jury, and in Silsby, this Court upheld

the submission of similar issues to the jury.

3. In Markman, this Court reached the conclusion that the

historical evidence was ambiguous regarding the jury’s role in

interpreting the language of patent claims. Only then did this Court

find it useful to look to “functional considerations” (64 U.S.L.W.

at 4268) in determining the jury’s proper role. Here, there is no

ambiguity and thus no need to consider such matters because this

Court has held for more than a century that the equivalence

question is to be decided by a jury. In any event, practical concerns

in this case also militate in favor of the right to jury trial.

In Markman, this Court noted that, at common law, construction

of written documents was a task traditionally performed by judges

rather than juries. Jd. at 4266. And, with respect to contemporary

turn on “credibility judgment({s]” or courtroom evaluations of

witnesses but rather would typically hinge on review of a cold

written record — a process peculiarly within the expertise of

judges. 64 U.S.L.W. at 4268.

By contrast, application of the doctrine of equivalents involves

23

broad-based “inquiries of fact,” Continental Paper Bag Co. v.

Eastern Paper Bag Co., 210 U.S. 405, 416 (1908), that are

obviously not limited to construing written documents. As this

Court observed in Graver Tank:

A finding of equivalence is a determination of fact.

Proof can be made in any form: through testimony of

experts or others versed in the technology; by documents,

including texts and treatises; and, of course, by the

disclosures of the prior art. Like any other issue of fact,

final determination requires a balancing of credibility,

persuasiveness and weight of evidence.

339 U.S. at 609-10.

Nor does any supposed need for uniformity — another practical

consideration that this Court discussed in Markman only after

concluding that the historical evidence was ambiguous — justify

denial of the Seventh Amendment right to jury trial. Markman

analyzed the value of uniformity solely in the context of

“submitting issues of document construction to juries.” 64

U.S.L.W. at 4269 (emphasis added). The separate question of

infringement has always been a fact-dependent one on which

different juries may reach different answers as to different accused

devices. If an infringer prevails before one jury, offensive collateral

estoppel can restrict a patentee’s ability to relitigate an issue.

Blonder-Tongue Laboratories, Inc. v. University of Illinois

Foundation, 402 U.S. 313 (1971). Conversely, if the patentee

prevails, a second infringer with separate counsel and possibly

different evidence is entitled to its own opportunity to litigate the

issue. If a supposed need for uniformity could justify trenching on

the jury’s role in applying the doctrine of equivalents, it could

justify invading any other aspect of the jury’s role in determining

whether infringement has occurred — and in fact any aspect of the

jury’s role in any kind of case in federal court, for different juries

are typically allowed to reach different answers as to whether a

given product was defective or particular conduct was negligent.

Accordingly, under Markman, the Seventh Amendment requires

that factual disputes involving applications of the doctrine of

24

equivalents be submitted to a jury where it is the trier of fact.

4. This does not mean, of course, that the jury is free from all

constraint in deciding the question. The court must instruct the jury

regarding the proper test to apply (i.e., function, way, result), just

as it must with any legal standard — like negligence, product

defect, unreasonable restraint of trade, and punitive damages. The

Court of Appeals stressed below that the doctrine of equivalents “is

an issue of fact to be submitted to the jury in a jury trial with proper

instructions.” Pet. App. 17a (emphasis added). There need be no

danger that the jury will be left without sufficient guidance. And

the trial court retains the power to grant judgment as a matter of

law and a new trial where appropriate. Fed. R. Civ. P. 50 and 59.

There is no occasion, however, for going further and strait-

jacketing the jury by instructing it precisely how to apply the

doctrine of equivalents in a particular case. See Br. of Information

Technology Industry Assn. and Intel Corp. 13 (jury must have

“instructions from the court that circumscribe the appropriate

function/way/result parameters”)."*

First, under Fed. R. Civ. P. 51, the content of jury instructions

is not properly before this Court because Warner-Jenkinson did not

object at trial to the instructions given regarding the doctrine of

equivalents. Pet. App. 21a.

Second, this Court has already rejected amici’s proposal. In

Silsby, this Court held that a judge could not “know . . . as a matter

of law” the sort of factual information that amici seek to have

incorporated in the jury instructions. 55 U.S. at 226. See also

Markman, 64 U.S.L.W. at 4267 (“In order to resolve the Bischoff

*S The United States represents only that “it is inclined to believe that

“reference of the entire issue to the jury was erroneous” (Br. of United States

16 n.3) — a position that would leave substantial authority in the jury. The

should decide “all aspects of claim interpretation — liter. and equivalent” but

that “[flactual issues of what the accused device or process is, and whether it

falls within the judge-defined claim scope, are reserved to the jury.” Br.

Amicus Curiae 11. Both briefs were submitted before this Court's decision

in Markman, and neither brief addresses the tradition of reserving the

equivalents issue to the jury.

25

suit implicating the construction of rival patents, we considered

‘whether the court below was bound to compare the two

specifications, and to instruct the jury, as a matter of law, whether

the inventions therein described were, or were not, identical.’ 9

Wall. at 813 (statement of the case). We said it was not bound to do

that, on the ground that investing the court with so dispositive a

role would improperly eliminate the jury’s function in answering

the ultimate question of infringement.”); Coupe v. Royer, 155 U.S.

at 578 (“counsel cannot require the court to compare the two

specifications and to instruct the jury, as a matter of law, whether

the inventions therein described are or are not identical’); May v.

County of Fond Du Lac, 27 F. 691, 696-97 (C.C.E.D.Wis. 1886)

(“An infringement involves substantial identity . . . . No certain,

definite rule can be stated by which to determine unerringly, in

every case, what will amount to substantial identity. The jury,

guided by general principles, must determine each case upon its

own circumstances.”’) (citation omitted).

Third, there are sound reasons behind the traditional rule.

Instructing the jury as a matter of law what is or is not

“substantially the same” would often predetermine the verdict’s

outcome and rob the right to jury trial of all meaning. Conversely,

the district court would be converted from a tribunal of law to one

of science and technology. But district court judges are not

“amateur scientists.” Daubert v. Merrill Dow Pharmaceuticals,

Inc., 113 S. Ct. 2786, 2800 (1993) (Rehnquist, C.J., concurring in

part and dissenting in part).

Petitioner’s amici urge this Court to place artificial restraints

upon the jury that are inconsistent with the Seventh Amendment

and not used in any other type of case in the federal courts. “There

is neither reason nor authority for employing in a patent trial

procedures and practices different from those employed in any

other civil trial. Indeed, reason and authority mandate the

contrary.” Chief Judge Howard T. Markey, On Simplifying Patent

Trials, 116 F.R.D. 369, 370 (1987).

26

Il. ANY CHANGE IN THE DOCTRINE OF EQUIVALENTS

SHOULD BE MADE PURELY PROSPECTIVE

For all of the above reasons, this case presents no occasion to

depart from the well-established contours of the doctrine of

equivalents. But if there were to be any revision in this rule

developed by the federal judiciary for almost two centuries, it

would at least have to be undertaken with due regard for the settled

property rights of patent holders. Accordingly, any ruling in favor

of petitioner should be made purely prospective.

1. This Court has long recognized that “[c]onsiderations of

stare decisis are at their acme in cases involving property and

contract rights, where reliance interests are involved.” Payne v.

Tennessee, 501 U.S. 808, 828 (1991). The principle is especially

salient in this case, for it cannot be disputed that “[rJights secured

to an inventor by letters-patent are property which consists in the

exclusive privilege of making and using the invention, and of

vending the same to others to be used, for the period prescribed by

the Patent Act.” Union Paper-Bag Mach. Co. v. Murphy, 97 U.S.

(7 Otto) 120, 120 (1877). In addition, the confidential proprietary

information disclosed by patentees as part of the patent process is

itself a valuable and constitutionally protected property right. See

Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1003-04 (1984).

Before deciding whether to commit the substantial sums

necessary to develop a new product or process, and to submit a

patent application disclosing the invention to the world, a patentee

weighs the strength, breadth, and enforceability of a prospective

patent, together with other market benefits and risks. In a very real

and practical sense, part of a patent holder’s property encompasses

the extant legal rules upon which he is entitled to rely to enforce his

property. The doctrine of equivalents is a significant element in

that bundle of rules. Even petitioner’s amici concede that “[t}he

doctrine of equivalents affects a host of significant business

decisions, including: whether to launch products into or remove

them from commerce; whether or how to alter designs of products,

processes, and machines; and whether to seek or grant licenses.

Those decisions influence not only enormous financial

commitments but also momentous changes in investment

27

decisions.” Br. of Information Technology Assn. and Intel Corp.

3.

“Investment-backed expectations” are the essence of private

property rights. Penn Central Transp. Co. v. City of New York, 438

U.S. 104, 124 (1978). To abolish the doctrine of equivalents or

reduce it to a mere opportunity to appeal to a judge’s discretion, cf.

Perry v. Sindermann, 408 U.S. 593, 603 (1972) (essence of

property is more than “subjective expectancy”), would defeat the

settled expectations of existing patent holders who justifiably relied

on that doctrine’s role in “expand[ing] the right to exclude to

‘equivalents’ of what is claimed.” Br. of United States 15 (quoting

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

677, 684 (Fed. Cir.), cert. denied, 498 U.S. 992 (1990))."*

2. This Court has long held that “rights secured under the grant

of letters patent by the United States [a}re property and protected

by the guarantees of the Constitution and not subject therefore to be

appropriated even for public use without adequate compensation.”

William Cramp & Sons Ship & Engine Bldg Co. v. International

Curtis Marine Turbine Co., 246 U.S. 28, 39-40 (1918). To alter,

retroactively, the terms on which a patent is granted would work an

obvious taking of private property. See, e.g., Richmond Screw

' Petitioner argues that there can be no justifiable reliance on a doctrine

that “has been the subject of expansion, contraction, refinement, and

questioning since the Federal Circuit was created.” Pet. Br. 49. But such

incremental modifications are in the nature of judge-made law. The alleged

“meanderings” to which petitioner refers (Pet. Br. 49 n.33) plainly concern

peripheral issues, not the existence of the doctrine of equivalents itself. In

light of this Court’s authoritative decision in Graver Tank, which has now

been reaffirmed twice by en banc decisions in the Federal Circuit — once in

the instant case, and a decade ago in SR/ Intern. v. Matsushita Corp. of

America, 775 F.2d 1107, 1123-24 (Fed. Cir. 1985) — the justifiability of

relying on the doctrine cannot be doubted. See Chief Judge Howard T.

Markey, The Federal Circuit and Congressional Intent, 41 AM. U.L. REV.

577, 579 (1992) (“Such case-by-case development of the law is normal and

will doubtless continue. . . . [MJost observers would agree that a combination

of careful decisionmaking and willingness to correct error have resulted in a

substantial and consistent body of jurisprudence, the study of which enables

counsel to more confidently advise a clientele.”).

28

Anchor Co. v. United States, 275 U.S. 331, 345 ( 1928) (elimination

of infringement action “is an attempt to take away from a private

citizen his lawful claim for damage to his property by another

private person, which but for this act he would have against the

private wrongdoer. This result . . . would seem to raise a serious

question . . . under the Fifth Amendment to the Federal

Constitution.”).

Unlike the Impairment of Contracts Clause, which applies only

against legislatures, Tidal Oil Co. v. Flanigan, 263 U.S. 444 (1924),

the Takings Clause forbids uncompensated confiscation by the

judiciary as well as by the legislative branch. See, e.g., Lucas v.

South Carolina Coastal Council, 505 U.S. 1003, 1031 (1992);

Webb's Fabulous Pharmacies, Inc. v. Beckwith, 449 U.S. 155, 164

(1980). “No more by judicial decree than by legislative fiat may a

[government] transform private property into public property

without compensation.” Stevens v. City of Cannon Beach, 114 S.

Ct. 1332, 1334 (1994) (Scalia, J., joined by O’Connor, J.,

dissenting from the denial of certiorari). “

The absence of confiscatory intent does not excuse a judicial

taking of property. Hughes v. Washington, 389 U.S. 290,

(1967) (Stewart, J., concurring). And the absence of congressional

authorization for the kind of judicial taking that retroactive

overruling of Graver Tank would entail means that such a judicial

action would be even more constitutionally problematic than a

confiscation by the political branches, which would typically

trigger a right to pursue relief under the Tucker Act, 28 U.S.C. §

1491(a)(1). See Regional Rail Reorganization Act Cases, 419

U.S. 102, 127 n.16 (1974).

We need not show that a retroactive overruling of Graver Tank

would serve the interests only of a few private litigants, like

petitioner here. Even conceding that the public use requirement

might be met, see Hawaii Housing Auth. v. Midkiff, 467 U.S. 229,

239-44 (1984), one of the principal purposes of the Takings Clause

is “to bar Government from forcing some people alone to bear

public burdens which, in all fairness and justice, should be borne by

the public as a whole.’” Dolan v. City of Tigard, 114 S. Ct. 2309,

2316 (1994) (quoting Armstrong v. United States, 364 US. 40, 49

(1960)).

3. Even apart from the Takings Clause, commitment to the rule

of law and respect for its presupposition of governmental regularity,

both of which the Due Process Clause embodies, would forbid a

sudden change in judicial course that would upset the settled and

legitimate expectations of patent holders. In Heckler v. Community

Health Services, 467 U.S. 51 (1984), this Court observed that,

“when the Government acts in misleading ways, it may not enforce

the law if to do so would harm a private party as a result of

governmental deception.” Jd. at 61 n.12 (citing, inter alia, Kaiser

Aetna v. United States, 444 U.S. 164, 178-80 (1980), and

Santobello v. New York, 404 U.S. 257 (1971) (due process)); see

also Raley v. Ohio, 360 U.S. 423, 438-40 (1959) (due process).

The Heckler Court further noted that “this principle also underlies

the doctrine that an administrative agency may not apply a new rule

retroactively when to do so would unduly intrude upon reasonable

reliance interests.” 467 U.S. at 61 n.12 (citing NLRB v. Bell

Aerospace Co., 416 U.S. 267, 295 (1974)). Precisely the same

principle is applicable here.

4. The rule now adopted by a majority of this Court under

which decisions of federal constitutional law are ordinarily given

retroactive effect, see Harper v. Virginia Dept. of Taxation, 113 S.

Ct. 2510 (1993), has no application here — and, even if it did, it

plainly would necessarily be overridden by the takings and due

Process constraints outlined above. The doctrine of equivalents is

a judicially developed doctrine. Altering it prospectively would

present none of the jurisprudential tensions that arise when a

prospective-only ruling amounts to a denial that a text — either the

Constitution itself, as in Harper, or a federal statute, see Plaut v.

Spendthrift Farm, Inc., 115 S.Ct. 1447, 1451 (1995) — has had the

same meaning since its enactment. There are no such tensions

when this Court is engaged in elaborating judge-made law under a

statutory scheme that has always been understood as leaving this

Court with authority to develop supplemental rules of law, subject

to congressional override. Cf. Miles v. Apex Marine Corp., 498

U.S. 19, 33-36 (1990) (admiralty law); Textile Workers v. Lincoln

Mills of Alabama, 353 U.S. 448, 451 (1957) (§ 301(a) of the Taft-

30

Hartley Act, 29 U.S.C. § 185(a)); Standard Oil v. United States,

221 U.S. 1, 69-70 (1911) (§ 1 of the Sherman Act, 15 U.S.C. § 1).

Therefore, if there were an appropriate retroactivity axiom in this

case, it would be the rule that positive-law enactments like statutes

are presumed to have only prospective effect. E.g., Landgraf v. USI

Film Prods., 114 S. Ct. 1483, 1497 (1994) (presumption against

retroactivity is rooted in “[e]lementary considerations of fairness”

and policy that “settled expectations should not be lightly

disrupted”).

CONCLUSION

The judgment of the Court of Appeals should be affirmed;

alternatively, any substantive restriction in the protection of patents

by the doctrine of equivalents should be made purely prospective

and applicable only to patent applications filed after the date of

decision in this case, or at most to patents issued after that date.

Respectfully submitted.

FREDERICK A. LORIG LAURENCE H. TRIBE

BRIGHT & LORIG Counsel of Record

633 West Sth Street JONATHAN S. MASSEY

Los Angeles, CA 90274 Hauser Hall 420

(213) 627-7774 1575 Massachusetts Ave.

Cambridge, MA 02138

JOHN E. PRESTON (617) 495-4621

VICTORIA T. MCGHEE

LITTON INDUSTRIES

21240 Burbank Blvd.

Woodiand Hills, CA 93167

Counsel for Amicus Curiae

May 13, 1996