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

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385013_0663%3A26

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 1997
- **Citation:** 520 U.S. 17

## Text

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WARNER- JENKINSON COMPANY,
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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385013_0663%3A26. Public record. Not legal advice.