Amicus Curiae Brief — Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

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, Supreme Court. US

Au& 3) 200| a FILED

No. 00-1543 AUG $1 2001

! CLERK

IN THE

Supreme Court of the United States

FESTO CORPORATION,

Petitioner,

Vv.

SHOKETSU KINZOKU KOGYO KABUSHIKI Co., LTD a/k/a

SMC CORPORATION AND SMC PNEUMATICS

Respondent.

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF

APPEALS FOR THE FEDERAL CIRCUIT

BRIEF OF AMICI CURIAE INTELLECTUAL

PROPERTY CREATORS AND THE SOCIETY OF

AMATEUR SCIENTISTS IN SUPPORT OF

PETITIONER

STEVEN L. WINTER

Brooklyn Law School

250 Joralemon Street

Brooklyn, NY 11201

(718) 780-7550

Counsel for Amici

TABLE OF CONTENTS

RELIANCE ON THE LITERAL LANGUAGE OF THE PA-

TENT IS MISPLACED, IS AS LIKELY TO UNDERMINE

CERTAINTY AS ADVANCE IT, AND WILL CERTAIN-

LY LEAD TO ARBITRARY RESULTS

TABLE OF AUTHORITIES

Cases:

Colorado v. Connelly, 479 U.S. 157 (1986). ....... 19 n.36

Cooper v. Dasher, 290 U.S. 106 (1933) .......... 17.31

Culombe v. Connecticut, 367 U.S. 568 (1961)...... 20 n.37

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,

234 F.3d 558 (Fed. Cir. 2000) ........... 3-5, 5-6 nn.2-3,

9n.7, 10 n.10, 27 n.53

Fonar Corp. v. General Electric Co., 107 F.3d 1543 (Fed. Cir.

1997), cert. denied, 522 U.S. 908 (1997).............. 2

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

339 U.S. C05 CIGGR) 2 nc cccscvsseueeseeee 25 & n.47

Halliburton Oil Well Cementing Co. v. Walker,

sy DS ST). 25 n.47

Machine Co. v. Murphy, 97 U.S. 120 (1878) ..... 25 & n.46

McCulloch v. Maryland, \7 U.S. (4 Wheat.)

316 (1819)... oe ces sede 17 n.30

Miller v. Fenton, 474 U.S. 104 (1985)... ......... 19 n.36

Monaco v. Mississippi, 292 U.S. 313 (1934) ....... 17 2.30

Royal Typewriter Co. v. Remington Rand, Inc.,

168 F.2d 691 (2d Cir. 1948) .......... 9 n.8, 29 nn.60-61

Telectronics Proprietary, Lid. v. Medtronic, Inc., 687 F. Supp.

ee ce ek cccceuncccscéeccece 2

Towne v. Eisner, 245 U.S. 418 (1918) ............ 24 n.44

Warner-Jenkinson Co. v. Hilton Davis Chemical Co.,

$20 U.S. 17 (1997) ............ 25-26 nn.47-48 & 50-51

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

Ns ck ew ecccccccs 5 n.1, 9 nn.8-9

Wright Co. v. Herring-Curtiss Co., 177 Fed. 257 (W.D.N.Y

1910), rev'd, 180 F. 110(2d Cir. 1910)........... 15 n.25

Wright Co. v. Herring-Curtiss Co., 204 F. 597 (W.D.N_Y.

1913), aff'd, 211 F. 654 (2d Cir. 1914) _... 15n.25, 160.26

Wright Co. v. Paulhan, 177 F. 261 (S.D.N.Y 1910) . 16n.27

Statutes:

I OUD ws ccc cc cecccccccccces 25 n.47

Other Authorities:

Braben, Donald, 7o Be a Scientist: The Spirit of Adventure

in Science and Technology (1992) .............. 28 n.57

Coase, Ronald, The Problem of Social Cost, reprinted in

The Firm, the Market, and the Law(1988) ........ 6-7 n.4

Crouch, Tom, The Bishop's Boys: A Life of Wilbur and

Orville Wright (1989) ............. 14 nn.23-24, 16 n.27

-iii-

Dannon, Gene, Leo Szilard Online, http://www.dannen.com/

ns hE Sel ota een eee 11.13

Dreyfus, Hubert L., What Computers Stl Can't Do: A

Critique of Artificial Reason (2d ed. 1979) ........ 18.34

Everson, George, The Story of Television: The Life of Philo T.

ES 16 nn.28-29

Godfrey, Donald, Philo T. Farnsworth: The Father of

SEE nic cos ceceuewaenaeacane es 16 n. 28

Hart, H.L.A., The Concept of Law (1961) ......... 26 n.52

Holland, Dorothy & Naomi Quinn, Culture and Cognition,

in Cultural Models in Language and Thought (D. Holland

i f aan ere 181.34

Holmes, Oliver Wendell Jr., Zhe Common Law (Mark

CED « ccd ccucensbatbecteewens 26 n.49

Howard, Fred, Wilbur and Orville: A Biography of the Wright

PP ccc cvecuceveuucawagus 14 n.23, 16.27

Kuhn, Thomas S., The Structure of Scientific Revolutions

Fe 13 &n.21, 23 &n 41, 28n 54

Kuhn, Thomas S., Second Thoughts on Paradigms, in The

Structure of Scientific Theories (Frederick Suppe

Pe er eer rire 27 n.52

Kuhn, Thomas S., Black Body Theory and the Quantum

Discontinuity, 1894-1912 (1978)... 2.620 oo oe. 28 n.55

-IV-

Lakoff, George, Women, Fire, and Dangerous Things: What

Categories Reveal about the Mind (1987) 13-14 n.22, 18 n.33

Lanouette, William, Genius in the Shadows: A Biography of Leo

Szilard, The Man Behind the Bomb (1994) _....... 11 n13

Lopez,Gerald P. Lay Lawyering, 32 UCLA L.

EL ee pe tte epee 14n.22

Markey, Howard T., Some Patent Problems: Philosophical,

Philological, and Procedural, 80 F .R.D.

ee ee pe ee 10 & nn.10-11

Murray, Ernest, Commentary: I'm Glad I Didn't Say That,

Cox News Service, May 14,1999 ............... 13 n.20

Nutt, Amy Ellis, Indispensable Post-it Notes Didn't Stick at

First; 20 Years Later, Billions Have Been Soild, Posted,

The Times-Picayune, April 16,2000 ............. 28 n.56

Perkins, David N. & Robert J. Weber, Conclusion: Effable In-

vention, in, Inventive Minds: Creativity in Technology

(R.J. Weber & D.N. Perkins eds..1992) ........... 28 n.57

Popper, Karl R., The Logic of Scientific Discovery

Eg ee 2 as ae 22 n.40

ee ee 26 n.51

Quigg, Donald, Technology on the Move: The Role of Patents,

in Inventive Minds: Creativity in Technology

(R. Weber & D. Perkins eds. 1992).... _.... 29 nn. 58-59

Random House Dictionary of the English Language

(2d ed. unabridged 1987)...................4... 20 n.39

Roberts, Edward, Jnfluences on Innovation: Extrapolations

to Biomedical Technology, in Biomedical Innovation (E.

Roberts, R. Levy, S. Finkelstein, J. Moskowitz, & E.

ED GED < vaccivsuccevcsescvecedee: lin12

Root-Bernstein, Robert Scott, Discovering: Inventing and

Solving Problems on the Frontiers of Scientific

Knowledge (1989) .... 11.14, 12 &n.18, 131.21, 28.57

Rosch, Eleanor, Principles of Categorization, in Cognition and

Categorization (E. Rosch & B. Lloyd eds., 1978) .. . 18.33

Schauer, Frederick, Formalism, 97 Yale L.J. 509

SE. ccnndesiinanyskanaksudibencdedinesss 20 n.38

Schwarcz, Joe, Everyday Chemistry: What Makes a Situation

Sticky, The Washington Post, December 8, 1999 ...28n56

Schwartz, Evan 1., Who Really Invented Television?, Techno-

logy Review, Sept./Oct. 2000, http://www.technologyreview.

com/magazine/sep00/schwartz.asp............... 16 n.28

Sex and Physics: A Talk with Dennis Overbye, The Edge, April

2, 2001, http://www.edge.org/3rd_culture/overbye/

SED 0 cc cccccesctevsvcesesesess 12.17

Sharpe, Rosalinde, The Post-it Is that Rare Thing: A Genuine

Invention, The Independent (London),

SNEED 0.6000 cbs cesdemesssbesvessvecss 122.19

-vi-

Stanley, Autumn, Mothers and Daughters of Invention: Notes

Jor a Revised History of Technology (1993) ....... 11n14

Stinchcombe, Arthur L., When Formality Works: Authority and

Abstraction in Law and Organization (Univ. of Chicago

I avins si heend ae ane ob ows 23-25 & nn.42-45

Weart, Spencer R. & Gertrud Weiss Szilard, eds., Leo Szilard:

His Version of the Facts—Selected Recollections and

Correspondence (1978) ....................... ll n13

Wild, John J., The Origin of Soft-Tissue Ultrasonic Echoing and

Early Instrumental Application to Chemical Medicine,

in Inventive Minds: Creativity in Technology

(R. Weber & D. Perkins eds, 1992).............. 12 n.16

Winter, Steven L., A Clearing in the Forest: Law, Life, and

Mind (Univ. of Chicago Press, 2001).... 13 n.22, 18 nn.32,

18 nn.34-35, 20 n.38, 26 n.49

Winter, Steven L., Making the Familiar Conventional Again,

Se III, 6 so cc cocevccceves 14.22

Wolpert, Lewis, & Alison Richards, Passionate Minds: The

Inner World of Scientists (1997) ................ 12 n.15

Worrel, Rodney, Zhe Wright Brothers’ Pioneer Patent,

65 J. Am. Bar Assoc.1512 (1979) ............... 14 0.23

No. 00-1543

In the

Supreme Court of the United States

FESTO CORPORATION,

Petitioner,

Vv.

SHOKETSU KINZOKU KOGYO KABUSHIKI Co., LTD a/k/a

SMC CORPORATION AND SMC PNEUMATICS

Respondent.

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF

APPEALS FOR THE FEDERAL CIRCUIT

STATEMENT OF INTEREST OF AMICI

Intellectual Property Creators (IPC) is a non-profit orga-

nization founded in 1994 to promote the public interest in tech-

nological innovation by assisting independent entrepeneurial in-

ventors. IPC serves as a clearinghouse for inventors on matters

of patent law and enforcement. It also seeks to influence law and

* Letters from the parties consenting to the filing of this brief have been

filed with the Clerk of the Court. This brief was not authored in whole or

in part by counsel for either of the parties.

-™

public policy to encourage innovation, presenting the perspective

of the small inventor before Congress and as amicus curiae

before this Court and the lower federal courts.

Among IPC’s founding members are several inductees in

the National Inventors Hall of Fame. The founding members in-

clude: Dr. Raymond Damadian, the inventor of magnetic reso-

nance scanning; Dr. Wilson Greatbatch, the inventor of the im-

plantable cardiac pacemaker; Stan Mason, the inventor of

Masonware, the granola bar, and the first shaped, disposable dia-

pers (among others); and Paul Heckel, a software developer,

inventor, and author. Many of IPC’s members or their assigns

have been involved in litigation to enforce their patents against

would-be copyists. See, e.g., Fonar Corp. v. General Electric

Co., 107 F.3d 1543 (Fed. Cir. 1997), cert. denied, 522 U.S. 908

(1997) (Dr. Damadian); Telectronics Proprietary, Lid. v. Med-

tronic, Inc., 687 F. Supp. 832 (S.D.N.Y. 1988) (successor to

Greatbatch patent).

The Society for Amateur Scientists is a membership or-

ganization founded in 1994 and incorporated in the State of

California as a non-profit scientific research and educational

corporation. It joins world-class professionals and citizen scien-

tists with ordinary people to promote the spirit of scientific dis-

covery. Officers and members of the Board of Advisors include

distinguished scientists, inventors, and academics including a

Nobel Laureate, Dr. Douglas D. Osheroff, a winner of the Gug-

genheim Medal, Dr. Paul MacCready, many John D. and Cathe-

rine T. MacArthur Fellows, including Dr. Shawn Carlson and

Professor Robert Scott Root-Bernstein, and several members of

the National Academy of Sciences.

This case presents questions vital to the effectiveness of

the patent system in promoting technological innovation. Amici

bring the unique perspective of the independent scientist and

inventor who, for reasons developed below, play a critical role

in the advancement of science and technology.

-2-

SUMMARY OF ARGUMENT

The Federal Circuit’s en banc decision in Festo severely

limits —indeed, for all practical purposes eviscerates—the more

than 150-year-old doctrine of equivalents. This will prove deva-

stating to the independent scientist and small inventor, putting at

risk the flow of new inventions that has contributed so much to

America’s preeminence in science and technology. Studies in the

history and sociology of innovation have repeatedly shown that

the independent or maverick “outsider” is one of the most im-

portant sources of scientific and technological advancement. For

reasons well documented both in the philosophy of science and,

more recently, in cognitive science, it is those who toil outside

the mainstream of established institutions and assumptions who

are best able to “think outside the box” and envision new ways

of doing things. The abrupt and ill-considered change in the in-

centive structure worked by the decision below will be parti-

cularly devastating to such innovators and, therefore, is likely to

have a deleterious effect on America’s competitive position.

The decision below privileges certainty for the copyist or

follow-on producer over certainty and security for the inventor

or creator. This creates a perverse incentive structure: It encour-

ages the exploitation of discoveries made by others and—simul-

taneously and necessarily—reduces incentives for the successful

inventor to come up with those discoveries in the first place.

This misallocation of incentives is exacerbated in the case of

independent, entrepeneurial inventors who are likely to be un-

dercapitalized relative to the manufacturing corporations respon-

sible for follow-on products. The manufacturer can already com-

pete on size, service, volume, and financing. Under the decision

below, it can now add to its competitive advantage the ability (in

effect) to allocate the risks and costs of discovery to the original

inventor. Because the decision below encourages free riding by

follow-on producers and actively decreases incentives to inven-

tors, the net effect can only be an overall decrease in innovation.

Without the adequate patent protections embodied in the

doctrine of equivalents, the independent inventor has little or no

hope of reaping the benefits of his or her creation. Indeed, had

Festo been the law in 1914, the Wright Brothers would never

have seen a penny from their invention of the airplane.

The decision below trades adequate incentives for inven-

tors for the illusory certainty of the literal language of the patent.

- For the better part of 200 years, our best judges—Marshall,

Holmes, Hughes, Hand, Cardozo, Frankfurter—have recognized

and cautioned against the deceptive simplicity of literal language.

Indeed, until the decision below, one might have said that the

-doctrine of equivalents itself represented the time-tested wisdom

of 150 years of judicial experience with the limitations of literal

language. One might have thought that such a decisive break with

the received wisdom would be justified by some new, more

scientific, more precise understanding of language. But just the

opposite is true: The striking advances in cognitive science over

the last thirty years have revealed both the remarkable complexity

of ordinary language and the degree to which the everyday

experience of literal language actually reflects rather complicated

cognitive processes. Thus, as Judge Linn argued in partial dissent

below, the en banc majority’s rigid, bright-line rule, “simple as it

is hoped to be” (Festo Corp. v. Shoketsu Kinzoku Kogyo Kabu-

shiki Co., Ltd., 234 F.3d 558, 620 (Fed. Cir. 2000)), can only

prove illusive in application. Studies in the cognitive sciences

have shown that the necessarily flexible and adaptive way in

which human minds actually work depends upon purpose, con-

text, and function. Because these considerations are integral to

meaning, there can be no necessary relation between technical

precision and legal certainty. To the contrary, reliance on literal

meaning is as likely to undermine certainty as promote it. To

paraphrase Judge Hand, this is the very phenomenon that led to

the doctrine of equivalents in the first place.

ARGUMENT

L THE EFFECT OF THE DECISION BELOW WILL BE

A NET DECREASE IN SCIENTIFIC AND TECHNO-

LOGICAL INNOVATION

In 1853, Justice Curtis described as an already “familiar

rule” what has since come to be known as the “doctrine of

equivalents.”’ The Federal Circuit’s en banc decision in Festo

severely limits that rule by: (1) extending the doctrine of prose-

cution history estoppel to any amendment relating to patenta-

bility; (2) creating a presumtion that avy amendment is related to

patentability; (3) making that presumption largely irrebutable by

barring evidence outside the prosecution history record that

might bear on the reason for amendment; and (4) ruling that

“once an element of a claim is narrowed by amendment for a rea-

son related to patentability, that element’s scope of coverage will

not extend beyond its literal terms.”* The court below held, in

other words, that estoppel acts as a “complete bar” to the doc-

trine of equivalents. Since virtually all patents are amended during

the application process, the ruling below would—for all practical

purposes—repeal the doctrine of equivalents.

' Winans v. Denmead, 56 U.S. (15 How.) 330, 342 (1853):

It is generally true, when a patentee describes a machine,

. .. that he is understood to intend to claim, and does by

law actually cover, not only the precise forms he has de-

scribed, but all other forms which embody his invention;

it being a familiar rule that, to copy the principle or mode

of operation described, is an infringement, although such

capy should be totally unlike the original in form or pro-

portions.

? Fesio Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d

558, 577, 566, 568, 569 (Fed. Cir. 2000).

In support of this radical reformation of the patent laws,

the en banc court offered the beguilingly simplistic assertion that

its new rule would encourage innovation. It reasoned that the

certainty and predictability of a complete bar would “stimulate

investment in improvements and design-arounds because the risk

of infringement will be easier to determine.”*

This conclusion is almost certainly wrong. Logically, the

complete bar approach can have only one of two consequences:

Either (1) it will work no change in the level of innovation, just

shifting the risk and other costs of innovation onto the party —in

this case, the original inventor—least able to bear it; or (2) it will

result in a net decrease in innovation because, simply put, the ef-

fect of this cost-shin.-g will be that there are fewer inventions to

improve or design-around.

The court below reasoned that the certainty of a complete

bar will reduce the transaction costs of litigation over the scope

of the patent. But, this conclusion assumes that the relevant

choice is between litigation and no-litigation; it already presup-

poses the point of view of the copyist. From the point of view of

the patent holder, the relevant choice is between license and no-

license. To put the point another way, as long as there is a profit

to be extracted from an improvement or design-around, the par-

ties (i.e., the inventor and the follow-on producer) have adequate

incentive to bargain to their mutual advantage.‘ If, for example,

3 Jd. at 577. The court reasoned that —~

under the complete bar approach, technological advances

that would have lain in the unknown, undefined zone

around the literal terms of a narrowed claim under the

flexible bar approach will not go wasted and undeveloped

due to fear of litigation. The public will be free to im-

prove on the patented technology and design around it

without being inhibited by the threat of a lawsuit. . . .

“Cf Ronald H. Coase, The Problem of Social Cost, reprinted in R.H.

COASE, THE FIRM, THE MARKET, AND THE LAW 95-156 (1988) (first ap-

the improvement or design-around enables the producer to manu-

facture the item more cheaply, then it can bargain with the in-

ventor for a license to produce.* With or without a complete bar,

worthwhile improvements and design-arounds will occur.®

What the ruling below does—and, tv be clear, ail it

does—is shift the costs of development (including the initial risk

of failure) onto the inventor. The court below took a myopic

view, considering risk only from the perspective of a copyist

making a decision to manufacture a potentially infringing pro-

duct. But any reasonable analysis of the relationship between risk,

incentive structure, and innovation must consider ail the risks,

including the substantial risks that the inventor takes in pursuing

an invention.

Ex ante, there is no difference between a 10% chance of

a $100 profit and a 100% chance of $10 profit. The process of

pearing in 1960). The exception to the statement in the text is the set of

cases where the transaction costs of negotiation exceed the value of the im-

provement. Given the profits attainable through mass production over the

life of the patent, however, this is not likely to be a large set of cases.

* Conversely, if the value of the invention exceeds the value of the design-

around or improvement, the inventor can bargain with the manufacturer nor

to produce. This latter point makes plain exactly how much of a red herring

the Festo court’s transaction cost analyis really is: The potential producer

(who, obviously, already knows about the invention) can easily identify and

engage in negotiations with the inventor. But the inventor would need first

to identify and then to bargain with each and every potential producer. Ana-

lyzed from a Coasian perspective, the ruling below shifts the costs to the

party who faces the highest information and transaction costs and who is

otherwise least able to bear them.

It remains true that, as the court below observed, there may be uncer-

tainty about the scope of a patent. But there is no reason to think that un-

certainty would fail to be reflected in the price of any negotiated license.

* Of course, if the design-around adds no value—i.e., if it is merely an at-

tempt to avoid patent liability—then there is no real public interest in its

production.

developing and bringing a new product to market is notoriously

filled with uncertainties Will it work? Is there a market for the

product? Will some competing product prove better or mor:

acceptable to the consumer? Can the product be manufactured

and delivered to consumers in a cost-effective manner? Under the

prior patent regime, the inventor assumes these risks in the hop=

of obtaining monopoly profits for the period of any resulting pa-

tent. Once the product has been perfected and a market identifi-

ed, the follow-on producer who can successfully exploit this mar-

ket does so with reduced risk and—under the prior patent regime

—with a profit margin concomitantly reduced by the royalties t

pays to the patent holder. The ruling below inverts this scheme.

Under that ruling, the follow-on producer faces 10% of the ris«

and is nevertheless free to take the lion’s share of the profits. The

inventor, who faced all of the risk, is left holding the bag.

Thus, the decision below encourages free riding by fol

low-on producers and sharply reduces incentives to inventors. It

is elementary economics that if you increase the cost of (a

reduce the rewards for) something, less of that thing will be pro-

duced. The net effect of the decision below can only be an overall

decrease in innovation.

It might be argued that, even under the ruling belov,

inventors still retain the benefits of the monopoly afforded by the

literal terms of the patent and, therefore, that they will have su‘

ficient incentive to innovate. But this argument fails for at least

three reasons.

First: The ruling below puts a premium on avoiding

amendments during the application process so as not to lose the

benefits of the doctrine of equivalents. The stated purpose is to

reduce the transaction costs of subsequent litigation to clarify the

scope of the patent. In effect, then, the ruling below front-encs

the costs of patent litigation onto the application process—in-

creased costs that the small inventors can ill afford, as Judge Linn

observed.’ Thus, even on this more favorable assumption, it re-

mains true that the effect of the decision below will be to depress

innovation because inventors face sharply increased costs.

Second: As a practical matter, the literal terms of the

patent will provide no protection to the patent holder because, as

Judge Hand observed, “it is always, or almost always, possible to

change the form of these as they appear, and yet cull the full

advantage of the discovery.”* Under the ruling below, the inven-

tor faces almost certain economic failure. Previously, the doctrine

of equivalents protected the patent holder from copies “which,

substantially on the same principle and in the same mode of ope-

ration, accomplish the same result .. . ."” By making the literal

terms of the patent the touchstone, the decision below frees the

copyist to design a revised product that achieves exactly the same

” See Festo, 234 F.3d at 620 (Linn, C. J., concurring in part and dissent-

ing in part) (noting that the majority's “new bright line rule... wrongfully

sets in place a regime that increases the cost and complexity of patent pro-

secution to the detriment of individual inventors, start-up companies, and

others unable to bear these increased costs.”).

These increased costs, moreover, are economically inefficient. Cur-

rently, only a small percentage of patents are ever litigated. But inventors

who hope to have their patents benefit from the protections of the doctrine

of equivalents will be incurring these increased costs in every case.

* Royal Typewriter Co. v. Remington Rand, Inc., 168 F.2d 691, 693 (2d

Cir. 1948); see also Winans, 56 U.S. at 342-43 (“[T]he property of inven-

tors would be valueless, if it were enough for the defendant to say, your

improvement consisted in a change of form; you describe and claim but one

form, I have not taken that, and so have not infringed.”).

* Winans, 56 U.S. at 346. Under the decision below, inventors will retain

value in their patents only to the extent that the original invention main-

tains some marginal practical or technological advantage over the copy. But

this will often be illusive. Consider the facts in Winans: Plaintiff had in-

vented and patented a new railroad car for carrying coal whose circular

design better distributed the pressure of the load thus doubling each car’s

capacity. Defendants then made an octagonal car that “for all practical pur-

poses .. . was as good as the other... .” /d. at 340.

results as the patented device in exactly the same way without

fear of patent litigation. The copyist will always be able to pro-

because—even if all other things were equal—it can free ride on

the inventor’s research and development costs.’°

Third: All other things are rarely equal. The fact of the

matter is that the inventor is already at a significant disadvantage

relative to to follow-on producer. On one hand, as Chief Judge

Markey has observed:

Many giant corporations have no need of a patent

system. They may obtain patents, but only as a

would have to negotiate for, instead of just

adding the item to its product line. Many large

corporations would be glad to compete on size,

competitors on any of those bases, unless the

small competitor has a patent on a product some-

body wants to buy.”

As Judge Linn argued below:

[C)onstraining limitations amended for a statutory pur-

pose to their literal terms, is likely to encourage insub-

stantial changes to an established product, rather than in-

vestment in break-through technological advancements.

Such a rule, therefore, promotes free riding and undercuts

the return on a patentee’s investment.

Festo, 234 F.3d at 627; cf. Hon. Howard T. me map ay Myon

(“Patents are not favored by commercial jackals who want to jump in at the

last minute and profit from the efforts of others.”).

'' Markey, surpra note 10, at 210. So, too, large corporations have less of

-10-

made by individual inventors or small firms who then license their

work to big corporations.’ It may be conventional to think of

corporate research and development departments such as Bell

Labs or government programs such as the Manhattan Project as

the fact of the matter is otherwise. The Manhattan Project itself

owed its genesis to the discoveries of Leo Szilard, a little known

scientist whose work was first brought to official attention in a

1939 letter from Albert Einstein to President Roosevelt.” In fact,

a surprising number of inventions and a disproportionate amount

of the truly innovative science comes from independents with

tutions (and, often, at the geographical margins as well).'* Some

a need for the doctrine of equivalents because they have the resources to file,

if necessary, hundreds of patents around the issue.

? Edward B. Roberts, Jnfluences on Innovation: Extrapolations to Bio-

medical Technology, in BIOMEDICAL INNOVATION 50, 66 (Edward B.

Roberts, Robert I. Levy, Stan N. Finkelstein, Jay Moskowitz, & Edward J.

Sondick, eds. 1981).

WILLIAM LANOUETTE, GENIUS IN THE SHADOWS: A BIOGRAPHY OF

LEO SZILARD, THE MAN BEHIND THE BOMB 194-213 (1994); see also

SPENCER R. WEART & GERTRUD WEISS SZILARD, EDS., LEO SZILARD: HIS

VERSION OF THE FACTS—SELECTED RECOLLECTIONS AND CORRESPON-

DENCE (1978). Szilard, once a student of Einstein’s, patented a linear ac-

celerator in 1928 and the cyclotron in 1929, filed for a patent on the elec-

tron microscope in 1931, and patented the nuclear chain reaction in 1934

and the nuclear reactor (with Enrico Fermi) in 1954. LANOUETTE, supra,

at 94, 101-02, 139-58, & 331. 4 facsimile of Einstein’s letter to the Presi-

dent can be found online at: Gene Dannon, Leo Szilard Online, http://

'* ROBERT S. ROOT-BERNSTEIN, DISCOVERING: INVENTING AND SOLVING

PROBLEMS ON THE FRONTIERS OF SCIENTIFIC KNOWLEDGE 366-72 (1989).

See also AUTUMN STANLEY, MOTHERS AND DAUGHTERS OF INVENTION:

NOTES FOR A REVISED HISTORY OF TECHNOLOGY (1993) (detailing the

technological innovations made by women over the course of the centuries).

-ll-

of these individuals are total outsiders or “mavericks” who work —

independently of or at odds with institutions; in addition to

Szilard, examples include James Lovelock, the inventor of ultra-

senstive chemical detectors,’* and John J. Wild, the inventor of

the sonagram.”*

It is easy to see why outsiders would be more fecund

sources of discovery and invention. For one thing, they are char-

acterologically disposed to independent thinking.’’ For another,

they operate free of the constraints of institutional arrangements,

regulations, and expectations; as Root-Bernstein observes, * as

long as the decisions concerning funding [are] bureaucratized

there is no hope for the maverick. He will be selected out.””

Einstein, for example, is said to have remarked that the best

places for a scientist to work are the patent office or a light-

house.”

Most importantly, it is generally only the outsider who is

able to think outside the reigning scientific paradigms—i.e., the

set of concepts, understandings, assumptions, frames of refer-

'S LEwis WOLPERT & ALISON RICHARDS, PASSIONATE MINDS: THE INNER

WORLD OF SCIENTISTS 71-80 (1997).

'* John J. Wild, The Origin of Soft-Tissue Ultrasonic Echoing and Early

Instrumental Application to Chemical Medicine, in INVENTIVE MINDS:

CREATIVITY IN TECHNOLOGY 115, 117-21 (Robert J. Weber & David N.

Perkins eds., 1992) (hereinafter “WEBER & PERKINS”).

"" See Sex and Physics: A Talk with Dennis Overbye, The Edge, April 2,

2001 (“Would Einstein be a string theorist? Strings seem to have taken

physics departments by storm and they are almost the only game in town,

but Einstein had this deep-seated need to be an outsider.”) available online

at: http://www.edge.org/3rd_culture/overbye/overbye_index. html

‘* ROOT-BERNSTEIN, supra note 14, at 376.

'’ Id. at 392. 3M, a company known for its innovativeness, makes use of

much the same insight with its policy permitting “bootlegging” —allowing

researchers to spend 15 per cent of their time on their own projects. See

Rosalinde Sharpe, The Post-it Js that Rare Thing: A Genuine Invention, The

Independent (London), April 20, 1996, at 42.

-12-

ence, habits of mind, ways of proceeding, and conventional wis-

doms that constitue any professional community.”° In his classic

study of scientific revolutions, Thomas Kuhn observed that:

Almost always the men who achieve these fun-

damental inventions . . . have been either very

young or very new to the field whose paradigm

they change. And perhaps the point need not have

been made explicit, for obviously these are the

men who, being little committed by prior practice

to the traditional rules of normal science, are

particularly likely to see that those rules no longer

define a playable game and to conceive another

set that can replace them.”

Kuhn’s insights have been corroborated and extended by work in

cognitive science that demonstrates both the degree to which our

categories and concepts are entrenched and the ways in which

shape what we think possible, what we deem credible, what we

perceive accurate, what we find persuasive.” For this reason, it

Spencer Silver (who invented the unique adhesives that led to the pro-

duction of 3M’s now ubiquitous “Post-it” notes) is reported to have said

that: “If I had thought about it, I wouldn’t have done the experiment. The

literature was full of examples that said you can’t do this.” Ernest Murray,

— : I'm Glad I Didn't Say That, Cox News Service, May 14,

” THOMAS S. KUHN, THE STRUCTURE OF SCIENTIFIC REVOLUTIONS 90

(2d ed. 1970). Indeed, Kuhn added that: “This generalization about the role

of youth in fundamental scientific research is so common as to be a cliché.”

Id. at 90 n.15. The principal exception to this rule of thumb is the scientist

who returns to something of a novice by periodically changing fields.

ROOT-BERNSTENN, supra note 14, at 386-87.

” See STEVEN L. WINTER, A CLEARING IN THE FOREST: LAW, LIFE, AND

MIND (forthcoming Univ. of Chicago Press, September 2001) (hereinafter

“A CLEARING IN THE FOREST”); GEORGE LAKOFF, WOMEN, FIRE, AND

DANGEROUS THINGS: WHAT CATEGORIES REVEAL ABOUT THE MIND

-]3-

is often only the newcomer or outsider who is capable of “think-

ing outside the box” and seeing the way to true innovations. But

such people are likely to have the least resources for coping with

the competition of a potentially infringing product from a large

corporate producer.

The experience of the Wright Brothers dramatically illus-

trates every aspect of the dynamics working against true inno-

vators.” The airplane was the Wright’s first patent. But their ap-

plication was repeatedly rejected by the Patent Office,”* and had

to be amended several times. The mainstream view at the time

was that the key to achieving flight was to solve the problem of

aircraft stability. The Wrights rejected that conventional wisdom.

Their research suggested that the key was to figure out how to

achieve control of the plane. In the course of building a working

airplane, the Wrights made many important inventions. But, the

crucial one—still used in fixed-wing airplanes today—was the

(1987). As one early commentator explains, the world

is never approached as if it were sui generis, but rather is

features of a given phenomenon suggest a particular stock

structure, that structure shapes our expectations and re-

sponses. This use of stock structures resolves ambiguity

and complements “given” information with much “as-

sumed” information.

Gerald P. Lopez, Lay Lawyering, 32 UCLA L. REV. 1, 6 (1984). Lépez’s

article is one of the first to apply cognitive science to law. For a chronology

of the field, see Steven L. Winter, Making the Familiar Conventional

Again, 99 MICH. L. REV. __ (2001) (review essay).

® See Rodney Worrel, The Wright Brothers’ Pioneer Patent, 65 J. AM.

BAR ASSOC. 1512 (1979); ToM CROUCH, THE BISHOP’S BOYS: ALIFE OF

WILBUR AND ORVILLE WRIGHT (1989); FRED HOWARD, WILBUR AND

ORVILLE: A BIOGRAPHY OF THE WRIGHT BROTHERS (1987). _

* Among the reasons for rejection given by the patent officer was

“the device described was clearly ‘inoperative’ and ‘incapable of performing

its intended function."” CROUCH, supra note 23, at 246.

-14-

invention of wing-warping as a mechanism of control. This

mechanism enabled them to warp an airplane’s wings to change

their angle of attack into the wind so as to bank the airplane to

the right or left. This gave the pilot lateral control for turns and

the ability to recover from instability caused by wind gusts. When

the Wrights made their famous 59-second flight at Kitty Hawk,

they had spent about $1100 to build their airplane. In contrast,

the Aerodrome (which had ignominiously belly-flopped into the

Potomac only a few weeks earlier) was built by Samuel Pierpoint

Langley of the Smithsonian with a $50,000 grant from Congress.

In 1907, with the encouragement of Alexander Graham

Bell, a motorcycle manufacturer named Glenn Curtiss entered the

airplane manufacturing business with $360,000 in start-up funds

raised from investors. Curtiss set out to design around the

Wright’s wing-warping patent. He invented and patented aile-

rons, which are control surfaces hinged to a wing’ trailing edges.

The Wrights sued. Henry Ford referred Curtiss to his patent liti-

gator, W. Benton Crisp. The defense argued both that the

Wright’s invention was not novel and that Curtiss’s ailerons

(which were not connected to the rear rudder as was the Wright’s

wing-warping mechanism) were different in form and operation

from the Wright’s patent. The district court rejected both claims,

holding that the Wright Brothers were “entitled to . . . the appli-

cation of a range of equivalents that will include an aeroplane ap-

propriating substantially the same instrumentalities and the same

principle of operation.”** Because Curtiss’s ailerons operated

together with the rudder to “restor[e] equilibrium in substantially

* Wright Co. v. Herring-Curtiss Co., 204 F. 597, 606 (W.D.N.Y. 1913),

aff'd, 211 F. 654 (2d Cir. 1914). See also Wright Co. v. Herring-Curtiss

Co., 177 F. 257 (W.D.N.Y 1910) (granting preliminary injunction), rev ‘d,

180 F. 111 (2d Cir. 1910) (reversing injunction because of “sharp conflict

of evidence” such that “infringement was not so clearly established as to

justify a preliminary injunction”).

-15-

the same way,” the court found that the Wright’s patent had been

infringed.” In a parallel case, Learned Hand found infringement

on the same grounds.”

The Wright Brothers’ story is in many ways typical of the

difficulties faced by small inventors. Much the same story can be

told with respect to Philo T. Farnsworth, the inventor of televi-

sion.” The Wright Brothers’ story is not typical, however, in one

very significant respect: They succeeded where many other in-

ventors fail. Farnsworth, for example, was not so fortunate de-

spite initial success in patent litigation against RCA.” Amici are

aware of scores of independent inventors who have asserted their

patent and nevertheless suffered a similar fate. And, that was with

the benefits of the doctrine of equivalents. Without it, indepen-

dent inventors simply don’t stand a chance.

%* Wright v. Herring-Curtiss, 204 F. at 614. .

2” Wright Co. v. Paulhan, 177 F. 261 (S.D.N.Y tent ~ sacag » sa

= wet ney then ae pant *s Aerodrome to see if it could

have flown in 1903 and thereby demonstrate the Wright Brothers’ lack of

priority. Curtiss reconstructed the plane using knowledge of aeronautics

gained in the intervening years, making several changes from the original

design. Even so, it was never clear whether the modified Aerodrome flew

for it took off just outside camera range. The controversy over who flew first

was not finally setued until 1942, 30 years after Wilbur had died of typhoid

fever, when the Smithsonian published an article detailing the changes in

design made by Curtis and admitting that the Wright Brothers were first.

CROUCH, supra note 23, at 489; HOWARD, supra note 23, at 393.

28 GEORGE EVERSON, THE STORY OF TELEVISION: THE LIFE OF PHILO T.

FARNSWORTH, 152-154, 199-203 (1949); Evan I. Schwartz, Who Really

Invented Television? Technology Review, September/October 2000, avail-

able online at: http://www. technologyreview.com/magazine/sep00/schwartz.

asp. See also DONALD GODFREY, PHILO T. FARNSWORTH: THE FATHER OF

TELEVISION (2001).

2° EVERSON, supra note 29, at 214 (noting that RCA spent ten times what

Farnsworth did and that: “We wisely did not venture to enter into competi-

tion with [RCA] in any field other than that of patent strength.”).

-16-

i. RELIANCE ON THE LITERAL LANGUAGE OF THE

PATENT IS MISPLACED, IS AS LIKELY TO UN-

DERMINE CERTAINTY AS ADVANCE IT, AND

WILL CERTAINLY LEAD TO ARBITRARY RE-

SULTS

The decision below trades adequate incentives for

inventors for the illusory certainty of the literal language of the

patent. Yet, as we have just seen, the doctrine of equivalents is

itself the product of 150 years of accumulated judicial wisdom

responding to the inadequacy of literal language as a protection

for inventors. Such a decisive break with the received wisdom

should, at the very least, be supported by some new, more sci-

entific evidence about the efficacy of literal language. But just the

opposite is true: Developments in cognitive science over the !ast

thirty years have demonstrated that the everyday experience of

literal language is, in fact, a remarkably complex and surprisingly

delicate phenomenon. Particularly in the context of technological

innovation, which by definition is always changing, it makes little

or no sense to rely on the illusory certainty of literal language.

The basic point is quite familiar. As Chief Justice Marshall

observed: “Such is the character of human language, that no

word conveys to the mind, in all situations, one single definite

idea.”* This is particularly true in recondite endeavors such as

science and technology for the reason that, with characteristic in-

sight, Justice Cardozo identified: “Words after all are only sym-

bols, and the significance of the symbols varies with the know-

ledge and experience of the minds receiving them.”

* McCulloch v. Maryland, 17 U.S. (4 Wheat.) 316, 414 (1819). Cf.

Monaco v. Mississippi, 292 U.S. 313, 322 (1934) (Hughes, C.J.) (“Behind

the words of the constitutional provisions are postulates which limit and

control.”).

* Cooper v. Dasher, 290 U.S. 106, 109 (1933).

-17-

Over the last thirty years, cognitive science has made

striking advances in the study of the mind. It is not possible to

catalogue them here.” But, consider just a few of the well-

documented empirical findings that bear on the question of literal

language. First, categories (including word-categories) display a

variety of prototype effects—i.e., some category members are

reliably rated bette: examples of the category than others, these

prototypical cases are learned earlier, are easier to recall, and

figure prominently in reasoning.” Second, categorization is an

evolutionary adaptation that arose because it enabled more suc-

cessful functioning. Concretely, this means that—as a pragmatic

function—categorization is flexible and dynamic rather than

definitional and static.“ Third, and relatedly, meaning and cate-

gorization are socially motivated processes—i.e., context and

purpose are built-in, constitutive elements of meaning. This is

how we can accommodate the motivational and situational de-

mands of real-life judgments.** Fourth, meaning and categoriza-

32 See A CLEARING IN THE FOREST, supra note 22.

3 Eleanor Rosch, Principles of Categorization, in COGNITION AND CATE-

GORIZATION 27 (Eleanor Rosch & Barbara B. Lloyd eds., 1978); LAKOFF,

supra note 22, at 39-90.

¥ To the initiate, it might seem that evolutionary success requires mental

representations that “correspond” with or “mirror” reality. But we would

need significantly larger brains if that were the case. In fact, a computer

cannot store—nor is it possible to specify—all of the necessary and suffi-

cient conditions for the vast amount of common sense knowledge that the

average human utilizes daily; this is one of the most difficult problems faced

by those working in artificial intelligence. See HUBERT L. DREYFUS, WHAT

COMPUTERS STILL CAN’T Do: A CRITIQUE OF ARTIFICIAL REASON 52-53

(2d ed. 1979); Dorothy Holland & Naomi Quinn, Culture and Cognition,

in CULTURAL MODELS IN LANGUAGE AND THOUGHT 3, 19 (D. Holland &

N. Quinn eds., 1987). The interactional and other non-correspondence ways

A CLEARING IN THE FOREST, supra note 22, at 35, 96-97 & 244-45.

35 The implications of these finding for law are developed in A CLEARING

-18-

tion are grounded in our pragmatic physical and social knowledge

of the world. Meaning, therefore, can be highly domain specific;

expertise consists in richer experiential knowledge (and, concom-

mitantly, more extensive models of) specialized domains.

We can illustrate these points with some familiar legal

examples. Consider, first, the voluntariness of a confession. A

person, overburdened by guilt, walks into a police station and

confesses to a crime. Rare as this case may be, it is easily and un-

controversially identifiable as a voluntary confession. The clarity,

salience, and stability of this prototypical case may make it seem

as if there is a readily identifiable literal meaning to the term

“voluntary.” But, as the Court knows only too well, the volun-

tariness of a confession is not so much a factual question as a

conceptual one: It cannot be decided without focussing “upon the

crucial element of police overreaching.”**

This example is particularly instructive because it reveals

the ways in which the psychologically simple may nevertheless be

cognitively and conceptually complex. Note that in this case, the

prototypical scenario is factually quite rare. Thus, its salience and

stability is not a function of its frequency or familiarity (though it

can be in the case of other categories). Here, the prototype effect

is produced by our culturally-shared models of human behavior.

In other words, the apparent simplicity and lucidity of the proto-

typical case is actually a product of rather complex processes of

intelligibility that draw on tacit understandings about context,

purpose, and motivation. This reflects the more fundamental

point that language and meaning are not merely representational,

IN THE FOREST, supra note 22, at 139-222 & 295-351.

** Colorado v. Connelly, 479 U.S. 157, 163 (1986); see also Miller v.

Fenton, 474 U.S. 104, 112 (1985) (reaffirming that “the ultimate question

whether, under the totality of the circumstances, the challenged confession

was obtained in a manner compatible with the requirements of the Consti-

tution is a matter for independent federal determination”).

-19-

but entail complex knowledge of context, function, value, and

purpose. “This is so,” as Justice Frankfurter explained in an

earlier confession case, “because the concepts by which language

expresses an otherwise unrepresentable . . . reality are themselves

generalizations importing preconceptions about the reality to be

expressed.”°”

Note, too, that knowledge of the prototype provides very

little guidance to the decisionmaker. Prototype effects, in other

words, work better as touchstones for inclusion than as rules of

exclusion. Standing alone, the fact that a car is certainly a “ve-

hicle” covered by a rule prohibiting vehicles in the park tells us

little about how we should handle a bicycle, a moped, or a child’s

electric automobile. To make that assessment, the decisionmaker

must understand the social motivation for the rule and must apply

it in light of those purposes. She may do so tacitly, as when one

recognizes automatically that the rule does not apply to a child’s

tricycle, or explicitly, as the Court must do in the confession

cases. But, in either event, there is no literal meaning that can be

mechanically applied.

We can reinforce and extend the point with another ex-

ample. Consider a rule prohibiting “live animals on the bus.””*

Does it bar a live goldfish in a sealed plastic bag? A specimen

case of microscope slides containing live paramecia? Both gold-

fish and paramecia are literally animals.” But, then, so too are

*’ Culombe v. Connecticut, 367 U.S. 568, 604-05 (1961) (Opinion of

Frankfurter, J.).

* The example comes from Frederick Schauer, Formalism, 97 YALE L.J.

509, 533 n.70 (1988). The complete argument appears in A CLEARING IN

THE FOREST, supra note 22, at 101-03 (categories), 194-207 (rules), & 297-

309 (perjury).

® THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE 82 (2d

ed. unabridged 1987) defines “animal” as an organism that “can move vol-

untarily, actively acquire food and digest it internally, and have sensory . .

-20-

humans: We are rational animals, to be sure; but, as mammals

with sensory systems who respond to stimuli and move volun-

tarily, .« .00 fit the literal definition. If, in the confession case,

the literal meaning of the relevant terms provides too little infor-

mation, here the literal scope of the category “animal” provides

too much: It potentially covers the entire domain that runs from

paramecia all the way to Homo sapiens. To decide how much of

the literal reach of the category to include in the rule, one must

interpolate one’s social knowledge of the category “bus”—what

it is for, who uses it, what types of problems or disturbances

might concern its passengers, etc. This is how we know auto-

matically that the rule prohibiting live animals on the bus cannot

possibly apply to us; it is how we know without having even to

consider it that humans are not animals for purposes of the rule.

By the same token, it is this general background knowledge that

makes the paramecium and goldfish cases seem silly to all but the

most rigid bureaucratic mind-set.

To summarize, the experience of prototype effects creates

the impression that there are clear, readily-available literal mean-

ings for most language terms. But this experience of immediate

comprehension in fact involves complex processes of intelligi-

bility that draw on tacit knowledge of the relevant domain in-

cluding context, purpose, social understandings and assumptions,

models of behavior, etc. Moreover, the prototypical case is ne-

cessarily only a subset of the array of cases comprehended by the

sense of any word-category; the immediately apparent literal

meaning of a term can be vastly over- or under-inclusive. Thus,

even everyday comprehension is a dynamic and flexible process

that uses tacit knowledge for making contextual judgments about

. Systems that allow them to respond rapidly to stimuli.” It further notes that

“some classification schemes include protozoa . . . that have motility and

animallike nutritional modes.”

-21-

what to include and what to exclude from a term’s purview.

One might think that in science and technology, at least,

things must be different. It may be conventional to think of sci-

ence as a series of discoveries about the nature of such things that

brings us closer and closer to an accurate representation of reali-

ty. But even Popper rejected that view.” Because science and

technology are human endeavors, they are subject to the laws of

human language and thought. Self-declaring literal meaning is no

more available in science and technology than elsewhere; science

and technology progress nevertheless because they are pragmatic

functions that operate in the same flexible, dynamic ways as other

human cognitive processes.

Consider, for example, Newton’s Second Law of Motion:

J = ma. Scientists can and do discuss it unproblematically. But,

as Kuhn observes:

It is not quite the case that logical and mathema-

tical manipulation are applied directly to f = ma.

That expression proves on examination to be a

law-sketch or a law-schema. As the student or the

practicing scientist moves from one problem situ-

ation to the next, the symbolic generalization to

which such manipulations apply changes. For the

case of free fall, f = ma becomes mg = m(d’s/dt’);

for the simple pendulum it is transformed to mg

sin@ = —ml(d @dr’); for a pair of interacting har-

monic oscillators it becomes two equations, the

first of which may be written m,(d’s,/dt’) + k,s, =

k,(s, — s, + d); and for more complex situations,

such as the gyroscope, it takes still other forms. .

.. Yet, while learning to identify forces, masses,

and accelerations in a variety of physical situa-

“ KARL R. POPPER, THE LOGIC OF SCIENTIFIC DISCOVERY 35-38 (1959).

-22-

tions not previously encountered, the student has

also learned to design the appropriate version of

J = ma through which to interrelate them, often a

version for which he has encountered no literal

equivalent before... .*'

What is true of science is also true in other technological

and engineering contexts. Consider an example integral to the

issue at hand: the blueprint. “Blueprints are planning documents

for buildings, machines, or other structures that translate pur-

poses, and design solutions for reaching those purposes, into

‘formal’ documents.”** One might think that a blueprint, of all

things, must be a rigorously accurate representation of the struc-

ture to be built. But even in this most concrete of “real-world”

domains, where one might most expect objective correspondence

with a harshly determinate reality, formal meaning is a function

of informal, practical knowledge—i.e., craft traditions and prac-

tices. The formal language (i.e., the conventions) of the blueprint

in fact permits quite a lot of ambiguity: Much of what the

blueprint “specifies” is actually left to the know-how of the rele-

vant craft, and there are understood tolerances for differences in

performance.

Thus just as a cookbook recipe for a bread

relies on one knowing what “smooth and elastic”

bread dough feels like. . . , the blueprint relies on

a plumber knowing how to fit a one per cent

grade of a waste pipe into a frame of a wall as

that frame has been actually built (up to 0.2 per-

cent out of plumb). The semantics of the abstrac-

tions in the first instance are given by craft know-

“ KUHN, supra note 21, at 188-89 (postscript to the second edition).

AND ABSTRACTION IN LAW AND ORGANIZATION 56 (forthcoming Univ. of

Chicago Press 2002).

-23-

ledge, quite often craft knowledge that the archi-

tects or engineers themselves do not have... .

Thus embedded in the abstractions are mean-

ings derived from work systems, crafts or fac-

tories, outside the building as such.”

In much the same way, the “literal” terms used in the blueprint

change with variances in materials. For example, the term “out-

side corner”— which designates the point from which one mea-

sures the location of a window opening—changed with the

switch from masonry (especially brick) bearing

walls to wood frame bearing walls with brick ve-

_. . . [OJne now specifies the dimensions for

locating window openings from the outside cor-

ner of the wooden frame, rather than the outside

corner of the house, which will not nowadays be

there when the opening is built.“

Far from literal, the formal language of the blueprint presupposes

or “embeds” practical knowledge that is flexible, functional, and

context or convention-dependent: “[T]he drawings and docu-

ments are tied together by their embedding in a language of the

“ Id. at 61. Cf Towne v. Eisner, 245 U.S. 418, 425 (1918) (Holmes, J.)

(“A word is not a crystal, transparent and unchanged, it is the skin of a liv-

ing thought and may vary greatly in color and content according to the cir-

cumstances and the time in which it is used.”).

“ STINCHCOMBE, supra note 42, at 67. At best, literal or “plain meaning

is the extreme value (namely, zero) of a variable that describes the variance

of meaning in a linguistic community, given a text.” Jd. at 55. In other

words, literal or plain meaning is just the limiting value (rarely achievable)

of a variable that describes the degree of ambiguity of a given term within

a linguistic community. In the case of construction blueprints, Stinchcombe

-24-

OTe

Until the decision below, one could have said that patent

law embodied just these insights about language and meaning.

Thus, in Machine Co. v. Murphy, the Court said that, in deter-

mining infringement under the doctrine of equivalents, the deci-

sionmaker should

look at the machines or their several devices or

elements in the light of what they do, or what

Office or function they perform, and how they

perform it, and to find that one thing is substan-

tially the same as another, if it performs sub-

stantially the same function in substantially the

same way to obtain the same result...

So, too, in Graver Tank, the Court reconfirmed that the doctrine

must be applied with an eye to purpose, context, and function:

“Consideration must be given to the purpose for which an in-

gredient is used in a patent, the qualities it has when combined

with the other ingredients, and the function which it is intended

to perform.”*’ This “triple identity” or “function-way-result” test

—perhaps more suitable for analyzing mechanical devices as the

Court noted in Warner-Jenkinson“—represents the accumulated

wisdom of 150 years of judicial experience. That cognitive sci-

ence should now corroborate what judges all along have known

is hardly surprising; rather, it reflects yet another layer of sig-

puts that value at approximately 10%—-so that “the estimate for the building

made by the architect come(s] reasonably near the bids made by the con-

tractors on the same set of documents.” /d at 71.

“ Machine Co. v. Murphy, 97 U.S. 120, 125 (1878).

“ Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609

(1950). Though this Court had rejected so-called “functional” claims in

Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), Con-

gress amended the statute in 1952 to once again make them possible, 35

U.S.C. § 112 (2001), as this Court noted in Warner-—Jenkinson Co. v. Hilton

Davis Chemicel Co., $20 U.S. 17, 27-28 (1997).

“* Warner-Jenkinson, 520 U.S. at 39-40.

-25-

nificance in Holmes celebrated insight that, “The life of the law

has not been logic: it has been experience.”

It is not that there can never be a clear-cut, literal mean-

ing. When the relevant category or concept is a formal one—

such as the pH level specified in the patent at issue in Warner-

Jenkinson®—it is possible to have the clarity and precision of

meaning that the court below craved. But, this Court should not

be misled by one example: There are many more categories like

“voluntariness,” “animal,” “f = ma,” and “outside corner” than

like “pH level.” In that much larger class of cases, the assumed

certainty of literal meaning will, at best, prove chimerical; at

worst, it will be distorting and lead to arbitrary results. Because

technical language derives its meaning from the practices, con-

ventions, functions, and purposes of scientific or craft specialities,

a court cannot do justice to a patent claim with a literal reading

that precludes appeal to the practical and functional considera-

tions that form the very basis of meaning. Thus, in Warner-

Jenkinson, this Court held that “a skilled practitioner’s know-

ledge of the interchangeability between claimed and accused ele-

ments” is relevant to the question of equivalence, reasoning that:

Much as the perspective of the hypothetical

“reasonable person” gives content to concepts

such as “negligent” behavior, the perspective of a

skilled practitioner provides content to, and limits

on, the concept of “equivalence.”

@ OLIVER WENDELL HOLMES, JR., THE COMMON Law 5 (Mark Howe ed.

1963) (1881). For discussion of some of the ways in which Holmes’s in-

sights about language and law anticipated findings made by cognitive sci-

ence many decades later, see A CLEARING IN THE FOREST, supra note 22,

at 36-42.

%* Warner-—Jenkinson, 520 U.S. at 21-24.

*\ Jd. at 37. Cf RICHARD A. POSNER, THE PROBLEMS OF JURISPRUDENCE

48 (1990) (noting that “[s}tandards that capture lay intuitions about right

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Just the same can be said with respect to the literal meaning of a

patent. Literalism of the sort adopted by the court below simply

misapprehends how humans reason and understand. Because it

would deprive decisionmakers of the basis for ascertaining the

scope and meaning of a patent, it is as likely to undermine cer-

tainty as advance it.

Moreover, these distorting effects will be most pro-

nounced in cases of true innovation. As Judge Rader noted in his

separate opinion below: “Without a doctrine of equivalents, any

claim drafted in current technological terms could be easily

circumvented after the advent of an advance in technology.””

When a patent involves minor technological improvements to a

pre-existing invention, it is at least plausible for a savvy inventor

and a skilled patent lawyer to anticipate the range of possible ap-

plications that needs to be protected and draft a claim accord-

ingly. In such cases, the nature of the product and its market are

already established. But, when an invention changes fundamental-

ly the nature of the product—as occurred, for example, with the

invention of the transistor and the integrated circuit—or when it

behavior” such as the negligence standard “may produce greater legal cer-

tainty than a network of precise but technical, nonintuitive rules covering

the same ground”).

* Compare Thomas S. Kuhn, Second Thoughts on Paradigms, in THE

STRUCTURE OF SCIENTIFIC THEORIES 459, 482 (Frederick Suppe ed., 1974)

(“Shared examples can serve cognitive functions commonly attributed to

shared rules.”), with H. L. A. HART, THE CONCEPT OF LAW 124 (1961)

(“[T}he authoritative general language in which a rule is expressed may

guide only in an uncertain way much as an authoritative example does.”).

® Festo, 234 F.3d at 619 (Rader, C. J., concurring in part and dissenting

in part). Judge Rader gave the example of the vulnerability, after the deve-

lopment of transistor technology, of a pre-1948 patent using the terms

“anode” and “cathode” from the earlier tube technology. “[W]ithout a doc-

trine of equivalents, infringers in 1949 would have unfettered license to

appropriate all patented technology using the out-dated terms... .” Jd.

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creates an entirely new market, this simply cannot be done.

In fact, true innovators often do not know what they have

really invented. Joseph Priestly was the first to isolate oxygen.

But, it was Antoine Laurent Lavoisier who showed that Priestly

had actually discovered oxygen, and not “dephlogisticated air” as

Priestly claimed to his dying day. Similarly, Max Planck

employed the idea of quantized electrons to develop what we

now call quantum theory, but he explicitly denied that the energy

in atoms was quantized into discrete packets. It was Einstein who

insisted that quantization was more than a mathematical for-

malism and who drew out its implications (leading to the photo-

electric cell familiar in many electronic sensing devices).** Spen-

cer Silver, a 3M research scientist, was working on a new water-

soluble adhesive. The experiment failed; instead of forming a film,

the adhesive formed particles. Seven years later, one of his col-

’ leagues used that adhesive to create the now-ubiquitous Post-it

note—which can be reused because the adhesive is contained in

tiny bubbles of urea-formaldehyde resin that break under pres-

sure.

Invention, in other words, is a process. Inventions don’t

just spring into being; they unfold.” The significance of a dis-

covery or invention often depends on what others in the field

have found or seen—each new patentable innovation altering the

“ KUHN, supra note 21, at 54-56.

$$ THOMAS S. KUHN, BLACK BODY THEORY AND THE QUANTUM DISCON-

TINUITY, 1894-1912, 182-201 (1978).

* Joe Schwarcz, Everyday Chemistry: What Makes a Sit’ ion Sticky,

The Washington Post, December 8, 1999, at HO1; Amy Ellis Nutt, /ndis-

pensable Post-it Notes Didn't Stick at First; 20 Years Later, Billions Have

Been Sold, Posted, The Times-Picayune, April 16, 2000, at F14.

* DONALD BRABEN, TO BE A SCIENTIST: THE SPIRIT OF ADVENTURE IN

SCIENCE AND TECHNOLOGY 11-17 (1994); ROOT-BERNSTEIN, supra note

14, at 203; David N. Perkins & Robert J. Weber, Conclusion: Effable Inven-

tion, in WEBER & PERKINS, supra note 16, at 319.

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possibilities inherent in all related innovations. Sometimes, signi-

ficant inventions change the field in ways that remain beyond the

inventor’s own comprehension. The more innovative, fundamen-

tal, or revolutionary is an invention or discovery the greater the

changes it will cause and the less it will be possible to foresee the

range of its uses, applications, and adaptations. A patent law

sensitive to the need to encourage innovation would not qualify

protection on an extra-human prescience able to reduce the un-

foreseen to literal terms. To do so would be to fail to protect the

most important inventions and discoveries—potentially putting

at risk the flow of new inventions that have contributed so much

to America’s preeminence in science and technology.”

In Royal Typewriter, Learned Hand faced the limitations

of literal language pointblank: “It is true that a boundary cannot

be drawn with precision; and the draftsman of claims is always in

something of a dilemma—the dilemma which has led to the very

‘doctrine of equivalents’ itself... .”“ For Hand, the antinomy

between literal formalism and functional description was simply

“inherent in the whole doctrine. It may be that it will disappear,

but nothing so far satisfies us that as yet it has.”” Fifty years

later, cognitive science has made significant strides in delineating

the quite remarkable, flexible, and dynamic (i.e., non-literal) pro-

* Moreover, it is not just inventors and their patent attorneys who must

make such extra-human predictions, it is also the patent examiner. Yet, as

the number of patent filings steadily increases, the number of scientists

trained each year—and, therefore, the pool of qualified potential patent

examiners—decreases. Donald Quigg, Technology on the Move: The Role

of Patents, in WEBER & PERKINS, supra note 16, at 313.

» Quigg notes that an increasing number of U.S. patents are going to

foreign corporations: In 1968, approximately 20% of patents filed in the

United States were by citizens of other nations; by 1988, it was 48%; now

it is over half. Jd. at 312.

* Id. at 694.

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cesses through which human brains successfully accommodate

the diversity and complexity of everyday life. What lies at the

heart of these mechanisms is the capacity to expand or adjust our

concepts relative to need; we can do-so because context, func-

tion, and purpose are built-in, constitutive dimensions of

meaning and categorization. The court »clow would substitute

the illusory precision of literal meaning for the functional,

context-sensitive, purpose-oriented inquiry that has characterized

the doctrine of equivalents for its more than 150 year history.

That is bad law, bad science, and bad policy. The decision below

should be overruled.

CONCLUSION

F or the foregoing reasons, amici respectfully submit that

the judgment of the Federal Circuit should be reversed.

Respectfully submitted,