Petition for Writ of Certiorari — Shoketsu Kinzoku Kogyo Kabushiki Co. v. Festo Corp.

Supreme Court brief1997

Ask Donna

What actually matters in this document.

Text

Supreme Court, Wa.

3 PIL BD

wo. Ged 1 5 46 MAR 2 6 1996

IN THE

Supreme Court of the Anited States

OCTOBER TERM, 1995

SHOKETSU KINZOKU KoGYO KABUSHIKI Co., LTD.

a/k/a SMC CORPORATION and SMC PNEMATICS, INC.,

Petitioners,

FESTO CORPORATION,

Respondent.

On Petition for a Writ of Certiorari

to the United States Court of Appeals

for the Federal Circuit

PETITION FOR A WRIT OF CERTIORARI

ARTHUR I. NEUSTADT

(Counsel of Record)

OBLON, SPIVAK, MCCLELLAND,

MAIER & NEUSTADT, P.C.

1755 Jefferson Davis Highway

Arlington, Virginia 22202

(703) 413-3000

JAMES B. LAMPERT

HALE AND DORR

60 State Street

Boston, Massachusetts 02109

(617) 526-6000

Attorneys for Petitioners

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

QUESTIONS PRESENTED FOR REVIEW

1. In a patent case, can the statutory requirement for patent

claims (35 U.S.C. §112, 92) and the statutory restriction for

correcting them (35 U.S.C. §251, 94) be nullified by the

judicially created doctrine of equivalents?

(similar to the question currently being considered in Hilton

Davis, No. 95-728)

2. Is the constitutional right to a jury trial in a patent case

preserved if all issues are predecided by a special master in a first

trial with a first decision which is then considered for correctness

by a jury in a second trial?

(related to the question currently being considered in Markman,

No. 95-26)

LIST OF PARTIES

All parent companies and nonwholly owned subsidiaries of

SMC Corp. and SMC Pneumatics, Inc. are set forth in the

caption of the cas¢.

ili

TABLE OF CONTENTS

page

QUESTIONS PRESENTED FOR REVIEW ............ i

a abs ob dau evs bGs'c dase vecekeen il

PEE GEREUEE wn cc ccccccensvctchocvdocnces iti

Fn Vv

CITATIONS OF THE OFFICIAL AND

RPP UEMEMS IEEE Sou ccvccceeccccesesseeees Vill

STATEMENT OF THE BASIS FOR JURISDICTION

gn Sea epee ery Oe eo a viii

THE CONSTITUTIONAL PROVISIONS AND

STATUTES INVOLVED IN THE CASE.............. ix

I. The Doctrine of Equivalents Issue ............ ix

SE EMI Vs ccceweceessercevecce ix

STATEMENT OF THE CASE ..............cccceeeee l

a ee a l

II. Relationship of the Questions Presented

to Cases Currently Pending Before the Court .... 2

Ill. The Doctrine of Equivalents Issue............. 3

A. The Missing Claimed Sealing Ring ......... 4

B. The Missing Claimed Magnetizable

DR kits + dc eanpubbc owd kovbe ae xs 6

ARGUMENT FOR ALLOWANCE OF THE WRIT ..... 10

I. The Doctrine of Equivalents Issue .......----- 10

Il. The Jury Trial Issue .......----+++eseeeeers 17

TABLE OF AUTHORITIES

U.S. Constitution:

FR RE nh ene & kadar 4 haae inmate tenon ix, 15

Ps NEE bh creNeratddcnekhede cries ntnta conc ix

Statutes

He Wet EAL ED 5.5 vn Ccned bcew ta ea P ae RRa es Vili

Pe Bane GEMMA) 6c bc Khaw buns heaunkeeeiase ottE l

Be el BER bond cae abehutadeetien Vora l

Pe RI EERE cas tags bas wkeevinvuw Wolves i, ix, 11

PAS EEE 06d a SLERATEDe BCR MALDEN? * bob i, ix, 16

Rule:

Federal Rule of Civil Procedure 53 ........ 1,2, 7, 9, 18, 19

Cases:

Boyd Callan, Inc. v. United States,

328 F.26 S05 (Sth Cir. 1964) 0... 0 ccc ce enes 19

Burr v. Duryee,

68 U.S. (1 Wall.) 531 (1863) .................... 16

Calmar Inc. v. Cook Chemical Co.,

Se a SE RE 055 6 a0e bc ca wadSie dacee ks 10

Coleate-Palmolive Co. v. Cook Chemical Co.,

Me Chas SED. oka pc eek bcknbniwi weave 10

Constant v. Advanced Micro-Devices, Inc.,

848 F.2d 1560 (Fed. Cir.),

cert. denied, 488 U.S. 892 (1988) ............... ee

Crateo, Inc. v. Intermark, Inc.,

536 F.2d 862 (9th Cir. 1976) ..... 0... cc eee eee eee 7

Dairy Queen, Inc. v. Wood,

STP Ue: GE CERO Hedda dens caveaguneens 7, 18, 20

Festo Corp. v. SMC Corp.,

rie ft -if', F* A) aS viii

General Elec. Co. v. Wabash Corp.,

506 UB. SOG (ISSR) ok ivacce vs cscebewiuvduedac 11

Graham v. John Deere Co., of Kansas City,

903 US. 108 GOED oc okdccdessea cies 10, 15

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

939 US. GOS CSG ee | sc cicksceachavaes 12, 13, 16, 17

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

62 F.3d 1512 (Fed. Cir. 1995),

cert. granted, 64 U.S.L.W. 3570

(U.S. Feb. 26, 1996) (No. 95-728) ............ passim

La Buy v. Howes Leather Co.,

952 US. FOP CIGD. 6 ide cp viens dhenkseseneea 7

Markman v. Westview Instruments, Inc.,

52 F.3d 967 (Fed. Cir.),

cert. granted, 116 S.Ct. 40 (1995) ............ passim

McCullough v. Cosgrave,

SOD ULE. GIG CISG) sic nis cacvakavetenssomaane 7

Ex parte Peterson,

253 U.S. SOB CIRED. 60 dcnvcdcnskesesa seen 7

Sontag Stores Co. v. Nut Co.,

S20 U.S, FBT CIOG o vein vivosdcivs taaeiesere 16

wT ae ee ee ee ee eee at as

Vii

U. S. v. Adams,

RF RR Re aon a ee 10

United Carbon Co. v. Binney & Smith Co.,

gk ”. SRAE IS ae ar eas at ae 11,15

White v. Dunbar,

fee ae EEA eo pen eee a a 14

Vili

CITATIONS OF THE OFFICIAL AND

UNOFFICIAL REPORTS

The citation for the Federal Circuit’s decision is Festo

Corp. v. SMC Corp., 72 F.3d 857 (Fed. Cir. 1995).

STATEMENT OF THE BASIS FOR JURISDICTION

IN THIS COURT

The judgment sought to be reviewed was entered on

December 14, 1995.

A petition for rehearing was denied (and a suggestion for

rehearing in banc was declined) on March 6, 1996.

The statutory provision believed to confer on this Court

jurisdiction to review on a writ of certiorari the judgment in

question is 28 U.S.C. §1254(1).

THE CONSTITUTIONAL PROVISIONS AND

STATUTES INVOLVED IN THE CASE

I. The Doctrine of Equivalents Issue

Article 1, section 8, clause 8 of the Constitution provides

To promote the Progress of Science and useful

Arts, by securing for limited Times to Authors

and Inventors the exclusive Right to their

Respective Writings and Discoveries

35 U.S.C. §112, 92 provides

The specification shall conclude with one or

more claims particularly pointing out and

distinctly claiming the subject matter which the

applicant regards as his invention.

35 U.S.C. §251, 94 provides

No reissued patent shall be granted enlarging the

scope of the claims of the original patent unless

applied for within two years from the grant of the

original patent.

II. The Jury Trial Issue

The Seventh Amendment to the Constitution provides

In Suits at common law, where the value in

controversy shall exceed twenty dollars, the right

of trial by jury shall be preserved, and no fact

tried by a jury, shall be otherwise reexamined in

any Court of the United States, than according to

the rules of the common law.

Bee

ay cree

ste?

aie

a!)

<< =)

Jacl

STATEMENT OF THE CASE

I. Introduction

Review of a judgment of the United States Court of

Appeals for the Federal Circuit is sought. The basis for federal

jurisdiction in the court of first instance is 28 U.S.C. §1295(a)(1)

and 28 U.S.C. §1338(a).

This jury patent infringement action (filed in 1988)

involves two patents - a Stoll patent (United States patent

4,354,125) and a Carroll patent (United States patent 3,779,401).

Both patents were asserted to be infringed under the doctrine of

equivalents.

The district court (Judge Mazzone of the Boston district

court) ordered a full trial before a special master. The trial was

held in 1992 (11 trial days, 2000 page trial transcript) and the

master (a New York patent attorney) issued a 68 page report in

1993 deciding all issues. Although he decided that the Stoll

patent was not infringed as a matter of law and that summary

judgment should be granted to SMC, he decided a number of

other issues against SMC.

SMC then moved for entry of summary judgment with

respect to the Stoll patent. However, Judge Saris (who had

replaced Judge Mazzone) denied the motion and ordered a

second trial (before a jury). Over SMC’s numerous objections,

Judge Saris admitted the master’s report into evidence and it was

heavily relied upon by Festo since, with the exception of the one

issue noted above, the master had decided a number of other

issues in Festo’s favor. Further, also over SMC’s repeated

objections, Judge Saris provided a copy of the report for each

juror rather than reading it to the jury as restricted by Fed. R.

Civ. P. 53(e)(3). With copies of the report during deliberations,

the jury took less than one hour to find for Festo.

Judge Saris summarily denied without opinion SMC’s post

trial motion for judgment as a matter of law with respect to the

doctrine of equivalents. Judge Saris had previously granted

summary judgment of doctrine of equivalents infringement with

respect to the Carroll patent. The Federal Circuit affirmed.

Il. Relationship of the Questions Presented to Cases

Currently Pending Before the Court

The question presented for review with respect to the

doctrine of equivalents is substantively the same as that currently

under consideration by this Court in Hilton Davis Chemical Co.

v. Warner-Jenkinson Co., Inc., 62 F.3d 1512 (Fed. Cir. 1995),

cert. granted, 64 U.S.L.W. 3570 (U.S. Feb. 26, 1996) (No. 95-

728). From telephonic communications with Court personnel,

it is believed that Hilton Davis will be argued next term. For the

reasons set forth in greater detail infra, since (1) revision of the

doctrine of equivalents is the most important question before the

patent bar at the present time, (2) this Court has in the past

decided a patent law question of fundamental importance by

granting certiorari in more than one case so that a few cases with

differing fact situations can be heard together and (3) this case

presents an egregious example of the use of the doctrine of

equivalents to nullify statutory patent law, certiorari should be

granted to permit this case and Hilton Davis to be heard at the

same time so that this Court will have at least one fact situation

to illustrate an inappropriate application of the doctrine of

equivalents.

With respect to the jury trial question presented for review,

a closely related issue was heard earlier by this Court in

Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir.),

cert. granted, 116 S.Ct. 40 (1995). Markman was argued on

January 8 and the decision is currently pending. In Markman,

the issue is the role of juries in patent cases and, more

particularly, whether a court rather than a jury should resolve

disputed issues of fact concerning the meaning of patent claims.

The Federal Circuit held that courts rather than juries should

resolve disputed issues of fact as long as they relate to the

meaning of patent claims. The Federal Circuit’s ruling in this

case is even more pervasive than in Markman in reducing the

role of juries in patent cases. More particularly, the Federal

Circuit held that reduction of the jury’s role in a patent case is

not limited to the interpretation of patent claims but extends to

the entire case, i.¢c., juries can be denied the right to decide any

matter ab initio and it is sufficient to have a special master

decide the entire case as long as a jury can decide whether the

master was right or wrong. Not only is this a plain violation of

the fundamental and constitutional right to trial by jury, it is

extremely onerous and wasteful since it requires that patent

cases, which are notoriously expensive to try, be tried in full

before a special master and then tried again before a jury.

Ill. The Doctrine of Equivalents Issue

A rodless cylinder is a common pneumatic industrial tool

used primarily in factories and other work environments to move

an article a short distance from one point to another. A rodless

cylinder has three main components in the general shape of three

‘concentric cylinders. First, there is an inner member ("piston").

Second, there is a tube ("tube") in which the piston is moved

either to the right or to the left under the force of air pressure.

Third, there is an outer member ("follower") which encircles the

tube and which will move when the piston is moved (hence the

term follower) as a result of a magnetic attraction between the

piston and the follower, both of which have magnets mounted

therein for this purpose. The article to be moved is attached to

the follower. Thus, a burst of air pressure at one end of the tube

will move the piston - causing movement of the follower -

causing movement of the article.

FOLOWER TUBE pston «PRESSURE

These rodless cylinders were described in the patent literature

beginning in the early 1960s.

A. The Missing Claimed Sealing Ring

In the prior art, there was a sealing ring at each end of the

piston which would perform the functions of sealing the piston,

wiping the inner wall of the tube and guiding the piston. The

Stoll patent disclosed and specifically claimed improving the

prior art sealing ring by substituting therefor the combination of

(1) a soft sealing ring and (2) a hard guiding ring. Thus, the

specification stated

the sealing means of the piston comprise sealing

rings and the piston is provided with sliding

guide rings near the sealing rings. The advantage

of this is that a relatively soft material can be

uced for the piston sealing rings, which no longer

have to perform any significant guiding

functions.

This distinction was further emphasized by Festo as follows

Prior art rodless cylinders incorporated a single

ring on the piston which was used to not only

maintain the separation between the piston and

the inner wall surface of the tube but also to

create a seal with the inner wall surface so that

fluid pressure can build up within the tube on one

side of the piston to move the piston. A more

rigid or harder materiai used for the seal is

desirable in order to maintain the separation

between the piston and the inner wall surface of

the tube. However, when a more rigid or harder

material is used for the seal, the sealing and

wiping functions are not effectively obtained. On

the other hand, if a soft resilient material is used

for the seal, it will conform well to the engaging -

surface of the inner wall of the cylinder tube and

seal and wipe effectively; but, the magnetic force

and free floating piston will overcome the soft

material and the magnets will engage the tube

wall and interfere with the reciprocal movement

of the piston on the tube.

The one seal SMC rodless cylinder accused of infringement

has, at one end of the piston, only a guiding ring and no sealing

ring. Since the Stoll patent claim specifically recites a sealing

ring and a guiding ring at each end of the piston, the SMC

rodless cylinder is missing both a claimed element and its

function.

Through the mischief generated by an unrestricted doctrine

of equivalents, Festo was able to assert at trial and the Federal

ESS

Circuit found that a guide ring is the equivalent of the

combination sealing ring and guide ring recited in the Stoll claim

even though this is directly contrary to the Stoll specification |

which the public must rely upon to determine the scope of the |

Stoll patent claim.

B. The Missing Claimed Magnetizable

Material

The Stoll patent also discloses and specifically claims the

use of magnetizable material in the outer covering (sleeve) of the

follower to shield magnetic leakage fields to prevent undesirable

braking forces. Thus, the Stoll specification states

The counterpart of the piston body is a sleeve 30 :

made of a magnetisable material to reduce

magnetic leakage fields.

and

If the driven assembly [follower] is provided with

a sleeve made of a magnetisable material, which

encircles the hollow cylindrical assembly of the

magnet arrangement, magnetic leakage fields in

the vicinity of the driven assembly can be kept to

a minimum. In this way, undesirable braking

forces, which would otherwise be generated

while piston and driven assembly pass

magnetisable machine components, are avoided.

The Stoll patent claim specifically recites “a cylindrical

sleeve made of a magnetizable material.” Festo conceded that

the SMC cylindrical sleeve was not made of a magnetizable

material. Thus, the SMC cylinder did not include the claimed

magnetizable material or its function.

Festo asserted at trial and the Federal Circuit found that the

alloy used in the sleeve of SMC’s follower, although non-

magnetizable and unable to prevent undesirable braking fields,

nonetheless, would have included certain minute magnetic

impurities as a result of its manufacturing process and these

minute magnetic impurities could shield minute magnetic fields.

Thus, through the mischief generated by an unrestricted doctrine

of equivalents, a non-magnetizable material was transformed into

“the equivalent” of its direct opposite - a magnetizable material.

This, of course, is Jirectly contrary to the specification of the

Stoll patent which specifies magnetizable material (not non-

magnetizable material) in order to prevent undesirable braking

forces.

IV. The Jury Trial Issue

This Court has specifically held that the burden “{for

appointment of a special master] is considerably increased and

it will indeed be a rare case in which it can be met” and that

“{e}ven this limited inroad upon the right to trial by jury ‘should

seldom be made, and if at all only when unusual circumstances

exist."” Dairy Queen, Inc. v. Wood, 379 U.S. 469, 478 n.18

(1962).

The Federal Circuit’s opinion in this case does not specify

any “unusual circumstances” for this case as contrasted to other

patent cases nor does it specify why this case should be

considered the “rare case” referred to by this Court. If this case

is the “rare case” referred to by this Court, almost all patent cases

are such rare cases.

The Federal Circuit’s decision in this case also holds that

“the complexity of the technologic facts” justified disregarding

the “read to the jury” restriction of rule 53. However, this would

justify disregarding the rule in almost every patent case and

would frustrate the rule’s purpose of preventing a master’s report

(on even one issue - much less the entire case) from being

accorded far too much weight.

The right to a jury trial is the right to have a jury decide the

case ab initio - not to have the jury consider whether a full trial

before a master was correctly decided in whole or in part.

None of the cases cited by the Federal Circuit in its opinion

justify having for patent cases a first trial before a master to

decide the entire case and a second trial before a jury to consider

the master’s conclusions. Ex parte Peterson, 253 U.S. 300

(1920) involved only the appointment of an auditor to consider

financial matters. Constant v. Advanced Micro-Devices, Inc.,

848 F.2d 1560 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988)

involved only recommendations concerning summary judgment,

matters which do not concern a jury. In fact, Constant supported

SMC’s motion that the court enter the special master’s finding

that there was no infringement as a matter of Jaw. In La Buy v.

Howes Leather Co., 352 U.S. 249 (1957), the reference to a

master to try a non-jury anti-trust case was vacated. Also La Buy

(at 256-57) refers to McCullough v. Cosgrave, 309 U.S. 634

(1940) in which “the Court summarily ordered vacated the

reference of two patent cases to a master.” Crateo, Inc. v.

Intermark, Inc., 536 F.2d 862 (9th Cir. 1976) only involved the

appointment of a bankruptcy referee to consider “tangled

financial affairs” with respect to insolvency and supports SMC’s

position that rule 53(e)(3) requires that the master’s report can

only be read and not given to the jury.'

The Federal Circuit appears to imply (at page 12 of its

opinion) that SMC was not prejudiced by having the master’s

report as the focus of the trial since the jury did not follow the

Stoll non-infringement conclusion by the special master

favorable to SMC. However, the jury followed the conclusions

by the master which were adverse to SMC. If the Federal Circuit

is implying that, because the jury was not influenced by the

master’s one finding in favor of SMC, it must not have been

influenced by the other findings of the master in favor of Festo,

such a conclusion would not be supportable since it would justify

the admission of any inadmissible evidence before a jury on the

basis that there can be no assurance that the jury relied upon it.

' At page 11 of its opinion, the Federal Circuit states that SMC “agreed

that portions of the report could be read to the jury.” This is incorrect. SMC

repeatedly objected to having the report read to the jury and specifically

objected to Judge Saris’ order requiring SMC to redact portions of the report.

Federal Circuit joint appendix A2391-93, A2451-57, A4461-65, A4901-02,

A4911-17, Al4, AS5121-35, AS391-94. Also, see footnote 12 at page 36 of

SMC’s main brief and page 4 of SMC’s reply brief.

At page 11 of its opinion, the Federal Circuit appears to imply that

SMC only objected to Judge Saris not retrieving from the jury, prior to

deliberations, each juror’s copy of the master’s report. However, as noted

above, SMC objected to the entire procedure from the start and the procedure

was tainted long before the jurors were permitted to retain copies of the

master’s report during their deliberations.

At page 12 of its opinion, the Federal Circuit appears to imply that

SMC should not have made reference to the master’s findings during the trial.

However, once Judge Saris had determined over SMC’s objections that the

master’s report would be introduced into evidence at trial, SMC had no

choice but to conduct the trial as Judge Saris had ordered.

ARGUMENT FOR ALLOWANCE OF THE WRIT

I. The Doctrine of Equivalents Issue

The two most important issues in patent law are (1)

infringement and (2) validity. The infringement issue, more

often than not, concerns the doctrine of equivalents and the

validity issue, more often than not, concerns obviousness. When

this Court in 1965-66 decided the criteria for the fundamental

issue of obviousness, it granted certiorari in four cases and heard

them together - Graham v. John Deere Co. of Kansas City;

Calmar, Inc. v. Cook Chemical Co.; Colgate-Palmolive Co. v.

Cook Chemical Co.; 383 U.S. 101 (1966) (often referred to as

“the trilogy”) and U. S. v. Adams, 383 U.S. 39 (1966). These

cases were argued together on October 14, 1965 and decided

together on February 21, 1966. Hearing and deciding these cases

together permitted the Court to instruct the patent bar and the

judiciary with respect to three different fact situations which

resulted in a finding of non-obviousness for one of the patents

(Adams) and a finding of obviousness for the other two patents

(the trilogy). The Court can provide the patent bar and the

judiciary with similar detailed and critical guidance as to the

doctrine of equivalents by granting certiorari in this case and

having it heard and decided with Hilton Davis.

Apart from being heard and decided with Hilton Davis, this

case is particularly “cert. worthy” since it presents an egregious

example of the mischief generated by an unrestricted doctrine of

equivalents.

Our patent system does not permit an inventor to obtain a

patent on something as general, unspecific and undefinable as his

“invention.” Rather, it has been the requirement for many years

that a patent applicant submit with his application “one or more

claims particularly pointing out and distinctly claiming the

subject matter which the applicant regards as his invention.” 35

U.S.C. §112, 42.

The importance of this requirement cannot be overstated.

The claims, which are the subject of rigorous negotiation

between the patent examiner and the applicant, provide notice to

the public as to (1) what is covered and (2) what is not covered

by the patent.? Both branches of this notice are critical. The first

branch stakes out the patentee’s territory and lets the public

know that any invasion of this territory could result in liability

for patent infringement. The second branch stakes out the

public’s territory for legitimate, beneficial and desired “design

around” activity.’ Both branches are essential to a properly

operating patent system. The first branch provides the incentive

for the inventor to make his invention - to which the public will

have access after the expiration of the patent. The second branch

provides the public with the knowledge of the invention and its

boundaries to create fertile ground for further inventions. An

? “The inventor must ‘inform the public during the life of the patent of

the limits of the monopoly asserted, so that it may be known which features

may be safely used or manufactured without a license and which may not.”

Hilton Davis, supra at 1541 (Plager, Archer, Rich, Lourie, J., dissenting)

quoting United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 232 (1942)

quoting General Elec. Co. v. Wabash Corp., 304 U.S. 364, 369 (1938).

> “Competitors and other members of the public are entitled to rely on the

scope of the claims set out in a patent, as the statute requires, and to design

around the patentee’s statutorily-protected rights.” Hilton Davis, supra at

1540 (Plager, Archer, Rich, Lourie, J., dissenting).

unrestricted‘ doctrine of equivalents is destructive of both

~ branches since the public cannot know what the claims cover

until after the matter has been fully litigated.

Mr. Justice Black was only too correct when over 45 years

ago he predicted

One need not be a prophet to suggest that today’s

rhapsody on the virtue of the “doctrine of

equivalents” will, in direct contravention of the

Miller case supra, make enlargement of patent

claims the “rule” rather than the “exception.”

and when he further noted that it would be the public and not the

patentee who was likely to suffer from “fraud” and “piracy.”

Under these circumstances I think petitioner had

a right to act on the belief that this Court would

follow the plain mandates of Congress that a

patent’s precise claims mark its monopoly

boundaries, and that expansion of those claims to

* In practice, the doctrine is largely unrestricted. Although an

“insubstantial” change supposedly dictates a conclusion of infringement and

a “substantial” change supposedly dictates a conclusion of noninfringement,

these terms are often no more than labels to justify a particular conclusion.

“[T]he reality is that the doctrine of equivalents is a virtually uncontrolled and

unreviewable license to juries to find infringement if they so choose. And

this is done largely without regard to and independent of the express

limitations of the patent claims which may have brought about their

allowance by the Patent and Trademark Office (PTO) in the first place.”

Hilton Davis, supra at 1538 (Plager, Archer, Rich, Lourie, J., dissenting).

> Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 616

(1950) (Black, J., dissenting).

OO ee ee ae ae oe

include manganese could be obtained only in a

staiutory reissue proceeding. The Court’s ruling

today sets the stage for more patent “fraud” and

“piracy” against business than could be expected

from faithful observance of the congressionally

enacted plan to protect business against judicial

expansion of precise patent claims.°

Now that the majority of patent trials are to juries (Hilton

Davis, supra at 1567 n. 19, Nies, J., dissenting), the situation has

grown even worse since the supposed basis for any doctrine of

equivalents infringement conclusion is veiled in a secrecy which

is difficult to pierce upon appeal.

The mixing [consideration of the doctrine of

equivalents] is still to be done in the dark, by the

multiple hands of a jury under minimal

instruction. When that product, an announced ©

“yes, it infringes” or “no, it does not” arrives at

this court, we will remain as blinded as we are

now in our ability to pierce the doctrinal veil.’

This case presents an egregious example of the mischief

generated by an unrestricted doctrine of equivalents since the

Stoll specification (and claims) proclaim non-equivalency with

® /d. at 617 (Black, J., dissenting).

7 Hilton Davis, supra at 1537 (Plager, Archer, Rich, Lourie, J.,

dissenting).

respect to what was later held by the jury and the Federal Circuit

to be equivalency.*

With respect to the missing sealing ring and its function, the

Stoll patent specifically claims the combination of a sealing ring

and a guiding ring at each end of the piston and the specification

unequivocally states that “[t]he advantage of this is that a

relatively soft material can be used for the piston sealing rings,

which no longer have to perform any significant guiding

functions.” However, at trial, and directly contrary to the

specification upon which the public must rely to determine the

scope of the patent claim, Festo asserted that the guiding ring

was the equivalent of the combination of a sealing ring and a

guiding ring. The Federal Circuit in its opinion (at 6)

characterized this as merely “[ijnefficient infringement.” The

result is that the public is stymied in its attempts to explore this

technology since, not being able to place any reliance upon the

claims of the patent because of the doctrine of equivalents, it can

® The doctrine of equivalents has long been used to transform a patent

claim into a “nose of wax.” “Some persons seem to suppose that a claim in

a patent is like a nose of wax, which may be turned and twisted in any

direction, by merely referring to the specification, so as to make it include

something more than, or something different from what its words express....

The claim is a statutory requirement, prescribed for the very purpose of

making the patentee define precisely what his invention is; and it is unjust to

the public, as well as an evasion of the law, to construe it in 4 manner

different from the plain import of its terms. This has been so often expressed

in the opinions of this court that it is unnecessary to pursue the subject

further.” Hilton Davis, supra at 1540 (Plager, Archer, Rich, Lourie, J.,

dissenting) quoting White v. Dunbar, 119 U.S. 47, 51-52 (1886).

have no idea what constitutes (1) infringement, (2) “inefficient”

infringement or (3) non-infringement.’

Likewise, with respect to the missing magnetizable material

and its function, the Stoll patent specifically claims “a cylindrical

sleeve made of a magnetizable material” and the specification

unequivocally provides that “[i]f the driven assembly [follower]

is provided with a sleeve made of a magnetizable material, which

encircles the hollow cylindrical assembly of the magnet

arrangement, magnetic leakage fields in the vicinity of the driven

assembly can be kept to a minimum. In this way undesirable

braking forces, which would otherwise be generated while piston

and driven assembly pass magnetizable machine components, are

avoided.” However, at trial, and directly contrary to the

specification upon which the public must rely, Festo asserted that

a non-magnetizable material was the equivalent of its opposite -

a magnetizable material. In its opinion (at 6), the Federal Circuit

appears to imply that the operation of the SMC rodless cylinder

did not suffer by not having a magnetizable material in the sleeve

since the “magnetic flux leaking from the cylinder is very small.”

However, if the leakage is very small with the result that there

was no need to use the claimed “magnetizable material,” this

indicates non-infringement, not infringement. Not surprisingly,

* This also contravenes the constitutional mandate ““To promote the

Progress of * * * useful Arts, by securing for limited Times to * * * Inventors

the exclusive Right to their * * * Discoveries.’ Art. I, §8, cl. 8.” noted in

Graham, supra at 5 since it discourages, not encourages, invention. “A zone

of uncertainty which enterprise and experimentation may enter only at the

risk of infringement claims would discourage invention only a little less than

unequivocal foreclosure of the field.” Hilton Davis, supra at 1570 (Nies, J.,

dissenting) quoting United Carbon Co. v. Binney & Smith Co., 317 U.S. 228,

236 (1942).

Festo’s expert Dr. Schroeder, whom the Federal Circuit heavily

relies upon in its opinion, conceded - Q. You don’t get

undesirable braking forces for minimal fields, do you? A.

That’s correct.””'°

While some may say it is unfair to restrict a patentee to the

language of his claims, others say that, if someone must suffer,

it should be the patentee since only he had the opportunity to

ensure that the claims contained the appropriate language.''

Further, resolution of the issue does not involve writing upon a

clean slate. The issue has been previously, and statutorily,

determined. 35 U.S.C. §251, 94. The patent law recognizes that

a patentee may claim less than he had a right to claim.

Accordingly, it provides him an opportunity to correct his claims

and make them broader. However, the patent law recognizes the

'© “Absurd” conclusions with respect to equivalents have a long history

in patent law. “These abstract phrases, ‘substantial identity,’ ‘equivalent,’

‘mode of operation,’ & c., are often used in such a vague and equivocal

manner, that they mystify and lead many to absurd conclusions, who will not

distinguish between things that differ.” Hilton Davis, supra at 1574 (Nies,

Archer, J., dissenting) quoting Burr v. Duryee, 68 U.S. (1 Wall.) 531, 572

(1863).

'! “Tn the case under consideration the patentee might have included in

the application for the original patent, claims broad enough to embrace

petitioner’s accused machine, but did not. This ‘gave the public to

understand’ that whatever was not claimed ‘did not come within his patent

and might rightfully be made by anyone.”” Graver Tank, supra at 617-18

(Black, J., dissenting) quoting Sontag Stores Co. v. Nut Co., 310 U.S. 281

(1940). “[N]othing can be more just and fair, both to the patentee and to the

public, than that the former should understand, and correctly describe, just

what he has invented, and for what he claims a patent.” Hilton Davis, supra

at 1574 (Nies, Archer, J., dissenting).

difficulties caused by this “retroactive” patenting and it

specifically restricts such claim broadening to a reissue

application filed within two years from the grant of the original

patent and it specifically requires that the broadened claims be

subjected to the scrutiny of an examination for patentability. In

the present case, Festo, through the mischief of an unrestricted

doctrine of equivalents, was able at trial to broaden its patent

- Claims 12 years after their issuance and without subjecting the

broadened claims to examination by a patent examiner familiar

with this technology.”

Il. The Jury Trial Issue

As noted supra, a closely related issue was heard earlier

this term in Markman v. Westview Instruments, Inc., 52 F 3d 967

(Fed. Cir.), cert. granted, 116 S.Ct. 40 (1995). In Markman, the

Federal Circuit held that courts, rather than juries, should resolve

disputed issues of fact concerning the meaning of patent claims.

The Federal Circuit’s ruling in this case is far more extensive

'2 Justice Black refers to the less stringent predecessor reissue statute as

“protect[ing] businessmen from retroactive infringement suits and judicial

expansion of a monopoly sphere beyond that which a patent expressly

authorizes.” Graver Tank, supra at 615 (Black, J., dissenting). Judge Nies

(formerly Chief Judge Nies) refers to this “retroactive infringement” as

“unknowable infringement.” Hilton Davis, supra at 1562 (Nies, J.,

'? Judge Nies has noted how patentees have improperly taken advantage

of the judiciary’s sense of fairness. “The patentee is much better off evading

the reissue procedure which Congress has provided [with its two year and

examination requirements}, and resorting to its counterpart, the doctrine of

equivalents, created out of the judiciary’s sense of ‘fairness.’” Hilton Davis,

supra at 1560, (Nies, J., dissenting).

than in Markman with respect to reducing the role of juries in

patent cases. Thus, for the first time and without precedent, the

Federal Circuit holds that reduction of the jury’s role is not

limited to patent claim interpretation but extends to the entire

case. More particularly, under the Federal Circuit’s decision,

juries in patent cases can be denied the right to decide any issue

ab initio and it is sufficient to have a special master decide the

entire case as long as the jury can decide whether the master was

right or wrong. This is both a plain violation of the fundamental

constitutional right to trial by jury and extremely cnerous and

wasteful since it permits the requirement that patent cases,

notoriously expensive to begin with, be tried in full before a

special master and then tried again before a jury.

Even when a special master is appointed to decide a

specific narrow issue, such an appointment is subject to stringent

restrictions, because a jury and not a master should decide

disputed factual matters. Rule 53(b) specifically provides that

reference to a master is "the exception and not the rule""* and

"shall be made only when the issues are complicated." Further,

this Court has specifically held that "the burden of such a

showing [for appointment of a special master] is considerably

increased and it will indeed be a rare case in which it can be

met," and that "[e}ven this limited inroad upon the right to trial

by jury ‘should seldom be made, and if at all only when unusual

circumstances exist."" Dairy Queen, Inc. v. Wood, 369 U.S. 469,

478 n. 18 (1962).

'* It is not clear whether the Federal Circuit is implying at page 10 of its

decision that this general statement, which is the first sentence of the rule, has

no application to a jury trial reference.

There were no “unusual circumstances," and this was not

the "rare case" to justify the appointment of a special master to

decide any issue, much less to decide the whoie case. Patent

cases are "mainstream" cases and should be treated as such.

There can be no basis for holding that a patent case is too

complicated for a jury to decide without having the entire case

first tried and decided by a master. Indeed, this case was far

simpler than most patent cases in that it involved neither highly

technical subject matter (such as complex biotechnology or

sophisticated electronic circuitry) nor any particularly unusual or

complicated issues of patent law. Rather, the case was directed

to simple mechanical components and raised only the usual

patent law issues.

That this was not the "rare case" to justify appointment of

a master was clear even before the appointment of a master.

After the master’s decision was rendered, this was even more

apparent. Where a master is appointed and his report reveals that

the issues are not sufficiently complicated to justify the

appointment, admission of the report constitutes error. Boyd

Callan, Inc. v. United States, 328 F.2d 505, 507 (Sth Cir. 1964)

("By that time it was clear that the issues were not too

complicated for a jury to decide.").

Further, the master’s report was improperly presented to the

jury. An appointment of a master, even to decide a specific

narrow issue, is a significant inroad upon the fundamental

constitutional right to a trial by jury. Thus, even in the "unusual

circumstances” in which such a reference is proper, rule 53(e)(3)

restricts the manner in which the master's report may be

presented to the jury. The rule only authorizes the reading of the

master's report to the jury ("may be read to the jury"); it does not

authorize giving multiple copies to the jury for their review,

either throughout the trial or during the jury's deliberations.

Here, the district court gave multiple copies of the report to the

jury for review at their leisure during the trial.

Equally fundamental, nothing in the rule envisions the jury

being told how the master decided the ultimate issues in the case.

It would be one thing if the district court had simply read to the

jury the master's findings that certain features of the patented

cylinders were or were not present in particular prior art

references, or that a single seal piston did or did not operate in a

particular way, although this, too, is improper. It was quite

another for the district court to give the jury in writing the

master's ultimate conclusions that the Carroll and Stoll patents

were valid and that the Carroll patent was infringed. This was

hardly the "limited inroad upon the right to trial by jury" that this

Court in Dairy Queen said "should seldom be made, and if at all

only when unusual circumstances exist."

The Federal Circuit’s ruling, besides permitting the

requirement that each patent case be tried twice, plainly violates

the fundamental constitutional right to a jury trial, even in patent

cases.

CONCLUSION

This petition presents two separate and independent

questions for review and, for the foregoing reasons, granting of

the petition with respect to each question presented for review is

respectfully requested."

Respectfully submitted,

Arthur I. Neustadt

Counsel of Record

Oblon, Spivak, McClelland,

‘Maier & Neustadt, P.C.

1755 Jefferson Davis Highway

Arlington, VA 22202

James B. Lampert

Hale and Dorr

60 State Street

Boston, MA 02109

Attorneys for Petitioners

SMC Corporation, et al.

March 26, 1996

'S In the usual case, granting of a petition for a writ of certiorari imposes

a significant burden upon this Court to become familiar with the myriad

details of a particular and often highly specialized legal issue. This petition

is the exception to this usual rule. As to the doctrine of equivalents issue, this

Court has already assumed this burden by granting certiorari in Hilton Davis

where the same question has been presented for review. As to the jury trial

issue, this Court has already assumed much of this burden by granting

certiorari in Markman where a closely related question (how closely related

will depend upon the decision) has been presented for review.

United States Court of Appeals for the Federal Circuit

95 - 1066

FESTO CORPORATION,

Plaintiff-Appellee,

SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD.,

a/k/a SMC CORPORATION, and SMC PNEUMATICS, INC.,

Defendants-Appellants.

Charles R. Hoffmann, Hoffmann & Baron, of Jericho, New

York, argued for plaintiff-appellee. With him on the brief was

Gerald T. Bodner.

Arthur I. Neustadt, Oblon, Spivak, McClelland, Maier &

Neustadt, P.C., of Arlington, Virginia, argued for defendants-

appellants.

Appealed from: U.S. District Court for the

District of Massachusetts

Judge Saris

[page 1]

United States Court of Appeals for the Federal Circuit

95-1066

FESTO CORPORATION,

Plaintiff-Appellee,

SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD.,

a/k/a SMC CORPORATION, and SMC PNEUMATICS, INC.,

Defendants-Appellants.

DECIDED: December 14, 1995

Before RICH, NEWMAN, and MICHEL, Circuit Judges.

NEWMAN, Circuit Judge.

Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., also known

as SMC Corporation, and SMC Pneumatics, Inc. (collectively

SMC) seek reversal of the judgment of the United States District

CR RR ge an SSI KATP TELA OCS LAI TOL ASE

bey ene Pore

Court for the District of Massachusetts,’ holding that SMC had

infringed two patents owned by Festo Corporation and assessing

damages. The patents relate to magnetically coupled rodless

cylinders wherein the follower moves by magnetic attraction to

the piston, which is moved hydraulically or pneumatically. We

affirm the judgment.

[page 2]

SUMMARY JUDGMENT - THE CARROLL PATENT

Before trial the district court granted Festo's motion for

partial summary judgment, finding infringement of United States

Patent No. 3,779,401 (the Carroll patent) under the doctrine of

equivalents. SMC, appealing this judgment, argues that in

summarily finding infringement the trial Judge engaged in

impermissibie fact-finding, contrary to the appropriate standard

for Rule 56 determinations. We review the summary judgment

for correctness of the process, as well as for its legal conclusion.

The grant of summary judgment is given plenary review on

appeal.

Summary judgment is appropriate when "the pleadings,

depositions, answers to interrogatories, and admissions on file,

together with the affidavits, if any, show that there is no genuine

issue as to any material fact and that the moving party is entitled

to a judgment as a matter of law." Fed. R. Civ. P. 56(c); Celotex

' Festo Comp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., No. 88-1814-

PBS (D. Mass. Feb. 3, 1994).

Corp. v. Catrett, 477 U.S. 317, 322 (1986). A material fact is

one whose finding is necessary to the proceedings. Anderson v.

Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A genuine issue

of material fact is shown to exist if sufficient evidence is

presented whereby a reasonable fact finder could decide the

question in favor of the nonmoving party. Id, The evidence

submitted by the nonmovant, in opposition to a motion for

summary judgment, "is to be believed, and all justifiable

inferences are to be drawn in his favor." Id. at 255.

In ruling on a motion for summary judgment the court must

bear in mind the actual quantum and quality of proof necessary

to support liability under the applicable law. Id, at 254. It is the

opposing party's responsibility to raise issues of material fact that

would make summary judgment inappropriate. Matsushita Elec.

Indus, Co. v, Zenith Radio Corp., 475 U.S. 574, 585-87 (1986).

The court must assess the adequacy of the nonmovant's response

and must determine whether the showing the nonmovant asserts

it would have made at trial would be sufficient to sustain its

position. See Celotex, 477 U.S. at 322.

[page 3]

The infringement issue concerning the Carroll patent, which

expired in 1990, was focused on reexamined claim 9, shown in

the margin.’ Al) of the claim elements were conceded to be

? Claim 9. A device for moving articles, which comprises:

a hollow cylinder formed of non-ferrous material and having

opposite axial ends;

a piston mounted in the interior of the hollow cylinder and

(continued...)

eee

PRA AL EOI EA ALT PO AEE VO

literally present in the accused devices except for both members

2(...continued)

reciprocatingly slidable therein, the piston including a central mounting

member disposed axially in the cylinder,

a plurally of cylindricaliy-shaped permanent magnets mounted on

the central mounting member and spaced apart axially from each other, each

ER See rey nn oe eee

mounting member,

at least one pair of end members mounted on the central mounting

member and disposed on opposite axial sides of the plurality of magnets,

a pair of cushion members formed of resilient material, the cushion

members being situated near opposite axial ends of the central mounting

member to help prevent damage to the piston when the piston contacts an

axial end of the cylinder,

and a pair of resilient sealing rings situated near opposite axial ends

of the central mounting member and engaging the cylinder to effect a fluid-

tight seal therewith;

a body mounted on the exterior of the hollow cylinder and

reciprocatingly slidable thereon, the body including a plurality of annularly

shaped permanent magnets surrounding the cylinder and spaced apart from

each other,

the permanent magnets of the piston and body being polarized so as

to magnetically couple the body to the piston whereby

movement of the piston inside the cylinder causes a corresponding movement

of the body outside the cylinder,

the body further including means provided thereon for holding on

the body an article to be moved;

and means for controlling the admission of pressure fluid into the

cylinder and exhaust fluid from the cylinder for moving the piston in the

cylinder,

the attractive forces between the permanent magnets of the piston

and the body being such that movement of the piston causes corresponding

movement of the body below a predetermined load on the body and such that

above said predetermined load movement of the piston does not cause

corresponding movement of the body. [Paragraphing added. ]

of the pair of resilient sealing rings. SMC stated to the special

master "We've decided that we will not be presenting any

testimony concerning infringement." Absent evidence that

placed in dispute the facts of infringement, summary judgment

could properly be granted on undisputed facts.

In granting summary judgment that the claim was infringed,

the district court observed that SMC offered no evidence to

refute Festo's assertion that substantially the same function was

performed, in substantially the same way with the same result,

by the claimed pair of resilient sealing rings when situated one

at each end of the central mounting member, and by SMC's

single ring situated at the end contacted by the pressure fluid.

Although SMC now argues that there has not been compliance

with the "all elements rule" of Pennwalt Corp. v.

[page 4]

Durand- Wayland, Inc., 833 F.2d 931, 935, 4 USPQ2d 1737,

1739-40 (Fed. Cir. 1987) (in banc), cert, denied, 485 U.S. 961,

1009 (1988), we take note that, as held in Dolly, Inc. v. Spalding

& Evenflo Cos., 16 F.3d 394, 398, 29 USPQ2d 1767, 1769 (Fed.

Cir. 1994) and Intel Corp. v. Int'l Trade Comm'n, 946 F.2d 821,

832, 20 USPQ2d 1161, 1171 (Fed. Cir. 1991), there need not be

one-to-one correspondence between the components of an

accused device and the claimed invention. It was not disputed

that the rings served the primary function of providing a tight

seai at the end contacted by the pressure fluid. There was

undisputed evidence to support a finding that the two-way seal

employed by SMC, as used in the accused device, corresponds

to the two resilient sealing rings of the claimed invention. On

the record that was the basis of the motion for summary

;

Seat at SS

judgment we do not discern reversible error in the court's grant

of surnmmary judgment of infringement as to the Carroll patent.

That judgment is affirmed.

THE JURY TRIAL

The remaining issues were tried to the jury. The jury found

valid the Carroll patent and the Stol! patent (United States Patent

No. 4,354,125), found the Stoll patent infringed, and assessed

damages. The district court entered judgment on the jury verdict,

denying duly made post-trial motions. The issues appealed

relate only to infringement and damages; no appeal is taken on

the issue of validity of either the Carroll or the Stoll patent.

We review the jury verdict to ascertain whether there was

substantial evidence whereby a reasonable jury could have

reached the verdict that was reached. Substantial evidence is

such relevant evidence, on the record as a whole, as could be

accepted by a reasonable mind as adequate to support the verdict.

Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893,

221 USPQ 669, 673 (Fed. Cir.), cert. denied, 469 U.S. 857

(1984). The court must consider the evidence in the light most

favorable to the party in whose favor the jury found, and must

not substitute its choice for the jury's in drawing factual

inferences or deciding

[page 5}

Micro Devices, Inc., 977 F.2d 1555, 1580, 24 USPQ2d 1401,

1419 (Fed. Cir. 1992).

A. INFRINGEMENT OF THE STOLL PATENT

Stoll patent claim 1 is shown in the margin.’ The issue of

* Claim 1. In an arrangement having a hollow cylindrical tube and

driving and driven members movable thereon for conveying articles, the

improver: 2nt comprising

wherein said tube is made of a nonmagnetic material,

wherein said driving member is a piston movably mounted on the

inside of said tube,

said piston having a piston body and plural axially spaced, first

permanent annular magnets encircling said piston body,

magnets in said axial spaced relation, the radially peripheral surface of said

magnets being oriented close to the internal wall surface of said tube,

said piston further including plural guide ring means encircling said

piston body and slidingly engaging said internal wall and first sealing rings

located axially outside said guide rings for wiping said internal wall as said

piston moves along said tube to thereby cause any impurities that may be

present in said tube to be pushed along said tube so that said first annular

magnets will be free of interference from said impurities,

wherein said driven member includes a cylindrical sleeve made of

a magnetizable material and encircles said tube,

said sleeve having plural axially spaced second permanent annular

magnets affixed thereto and in magnetically attracting relation to said first

permanent annular magnets and second means spacing said second permanent

annular magnets in said axially spaced relation, the radially inner surface of

said magnets being oriented close to the external surface of said tube,

axially outside said second permanent annular magnets for wiping the

external wall surface of said tube as said driven member

(continued...)

infringement focused on the claim clauses relating to the guide

rings and sealing rings, for some of the accused devices

contained four rings and some contained only three rings; and to

the magnetizable material in the sleeve of the follower. The

presence of all other claim elements and limitations in the

accused devices was conceded. We confirmed in Hilton Davis

Chem. Co. v. Wamer-Jenkinson Co., 62 F.3d 1512, 35 USPQ2d

1641 (Fed. Cir. 1995) (en banc) that the fundamental inquiry

with respect to equivalency is whether the accused device is

substantially the same as the patented invention, affirming the

utility of the function/way/result test for substantial identity, and

the relevance of objective considerations such as copying or

independent development.

[page 6]

Both sides presented testimony and made cogent arguments

at trial on the merits of their respective positions on the

technologic aspects of equivalency. There was expert testimony

on behalf of Festo that the SMC cylinde: having a follower using

an aluminum alloy sleeve encircling the magnets is substantially

the same as the claimed cylinder wherein the sleeve is made of

"magnetizable material,” and that both serve the function of

reducing magnetic leakage. Festo's expert witness in the field of

physics and magnetism, Dr. Schroeder, explained that because of

the small gap, any magnetic flux leaking from the cylinder is

very small. He showed the tests he conducted on the SMC

4(...continued)

is moved along said tube in response to a driving movement of said piston to

thereby cause any impurities that may be present on said tube to be pushed

along said tube so that second permanent annular magnets will be free of

interference from said impurities. [Paragraphing added. ]

10a

sleeve, and explained the evidence that a 300% reduction in

magnetic leakage fields was produced by the SMC sleeve. Dr.

Schroeder explained how he analyzed the composition of the

SMC sleeve and compared it to the sleeve described in the

patent. He testified that the SMC sleeve formed a magnetic

circuit in substantially the same way as the sleeve of the patent,

that it served the same function of shielding and minimizing

leakage fields, and that it obtained substantially the same result

of avoiding undesirable braking forces.

There was also evidence before the jury concerning the

double rings at each end of the central member. SMC argues

that the omission of one of the sealing rings precludes a finding

of infringement, under the "all elements rule" of Pennwalt.

However, this rule does not require a one-to-one correspondence

of components. See, ¢.g., Dolly v. Spalding, 16 F.3d at 398, 29

USPQ2d at 1769; Intel v. ITC, 946 F.2d at 832, 20 USPQ2d at

1171. There was testimony concerning the effect of the omission

by SMC of one of the four rings, and the effect of the location of

the omitted ring distal from the pressure medium. Festo

presented testimony that the use by SMC of a guiding ring at

both ends, retaining the wiping/sealing ring oniy at the end

adjacent the pressure medium, corresponded to and was

equivalent to the claimed ring structure, and that the SMC ring

structure would still improve the life of the piston, although not

as effectively as would the use of two rings at both ends.

Inefficient infringement is still

[page 7]

lla

. fj . I it C C I . j Wi C) tl ” : 863

F.2d 855, 859, 9 USPQ2d 1289, 1294 (Fed. Cir. 1988), cert.

denied, 490 U.S. 1068 (1989).

A verdict of infringement must be sustained if reasonable

jurors, viewing the evidence as a whole, could have found the

facts needed to reach the verdict that was reached, in light of the

applicable law. It is our obligation to defer to the trier of fact

when we come upon substantial evidence to support the verdict.

We neither make our own findings as if there had been no trial,

nor attempt to reconstruct the entire trial on a paper record.

Anderson v. City of Bessemer City, 470 U.S. 564, 573 (1985)

("The reviewing court oversteps the bounds of its duty under

Rule 52(a) if it undertakes to duplicate the role of the lower

court. . . . ‘Appellate courts must constantly have in mind that

their function is not to decide factual issues de novo.’”) (quoting

Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100,

123 (1969)).

Although the differing expert opinions reflect the closeness

of the technologic facts, there was substantial evidence whereby

a reasonable jury could have found infringement of the Stoll

patent in terms of the doctrine of equivalents. See Transnational

Corp. v. Rodio & Ursillo, Ltd., 920 F.2d 1066, 1068 (1st Cir.

1990) ("In reviewing the jury verdict, we are compelled even in

a close case, ‘to uphold the verdict unless the facts and

inferences, when viewed in a light most favorable to the party for

whom the jury held, point so strongly and overwhelmingly in

favor of the movant that a reasonable jury could not have arrived

at this conclusion."") (quoting Chedd-Angier Production Co, v.

Omni Publications Int'l Ltd., 756 F.2d 930, 934 (1st Cir. 1985)).

12a

B. PROSECUTION HISTORY ESTOPPEL

The issue of prosecution history estoppel is raised by SMC

on appeal. At trial, counsel correctly stated that "This is not

really a prosecution history estoppel case." Counsel argues that

it is now our obligation to determine the scope and meaning of

claim terms de novo. Indeed Markman v. Westview Instruments,

Inc., 52 F.3d 967,970-71, 34 USPQ2d 1321, 1322 (Fed. Cir.

1995) (en bane requires independent determination of the

construction of the claims,

[page 8]

as a matter of law, unencumbered by the trial process. However,

the issue of estoppel, to the extent that it was raised at trial, was

aired in extensive testimony by the inventor and by expert

witnesses on both sides, all directed to the meaning of

"magnetizable material." Related factual issues were also

disputed, such as the reason for the addition of this limitation to

the claims.

Festo argues that prosecution history estoppel does not bar

a finding of equivalency when a descriptive term in the claim

was not required to be included in order to overcome prior art.

See Hilton Davis, 62 F.3d at 1525, 35 USPQ2d at 1651 ("Nor

does prosecution history estoppel preclude application of the

doctrine of equivalents in this case. Whenever prosecution

history estoppel is invoked as a limitation to infringement under

the doctrine of equivalents, a close examination must be made as

to, not only what was surrendered, but also the reason for such

a surrender.") (internal quotation marks and citations omitted).

As discussed in Vaupel Textilmaschinen KG v. Meccanica Euro

l3a

Italia S.p.A., 944 F.2d 870, 882, 20 USPQ2d 1045, 1054 (Fed.

Cir. 1991), in determining whether prosecution history estoppel

applies when there has been a change in claim language during

prosecution, the court must consider both what was changed and

the reason for the change. The scope of any asserted estoppel is

determined in light of the prior art in the field of art relevant to

the change, the statements made to the patent examiner as to the

reason for the change, and the purpose of the change as it relates

to the allowance of the claims. See Mannesmann Demag Corp.

y. Engineered Metal Prods. Co., 793 F.2d 1279, 1284-85, 230

USPQ 45, 48 (Fed. Cir. 1986).

In this case the description of the sleeve as made of

magnetizable material was added during prosecution. The

reason for the addition was not stated in the prosecution history,

was vigorously disputed at trial, and was not at all clear to the

trial Judge, who called the addition "a mystery." At the trial

there was testimony by the inventor and by experts on both sides,

accompanied by extensive argument of counsel. The prosecution

record was before the jury, as was the inventor. The trial Judge

did not hoid Festo estopped to argue that there was

[page 9]

equivalency between the SMC aluminum alloy sleeve and the

claimed magnetizable sleeve. We do not discern error of law in

this ruling, and indeed there were before the jury SMC's

arguments on the technologic facts. Also before the jury were

the special master's contrary findings. The special master, as

discussed post, had found that there was prosecution history

estoppel barring Festo's assertion of equivalency.

l4a

No objection was raised to the district court's instructions

on the law of estoppel, or to the presentation of the broad issue

to the jury as part of the evidence relating to infringement. See

Fed. R. Civ. P. 51 ("No party may assign as error the giving or

the failure to give an instruction unless that party objects thereto

before the jury retires... .") We do not discern reversible error

in these proceedings. Taking note of the substantial evidence of

technologic identity of function, way, and result in the

circumstances of actual use wherein the leakage of magnetic flux

from the cylinder was small, and the disputed facts underlying

the issue of estoppel, we conclude that the judgment of

infringement of the Stoll patent must be sustained.

C. THE SPECIAL MASTER

SMC argues that the reference to a special master deprived

it of the right to trial by jury, in that the master's report was

before the jury. SMC also objects that it was required to try the

entire case twice, first to the master and then to the jury. We are

sympathetic to the burden on the parties and the cost of two

trials. However, this was not a matter of simply turning the case

over to a master, as SMC argues, for the case was fully tried, and

decided, by Judge and jury.

The federal courts have certain inherent powers to appoint

persons unconnected with the court to aid judges in the

performance of specific duties. Ex parte Peterson, 253 U.S. 300,

312 (1920) (appointment of auditor to define and simplify the

issues); Constant v. Advanced Micro-Devices, Inc., 848 F.2d

1560, 1566-67, 7 USPQ2d 1057, 1060 (Fed. Cir.), cert. denied,

488 U.S. 892 (1988) (special master made recommendations on

15a

issues of validity and infringement). Consent of the parties is not

required. Peterson, 253 U.S. at 312-14. SMC

[page 10]

states that it objected to the appointment of a master on the

ground that trial to the master should not replace the requested

jury trial. However, the jury trial was not replaced. A full jury

trial was held, except for the issue concerning the Carroll patent

that was decided by summary judgment. Rule 53(b) states in

part:

Rule 53(b) Reference. A reference to a master

shall be the exception and not the rule. In actions

to be tried by a jury, a reference shall be made

only when the issues are complicated; in actions

to be tried without a jury, save in matters of

account and of difficult computation of damages,

a reference shall be made only upon a showing

that some exceptional condition requires it. . . .

The trial Judge to whom this case was first assigned deemed the

case to be sufficiently complicated to be referred to a special

master, to conduct a hearing on the issues of patent validity and

infringement and to make recommendations on those issues.

The successor trial Judge, sharing the view that the issues were

complicated, continued the reference. In a nonjury trial,

complexity alone does not warrant reference to a master; "On the

contrary, we believe that this is an impelling reason for trial

before a regular, experienced trial Judge rather than before a

temporary substitute appointed on an ad hoc basis and not

ordinarily experienced in judicial work." La Buy v. Howes

l6a

Leather Co., 352 U.S. 249, 259 (1957). However, the strict

"exceptional condition" standard of Rule 53(b) relates only to

actions tried without a jury. Thus the district court did not abuse

its discretion in referring the complex technologic issues of

validity and infringement to a special master.

The master apparently conducted a full trial of these issues,

and produced a detailed report. Rule 53(e)(3) permits the

master's report to be presented along with other evidence for

consideration by the jury:

Rule 53(e)(3) In Jury Actions. In an action to

be tried by a jury the master shall not be directed

to report the evidence. The master's findings

upon the issues submitted to the master are

admissible as evidence of the matters found and

may be read to the jury, subject to the ruling of

the court upon any objections in point of law

which may be made to the report.

See Crateo, Inc. v. Intermark, Inc., 536 F.2d 862, 868 (9th Cir.)

(findings of special master are admissible as evidence and may

be read to the jury; Rule 53(e)(3) does not require master to

[page 11]

personally read findings, or to be made available for cross-

examination), cert. denied, 429 U.S. 896 (1976); Peterson, 253

U.S. at 310-11;

The report will, unless rejected by the court, be

admitted at the jury trial as evidence of facts and

17a

findings embodied therein; but it will be treated,

at most, as prima facie evidence thereof. The

parties will remain free to call, examine, and

cross-examine witnesses as if the report had not

been made. No incident of the jury trial is

modified or taken away either by the preliminary,

tentative hearing before the auditor or by the use

to which his report may be put.

SMC states that it objected to the possession of a redacted

version of the master's report by the jury, although it agreed that

portions of the report could be read to the jury. SMC, Festo, and

the Judge had previously agreed on the redacted (both sides call

it "sanitized") version of the report. We observe that the subject

matter remaining in the report related to the technology of the

invention and the prior art, and the master's findings and

recommendations on the issues of validity and infringement.

The master’s report favored SMC on the important question of

infringement of the Stoll patent, although it favored Festo on the

validity issues.

The court allowed the jurors to have a copy of the report,

instead of merely reading it to them as stated in the Rule, in light

of the complexity of the technologic facts. The copies were to be

turned in prior to deliberations, and the jurors were so informed

upon distribution of the report. However, apparently not all

copies were turned in or collected prior to deliberations. SMC

states that this tainted the entire procedure, and requires granting

a new trial or setting aside or modifying the verdict.

The district court found that any procedural error was

harmless and did not affect the substantial rights of either party.

18a

The district court referred to the following factors: (1) the jurors

had notebooks to take notes on the master's report while they

were reading it; (2) because various members of the jury finished

reading the report on July 11, 12, and 13, the report was fresh in

their minds during deliberations on July 14; (3) counsel for both

sides commented on the findings in the report during their

closing arguments; (4) the court gave clear instructions to the

jury that they could give whatever weight they chose to the

report and

{page 12]

that they, not the special master, were the ultimate fact-finders;

and (5) the verdict of the jury disregarded a key finding of the

master's report with respect to the magnetizable sleeve,

demonstrating that the jury did not actually give the master's

report undue weight. Post-Trial Memorandum at 2 (July 26,

1994).

We do not deem the jury trial to have been fatally flawed.

The technology was complex, the fine points of patent validity

and infringement were complex, and the accounting evidence

was complex. All were explained in the master's report and

during the argument reference was made by both parties to the

master's findings and explanations. The master’s report is

evidence, and as such may be referred to in arguments of

counsel. Fed. &. Civ. P. 53(e)(3); Charles A. Wright, Inc. v. F.D.

Rich Co., 354 F.2d 710, 714 (1st Cir.), cert. denied, 384 U.S. 960

(1966). There was testimony of witnesses on the points that had

been discussed by the special master. Although the Court has

19a

cautioned that a special master must not replace a jury trial,

Daily Queen, Inc. v. Wood, 369 U.S. 469, 478 n. 18, 133 USPQ

294, 297 n. 18 (1962); La Buy, 352 U.S. at 258, in this case a full

jury trial was held.

It is significant that the jury verdict did not track the

master's conclusions. Although SMC argues that the jury must

have placed undue reliance on the master's conclusions, SMC's

counsel told the jury in closing argument:

Judge Saris will instruct you that you can give

whatever weight you desire to this report. I

would suggest to you that you give it the

maximum weight. He especially considered this

point. He was certainly very knowledgeable

concerning everything that went on. He had an

eleven-day trial before him and then he issued a

detailed 68-page report in which he concluded

that the SMC rodless cylinder did not infringe.

Despite this exhortation, the jury's conclusion as to infringement

of the Stoll patent was contrary to the master's conclusion.

On the entirety of the circumstances, we do not believe that

SMC's rights to a fair trial were affected by the lapse whereby

the jury retained a copy of the master's report during its

deliberations. Fed. R. Civ. P. 61 provides:

page [13]

Rule 61. Harmless Error No error in either the

admission or the exclusion of evidence and no

20a

error or defect in any ruling or order or in

anything done or omitted by the court or by any

of the parties is ground for granting a new trial or

for setting aside a verdict or for vacating,

modifying or otherwise disturbing a judgment or

order, unless refusal to take such action appears

to the court inconsistent with substantial justice.

The court at every stage of the proceeding must

disregard any error or defect in the proceeding

which does not affect the substantial rights of the

parties.

We discern no ground for a new trial flowing from the

procedures with respect to the special master.

Ill

DAMAGES

SMC disputes the damages assessed by the jury. The

assessment of damages is a question of fact, and is decided by

the jury when trial is to a jury. Brooktree, 977 F.2d at 1578, 24

USPQ2d at 1417; Weinar v. Rollform, Inc., 744 F.2d 797, 808,

223 USPQ 369, 375 (Fed. Cir. 1984), cert. denied, 470 U.S. 1084

(1985). The jury's award must be upheld unless the amount is

grossly excessive, clearly not supported by the evidence, or

based on speculation or guesswork. Brooktree, 977 F.2d at

1580, 24 USPQ2d at 1419. To the extent that there were

conflicts in the evidence with respect to damages, neither the

trial court upon motion for judgment as a matter of law, nor the

appellate court, may substitute its findings for those of the jury.

Id. at 1581, 24 USPQ2d at 1419.

2la

A. GENERAL DAMAGES

The general measure of the actual damages of a

manufacturing patentee is the lost profits that the patentee would

have earned but for the infringement. Aro Mfg. Co. v.

Convertible Top Replacement Co., 377 U.S. 476, 507, 141

USPQ 681, 694 (1964); Del Mar Avionics, Inc. v. Quinton

Instrument Co., 836 F.2d 1320, 1326, 5 USPQ2d 1255, 1260

(Fed. Cir. 1987). Festo was a manufacturer of the patented

product, and presented evidence on the factors of (1) demand for

the product, (2) the possible substitution of other products, (3)

Festo's manufacturing and marketing capability to fulfill the

demand, and (4) the amount of

[page 14]

profit Festo would have made on the sales lost due to the

infringement. See Panduit Corp. v. Stahlin Bros. Fibre Works.

Inc., 575 F.2d 1152, 1156, 197 USPQ 726, 729-30 (6th Cir.

1978); Gyromat Corp. v. Champion Spark Plug Co., 735 F.2d

549, 552, 222 USPQ 4, 6 (Fed. Cir. 1984). As discussed in Rite-

Hite Corp. v. Kelley Co., 56 F.3d 1538, 1545, 35 USPQ2d 1065,

1069 (Fed. Cir. 1995) (en banc), the Panduit factors are a useful

(albeit not the only) mode of establishing damages in patent

cases. In this case the evidence presented by Festo methodically

tracked the Panduit factors.

Mr. Horst Saalbach, President of Festo, and Mr. Joachim

Scholz, Vice President of Sales and Marketing of Festo, testified

about the demand for magnetically coupled rodless cylinders

because of their unique characteristics. Mr. Saalbach and Mr.

Scholz testified that mechanical rodless cylinders, and band and

22a

cable cylinders, were not acceptable substitutes in the special

applications in which magnetically coupled rodless cylinders are

used. They provided evidence that Festo and SMC were the only

suppliers during the period of infringement. Mr. Saalbach

testified that Festo could have accommodated about eight to ten

times more business in the rodless cylinder market.

SMC disputed the issue of substitution of other products.

The parties also presented conflicting evidence and argument as

to the relative prices at which SMC and Festo sold comparable

products, and the effect of any price differential on a customer's

choice of a noninfringing substitute. SMC relies on BIC Leisure

Prods. Inc. v. Windsurfing Int'l. Inc.. 1 F.3d 1214, 27 USPQ2d

1671 (Fed. Cir. 1993); however, in BIC there were at least

fourteen competing manufacturers, whereas in the case at bar

Festo and SMC were the only manufacturers. When there is a

two-supplier market occupied by the patentee and the infringer,

it is reasonable for the jury to infer that the patentee would have

made the infringer’s sales, absent proof to the contrary. See State

Indus., Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573, 1578, 12

USPQ2d 1026, 1029 (Fed. Cir. 1989), cert. denied, 493 U.S.

1022 (1990). On

[page 15]

the totality of the evidence, we conclude that a reasonable jury

could have found that Festo's damages should be measured by its

lost profits due to SMC's infringement.

Mr. Steven Skalak, a CPA from Coopers & Lybrand,

provided a detailed analysis of Festo's lost profits, showing the

calculations he performed to determine what Festo's profits

23a

would have been had there been no infringement by SMC. SMC

disputes the measurement of such profits, arguing that Festo had

a net loss for its early years, and Festo responding that these

magnetic cylinders were profitable items. Festo states that

SMC's accounting witness, Mr. Squire, did not provide an

alternative lost profit analysis, or identify any items that should

have been included in or excluded from the calculation of Festo's

fixed costs. SMC does not disagree. Although SMC now

appears to challenge all of Festa's evidence, it is apparent that

there was substantial evidence at trial that could support the jury

verdict.

B. ACCESSORY SALES

SMC states that included in the damages award were lost

sales of "accessory" items sold with the magnetically coupled

rodless cylinders. In Rite-Hite, 56 F.3d at 1550, 35 USPQ2d at

1073 the court stated that "[we do not extend] liability to include

items that have essentially no functional relationship to the

patented invention and that may have been sold with an

infringing device only as a matter of convenience or business

advantage.”

There was undisputed testimony that the items here at issue

could be used only with the patented magnetic cylinders, and had

no independent market or use. Mr. Saalbach testified that certain

"accessories" are necessary to make the magnetically coupled

rodless cylinder operational. Mr. Scholz testified that the

accessories that Festo sells "you must have to get this device to

do work." Mr. Skalak explained the study he performed to verify

Festo's sales of these items with the patented rodless cylinders.

Such items, having no market, use, or value separate from the

24a

patented cylinders, were properly included in the damages

award.

The verdict of damages was supported by substantial

evidence and in accordance with law, and must be sustained.

[page 16]

CONCLUSION

The district court's judgment is affirmed.

Costs are taxed in favor of Festo.

AFFIRMED

25a

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

FESTO CORPORATION, ;

Plaintiff,

v. : Civil Action No.

: 88-1814-PBS

SHOKETSU KINZOKU KOGYO

KABUSHIKI CO., LTD., a/k/a SMC

CORPORATION, and SMC

PNEUMATICS, INC.,

Defendants.

JUDGMENT

This Court, sitting with a jury, tried the issues with respect

to the validity of two United States patents (the "Stoll" and

"Carroll" patents) owned by Plaintiff Festo Corporation

(“Festo”) and the infringement of the Stoll patent by Defendants

SMC Corporation and SMC Pneumatics, Inc. (collectively

"SMC"), and this Court considered the evidence introduced by

the parties and the arguments presented on their behalf. In

addition, on July 11, 1994, this Court granted summary judgment

on infringement of the Carroll patent with respect to the SMC

basic type magnetically coupled rodless cylinder, excluding the

6mm bore size.

26a

Pursuant to the jury verdict rendered on July 14, 1994

regarding validity of both the Stoll and Carroll patents and

infringement of the Stoll patent, the summary judgment motion

granted by this Court with respect to infringement of the Carroll

patent and the jury verdict rendered on July 21, 1994 setting

forth the damages based on infringement of these patents, this

Court directs entry of judgment as set forth below. It is hereby

ORDERED AND ADJUDGED, that

1. This court has jurisdiction over the subject matter of

this action and over the parties.

2. Plaintiff Festo is the owner by assignment of Stoll

United States Patent No. 4,354,125 and Carroll Reexamination

Certificate B1 3,779,401 ("the patents in suit") and of all rights

of recovery for infringement thereof.

3. Defendant SMC has manufactured and sold in the

United States during the term of the patents in suit, without

authority from Festo CYl and NCY1 series magnetically

coupled rodless cylinders, excluding the 6mm bore size.

4. With respect to Stoll U.S. Patent No. 4,354,125,

entitled “Magnetically Coupled Arrangement For A Driving And

A Driven Member”, issued October 12, 1982:

a) SMC has failed to carry its burden of proving Claims

1-3 invalid.

27a

b) SMC has failed to carry its burden of proving that the

Stoll patent is invalid for not disclosing the beat

made.

c) SMC has infringed Claim | of the Stoll patent by

making, using and selling CY! and NCY1 series

magnetically coupled rodless cylinders, excluding the

6mm bore size.

5. With respect to the Carroll Reexamination Certificate

No. BI 3,779,401, entitled, "Pneumatic Device For Moving

Articles”; issued October 25, 1988:

a) SMC has failed to carry its burden of proving Claim

9 invalid.

b) In accordance with this Court's July 11, 1994 order,

SMC has infringed claims 9, 5 and 6 of the

reexamined Carroll patent by making, using and

selling CY1 and NCYI series, basic type,

magnetically coupled rodless cylinders, excluding the

6mm bore size.

c) Festo’s claim of infringement of the reexamined

Carroll patent with respect to SMC’s CY1 and NCY1

series, slider type, magnetically coupled rodless

cylinders is dismissed with prejudice in accordance

with this Court’s July 11, 1994 order.

6. Effective forty-five (45) days from entry of judgment,

in accordance with 35 U.S.C. § 283, SMC Pneumatics, Inc. and

SMC Corporation, its officers, agents, servants, employees, and

28a

attorneys and those persons in active concert or participation

with them who receive actual notice of this judgment by personal

service or otherwise are enjoined and restrained:

(i)

(ii)

(iii)

(iv)

from making, using or selling in the United

States any magnetically coupled rodless

cylinder which infringes Claim | of Plaintiff

Festo Corporation’s Stoll U.S. Patent No.

4,354,125, including, without limitation, by

manufacture, use or sale of CY] and NCY1

series magnetically coupled rodless cylinders,

excluding the 6mm bore size;

from doing any act in the United States which

actively induces infringement of Claim | of

Plaintiff Festo Corporation's Stoll U.S. Patent

No. 4,354,125.

from supplying in or from the United States all or

a substantial portion of the components of the

Stoll patented invention, where such components

are combined in whole or in part, in such manner

as to actively induce the combination of such

components outside of the United States in a

manner that would infringe Claim | of Plaintiff

Festo Corporation’s Stoll U.S. Patent No.

4,354,125, if such combination occurred within

the United States; and

from supplying in or from the United States any

component of the Stoll patented invention that is

especially made or especially adapted for use in

29a

the invention and not a staple article or

commodity of commerce suitable for substantial

noninfringing use, where such component is

uncombined in whole or in part, knowing that

such component is so made or adapted and

intending that such component will be combined

outside of the United States in a manner that

would infringe Claim 1 of Plaintiff Festo

Corporation's Stoll U.S. Patent No. 4,354,125, if

such combination occurred within the United

States.

7. Counts II through VI of the Festo complaint regarding

predatory pricing are hereby dismissed with prejudice in

accordance with the Decision On Summary Judgment by Judge

Mazzone on January 27, 1992.

8. SMC's counterclaim regarding infringement of

Miyamoto U.S. Patent No. 4,488,477 entitled "Rodless Cylinder”

is hereby dismissed with prejudice.

9. Inaccordance with 35 U.S.C. § 284, the total amount

of damages adequate to compensate Festo for SMC's

infringement through December 31, 1993 is $4,322,456 plus

prejudgment interest of $416,727 for a total of $4,739,183. This

Court shall determine an amount of damages on the same lost

profits basis as awarded by the jury to Festo for the period

between January 1, 1994 and the date on which a determination

on appeal to the Court of Appeals for the Federal! Circuit is made

or the time for making an appeal to the Court of Appeals for the

Federal Circuit has been exhausted. Accordingly, SMC is to

provide this Court and Festo, within 30 days after a

30a

determination of appeal, sufficient information to carry out a

separate accounting for the period identified above which shall

} . submitted to the Court for making the determination of

additional damages. Plaintiff Festo is also entitled to interest on

these additional damages in an amount to be determined by this

Court.

10. Each party is to bear its own costs and attorneys’ fees.

Judgment is hereby entered in favor of Plaintiff Festo

Corporation against Defendants SMC Corporation and SMC

Pneumatics, Inc. and each of them on the issues of liability and

damages.

SO ORDERED.

/S/ PATTI B. SARIS

PATTI B. SARIS

United States District Judge

Dated: October 27, 1994

3la

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

FESTO CORPORATION,

Plaintiff,

) CIVIL ACTION NO.

) 88-1814-PBS

v. )

)

SHOKETSU KINZOKU KOGYO _)

KABUSHIKI CO., LTD., a/k/a SMC)

CORPORATION and SMC

PNEUMATICS, INC.,

)

Defendants. )

)

Saris, U.S.D.J.

The Stoll Patent

1. Has Festo proven by a preponderance of the evidence

as to claim | of the Stoll Patent that the SMC non-magnetizable

sleeve performs substantially the same function in substantially

the same way to obtain substantially the same result as does a

magnetizable sleeve?

_ao_ yes no

32a

2. Has Festo proven by a preponderance of the evidence

as to claim | of the Stoll Patent that one seal on the SMC piston

performs substantially the same function in substantially the

same way to obtain substantially the same result as do two seals

on the piston?

av yes ee

3. Has SMC established by clear and convincing

evidence that the Stoll Patent is invalid because it would have

been obvious at the time the invention was made to persons

having ordinary skill in the pertinent art with respect to:

Independent claim |

wv yes —

{If you answer no, do not answer the remaining claims in

Question 3. If you answer yes, you need to answer with respect

to the remaining claims].

Claim 2

_v_ yes 8

Claim 3

_v_ yes no

4. Has SMC established by clear and convincing

evidence that the best mode for practicing the Stoll invention

33a

was axial rather than radial polarization and that the inventor was

aware of this at the time the Stoll application was filed?

_v_ yes scan

The Re-examined Carroll Patent

5. Has SMC established by clear and convincing

evidence that the Reexamined Carroll Patent is invalid because

it would have been obvious at the time the invention was made

to persons having ordinary skill in the pertinent art with respect

to:

Independent Claim 9

_v_ yes ee

I certify that the jury unanimously concurs in the above

verdict.

S/ GERARD E. MALORY

FOREPERSON

Date: 14/7/94

34a

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

)

FESTO CORPORATION, )

)

Plaintiff, )

) CIVIL ACTION NO.

) 88-1814-PBS

v. )

)

SHOKETSU KINZOKU KOGYO _)

KABUSHIKI CO., LTD., a/k/a SMC)

CORPORATION and SMC

PNEUMATICS, INC.,

)

Defendants. )

)

ORDER RE: PRETRIAL MOTIONS

July 11, 1994

Saris, U.S.D.J.

On February 3, 1994, this Court heard oral argument on the

following motions: The motions by SMC Corporation and SMC

Pneumatics, Inc. (collectively “SMC”) for summary judgment on

non-infringement of the Stoll Patent, non-infringement of the

35a

Carroll Patent, and invalidity of the Stoll Patent'; and the

motions by Festo Corporation (“Festo”) for judgment and for a

directed verdict on infringement of the Carroll patent, validity of

the Carroll patent, infringement of the Stoll patent, and validity

of the Stoll patent. As discussed in court that day, and as

explained in a Procedural Order issued on February 18, 1994, all

motions for summary judgment were denied, with the exception

of the motions concerning infringement of the Reexamined

Carroll patent. After additional briefing on that issue, this Court

now orders that Festo's and SMC's motions are each allowed and

denied in part. This opinion also addresses the use of the

Master's Report ("Report") at trial, and assumes familiarity with

that report. The Court also explains the reasons for denial of the

motions concerning infringement of the Sto]! Patent under the

doctrine of equivalents, which SMC urged the court to

reconsider.

1. Master's Report

On May 21, 1992, pursuant to Fed. R. Civ. P. 53(e)(3),

Judge Mazzone referred this case to Special Master Herbert F.

Schwartz, Esq. for the purpose of considering all claims

presented by the parties. In the Order of Reference, Judge

Mazzone explained that the appointment of a special master was

warranted because "[n]ot only are the claims complex, but the

! Prior to the Master's Hearing, SMC filed motions for summary

judgment on non-infringement of the Stoll Patent, non-infringement of the

Stoll and Carroll Patents by the one seal SMC rodiless cylinder, and invalidity

of the Stoll Patent. Following the Master's Hearing, SMC filed a motion for

summary judgment and a directed verdict on non-infringement of the Stoll

Patent.

36a

history of this litigation, the voluminous record, and the

contentions of the parties promise that this case will require an

inordinate amount of judicial time and resources at a time when

this Court has four pending vacancies and my own schedule is

severely taxed.”

SMC filed a limited objection to the reference, primarily

directed to the contention that the Master's authority be no

broader than that provided under Fed. R. Civ. P. 53(e). Hearings

on the issues of infringement, invalidity and enforceability of

the reexamined Carroll and Stoll patents were held before the

special master on September 14-21 and hearings on damages-

were held on October 19-22 and on November 9, 1992. The

Master issued his report on April 27, 1993. Both sides filed

objections in a timely fashion.

Fed. R. Civ. P. 53 (b) provides that a reference to a master

shall be “the exception and not the rule.” “In actions to be tried

by a jury, a reference shall be made only when the issues are

complicated... .” Id. In an action to be tried by a jury, the

master's "findings upon the issues submitted to the master are

admissible as evidence of the matters found and may be read to

the jury, subject to the ruling of the court upon any objections in

point of law which may be made to the report." Fed. R. Civ. P.

5 3 (e) (3).

"[T]he court has the power to appoint masters without the

consent of the parties." Constant v. Advanced Micro-Devices,

Inc., 848 F.2d 1560, 1566 (Fed. Cir.) ("Constant"), cert. denied,

488 U.S. 892 (1988). "Reference of issues to a master, even

compulsory reference, does not violate the 7th Amendment right

to trial by a jury to which a master's findings may be read under

37a

Rule 53(e)(3)." Id. (citing Crateo, Inc. v. Intermark, Inc., 536

F.2d 862, 868 (9th Cir.), cert. denied, 429 U.S. 896 (1976)).

See also Ex parte Peterson, 253 U.S. 300, 312 (1920).

“Where complicated issues of patent law are involved, the

appointment of an experienced patent attorney is quite

appropriate." Constant, 848 F.2d at 1567. "Masters can properly

aid the court in evaluating issues of patent validity and

infringement in the context of motions for summary judgment,

and have often done so.” Id. at 1566. Cf, International Nickel

Co. v. Ford Motor Co., 166 F. Supp. 551, 553 (S.D.N.Y. 1958)

(reference to master in highly technical patent case). "Masters

have been employed by courts (under Fed. R. Civ. P. 53 (e)(3))

to explain technology to the jury or make findings on specific

issues which are then read to the jury.” Structural Rubber

Products Co. v. Park Rubber Co., 749 F.2d 707, 720 (Fed. Cir.

1984).

In jury cases, some courts have held that the master's

findings constitute prima facie evidence to be submitted to the

jury for its consideration. Coyner v. United States, 103 F.2d

629, 634-35 (7th Cir. 1939). See generally Irving R. Kaufman,

Masters in the Federal Courts: Rule 53, 58 Columbia L. Rev.

452, 460 (1958).

SMC has filed a motion in limine objecting to submission

of the master’s fact findings to the jury. This court has

determined that the master's report will be submitted to the jury

because of the complexity of the issues and technology involving

magnetically coupled rodless cylinders and two different patents.

Due to the length of the report, the number of issues, and the

complexity of the technology, the Court will allow the jury to

38a

read the report by themselves rather than have the report read

orally to them. However, in order to ensure that the master's

report not receive undue weight, it will not remain with the

jurors while deliberating. The attorneys have conferred and

agreed to sanitize the report to delete contentions of the parties,

and issues which the court has ruled on as a matter of law. All

disputes were resolved by the court. Finally, the Court will not

instruct the jury that the master's report is "prima facie”

evidence, as that language is missing from Rule 53. Rather, the

Court will instruct the jury that it may determine

what weight, if any, to give the master’s findings.

2. Infringement Under Doctrine of Equivalents of Stoll

p C ing M izable Si} Limitati

Based on the analysis contained in the report concerning the

magnetizable sleeve limitation in claim | of the Stoll patent, the

master recomn —aded that SMC's motion for summary judgment

should be granted with respect to SMC's infringement of claims

1-3 and 5-7 of Stoll. SMC has moved that this Court adopt the

master’s recommendation with respect to non-infringement of the

Stoll patent. Festo has moved for sammary judgment and/or a

directed verdict of infringement of the Stoll patent.

"In order to determine a question of patent infringement, a

district court must (1) determine as a matter of law the scope and

meaning of the claims at issue and (2) determine as a factual

matter whether the properly construed claims encompass or ‘read

on’ the accused device.” Vaupel Textilmaschinen v. Meccanica

Euro Italia, 944 F.2d 870, 879 (Fed. Cir. 1991) (“Vaupel’’).

39a

See also ZMI Co. v. Cardiac Resuscitator Corp., 844 F.2d 1576,

1578 (Fed. Cir. 1988). "To ascertain the meaning of claims, [the

court considers] three sources: the claims, the specification,

and the prosecution history." Unique Concepts, Inc. v. Brown,

939 F.2d 1558, 1561 (Fed. Cir. 1991) (“Unique”). To constitute

an infringement, the accused device must contain each and every

limitation of the claim or its substantial equivalent. Vaupel, 944

F.2d at 879. "An equivalent must be found for every limitation

of the claim somewhere in an accused device, but not necessarily

in a corresponding component, although that is generally the

case." Corning Glass Works v. Sumitomo Elec. U.S.A... Inc., 868

F.2d 1251, 1259 (Fed. Cir. 1989) (adding negative dopant to the

cladding is equivalent to adding positive dopant to the core in the

context of the claimed invention).

The court agrees with the conclusion of the Master that

"when properly construed the Stoll claims cannot be read to

cover the non-magnetizable sleeves used in the SMC rodless

cylinders.” Report, pp. 47-50, 68. Thus, there is no literal

infringement as a matter of law. Festo does not dispute this

ruling.

However, the court disagrees that summary judgment can

be granted with respect to the claim of infringement by

equivalents. A finding of infringement by equivalents requires

a determination whether the accused device performs

substantially the same function in substantially the same way to

achieve substantially the same result. Unique, 939 F.2d at 1564.

See generally Graver Tank & Mfg. Co., Inc. v. Linde Air Prods.

Co.,, 339 U.S. 605, 608 (1950). "This equitable doctrine evolved

from a balancing of competing policies, each of which supports

the Constitutional purpose of promoting the ‘useful arts.””

40a

London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed.

Cir. 1991) ("London") (,citing U.S. Const. art. I, § 8, cl. 8).

On the one hand claims must be ‘particular’ and

‘distinct’ as required by 35 U.S.C. § 112, so that

the public has fair notice of what the patentee and

the Patent Trademark Office have agreed

constitute the metes and bounds of the claimed

invention. . . . On the other hand, the patentee

should not be deprived of the benefits of his

patent by competitors who appropriate --he

essence of an invention while barely avoiding --

he literal language of the claims . . . . Thus,

where an infringer, instead of inventing around a

patent by making a substantial change, merely

makes an insubstantial change, essentially

misappropriating or even ‘stealing’ the patented

invention, infringement may lie under the

doctrine of equivalents. Application of the

doctrine of equivalents is the exception, however,

not the rule. . ..

Id. (citations omitted).

"The essence of prosecution history estoppel is that a

patentee should not be able to obtain, through the doctrine of

equivalents, coverage of subject matter that was relinquished

during prosecution to procure issuance of the patent.” Hoganas

AB v. Dresser Indus.. Inc., 9 F.3d 948, 951-52 (Fed. Cir. 1993)

(“Hoganas”) (emphasis added). "The legal standard for

determining what subject matter was relinquished is an objective

one, measured from the vantage point of what a competitor was

4la

reasonably entitled to conclude, from the prosecution history,

that the applicant gave up to procure issuance of the patent."

Id. at 952.

"The doctrine of prosecution history estoppel bars ‘a

patentee from enforcing its claims against otherwise legally

equivalent structures if those structures were excluded by claim

limitations added in order to avoid prior art.’” Vaupel, 944 F.2d

at 882 (quoting Mannesmann Demag Corp. v. pig gene

Prods, Co., Inc., 793 F.2d 1279, 1284 (Fed. Cir. 1986)).

determining whether prosecution history estoppel cle

because of a change in claim language during prosecution, the

court must consider not only what was changed, but the reason

for such change.” Id. (emphasis in original) (because the record

does not indicate that the limitation was added to avoid prior art,

there was no estoppel to finding infringement by equivalents).

"The scope of estoppel must be determined in light of the prior

art that occasioned the change, as well as representations made

to the patent examiner as to the reason for change." Sun Studs,

Inc. v. ATA Equipment Leasing, Inc., 872 F.2d 978, 987 (Fed.

Cir. 1989) (no estoppel where the discussion of patentability

before the PTO was unrelated to the description of the geometric

shape) (“Sun Studs"), overruled on other grounds by A.C.

Aukerman Co. v. R.L. Chaides Const. Co., 960 F.d 1020, 1038-

39 (Fed. Cir. 1992). "[E]stoppel is not automatic whenever a

claim is cancelled ....“ Id, at 987. Prosecution history

estoppel is ordinarily a question of law.

SMC vigorously argues that this Court should adopt the

master’s recommendation that Festo is estopped under the

doctrine of prosecution history estoppel from claiming that it is

entitled to a range of equivalents which would erase "meaningful

42a

structural and functional limitations of the claim on which the

public is entitled to rely in avoiding infringement." Hoganas, 9

F.3d at 954 (quoting Perkin-Elmer Corp. v. Westinghouse Elec,

Corp., 822 F.2d 1528, 1532 (Fed. Cir. 1987)). In Hoganas, the

court found prosecution history estoppel where: the examiner

during prosecution issued an office action rejecting claims for

obviousness; the claimant distinguished the claims so as to

relinquish coverage of capillary-sized fibers; and the examiner

subsequently allowed the claims based on this distinction. The

court held: "In our view, a reasonable competitor could have

concluded, from a reading of the prosecution history, that the

examiner relied on this distinction in allowing the claims, and

thus, that Hoganas had given up coverage of the subject matter

incorporating this distinction.” Hoganas, 9 F.3d at 953.

Here, in the First Office Action, the examiner rejected all

claims under 35 U.S.C. § 112 par. 1, which provides: "The

specification shall contain a written description of the invention,

and of the manner and process of making and using it, in such

full, clear, concise, and exact terms as to enable any person

skilled in the art to which it pertains, or with which it is most

nearly connected, to make and use the same, and shall set forth

the best mode contemplated by the inventor of carrying out his

invention.” The examiner commented: "Exar* method of

operation unclear. Is device a true motor or magnetic clutch."

Claims 4-12 were also rejected under 35 U.S.C. § 112 for being

improperly multiply dependent. Report 37. They were not

rejected for obviousness under 35 U.S.C. § 103.

The initial claim 1 did not limit the sleeve of the driven

member to being constructed of a magnetizable material. Claim

8, which was dependent from claim 1, had such a limitation.

43a

Report 31. In response to this first office action, Stoll cancelled

independent claim 1 and substituted a completely new

independent claim which required that the driven member have

a sleeve constructed of a magnetizable material. Report 32.

Although the cxaminer identified certain "cited references

believed pertinent,” there is nothing in the record or the report to

indicate that the limitation of a magnetizable sleeve was

necessary to distinguish the claimed invention over prior art.

Further, there is nothing in the record or the report to suggest that

the limitation of a sleeve of magnetizable material was necessary

to.meet the requirements of specification under 35 U.S.C. § 112.

Indeed, the reason why the newly substituted independent claim

has the limitation that the sleeve be made of magnetizable

material is a mystery, as nothing seems to turn on its

composition for purpose of procuring the patent. At the very

least, it is a question of fact. Sun Stud, 872 F.2d at 987. This

Court is not persuaded by SMC’s reliance on Hoganas Int'l. Inc.

v. Jessop Steel Co,, 8 F.3d 1573, 1577-78 (Fed. Cir. 1993)

(“Haynes”), in which two claims reciting a relatively broad range

of chromium content were abandoned, and a third claim with a

more specific chromium content was retained. In Haynes, unlike

the present case, it was clear from the prosecution history "that

chromium content was the principal distinction between the

claimed subject matter and the prior art, and this was the primary

area of dialogue between Cabot and the PTO.” Id, at 1578.

Accordingly, in light of the circumstances of the present record,

this court declines to adopt the recommendation of the master

that the claim of infringement by equivalents is barred under the

doctrine of prosecution history estoppel.

44a

In addition, with respect to equivalency Festo has presented

expert testimony of Dr. Robert Wolf and of Dr. Stoll to support

its claim of infringement under the doctrine of equivalents.

Festo argues that SMC has produced no evidence to dispute the

testimony of Wolf and Stoll that magnetizable and non-

magnetizable sleeves operate in substantially the same manner.

However, the patent itself states that if the driven assembly is

provided with a sleeve made of magnetizable material, "magnetic

leakage fields in the vicinity of the driven assembly can be kept

to a minimum. In this way, undesirable breaking forces, which

would otherwise be generated while piston and driven assembly

pass magnetizable machine components, are avoided." Record

48. This language in the specification, together with the

prosecution history, creates a disputed issue of fact appropriate

for resolution by a jury under the function/way/result test.

Unique, 939 F.2d at 1564 (even where there was no literal

infringement as a result of plain language of claim and

prosecution history, the court examined expert testimony in

evaluating whether there was infringement by equivalents).

Accordingly, both motions are denied.

3. Literal Infringement of the

°eexamined Carroll Patent

Fes has moved for summary judgment on its claim of

infringement with respect to the reexamined Carroll patent.

Claim 9 of the reexamined Carroll patent requires "a pair of

cushion members formed of resilient material, the cushion

members being situated near opposite axial ends of the central

mounting member to help prevent damage to the piston when the

piston contacts an axial end of the cylinder... .”

45a

A. 6, 10 and 15 mm slider pistons

The 6, 10 and 15 mm slider pistons have no cushions and

Festo does not contend that they infringe.

B. 25,32. and 40 mm slider pistons

SMC contends that the cushions in the 25, 32 and 40 mm

slider pistons cannot prevent damage by making contact with the

end plates, because a bolt protrudes from the piston such that the

end plate will make contact with the bolt rather than the cushion.

(Testimony of Dr. Blanco, Tr. 1800). Festo has neither put forth

any evidence to dispute the contention nor pressed the issue in

its briefs. Accordingly, SMC’s motion for summary judgment

on the claim of literal infringement will be granted.

C. Basic Pistons

As to the basic pistons, SMC contends that "in normal

operation," their cushions do not "prevent damage to the piston"

since they do not make contact with the end plate. This is

because "in normal operation" the piston is stopped by stopping

the load rather than stopping the load by stopping the piston. The

court agrees with the conclusion of the master that the language

of claim 9 of the reexamined Carroll patent does not distinguish

between situations where contact with the axial end of the

cylinder is the normal result of the completion of a stroke and

where it comes into play only in the case of decoupling. Report

20-22. Accordingly, the court grant's Festo's motion for

summary judgment with respect to the claim of literal

infringement of claims 5, 6 and 9 of the reexamined Carroll

patent on the basic pistons with two seals and cushions.

beeen

46a

4. Infringement Under Doctrine of Equivalents

of Reexamined Carroll and Stoll Patents

Concerning Seals

SMC has moved for summary judgment on

noninfringement of the reexamined Carroll patent and the Stoll

patent based on its use of one seal rodless cylinders, instead of

two. Festo has also moved for summary judgment on their claim

of infringement by equivalents. “ince the Carroll and Stoll

patents specifically recite two seals, there is no dispute that the

one seal basic and the one seal slider SMC rodless cylinders do

not literally infringe.

Claim | of the Stoil patent states inter alia:

Said piston further including plural guide ring

means encircling said piston body and sliding

located axially outside said guide rings for

wiping said internal wall as said piston moves

along said tube to thereby cause any impurities

that may be present in said tube to be pushed

along said tube so that said first annular magnets

will be free of interference from said impurities.

Claim 9 of the reexamined Carroll patent specifically defines “a

pair of resilient sealing rings situated near opposite axial ends of

the central mounting member and engaging the cylinder to

provide a fluid-tight seal therewith.”

SMC argues that use of only one seal allows dirt to enter

the piston chamber and is therefore not equivalent to two seals.

47a

The master rejected the argument as "flawed" as applied to the

reexamined Carroll patent because it is based on the meaning and

function of the sealing rings as described in the Stoll patent, not

in the Carroll patent. Report 24. Rather, the Master found that

under the Carroll patent: "The seals create a fluid-tight seal

against the pressure medium, enabling the piston tc be pushed by

its force. This results in the piston being efficiently moved by

the pressure medium without "blow-by" or air getting around the

seals." Report 24. Festo has presented undisputed evidence that

for this purpose the one seal in the SMC device performs

substantially the same function and achieves substantially the

same result in substantially the same way as two seals.

The only evidence which SMC has produced to dispute the

claim of infringement by equivalents is statements made by

Festo in the context of prosecution of the Stoll patent. In

particular, there is a statement by Dr. Stoll that two seals are

necessary under the Stoll patent because without two sealing

rings, dirt attracted by the magnet will enter the side without the

does not bear on the meaning and function of the sealing rings as

described in the reexamined Carroll patent.

Accordingly, the Court allows Festo's motion for summary

judgment that the one seal SMC basic cylinders infringe claims

5, 6 and 9 of the reexamined Carroll patent under the doctrine of

equivalents. However, the Court denies Festo’s motion for

summary judgment that the one seal SMC basic cylinders

infringe claim 1 of the Stoil patent under the doctrine of

equivalents. Considering the above statement by Dr. Stoll on the

importance of two seals, as well as conflicting testimony from

Dr. Wolf and Dr. Stoll at the master’s hearing, there is a genuine

48a

issue of material fact as to whether one seal functions

substantially the same way as two seals in eliminating

interference from impurities.

ORDER

For the foregoing reasons, the Court hereby ORDERS as

follows:

1. SMC is granted summary judgment on non-infringement of

the reexamined Carroll patent by the 6, 10 and 15 mm

cushionless pistons;

2. SMC is granted summary judgment on non-

infringement of the reexamined Carroll patent by the 25, 32, and

40 mm slider pistons with bolts;

3. Festo is granted summary judgment on the

infringement of the reexamined Carroll patent by the SMC basic

pistons with two seals and two cushions;

4. Festo is granted summary judgment on the

infringement of the reexamined Carroll patent by the SMC one-

seal rodless cylinders.

5. All other motions for summary judgment are

DENIED for the reasons stated above and in Court on February

3, 1994.

/S/ PATTI B. SARIS

PATTI B. SARIS

United States District Judge

49a

United States Court of Appeals for the Federal Circuit

95 - 1066

FESTO CORPORATION,

Plaintiff-Appellee,

SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD.,

a/k/a SMC CORPORATION, and SMC PNEUMATICS, INC.,

Defendants-Appellants.

ORDER

50a

United States Court of Appeals for the Federal Circuit

ORDER

A combined petition for rehearing and suggestion for

rehearing in banc having been filed by the APPELLANT, and a

response thereto having been invited by the court and filed by the

APPELLEE, and the petition for rehearing having been referred

to the panel that heard the appeal, and thereafter the suggestion

for rehearing in banc and response having been referred to the

circuit judges who are in regular active service,

UPON CONSIDERATION THEREOF, it is

ORDERED that the petition for rehearing be, and the same

hereby is, DENIED and it is further

ORDERED that the suggestion for rehearing in banc be,

and the same hereby is, DECLINED.

The mandate of the court will issue on March 13, 1996.

FOR THE COURT,

FRANCIS X. GINDHART, CLERK

Dated: March 6,1996 By /S/ DIANE M. FRYE

Diane M. Frye

Chief Deputy Clerk

cc: ARTHUR I. NEUSTADT

CHARLES R. HOFFMANN

5la

FESTO CORP V SMC CORP, 95-1066

(DCT - 88-CV-1814)

EEEEEEEEEEE EEE EE ERERE EERE EEE EERE EEE EEE EE EEEEEEE EES

Note: Pursuant to Fed. Cir. R. 47.6, this order is not

citable as precedent. It is a public record.

EEEEEEEEEEEEE EEE EERE EEE EEE EEE EEE REREEEEEEEREEEKEES

52a

THE CONSTITUTIONAL PROVISIONS AND

STATUTES INVOLVED IN THE CASE

I. The Doctrine of Equivalents Issue

Article 1, section 8, clause 8 of the Constitution provides

To promote the Progress of Science and useful

Arts, by securing for limited Times to Authors

and Inventors the exclusive Right to their

Respective Writings and Discoveries

35 U.S.C. §112, 2 provides

The specification shall conclude with one or

more claims particularly pointing out and

distinctly claiming the subject matter which the

applicant regards as his invention.

35 U.S.C. §251, 94 provides

No reissued paterit shall be granted enlarging the

scope of the claims of the original patent unless

applied for within two years from the grant of the

original patent.

Il. The Jury Trial Issue

The Seventh Amendment to the Constitution provides

In Suits at common law, where the value in

controversy shall exceed twenty dollars, the right

of trial by jury shall be preserved, and no fact

tried by a jury, shall be otherwise reexamined in

any Court of the United States, than according to

the rules of the common law.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.