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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 1997
- **Citation:** 520 U.S. 1111

## 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,
v.

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

i
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)

Fe

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
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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

iV

ARGUMENT FOR ALLOWANCE OF THE WRIT ..... 10
I. The Doctrine of Equivalents Issue .......----- 10
Il. The Jury Trial Issue .......----+++eseeeeers 17

Vv

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

vi

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).

ix

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.

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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.

2

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

3

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

4

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.

5

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

6

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.

7

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

8

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

9

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.

10

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

1]

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).

12

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

i3

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).

14

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).

15

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).

16

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).

17

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).

18

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.

19

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

20

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

21

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.

la
United States Court of Appeals for the Federal Circuit
95 - 1066
FESTO CORPORATION,
Plaintiff-Appellee,
v.

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

2a
[page 1]
United States Court of Appeals for the Federal Circuit
95-1066
FESTO CORPORATION,
Plaintiff-Appellee,
v.

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

3a

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).

4a

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

Sa
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. ]

6a

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

iu
;
bh
.
f
4
f

Seat at SS

7a

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.

Il
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}

8a
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...)

9a

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]
IV
CONCLUSION
The district court's judgment is affirmed.
Costs are taxed in favor of Festo.

AFFIRMED

25a

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS
x
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. )
)

am

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,

v.

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.

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385017_1300%3A1. Public record. Not legal advice.