Opposition Brief — Shoketsu Kinzoku Kogyo Kabushiki Co. v. Festo Corp.

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FF,

No. 95-1546

————

IN THE

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1995

SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD.

a/k/a SMC CORPORATION and

SMC PNEUMATICS, INC.,

Petitioners,

FESTO CORPORATION,

Respondent.

On Petition for a Writ of Certiorari to the United

States Court of Appeals for the Federal Circuit

RESPONDENT'S BRIEF IN OPPOSITION

Charles R. Hoffmann

(Counsel of Record)

Gerald T. Bodner

Glenn T. Henneberger

HOFFMANN & BARON

350 Jericho Turnpike

Jericho, New York 11753

(516) 822-3550

Attorneys for Respondent

LIST OF PARTIES PURSUANT TO

RULES 14.1(b) AND 29.6

The names of all parties in the court whose judgment is sought

to be reviewed appear in the caption of this Brief in Opposition

to Petition for Writ of Certiorari.

Respondent, Festo Corporation, does not have any subsidiaries.

Festo Corporation’s parent company is Festo KG.

TABLE OF CONTENTS

LIST OF PARTIES PURSUANT TO

RULES 14.1(B) AND 29.6

TABLE OF CONTENTS ..............

TABLE OF CASES, STATUTES

AND OTHER AUTHORITIES ..........

BRIEF IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARI .

OBJECTIONS TO PETITIONERS’

QUESTIONS FOR REVIEW

STATEMENT OF THECASE ..........

I. Facts Supporting Infringement of the

Stoll Patent with Respect to the Guide

Guide and Sealing Rings ..........

Ii. Facts Supporting Infringement of the

Stoll Patent with Respect to the Sleeve.

II. The District Court Conducted A

Full Jury Trial on the Merits... .....

REASONS FOR DENYING THE WRIT ..

1. The Doctrine of Equivalents

one mete Nee be

IL.

Il.

Festo Proved Infringement of the

Stoll Patent Under the Doctrine of

Equivalents ..........-.-++0+5::

It Was Established At Trial That

SMC’s Plural Guide Rings And

Single Sealing Ring Is Equivaient

To The Claimed Plural Guide

Rings And Sealing Rings .....

Substantial Evidence At Trial

Established That The SMC Is

Equivalent To Ihe Patent Sleeve.

The Jury Trial ...... 2-20 eee eee

The Use of the Master’s Report

by the District Court is Proper .

Neither Party Lost its Right to

SMC Relied Heavily on the

Master’s Recommendations ...

The Master’s Report Was

Properly Presented to the Jury .

PINE ccc ky ste scdetcosesses

ill

TABLE OF CASES, STATUTES

AND OTHER AUTHORITIES

Cases: Page No. (s)

Constant v. Advanced Micro-Devices, Inc.,

848 F.2d 1560-1566 (Fed. Cir.), cert.

denied, 488 U.S. 892 (1988) ......... a4

Crateo, Inc. v. Intermark, Inc.,

536 F.2d 862, 868 (9th Cir.), cert. denied,

SEB UB. GRZCISRe) ov ce Se eek saben 12. 22, 24

Dairy Queen, Inc. v. Wood,

DFP Ue SE 8 ivan ckenhe seus 11, 24, 25

Festo Corp. v. SMC Corp.,

72 F. 3d 857 (Fed. Cir. 1995)... 1,11

Graver Tank & Mfg. Co. v. Linde Air

Products Co., 339 U.S. 605 (1950) .... 14, 15, 16,

18, 19, 20

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) ..... 3

Laitram Corp. v. Cambridge Wire Cloth Co.,

863 F. 2d 855 (Fed. Cir. 1988) .......

Loctite Corp. v. Ultraseal Ltd.,

781 F. 2d 861 (Fed. Cir. 1985) .......

Markman v. Westview Instruments, Inc.,

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

116 S. Ct. 40 (1995) (No. 95-26) .....

Pennwalt Corp. v. Durand-Wayland, Inc.,

833 F.2d 931, 957 (Fed. Cir. 1987)

(in banc), cert. denied, 485 U.S. 961

OE ROA ss, OS

Ex parte Peterson,

B55 GE. POP 6 As

Sanitary Refrigerator Co. v. Winters,

ya Oe eat, ee ree

Winans v. Denmead,

SE UB: FI Pe CIBIeD o d kp vee ds:

5,6

14, 17, 19

32, 22

Wilson Sporting Goods y.

David Geoffrey & Assoc.,

904 F. 2d 677, 684 (Fed. Cir. 1990)

cert. denied, 498 U.S. 992 (1990) ..... 16

Statutes:

USC GIES otter 1, 2,3

PF MAN ESE 50 ic Seke eee 1, 2, 3, 16

Rules:

Fed. R. Civ. P. Rule I ati phrase cokes) 4

Fed. R. Civ. P. Rule 53(b) ....... 4,21, 22

Fed. R. Civ. P. Rule POO Feke choco: 4, 5, 22,

24, 25

—

ee re a eee te Lm

SN ea ih Al eh TI yet. Mirna

BRIEF IN OPPOSITION

TO PETITION FOR WRIT OF CERTIORARI

Respondent Festo Corporation (“Festo”) respectfully

submits this brief in opposition to the Petition for a Writ of

Certiorari of Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,

a/k/a SMC Corporation, and SMC Pneumatics, Inc.

(collectively “SMC” or “Petitioners”.

SMC’s petition is from a unanimous decision of a three

judge panel of the United States Court of Appeals for the

Federal Circuit and denial of a petition for rehearing and

suggestion for rehearing in banc. The Federal Circuit affirmed

summary judgment of infringement of United States Patent No.

3,779,401 (the Carroll patent) under the doctrine of equivalents

and a jury verdict of infringement of United States Patent No.

4 354,125 (the Stoll patent) under the doctrine of equivalents.

Festo Corp. v. SMC Corp., 72 F.3d 857 (Fed. Cir. 1995) reh'g

denied.

OBJECTIONS TO PETITIONERS’

QUESTIONS PRESENTED FOR REVIEW

Question 1: In a patent case, can the statutory

requirement for patent claims (35 U.S.C. §112, 2) and the

statutory restriction for correcting them (35 U.S.C. §251, 94)

be nullified by the judicially created doctrine of equivalents?

Question | is objected to on the basis that the issue is

being raised for the first time. Petitioners’ attempt to create a

conflict between the patent statutes and the doctrine of

equivalents in connection with this case is without basis in fact

and law.

35 US.C. § 112, 9 2, requires the subject matter of the

invention to be particularly pointed out and distinctly claimed.

There has been no issue in this case that the claims do not

satisfy this requirement.

Petitioners attempt to mislead the Court by not including

the entire text of 35 U.S.C. § 251. In paragraph 1, it is made

clear that the statute applies to those circumstances in which

there has been error in what is claimed. Specifically, 35 U.S.C.

§ 251, { 1 states:

Whenever any patent is, through error without

any deceptive intention, deemed wholly or partly

inoperative or invalid, by reason of a defective

specification or drawing, or by reason of the

patentee claiming more or less than he had a

right to claim in the patent, the Commissioner

shall, on the surrender of such patent and the

payment of the fee required by law, reissue the

patent for the invention disclosed in the original

patent, and in accordance with a new and

amended application, for the unexpired part of

the term of the original patent. No new matter

shall be introduced into the application for

reissue.

In the present case no reissue application has been filed and .

error is not an issue. Thus, the reissue statute is not applicable.

In contrast, the doctrine of equivalents does not relate {

to error or clarity in the claim language. The judicially created

doctrine of equivalents has been accepted as being consistent

iii,

with 35 U.S.C. § 112 and 35 U.S.C. § 251 for the past 44 years.

Application of the doctrine of equivalents does not require

altering the scope of the claims or changing the language of the

claims. It merely requires application of principles to establish

that insubstantial changes are present in the infringing structure

when compared to the literal language of the claims. The result

of infringement is reached without the necessity of altering the

claim scope. Of course, the statutory provisions in question are

not nullified by the judicially created doctrine of equivalents.

Furthermore, in this case, where there was no attempt to

redefine the language of the claims or the scope of the claims,

Question | is not a question that the Court need consider.

There is no reason for the Court to review this case

along with 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). The

actions are not related and the present case is a clear application

of existing law. The doctrine of equivalents was appropriately

applied to determine that only insubstantial changes were

present in the accused structure and the limitations on the

doctrine of equivalents were given due consideration and found

not to preclude a finding of infringement. There has been no

conflict in this regard in the procedure of the case or with the

law. There has been no extension of the doctrine beyond well

accepted legal authority. Accordingly, there is nothing in this

case for the Court to consider which would be of assistance in

its review of the more complex issues under review in Hilton

Davis.

Furthermore, the cases considered together by this

Court and referenced to on p. 10 of the petition, were

specifically selected to resolve existing conflicts between

different federal circuits. This was prior to the formation of the

Court of Appeals for the Federal Circuit and, accordingly, in

this instance, there are no conflicting circuit decisions.

Question 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?

Petitioners’ Question 2 is totally inconsistent with the

proceedings below. All issues were not decided by a special

master in a first trial. In accordance with Rule 53(b) Fed. R.

Civ. P., the district court appointed a special master to make

recommendations regarding the issues in the present case and to

report his recommendations. To carry out this function,

pursuant to an Order of Reference under Rule 53(a) Fed. R.

Civ. P., the master conducted a hearing and heard evidence. He

then made recommendations in the form of a report under Rule

53(e) Fed. R. Civ. P., regarding questions of validity and

infringement to the district court. He was not empowered and

certainly did not make any binding decisions.

Appropriate motions for summary judgment and

objections were made to various aspects of the master’s report

and the district court made rulings regarding these motions and

objections. A summary judgment was granted in some instances

and with respect to other issues a full jury trial on the merits

was conducted. Both parties were free to submit whatever

evidence they deemed necessary at the jury trial.

i =.

Pursuant to Rule 53(e)(3) Fed. R. Civ. P., an agreed

upon limited version of the master’s recommendations was

received in evidence with specific instructions to the jury that

the evidence in the report was not prima facie evidence and was

to be considered with all the other evidence and the jury could

give it whatever weight it deemed necessary. Both sides relied

on the master’s findings along with the other evidence presented

at trial to the jury, and the jury after due deliberation rendered

a verdict which in some instances was consistent with the

master’s recommendations and in other instances was contrary

to the master’s recommendations.

At no time did the jury bear the responsibility of

determining the correctness of the master’s recommendations.

The master’s report was considered along with all of the other

evidence presented during the jury trial, including additional

evidence not previously presented to the master.

Accordingly, Question 2 is inaccurate in reciting the

circumstances of the case below. Since the premise upon which

Question 2 is based is not supported by what occurred below,

there is no question for this Court to consider. The appropriate

procedures were followed in accordance with the Federal Rules,

and Petitioners received a full jury trial on the merits.

Petitioners try to draw a similarity between the present

case and Markman v. Westview Instruments, Inc., 52 F. 3d 967

(Fed. Cir.), cert. granted, 116 S. Ct. 40 (1995) (No. 95-26).

The Markman case is totally unrelated to proposed Question 2

and the present litigation. Respondent’s understanding is that

the question under consideration by the Court in Markman

relates to whether there is a right to a jury trial under the

Seventh Amendment of the United States Constitution of

genuine factual disputes about the meaning of the language in

the claims of a patent. This is an issue of literal infringement as

to whether patent claims can be literally read on the accused

infringing structure. There was no issue of doctrine of

equivalents in the Markman case. In the present case, there is

no issue of literal infringement or claim interpretation. Both

parties and the district court were in full agreement on the

meaning of the claim language. The only infringement issues

relate to doctrine of equivalents.

In the Markman case, the role of the jury was abdicated

in connection with interpreting the literal language of the claims.

In the present case, there was no factual dispute regarding the

language ot the claims, and the jury made all determinations

with respect to infringement under the doctrine of equivalents.

Accordingly, in the present instance, there has been no

infringement of Petitioners’ rights to a jury trial.

Procedurally, the present case does not correspond to

the Markman case. In this case, a full jury trial was held and

infringement was found by the jury under the doctrine of

equivalents. The verdict was upheld by the district court and

affirmed by the Federal Circuit. In Markman, the jury verdict

was reversed by the district court judge pursuant to a j.m.o.1.

motion, and the judge’s action was affirmed by the Federal

Circuit. Clearly, Question 2 does not relate to the issues in the

Markman case.

Petitioners are apparently grasping at straws. Unable to

frame a question that raises appropriate issues of fact and law

for this Court to consider, Petitioners resort to unrealistic

attempts to stimulate interest by reference to unrelated cases

where petitions for writ of certiorari have recently been granted.

STATEMENT OF THE CASE

L Facts Supporting Infringement of the Stoll

Patent with Respect to the Guide and

Sealing Rings.

Contrary to SMC’s statement of the case, Festo

presented substantial evidence at trial regarding the equivalency

of the SMC device to the claimed invention. Festo proved that

the SMC piston having one sealing ring and two guide rings was

an insubstantial change with respect to the claimed invention.

With respect to the functions of the guide and sealing rings,

Claim | of the Stoll patent states inter alia:

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

The function of the sealing rings is twofold. First, they

provide a seal against the pressure medium, e.g. air, that propels

the driven member. Second, they wipe dirt and impurities by

pushing them along the tube, and away from the magnet

arrangement on the piston. The specification describes the

wiping function of the sealing rings:

Instead, any such impurities are pushed along in

front of the piston 16 by the sealing rings 26 or

-- should they manage to get past these -- by the

sliding guide rings 24, so that the annular

_ Magnet arrangement is invariably faced by a

clean section of the internal tube wall. (Stoll

patent, col 3, lines 51-55).

The specification discloses that the sealing rings on the

driven member are the first means for preventing harmful dirt

and impurities from contacting the magnet arrangement on the

piston. The specification further discloses that Stoll anticipated

that dirt and impurities would sometimes get past the sealing

rings. In that event, the guide rings would act as a second

means of prevention. Reading the claims in light of the

specification, Stoll claims sealing rings, with guide rings as a

back-up, to push harmful dirt along the tube and prevent it from

contacting the magnetic arrangement.

SMC’s pistons have a guide ring and a sealing ring on

one side. On the other side of some SMC pistons, there is a

guide ring and a groove for the sealing ring, but no sealing ring

is placed in the groove. The purpose of the SMC sealing ring

is also twofold. It provides a seal against the air pressure that

moves the piston within the tube and it wipes away harmful dirt

and impurities. Only one seal is necessary to achieve the seal

against air pressure that moves the piston. As testified to by

Festo’s mechanical expert, Dr. Wolf, and the inventor, Dr. Stoll,

and as found by the master, this minor design change was

clearly insubstantial and one seal performs this function in

substantially the same way as two seals and obtains substantially

the same result.

The SMC sealing ring also acts as a wiper that prevents

dirt and impurities from contacting the magnet arrangement by

pushing them along the tube. When the piston is pushed in the

direction of the sealing ring, it functions exactly like the sealing

ring in Stoll Claim 1. When the piston is pushed in the other

direction, the guide ring performs the function of pushing

harmful dirt and impurities along the tube. This is comparable

to the back-up function the guide rings serve as specifically set

forth in the Stoll patent specification.

The SMC device prevents dirt and impurities from

getting wedged between the magnets and the tube in accordance

with the Stoll patent claims. By using one sealing ring and two

guide rings, the SMC device operates in substantially the same

way and obtains substantially the same result as the invention in

Claim 1 of the Stoll patent. Furthermore, the district court

found that there is nothing in the prosecution history of the Stoll

patent concerning the sealing rings that limits Festo from

asserting infringement under the doctrine of equivalents. In

view of the substantial evidence presented by Festo at trial, the

jury correctly concluded that SMC’s use of one sealing ring and

two guide rings infringes Stol! Claim 1.

The findings below were clearly not contrary to the Stoll

specification concerning the guiding and sealing rings.

Petitioners have misstated the facts. For example, the statement

attributed to Festo on page 5 of the Petition is not factual

evidence in this case. All of the required factors in the analysis

under the doctrine of equivalents and its legal limitations were

given due consideration. There was no unrestricted application

of the doctrine of equivalents as alleged by Petitioners.

II. Facts Supporting Infringement Of The Stoll

Patent With Respect To The Sleeve.

Festo’s experts testified that the SMC cylinder having an

aluminum alloy sleeve encircling the magnets is a substantial

equivalent of the claimed sleeve made of magnetizable material.

Specifically, both serve the function of reducing magnetic

leakage to avoid undesirable braking forces. Festo’s physics

and magnetism expert, Dr. Schroeder, testified regarding the

tests he conducted on the SMC sleeve from which he

determined that a 300% reduction in magnetic leakage fields is

achieved 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 and served the same function of

minimizing leakage fields in order to obtain substantially the

same result of avoiding undesirable braking forces.

Accordingly, Petitioners have again clearly misstated the

facts of the case. The specification does not preclude equivalent

embodiments, including those having an aluminum alloy sleeve.

An aluminum alloy sleeve is not a direct opposite of a sleeve of

magnetizable material. This is not contrary to the specification

and not an unrestricted application of the doctrine of

equivalents since the legal requirements for application of the

doctrine of equivalents were meticulously followed.

rere ee

Il. The District Court Conducted A

Full Jury Trial On The Merits.

In its opinion, the Federal Circuit stated:

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. Festo, 72

F. 3d at %64.

Furthermore, the procedure followed by the district

court is in accord with Dairy Queen Inc. v. Wood, 379 U.S. 469

(1962). At no time did SMC mandamus the court regarding the

procedure followed. In fact, SMC filed pre-trial summary

judgment motions based on the master’s recommendations, and

heavily relied on the report at trial and in post trial j.m.ol

motions. As astutely noted by the Federal Circuit,

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 conclusion, 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

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.

Additionally, Judge Saris found no prejudice to either

party when copies of the master’s report were inadvertently left

in the jury room during deliberations. The Federal Circuit

discerned no ground for a new trial flowing from the procedures

with respect to the special master.

Lastly, SMC’s efforts to distinguish the cases relied on

by the Federal Circuit are without merit. The district court’s

authority for appointing the special master and utilizing the

master’s recommendations at a jury trial is in accordance with

the Federal Rules of Civil Procedure and fully supported by the

case law. Ex parte Peterson, 253 U.S. 300, 310 (1920);

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

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

Accordingly, Petitioners’ misstatement of the facts is

again significant. There was no first trial before a master to try

the case and then a second trial before a jury to consider

whether the master was right or wrong. There is no question

that Petitioners received a full jury trial on the merits.

——EE EE

1 Be

REASONS FOR DENYING THE WRIT

I. The Doctrine of Equivalents

It is submitted that granting of a petition for writ of

certiorari in this case is not appropriate. There is no conflict in

the law and no constitutional or otherwise important question

for this Court to consider. The entire legal authority relied

upon by Petitioners constitutes dissenting opinions. All of the

prevailing legal authority is consistent with the application of

the doctrine of equivalents in this case.

In the present case, the existing applicable patent laws

relating to infringement under the doctrine of equivalents and

the restrictions of that doctrine in view of amendments made

during the prosecution of the application and the reasons for

making them and the prior art were applied. At the district

court level, a ten jury panel unanimously decided that the

accused device infringed the claims of the Stoll patent under the

doctrine of equivalents. More specifically, with respect to the

issues of the sealing rings and the magnetizable sleeve, the jury

found that the elements in the accused devices performed

substantially the same function in substantially the same way to

achieve substantially the same result as the elements in the

claims. The district court judge denied SMC’s post trial

motions for judgment as a matter of law. In the Court of

Appeals for the Federal Circuit, the jury verdict was again

upheld by unanimous decision of a three judge panel. SMC

requested a rehearing ana suggested a rehearing in banc which

were also denied by the Federal Circuit. This case is not

extraordinary in any sense of the word with respect to the

existing patent laws.

In its petition, SMC asks this Court to eliminate the

doctrine of equivalents all together and permit competitors to

make insubstantial changes to a device to avoid infringement.

Contrary to SMC’s position, the existing patent laws permit a

finding of infringement under the doctrine of equivalents when

an accused device includes all of the elements of a patent claim

with only insubstantial changes.

The doctrine of equivalents is an ancient doctrine, dating

back to the British courts of chancery. Pennwalt Corp. v.

Durand-Wayland, Inc., 833 F.2d 931, 957 (Fed. Cir. 1987) (in

banc), cert. denied, 485 U.S. 961 (1988). (Newman, J.,

commenting). However, the doctrine of equivalents did not

develop in the United States until late 1800 when the patent

laws began to require that the patent claims dictate the

parameters of the patent. Pennwalt at 957-959. The first

United States Supreme Court case discussing principles of

equivalency was Winans v.Denmead, 56 U.S. 330, 343 (1853),

in which this Court decided that patent coverage is not limited

to the embodiments of the form described or claimed by the

patentee.

The existing applicable law regarding the doctrine of

equivalents is set forth in Graver Tank & Mfg. Co. v. Linde Air

Products Co., 339 U.S. 605 (1950). In that case, the defendant

was accused of infringing four patent claims which disclosed the

composition of a flux to be used in an electric welding process

The accused composition substituted a non-alkaline earth meta!

earth metal in the patented

an mae

This Court concluded that the district court’s finding that the

accused composition infringed the patented composition under

the doctrine of equivalents was not clearly erroneous. /d. at

612.

Furthermore, this Court noted that the finding of

equivalency is a factual matter. /d. at 609. This Court framed

the test for infringement under the doctrine of equivalents as

whether the accused device “performed substantially the same

function in substantially the same way to obtain substantially the

same result” as that claimed in the patent. /d. at 608. This

Court explained that the doctrine of equivalents is designed to

prevent an accused infringer from making unimportant and

insubstantial changes which would remove the accused device

from within the literal terms of the claim. /d. at 607. This

Court envisioned that patent protection, without the doctrine of

equivalents, would encourage “the unscrupulous copyist to”

circumvent the reach of the patent laws, thereby “plac[ing] the

inventor at the mercy of verbalism and... subordinating substance

to form.” /d. at 607. Such a result “would deprive [the

inventor] of the benefit of his invention and would foster

concealment rather than the disclosure of inventions which is

the primary purpose of the patent system.” /d. at 607.

In its petition, SMC raises the issue that the patent

statutes dictate that the patent claim should distinctly define its

boundaries so that the public can rely on the claim language.

Furthermore, SMC notes that a patentee has a statutory time

period in which to file a reissue application to allow the scope

of the claims to be broadened. However, SMC fails to

recognize that the reissue statutes are directed only to those

patent applications in which an error has been made. 35 U.S.C.

§ 251.

The purpose of the doctrine of equivalents is not to

correct mistakes, but to prevent an infringer from making

“unimportant and insubstantial changes and substitutions in the

patent which, though adding nothing, would be enough to take

the copied matter outside the claim, and hence outside the reach

of law.” Graver Tank, 339 U.S. at 607.

Petitioners argue that the doctrine of equivalents

expands the scope of a patent to include protection outside the

patent claim -- an interpretation soundly rejected by this Court.

In Graver Tank, this issue was clearly in the Court’s mind, but

did not preclude application of the doctrine of equivalents.

Graver Tank, 339 U.S. at 615 n.3 (“the courts have no right to

enlarge a patent beyond the scope of its claim as allowed by the

Patent Office .. . .” (Black, J., dissenting)). The Federal Circuit

is of a like view:

To say that the doctrine of equivalents extends

or enlarges the claims is a contradiction in

terms. The claims -- 1.e., the scope of patent

protection as defined by the claims -- remain the

same and application of the doctrine [of

equivalents] expands the right to exclude to

"equivalents" of what is claimed.

Wilson Sporting Goods v. David Geoffrey & Assoc., 904

F.2d 677, 684 (Fed. Cir. 1990) cert. denied, 498 U.S. 992

(1990).

In its petition, SMC argues that the district court and

Federal Circuit applied an unrestricted doctrine of equivalents

to the case at bar. However, the district court and Federal

Circuit closely adhered to the limitations on the doctrine of

equivalents which have been established in the law. Specifically,

the courts have always recognized two fundamental limitations

on the application of the doctrine of equivalents. Loctite — orp.

v. Ultraseal Ltd., 781 F. 2d 861 (Fed. Cir. 1985). Thus, if

equivalence appears, infringement may be found unless (1)

amendments made by the applicant during prosecution of the

patent application to distinguish over prior art have estopped

the patentee from asserting a range of equivalents broad enough

to encompass the accused product or process; or (2) the

equivalent device is within the public domain, i.e., found in the

prior art. /d. at 870.

Furthermore, it is well settled in the law that each

element of the claim is material and essential, and in order for a

court to find infringement, the plaintiff must show the presence

of every element or its substantial equivalent in the accused

device. To be a "substantial equivalent" the element substituted

in the accused device for the element set forth in the claim must

not be such as would substantially change the way in which the

function of the claimed invention is performed. Pennwalt, 833

F.2d 931 (Fed. Cir. 1987).

In the present case, Festo did not make any amendments

to the claims during the prosecution of the application which

would prevent assertion of a range of equivalents broad enough

to encompass the accused SMC device. Furthermore, the

equivalent structure corresponding to the SMC device was not

found in the prior art. Festo methodically proved at trial that

the SMC device encompassed nothing more than insubstantial

changes in substituting equivalent elements with respect to the

sleeve and the sealing/guide ring elements recited in the claims.

Accordingly, SMC’s misstatements in its petition regarding

"mischief generated by an unrestricted doctrine of equivalents"

is not applicable in this case and is not the existing law.

The policy espoused in Graver Tank has coexisted with

the statutory policies of claim construction. The doctrine of

equivalents must exist in its present form to prevent a fraud on

the patent. Requiring a look at all the words while resisting

their tyranny, and requiring, because the claims measure the

invention, a look at all claim limitations, the doctrine of

equivalents in a proper case tempers unsparing logic and

prevents an infringer from stealing the benefits of an invention.

In that sense, the doctrine recognizes a fact of the real business

world: words are not misappropriated, claimed inventions are.

Laitram Corp. v. Cambridge Wire Cloth Co., 863 F. 2d 855

(Fed. Cir. 1988). Accordingly, SMC’s petition to effectively

eliminate the doctrine of equivalents from the patent laws is

unrealistic and should be rejected by this Court.

Il. Festo Proved Infringement Of The Stoll

Patent Under The Doctrine Of Equivalents.

In Graver Tank, this Court ruled that infringement may

be established where the accused device “performs substantially

the same function in substantially the same way to obtain the

same result.” Graver Tank, 339 U.S. at 608 (quoting Sanitary

Refrigerator Co. v. Winters, 280 U.S. 30, 42 (1929)). This

Court reasoned that “to permit imitation of a patented invention

which does not copy every literal detail would be to convert the

protection of the patent grant into a hollow and useless thing.”

Id. at 608. Accordingly, Petitioners suggestion to eliminate the

doctrine of equivalents has been considered by this Court and

determined not to be a viable option.

The well established case law makes it quiie clear that

each element of a patent claim or its substantial equivalent must

be present. Pennwalt, 833 F.2d at 935. Festo presented

substantial evidence and proved at trial that (1) SMC’s single

sealing ring and pair of guide rings is substantially equivalent to

the claimed sealing rings and guide rings; and (2) the aluminum

alloy sleeve of the SMC device is the substantial equivalent of

the sleeve made of a magnetizable material of the Stoll patent

claim. Accordingly, there is no missing element or its

substantial equivalent under the law.

1. It Was Established At Trial That

SMC’s Plural Guide Rings And

Single Sealing Ring Is Equivalent To

The Claimed Plural Guide Rings And

Sealing Rings.

Festo has never taken the position that a guide ring is

equivalent to a sealing ring and a guide ring. Removing a

sealing ring from one end of the piston, as SMC does, is an

insubstantial change. The remaining piston sealing ring, which

acts bi-directionally, together with the plural guide rings,

perform substantially the same function in substantially the same

way and achieve substantially the same result as the claimed

structure.

The single sealing ring is adequate to maintain the seal

for the pressure medium to reciprocate the piston within the

tube. The guide rings continue to carry out their function of

guiding the reciprocating piston. When the piston is moved in

one direction, the combination of a sealing ring and a guide ring

at one end of the piston will both wipe away impurities. When

the piston is moved in the opposite direction, the guide ring will

wipe away the impurities. The specification and claims clearly

point out that both sealing rings and guide rings perform the

function of wiping. Dr. Stoll explained that if a sealing ring and

a pair of guide rings were used, on the side without a sealing

ring, the guide ring performs the function of wiping the dirt and

impurities away from the magnet arrangement. Accordingly,

all of the same functions of wiping, guiding and sealing are

carried out by the SMC structure in substantially the same way

to achieve substantially the same result. Therefore, there is no

consideration of equivalent functions at issue or a missing

element. Nothing in the evidence is contrary to the Stoll patent

specification.

2. Substantial Evidence At Trial

Established That The SMC Sleeve

Is Equivalent To The Claimed Sleeve.

SMC argues that its aluminum alloy sleeve cannot be an

equivalent to a sleeve made of a magnetizable material as set

forth in the Stoll claims. However, a similar argument was

rejected by the Supreme Court in Graver Tank, where the Court

determined equivalency between an alkaline earth metal and a

non-alkaline earth metal. Similarly, Festo presented substantial

evidence of the equivalence of the SMC aluminum alloy sleeve

with the claimed sleeve made of a magnetizable material. There

is nothing in the Stoll patent specification which prevents the

use of a non-magnetizable sleeve. The magnetizable sleeve

described in the specification is just one embodiment. The

specification does not preclude the use of an aluminum alloy or

other material for the sleeve in order to minimize magnetic

leakage fields. Therefore, the equivalency of the SMC sleeve to

that set forth in the claim is not contrary to the specification.

Festo proved at trial that the SMC sleeve performs the

function of reducing the leakage fields in substantially the same

way to achieve substantially the same result as the claimed

invention. The magnetics expert, Dr. Schroeder, tested the

SMC device and found the presence of a magnetic circuit which

produced a 300% reduction in magnetic leakage fields and

resulted in avoidance of braking forces. The difference in the

sleeve material proved to be clearly an insubstantial change.

Accordingly, there was substantial evidence presented by Festo

at trial to support the jury’s conclusion of infringement of the

Stoll patent. All of the elements or their equivalents are

present, and perform the same functions in the same way to

obtain the same results.

Il. The Jury Trial

Rule 53(b) Fed. R. Civ. P. states that a master may be

appointed when the issues are complicated. Judge Mazzone

found the case to be sufficiently complicated to warrant the

appointment of a special master. Judge Saris, who succeeded

Judge Mazzone, agreed that the issues were complicated:

THE COURT: It [Rule 53(b)] says, "In actions

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

only when the issues are complicated." They’re

complicated.

There is no question that the case is complicated.

Several difficult patents are involved and there are many

complicated engineering and physics issues. Therefore, an

election by the court to employ a master is well founded.

Accordingly, the district court did not abuse its discretion in the

appointment of a master.

1. The Use Of The Master’s Report By

The District Court Is Proper.

Rule 53(e)(3) permits a master’s report to be presented

along with other evidence for consideration by the jury. This

includes jury trials involving issues of patent validity and

infringement. Constant v. Advanced Micro-Devices, Inc., 848

F. 2d. 1560-1566 (Fed. Cir.), cert. denied, 488 U.S. 892

(1988). The Court has the power to appoint masters without

the consent of the parties. Peterson, 253 U.S. at 312; Constant,

848 F.2d at 1566. Reference of issues to a master, even

compulsory reference, does not violate the seventh arnendment

nght to a trial by a jury to which a master’s findings constitute

admissible evidence for consideration by the jury under Rule

53(e\(3). Crateo, 536 F.2d at 868; Peterson, 253 U.S. at 309-

12. The rule does not foreclose the option to have the jury

consider the findings in documentary form as evidence.

2. Neither Party Lost Its Right

To A Jury Trial.

Neither the Court nor the parties intended the hearing

before the master to replace a jury trial:

THE COURT: As far as I’m concerned, this is

a trial de novo -- you both can put on.

Judge Saris placed no limitation on the evidence and the

number of witnesses that each party could present at trial. The

trial judge properly instructed the jury regarding the master’s

report and, consequently, the jury trial did not constitute a

determination of whether the master’s recommendations were

right or wrong, as asserted by SMC.

3. SMC Relied Heavily OnThe

Master’s Recommendations.

SMC relied heavily on the recommendations of the

master prior to, during and after the trial. In fact, SMC

instructed the court that the master’s recommendations should

be determinative. The court disagreed and conducted a jury

trial de novo.

Before the report was abridged for use at trial, SMC’s

attorney prematurely and surprisingly attempted to gain an

unfair advantage by advising the jury of the master’s

recommendations in his opening statement after Festo’s counsel

had carefully avoided premature disclosure of the

recommendations in the report in his opening statement.

Furthermore, SMC’s disclosure of the report was completely

contrary to its own recommendation to the court that the report

only be brought to the attention of the jury at the close of

testimony so that the trial would be untainted. SMC’s attorney

again emphasized the importance of the recommendations of the

master in his closing statement, urging the jury to give the

report "maximum weight". Merely because the jury was not

persuaded by the master’s recommendations should not now

provide the basis for SMC to be granted a new trial.

SMC relies on Dairy Queen. However, this case

provides no support for SMC in this respect. It does not

preclude the use of a special master. The case involved a

mandamus action to vacate an order striking a demand for a

jury trial. This Court recognized the right of the courts to

appoint masters, but found that one was not necessary in that

case because the only requirement was to determine a measure

of damages in an uncomplicated manner.

4. The Master’s Report Was Properly

Presented To The Jury.

SMC further asserts that the master’s report was

improperly presented to the jury on the grounds that Rule

53(e)(3) permits the report only to be "read to the jury." SMC

cites no authority for this bold interpretation of the rule.

Contrary to SMC’s assertion, Crateo does not restrict the

manner in which a master’s report can be submitted to a jury.

There is no restriction regarding the manner in which a

master’s report is to be presented to the jury. In the present

case, the master’s report was exhaustively reviewed and

abridged by agreement of the parties under the direction of the

court. Since Rule 53(e)(3) states that the report is admissible

evidence, the court permitted the jury to read the abridged

report rather than exercising the option of reading the report to

the jury. The court acted within its discretion, particularly in

view of the length and complexity of the report. Considerable

courtroom time was saved.

Also, there was no prejudice to either party by the

district court inadvertently leaving a copy of the master’s report

in the jury room during deliberations, particularly when the jury

found contrary to the master.

This case is in accord with Dairy Queen and the Seventh

Amendment in that SMC’s right to a jury trial was preserved.

CONCLUSION

For the reasons set forth above, SMC’s petition should

be denied.

Respectfully submitted,

Dated: April 25, 1996 Charles R. Hoffmann