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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 1997
- **Citation:** 520 U.S. 1111

## Text

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,
v.

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

©0640 6 6264 a

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

ii

iv

13

13

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

1.

The Use of the Master’s Report
by the District Court is Proper .

Neither Party Lost its Right to
2

SMC Relied Heavily on the
Master’s Recommendations ...

The Master’s Report Was
Properly Presented to the Jury .

PINE ccc ky ste scdetcosesses

ill

18

19

20

21

22

23

23

24

25

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

IV

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:

18

17

5,6

14, 17, 19

32, 22

18

14

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

2

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

3

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

5

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

6

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

9

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.

10

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

11

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.

12

——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).

16

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

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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

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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.

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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

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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

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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.

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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

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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

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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
(Counsel of Record)
Gerald T. Bodner
Gienn T. Henneberger
HOFFMANN & BARON
350 Jericho Turnpike
Jericho, New York 11753
(516) 822-3550
Attorneys for Respondent
Festo Corporation

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385017_1300%3A2. Public record. Not legal advice.