Opposition Brief — Ureta v. United States

Supreme Court, U.S.

(9) FILED

DEC 24 1996

No. 96-851

STERK

IN THE

Supreme Court of the Gnited States

OCTOBER TERM, 1996

SUSAN M. MAXWELL,

Petitioner,

v.

J. BAKER, INC.,

Respondent,

AND

PRANGE WAY, INC.

| Defendant.

ON PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

RESPONDENT’S BRIEF IN OPPOSITION

HENRY C.-DINGER, P.C.

JOHN C. ENGLANDER

DANA L. MCALISTER

GOopwIn, PROCTER & Hoar, LLP

Exchange Place

Boston, Massachusetts 02109

(617) 570-1000

BATEMAN & SLADE. INC. BOSTON, MASSACHUSETTS

TABLE OF CONTENTS

STATEmeeres Ge Bee GAGS 2c eee tet eres 3

Prosecution of the "060 Patent ............... 3

Petitioner Attempts to Enforce the ‘060 Patent ..... 4

REASONS FOR DENYING THE WRIT .......... 6

I. The decision of the Federal Circuit that Petition-

er had dedicated the alternative systems to the

public is well-grounded in the decisions of this

Court and the Federal Circuit and in the funda-

mental structure of the patent laws ......... 6

Il. The decision of the Federal Circuit presents no

conflict with Graver Tank or any other decision

OE GD 6 cee he ew eee eae es 10

Ill. The “dedication to the public” rule does not dis-

courage disclosure; rather, it encourages identifi-

cation of inventions in claims subject to exami-

nation as patent law contemplates .......... 12

IV. The pendency of this Court’s decision in War-

ner-Jenkinson should not warrant a grant of re-

view in this case because the issue raised by peti-

tioner is not presented in this case .......... 15

GREED PS oa eee ee Oo ee ae ae 17

TABLE OF AUTHORITIES CITED

CASES.

Environmental Instruments, Inc. v. Sutron Corp., 877

ge op fF Be Bee er 8

Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126

NE «<a chs oe pide bot oo ea ae an 9, IlIn

il TABLE OF AUTHORITIES CITED (CONT'D)

Ex parte Fressola, 27 U.S.P.Q.2d 1608 (Bd. Pat. App.

& Int. 1993), rehearing denied, 17 F.3d 1442 (Fed.

ae ices: 2's sk eee eek ne a ne 11

Genentech, Inc. v. Wellcome Foundation Ltd. , 29 F.3d

oe A Re) Ota oes eee ee 8

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

co RT ee re ee ee ee 10

Graver Tank & Mfg. Co. v. Linde Air Products Co. , 336

ae Bee Ce ik ce ie wre s 7, 10, 11, 12, 16

Haynes International, Inc. v. Jessop Steel Co., 8 F.3d

1573 (Fed. Cir. 1993), clarified on rehearing, \5

hoe of A Re ee 12n

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

62 F.3d 1512 (Fed. Cir. 1995) (in banc) (per curiam),

cert. granted, 116 S.Ct. 1014 (1996) ....... 13, 14

Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948 (Fed.

Se noe ergs eg eae he SO ae ne 06 8 12n

‘ Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274

pea (oe ES Le rae ee er arma 7

Mark I Marketing Corp. v. R.R. Donnelley & Sons Co.,

66 F.3d 285 (Fed. Cir. 1995), cert. denied, 116S.Ct.

DONE 5 56 ES eee Oa ee oe We ae 12n

Markman v. Westview Instruments, Inc., 116 S.Ct.

aaa iia ater case e ark e ord 3 eles 5, 6n

McClain v. Ortmayer, 141 U.S. 419 (1891) ........ 8n

Milcor Steel Co. v. George A. Fuller Co., 316 U.S. 143

SE 53.39) as oie os 3 Re ee a 7

Miller v. Brass Co., 104 U.S. 350 (1881) ......... 7

Motion Picture Patents Co. v. Universal Film Mfg. Co.,

ee es PEED 66 wee ea eae 7

ee

TABLE OF AUTHORITIES CITED (CONT’D) iil

National Cash Register Co. v. Boston Cash Indicator &

eer Go. Pe ©. Se CP) ett tt et es 11

Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211

I eS eg 6 We ee «88 88 8 17n

Sanitary Refrigerator Co. v. Winters, 280 U.S. 30

ee Ul a a gi dee ag ON ea ee 1]

Texas Instruments, Inc. v. ITC, 988 F.2d 1165 (Fed.

a ee ee ene err 9n

Unique Concepts, Inc. v. Brown, 939 F.2d 1558 (Fed.

eee a eae 4. sas ale 6 ae 6 esd oo8 ba Ks 8

Wang Laboratories, Inc. v. Toshiba Corp., 993 F.2d

OI UD ops) g wens 4d 4 a ee O08 + 00 88 9n

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

EN Dig ge. iy eg an be eg 2, 15, 16n

Zenith Laboratories, Inc. v. Bristol-Myers Squibb Co.,

19 F.3d 1418 (Fed. Cir.), cert. denied, 115 S.Ct. 500

ES ee ie Ge A ro eae e-ae 12n

STATUTES AND RULES.

United States Code

Es a aera a Dee be

CN ee re ra er ee 15

MISCELLANEOUS.

4 DONALD S. CuisuM, PATENTS § 18.02[3], at 18-14 to

I Bs NP AA ee ogee oe ate toh crane 10

No. 96-851

IN THE

Supreme Court of the GAnited States

OCTOBER TERM, 1996

SUSAN M. MAXWELL,

Petitioner,

v.

J. BAKER, INC.,

Respondent,

ANP

PRANGE WAY, INC.

Defendant.

ON PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

RESPONDENT?’S BRIEF IN OPPOSITION

Respondent, J. Baker, Inc. (“J. Baker’’), requests that this

Court deny the petition for writ of certiorari seeking review

of an opinion of the United States Court of Appeals for the

Federal Circuit in this case reported at 86 F.3d 1098 (Fed.

Cir. 1996).

Under the circumstances presented here, there is no sound

reason for review in this Court. Contrary to petitioner’s sugges-

tion, the Federal Circuit did not fashion a “new” rule of law

in this case. Rather, it applied well-settled principles, long rec-

2

ognized by this Court, in ruling that petitioner could not assert

a patent infringement claim against a device that had been

disclosed in the specification of her patent but never claimed

as part of her invention. Such unclaimed public disclosure has

long been held to be a dedication to the public, as the Federal

Circuit correctly ruled. The issue presented here is settled, and

plaintiff's assertions of conflict with the decisions of this Court

or of the Federal Circuit are unfounded. That is why this case

involves a unanimous decision by the Federal Circuit panel,

and a denial of rehearing en banc in which no active Federal

Circuit judge asked for a poll on rehearing.

Moreover, the decision below was manifestly correct. The

rule followed by the Federal Circuit forces patent applicants

to identify their inventions in the claims of the patent where

they will be subject to the expert review of the Patent and Trade-

mark Office (the “PTO”). As the Federal Circuit correctly

recognized, the contrary rule advocated by petitioner would

encourage patent applicants to draft their claims narrowly to

avoid such scrutiny, while disclosing broader technology in

their specifications in the hope of convincing a jury to grant

patent protection under the doctrine of equivalents. Such a

course fundamentally undermines the American claims-based

patent system that depends on careful PTO scrutiny of claims,

not specifications. Where, as here, the patentee has led the

public to conclude that she deliberately declined to claim the

subject matter disclosed in the specification, the public has a

right to take the patentee at her apparent word.

Finally, there is no merit to petitioner’s suggestion that

proper disposition of this petition should await this Court’s

decision in Warner-Jenkinson Co. v. Hilton Davis Chemical

Co., No. 95-728. The issued raised in the instant petition is

not presented in Warner-Jenkinson.

For these reasons, as described more fully below, the petition

for certiorari should be denied.

3

STATEMENT OF THE CASE

Rule 14.1(g) of the rules of this Court direct the petitioner

to present “[a] concise statement of the case setting out the

facts material to consideration of the questions presented.”

Petitioner here has disregarded this rule altogether aid submit-

ted instead a rehash of her jury summation, arguing contested

evidence that has no bearing on the legal issue raised in the

petition.

The disposition of the petition in this case turns entirely on

the language of the patent at issue, its prosecution history and

the course of proceedings below. J. Baker submits the follow-

ing brief counterstatement of the case summarizing these mat-

ters.

Prosecution of the '060 Patent

Petitioner alleged that J. Baker infringed three claims of

U.S. Patent No. 4,624,060 (the “ ’060 patent”), issued to peti-

tioner in 1986. The language of claim 1, representative of the

other two claims at issue, is quoted in the Federal Circuit’s

opinion. Pet. at A4-A5. Each of the claims describes a system

for connecting mated pairs of shoes that involves stringing the

shoes together through “tabs” or “loops” inside each shoe. Each

claim is subject to the express limitation that the fastening tab

be “secur[ed] between the inner and outer soles” of the con-

nected shoes.

For petitioner to obtain patent protection at all, it was neces-

sary for her to emphasize her specific location of the tabs to

distinguish her system from the prior art.' The prior art identi-

‘In distinguishing her invention from an earlier attempt to secure tabs to the

interior side of the shoe, she stated to the examiner:

[ijt is the securing means for the tab which secures a first part

between inner and outer soles of a shoe and extends as a second part

4

fied by the patent examiner taught a variety of shoe connection

systems using tabs attached to mated pairs of shoes in various

locations, including tabs secured between the inner and outer

soles on the outside of shoes (U.S. Patent No. 3,482,335 (Om-

steen)), tabs stitched into the interior side of the shoe close to

the top edge (U.S. Patent No. 1,300,998 (Nelson)), and tabs

secured between the inner and outer soles inside the shoe at

the center of the soles (U.S. Patent No. 1,189,989 (Moore)).’

Had she claimed a system with tabs located anywhere inside

the shoes, she would have faced likely rejection in the face of

this prior art.

Petitioner was aware of alternative locations for securing

the fastening tabs when she filed her application. She disclosed

in the specification of the ’060 patent that “[a]lternatively, the

tabs may be stitched into a lining seam of the shoes at the

sides or back of the shoes.” Critically for this case, however,

she never included these alternatives in her claims.

Petitioner Attempts to Enforce the '060 Patent

Upon receiving notice of infringement in 1990, J. Baker

immediately adopted alternative shoe connection systems that

removed the tabs from between the soles at the side of the

inner sole and stitched them into a seam at the shoe’s “counter-

pocket” or “top line.” * Petitioner insisted, however, that the

"from the first part at the side edge of the innter {sic] sole upwardly

along the inside surface of the shoe upper which is equally novel to

any one particular type of aperture at the end of the second part of

the tab.

(A. 3740

*These patents are set and reproduced in J. Baker's brief as appellant in the

Federal Circuit as Exhibits C, D. And E, respectively.

‘The “counterpocket” of a shoe is the part of the lining in the rear of the shoe

that “creates . . . a pocket for [the] heel.” (A. 0548). The “top line” seam is the

seam formed at the top edge of a shoe upper. (A. 1917). See Pet. at A4.

5

‘066 patent covered shoes connected through tabs located any-

where in the interior of the shoe, despite the far narrower

language of her claims.

Petitioner commenced an infringement action against J.

Baker and a department store chain in which J. Baker leased

and operated the shoe department.* With regard to the counter-

pocket and top line systems, petitioner was permitted to argue to

the jury that these alternatives infringed both literally and under

the doctrine of equivalents, and the question of claim construc-

tion was submitted to the jury, contrary to this Court’s later ruling

in Markman v. Westview Instruments, Inc., 116 S.Ct. 1384

(1996). The jury found that the alternative systems infringed

without specifying whether they found literal infringement or

infringement by equivalents.

J. Baker moved for judgment as a matter of law after the

verdict. The trial court allowed the motion to the extent that

the court concluded that the alternative systems could not lit-

erally infringe as a matter of law based on the court’s interpre-

tation of the patent claims, because those systems plainly had

no tab secured between the inner and outer soles.° The district

court somehow divined, however, that the jury must have

decided the case based on the doctrine of equivalents and found

evidence sufficient to support such a verdict.

On appeal, the Federal Circuit ruled that petitioner’s disclo-

sure of the alternative systems in her specification had the

effect of dedicating those alternatives to the public.° Asa result,

“4 The district court directed the entry of judgment for the department store, Prange

Way, Inc., and petitioner did not challenge that ruling on appeal.

‘The Federal Circuit affirmed this ruling and petitioner has not sought review

of the Federa! Court's decision in this respect by this Court.

* As a result of this ruling, the Federal Circuit had no occasion to consider or

rule upon J. Baker’s other arguments. The panel plainly did not reject these argu-

ments, as petitioner inaccurately argues in her petition. Pet. at 6, 23. Specifically,

the Federal Circuit did not rule upon J. Baker’s arguments: (i) that infringement

under the doctrine of equivalents could not be found because J. Baker’s alternative

6

the court reversed the determination that J. Baker's alternative

systems infringed.

Petitioner sought rehearing in banc. In her suggestion of

rehearing in banc, petitioner advanced for the first time the

argument that the panel’s application of the “dedication to the

public” rule reflected a change in established patent law and

created undesirable disincentives to making comprehensive dis-

closures in patent specifications.

The Federal Circuit denied rehearing with no active judge

requesting a poll on rehearing.

REASONS FOR DENYING THE WRIT

| THE DECISION OF THE FEDERAL CIRCUIT THAT PETITIONER

HAD DEDICATED THE ALTERNATIVE SYSTEMS TO THE

PusBic Is WELL-GROUNDED IN THE DECISIONS OF THIS

COURT AND THE FEDERAL CIRCUIT AND IN THE FUNDA-

MENTAL STRUCTURE OF THE PATENT LAws.

Petitioner’s argument for review by this Court turns entirely

on her assertion that the Federal Circuit in this case “has now

attempted to create a new limit on the Doctrine of Equivalents.”

Pet. at 11. Petitioner is simply incorrect. The doctrine that

unclaimed subject matter disclosed in the specification is dedi-

cated to the public reflects well-settled principles of patent law

long recognized by this Court and by the Federal Circuit and

correctly applied in this case.

The starting point for analysis is that the U.S. patent system

is claims-based. Section | 12 of the patent statute requires paten-

systems as a matter of law were too dissimilar to be equivalent, and (ii) that peti-

tioner’s unmistakable statements to the patent examiner emphasizing the specific

location of her tabs established prosecution history estoppel as a matter of law. The

court of appeals also did not have occasion to consider J. Baker's argument that

because the trial judge did not instruct the jury as to the proper construction of the "060

patent, as this Court required in Markman v. Westview Instruments, Inc, 116 S.Ct.

1384, 1395-96 (1996), J. Baker was entitled to a new trial on infringement.

7

tees to set forth “claims” at the conclusion of the patent that

“particularly point[ ] out and distinctly claim[ ] the subject mat-

ter which the applicant regards as his invention.” 35 U.S.C.

§ 112. This Court has repeatedly and consistently emphasized

that the claims of a patent determine the scope of the patentee’s

statutory rights. See, e.g., Graver Tank & Mfg. Co. v. Linde

Air Products Co., 336 U.S. 271, 277 (1949) (“We have fre-

quently held that it is the claim that measures the grant to the

patentee.”); Milcor Steel Co. v. George A. Fuller Co., 316

U.S. 143, 145-46 (1942) (“claims . . . afford the measure of

the grant to the patentee”); Motion Picture Patents Co. v.

Universal Film Mfg. Co., 243 U.S. 502, 510 (1917) (“It is to

the claims of every patent . . . that we must turn when we are

-secking to determine what the invention is’).

In the same way, this Court has also recognized that that

which is disclosed in a patent, but not claimed, is dedicated

to the public. In Miller v. Brass Co., 104 U.S. 350, 352

(1881), this Court stated that:

the claim of a specific device or combination, and

an omission to claim other devices or combinations

apparent on the face of the patent, are, in law, a

dedication to the public of that which is not claimed.

In Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274,

279 (1877), this Court observed:

As patents are procured ex parte, the public is not

bound by them, but the patentees are. And the latter

cannot show that their invention is broader than the

terms of their claim; or, if broader, they must be

held to have surrendered the surplus to the public.

The Federal Circuit has also adhered to the principle that

disclosure in a patent of unclaimed subject matter constitutes a

8

dedication of that subject matter to the public. The leading

case is Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562-

63 (Fed. Cir. 1991), which squarely held that “subject matter

disclosed but not claimed in a patent application is dedicated

to the public.” See also Environmental Instruments, Inc. v.

Sutron Corp., 877 F.2d 1561, 1564 (Fed. Cir. i989) (“The

disclosure of a patent is in the public domain save as the claims

forbid.”).

The “dedication to the public” rule is fundamental to a

claims-based system, as the court below correctly recognized.

A device identified in a patent claim can be patented only after

an independent expert examiner determines that the device

satisfies the statutory standards of novelty, utility and non-

obviousness. A failure to include subject matter in a patent

claim precludes the examination of that subject matter. As the

Federal Circuit has observed, “[a]n applicant should not be

able deliberately to narrow the scope of examination to avoid

during prosecution scrutiny by the [Patent and Trademark Of-

fice] of subject matter with the objective of more quickly ob-

taining a patent (or avoiding the risk of an estoppel), and then

obtaining in court, either literally or under the doctrine of

equivalents, a scope of protection which encompasses that

subject matter.” Genentech, Inc. v. Wellcome Foundation Ltd..,

29 F.3d 1555, 1564 (Fed. Cir. 1994). See Unique Concepts,

939 F.2d at 1562.’

In this respect, the “dedication to the public” rule is similar

to the doctrine of prosecution history or “file wrapper” estoppel.

’ Petitioner's argument that the “dedication to the public” rule applies only as a

limitation on literal infringement, Pet. at 17, makes no sense. By definition, un-

claimed subject matter can never fall within the literal scope of the claims. If the

rule does not operate to limit the doctrine of equivalents, it has no content. The

correct principle was stated by this Court in McClain v. Ortmayer, 141 U.S. 419,

423-24 (1891): “Nothing is better settled in the law of patents than that the patentee

may claim the whole or only a part of his invention, and that, if he only describe

and claim a part, he is presumed to have abandoned the residue to the public.”

(emphasis added).

9

As this Court has recognized, a patentee may not recapture

under the doctrine of equivalents subject matter surrendered

or disclaimed during the prosecution of a patent. Exhibit Supply

Co. v. Ace Patents Corp., 315 U.S. 126, 136 (1942).* The

subject matter surrendered is dedicated to the public in the

sense that the patentee may not, as a matter of law, claim that

it is encompassed within the scope of the patent. The public

is entitled to rely on the patentee’s disclaimer.

The patentee should not be entitled to any broader patent

coverage if she drafts her claims narrowly from the outset. If,

in this case, petitioner had claimed as her invention a system

for connecting mated pairs of shoes through tabs located any-

where in the interior of the shoes, and, faced with a rejection,

she had amended her claims to limit them to tabs secured

between the inner and outer soles, then plainly she would have

been estopped from claiming any other Iccation as equivalent.

Petitioner should fare no better where, as here, she made no

effort to claim alternatives of which she was concededly aware

and which directly implicated the prior art, and where she

emphasized the precise location of the tabs between the inner

and outer soles in distinguishing prior art to the examiner.

This is not a case in which a patentee has lost rights as a

result of inartful claim drafting. The technology in this case is

not complex. It would have been easy to draft claims without

the limitation that the tabs be secured between the inner and outer

soles. The conclusion is inescapable that the submission of nar-

rower Claims reflected the recognition by petitioner and her patent

counsel that broader claims were most unlikely to be approved.

“As the doctrine has been applied by the Federal Circuit, prosecution history

estoppel arises not only by narrowing amendments, but also by “ ‘[u]nmistakable

assertions made by the applicant to the Patent and Trademark Officed (PTO) in

support of patentability, whether or not required to secure allowance of the claim.’ ”

Wang Laboratories, Inc. v. Toshiba Corp., 993 F.2d 858, 867 (Fed. Cir. 1993)

(quoting Texas Instruments, Inc. v. ITC, 988 F.2d 1165, 1174 (Fed. Cir. 1993)).

10

By prosecuting narrower claims, while simultaneously dis-

closing the existence of alternatives not encompassed within

those claims, petitioner precluded examination of those alter-

natives by the Patent and Trademark Office and unmistakably

signalled to the public that she made no claim to them. Just

as the public has the right to practice art surrendered by the

patentee during the patent application process, the public should

have the right to practice art that the patentee knew and dis-

closed in the patent but declined to claim.

Il. THE DECISION OF THE FEDERAL CIRCUIT PRESENTS NO

CONFLICT WITH GRAVER TANK OR ANY OTHER DECISION

OF THIS COURT.

Petitioner argues that this Court in Graver Tank & Mfg. Co.

v. Linde Air Products Co., 339 U.S. 605 (1950), permitted

the assertion of the doctrine of equivalents to equivalent subject

matter disclosed in the specification but not included in the

claims. Pet. at 11-14. As the Federal Circuit recognized below,

however, the equivalents that this Court in Graver Tank permit-

ted the patentee to assert were encompassed within claims in

the patent. The pertinent claims, however, were held to be

invalid after issuance. Under those circumstances, it did not

make sense to infer any dedication to the public of equivalent

alternatives that were not the subject of additional narrower

claims. See 4 DONALD S. Cuisum § 18.02[3], at 18-14 to

18-15 (1996).°

It is no answer to argue, as petitioner does, that the majority

in Graver Tank did not specifically advert to the existence of

* Professor Chisum explains that at the time of Graver Tank, the policy of the

Patent and Trademark Office “restricted an inventor to no more than three species

claims if a claim to a genus were allowed.” /d. at 18-15. As a result, it might not

have been possible, as a practical matter, for the patentee to include more particu-

larized claims covering all the specific subject matter encompassed within the

broader claim later found to be invalid.

invalid claims that encompassed the equivalent in question as

a factor in its decision. The Court itself had upheld the invalidity

of the broad claims in Graver Tank only the prior term. Graver

Tank & Mfg. Co. v. Linde Air Products Co., 336 U.S. 271

(1949). The Court in the second Graver Tank decision plainly

did not intend to address every possible limitation or qualifica-

tion to the doctrine of equivalents."

Nor are cases like Sanitary Refrigerator Co. v. Winters,

280 U.S. 30 (1929), or National Cash-Register Co. v. Boston

Cash Indicator & Recorder Co., 156 U.S. 502 (1895), incon-

sistent with the Federal Circuit’s decision below. In those cases,

this Court considered patents drafted in a now obsolete fashion

in which the patentee described the invention in the specifica-

tion while claiming it in somewhat general terms “substantially

as described” in the specification. See 280 U.S. at 32-38 (quot-

ing patent); 156 U.S. at 507 (same). In that context, reference

to the specification to determining the scope of the claims was

not only understandable, it was essential. Modern patent prac-

tice, however, requires claims to be self-contained descriptions

of the invention and claims that refer back to the specification

are now rejected by the PTO. See Ex parte Fressola, 27

U.S.P.Q.2d 1608, 1608-11 (Bd. Pat. App. & Int. 1993), re-

hearing denied, \7 F.3d 1442 (Fed. Cir. 1994). Under modern

patent practice it is clear that the specification cannot expand

the scope of the claims.

The rule that unclaimed subject matter disclosed in a patent

specification is dedicated to the public, like the doctrine of

prosecution history estoppel, turns on an objective inquiry into

what the public can reasonably infer from the text of a patent

"The court did not, for example, refer to the doctrine of prosecution history

estoppel, even though it had recognized that doctrine as a limitation sn the doctrine

of equivalents only eight years before. Exhibit Supply Co. v. Ace Patents Corp.,

315 U.S. 126 (1942).

12

and its prosecution history.'' Where, as in Graver Tank, the

patentee has in fact claimed the equivalent subject matter in a

claim that has been examined and allowed by the PTO, but

literal infringement is unavailable because the claim that covers

the equivalent is later found to be invalid, the inference that

there has been a dedication to the public is objectively unreason-

able. But where, as here, the patentee made no attempt to claim

subject matter that the patentee disclosed (and thus plainly knew),

such an inference is not only reasonable, it is unavoidable.

Ill. THE “DEDICATION TO THE PUBLIC” RULE Does Not

DISCOURAGE DISCLOSURE; RATHER, IT ENCOURAGES

IDENTIFICATION OF INVENTIONS IN CLAIMS SUBJECT TO

EXAMINATION AS PATENT LAW CONTEMPLATES.

Petitioner attempts to buttress her meritless appeal to prece-

dent with the same policy argument that she made to the Federal

Circuit in her unsuccessful suggestion for rehearing in banc. She

says that patent applicants, faced with a rule that dedicates to the

public unclaimed subject matter set forth in the specification,

will refrain from making such disclosures and thus impoverish

'' The prosecution history estoppel cases decided by the Federal Circuit make it

clear that the scope of the estoppel is “an objective one, measured from the vantage

point of what a competitor was reasonably entitled to conclude, from the prosecution

history, that the applicant gave up to procure issuance of the patent.” Haynes Interna-

tional, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1578 (Fed. Cir. 1993), clarified on

rehearing, 15 F.3d 1076 (Fed. Cir. 1994). See Mark | Marketing Corp. v. R.R.

Donnelley & Sons Co., 66 F.3d 285, 291 (Fed. Cir. 1995), cert. denied, 116 S.Ct.

917 (1896); Zenith Laboratories, Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418,

1424 (Fed. Cir.), cert. denied, 115 S.Ct. 500 (1989). It is also a question of law

for the court. See Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 952 (Fed. Cir.

1993). The Federal Circuit in this case clearly had such a standard in mind when

it concluded, as a matter of law, that “[a] person of ordinary skill in the shoe

industry, reading the specification and prosecution history, and interpreting the

claims, would conclude that Maxwell, by failing to claim the alternate shoe attach-

ment systems in which the tabs vere attached to the inside shoe lining, dedicated

the use of such systems to the public.” Pet. at Al3. In both situations, the issue

is an objective one to be decided as a matter of law.

13

the contributions that patents make to the scientific literature.

Pet. at 25-29. This argument cannot withstand scrutiny.

First, the patent act itself precludes patentees from playing

their cards too close to the vest in drafting patent specifications.

Section 112 provides that 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 per-

tains, 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.

35 U.S.C. § 112.

More important, far from discouraging disclosures in pa-

tents, the “dedication to the public” rule encourages patent

applicants to identify patentable inventions in the claims, where

such identification belongs in a claims-based sytem. It tells

patent applicants that if they have subject matter that they

believe is novel, useful and non-obvious, they should include

it in their claims and thus submit it to the PTO’s examination

process. What the rule discourages is an attempt to sneak the

unclaimed alternatives into the specification without claiming

them in the hopes of avoiding examination by the PTO and

arguing infringement by equivalents to a jury later.

Petitioner counters by suggesting that no rational applicant

would attempt to do so because they would have a much better

chance of persuading the examiner to allow a claim in an ex

parte process in the Patent and Trademark Office than of

prevailing on a doctrine of equivalents claim in later adversary

proceedings. Pet. at 26-27. This rejoinder is flawed for two

reasons.

pa

First, under the Federal Circuit’s decision in Hilton Davis

Chemical Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1520

(Fed. Cir. 1995) (in banc) (per curiam), cert. granted, 116

S.Ct. 1014 (1996), application of the doctrine of equivalents

is a question of fact that may be submitted to the jury in an

infringement action. If the patentability of subject matter is

questionable, a patent applicant may well conclude that she

stands a better chance with a jury than with an expert examiner.

Second, petitioner ignores the practical consequence of hav-

ing an issued patent. Many competitors will license a patent,

even though their competing technology may not literally in-

fringe, because that course may be less expensive and less

uncertain than infringement litigation. This is particularly true

because the outcome of a doctrine of equivalents inquiry is so

difficult to predict as the doctrine is currently applied. As a

result, a patent applicant with a range of inventions, some of

which are of doubtful patentability, could well conclude that

her economic interests may be best served by claiming only

those narrow alternatives where patentability is reasonably clear

and making a broader disclosure in the specification. Threaten-

ing infringement litigation against those who practice the dis-

closed but unclaimed alternatives may produce a tidy royalty

stream or valuable cross-licenses from those for whom the

costs and uncertainties of litigation are either prohibitive or

uneconomical.

It is worth pointing out that this is the course that petitioner

herself pursued. She claimed narrowly, but disclosed broader

alternatives in her specification. She demanded licenses from

virtually every company in the shoe industry that connected

unboxed shoes through tabs located anywhere inside the shoes.

She has played this game shrewdly, but not in accordance with

the rules that Congress has ordained because she seeks patent

rights for alternatives that she deliberately insulated from

examination by the Patent and Trademark Office. The Federal

Circuit properly rejected this strategy.

15

Even if, however, petitioner had failed to claim a patentable

invention through inadvertence, Congress has specified the

proper remedy: reissue. As the court below noted, Pet. at A1l2

n.2, section 251 of the patent act authorizes the reissuance of a

patent with broader claims within two years of the issuance of

the original patent, if in the original patent the patentee “claim[s]

. . . less than he had a right to claim in the patent.” 35 U.S.C.

§ 251. So here, not only was there nothing stopping petitioner

from claiming at the outset a shoe connection system involving

tabs located anywhere within the interior of the shoe, she also had

the opportunity even after the patent issued to seek broader claims

on the same disclosure. In both instances, however, an expert

patent examiner would have reviewed the broader claims against

crowded prior art. It was this review that petitioner sought to

avoid.

IV. THE PENDENCY OF THIS CoURT’S DECISION IN WARNER-

JENKINSON SHOULD NOT WARRANT A GRANT OF REVIEW

IN THIS CASE BECAUSE THE ISSUE RAISED By PETITION-

ER Is NOT PRESENTED IN THis CASE.

Perhaps recognizing the weakness of her argument on the

merits, petitioner suggests that the Court defer acting on her

petition pending the decision of this Court in Warner-Jenkinson

Co. v. Hilton Davis Chemical Co., No. 95-728. However, the

issue raised in the instant petition — whether the disclosure of

subject matter in a patent specification constitutes a dedication

to the public precluding the application of the doctrine of equiva-

lents — is not presented in Warner-Jenkinson. There is no

suggestion in that case that the patentee disclosed in the specifi-

cation the allegedly equivalent subject matter practiced by the

defendant as an alternative to the claimed invention. To be

sure, there is a dispute over prosecution history estoppel in

Warner-Jenkinson. Petitioner in neither that case nor the instant

16

case claims, however, that prosecution history estoppel should

not continue as a settled limitation on the doctrine of equiva-

lents.'?

Petitioner here relies instead on the fact that Warner-Jenkin-

son has argued in the alternative that the doctrine of equivalents

should be limited to situations in which the claimed equivalent

was disclosed in the specification.'* A review of Warner-Jen-

kinson’s brief makes it clear, however, that this argument is

merely an invitation to this Court to limit its Graver Tank

decision to its facts, as an alternative to overruling it. This

invitation appears in the context of an argument that the doc-

trine of equivalents itself is ill-considered and has no place in

a Claims-based patent system. Warner-Jenkinson nowhere ad-

dresses the many statements in many cases that unclaimed

subject matter disclosed in a patent specification is dedicated

to the public.

Moreover, as the Federal Circuit recognized in this case, Pet.

at Al2-A13, the strict holding of Graver Tank is that the

doctrine of equivalents applies where the patentee has both

disclosed the equivalent subject matter in the specification and

included it in a claim that had been examined and allowed by

the PTO. As discussed above, both factors must be present to

make the “dedication to the public” rule inapplicable. Since

petitioner never claimed the alternatives adopted by J. Baker

in any claim examined by the PTO, limiting Graver Tank to

its facts would not help her here.

J. Baker did not argue to the Federal Circuit, as petitioner implies, that rehearing

in banc by the Federal Circuit should be denied because this Court was likely to

address the “dedication to the public” rule in Warner-Jenkinson. On the contrary,

J. Baker emphasized in its opposition to rehearing that that issue was not presented

in Warner-Jenkinson. J. Baker merely suggested that the Federal Circuit might not

wish to devote scarce resources to in banc review of any case involving the doctrine

of equivalents until this Court completed its review of the doctrine in Warner-Jenkin-

son.

'‘The Federal Circuit recently rejected this argument in Pall Corp. v. Micron

Separations, Inc., 66 F.3d 1211, 1220 (Fed. Cir. 1995).

17

CONCLUSION

For the foregoing reasons, the petition should be denied.

Respectfully submitted,

HENRY C. DINGER, P.C.

JOHN C. ENGLANDER

DANA L. McALISTER

GOODWIN, PROCTER & HOAR, LLP

Exchange Place

Boston, Massachusetts 02109

(617) 570-1000