# Opposition Brief — Ureta v. United States

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 1997
- **Citation:** 519 U.S. 1059

## Text

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386018_1867%3A2. Public record. Not legal advice.