Opinion of the court filed PER CURIAM. Concurring opinion filed by Circuit Judge NEWMAN. Dissenting opinion filed by Circuit Judge PLAGER, in which Chief Judge ARCHER and Circuit Judges RICH and LOURIE join. Dissenting opinion filed by Circuit Judge LOURIE, in which Circuit Judges RICH and PLAGER join. Dissenting opinion filed by Circuit Judge NIES, in which Chief Judge ARCHER joins in part.
Hilton Davis Chemical Co. sued Warner-Jenkinson Co., Inc. for infringement of U.S. Patent No. 4,560,746 (the '746 patent). The jury found that the '746 patent was not invalid and that Warner-Jenkinson infringed under the doctrine of equivalents. The trial court entered judgment on the jury verdict. Hilton Davis Chem. Co. v. Warner-Jenkinson Co., No. C-1-91-218 (S.D.Ohio June 22, 1992). Because substantial evidence supports the jury verdict of infringement, the court en banc affirms.
Hilton Davis and Warner-Jenkinson manufacture dyes, including FD & C (food, drug, and cosmetic) Red Dye # 40 and Yellow Dye # 6. The process of making these dyes yields impurities as byproducts. Manufacturers must remove these impurities from the dyes to meet stringent governmental requirements for food and drug purity. Historically, Hilton Davis and Warner-Jenkinson used an expensive and wasteful process known as "salting out" to purify the dyes. The '746 patent, assigned to Hilton Davis, discloses an improved purification process that replaces salting out with "ultrafiltration." Ultrafiltration uses osmosis to separate components of a solution by drawing some of the components, but not others, through a membrane. Thus, the '746 process filters impure dye solution through a membrane at certain pressures, pHs, and pore diameters. Impurities, but not dye molecules, pass through the membrane, leaving a high purity dye product.
Hilton Davis began its search for an alternative to the salting out process in 1982. The co-inventors of the '746 process, Drs. Cook and Rebhahn, led this project for Hilton Davis. The inventors decided to investigate a membrane separation process. Dr. Cook then hired Osmonics, Inc., a filtration equipment manufacturer, to test the process on a Hilton Davis Red Dye # 40 solution which had been disclosed to Osmonics under a secrecy agreement. The first test, in August 1982, did not succeed. Dr. Cook then instructed Osmonics to perform a second Red Dye # 40 test with specified changes in the test membrane and filtration procedures. This second test, in October 1982, succeeded. Osmonics successfully purified Hilton Davis Yellow Dye # 6 under Dr. Cook's instructions in January 1983.
The inventors filed their initial patent application based on the October 1982 and January 1983 test results. After further inhouse testing by Dr. Cook, the inventors filed a continuation-in-part application claiming a broader range of membrane pore sizes. The '746 patent issued in 1985.
The '746 patent claims a process for purifying commercial dyes including Red Dye # 40 and Yellow Dye # 6. Claim 1, the only independent claim at issue, appears in Jepson form. See In re Jepson, 1917 C.D. 62, 243 O.G. 525 (Ass't Comm'r Patents 1917). Claim 1 recites:
(Emphasis added.) The inventors added the phrase "at a pH from approximately 6.0 to 9.0" during prosecution to distinguish U.S.
Warner-Jenkinson developed its accused ultrafiltration process for Red Dye # 40 and Yellow Dye # 6 in 1986. Like the '746 process, Warner-Jenkinson's accused process included ultrafiltration through a membrane. At trial, Hilton Davis showed that Warner-Jenkinson's process operated at pressures somewhere in a range of 200 to nearly 500 p.s.i.g. and a pH of 5. While Hilton Davis did not present actual pore size measurements for Warner-Jenkinson's membrane, several experts testified that a membrane collecting Red Dye # 40 and Yellow Dye # 6 would have a nominal pore diameter of 5 to 15 Angstroms.
In 1982, Warner-Jenkinson had tested a membrane separation process on a dye solution that had already been salted out. Warner-Jenkinson, like Hilton Davis, hired Osmonics under a secrecy agreement to perform its test. Osmonics performed the Warner-Jenkinson test in August 1982, one week before it performed the first Hilton Davis test. The Warner-Jenkinson test was not successful, however, because it did not produce a sufficiently pure dye. After the unsuccessful test, Warner-Jenkinson ceased work on filtration of Red Dye # 40 and Yellow Dye # 6 until 1986.
Warner-Jenkinson did not learn of the '746 patent until October 1986, after it had begun commercial use of its ultrafiltration process to purify Red Dye # 40. Hilton Davis learned of Warner-Jenkinson's process in 1989 and sued Warner-Jenkinson for patent infringement in 1991.
After considering extensive evidence offered over nine days, the jury found that the '746 patent was not invalid and that Warner-Jenkinson infringed under the doctrine of equivalents. The jury found that Warner-Jenkinson did not willfully infringe, however, and awarded only 20% of Hilton Davis' request in damages. The district court then denied Warner-Jenkinson's post-trial motions, and entered a permanent injunction prohibiting Warner-Jenkinson from practicing ultrafiltration except at pressures above 500 p.s.i.g. and pHs above 9.01.
Warner-Jenkinson appealed the infringement and validity findings. After a panel of this court heard oral argument on July 9, 1993, the court en banc decided to rehear the appeal to consider the important issues raised concerning the doctrine of equivalents. This court asked the parties to brief three questions:
Oral argument directed to the en banc questions occurred on March 7, 1994.
This case presents an opportunity to restate—not to revise — the test for infringement under the doctrine of equivalents. Courts have applied the doctrine of equivalents to protect the substance of the patentee's right to exclude since the first few decades after enactment of the Patent Act of 1790, ch. 7, 1 Stat. 109. Sitting as Circuit Justice, Justice Story, the leading intellectual property scholar of that era, stated:
Odiorne v. Winkley, 18 F.Cas. 581, 582 (C.C.D.Mass.1814) (No. 10,432) (Story, C.J.). Indeed, the Supreme Court has consistently recognized the doctrine of equivalents as a protection for patent owners. See, e.g., Winans v. Denmead, 56 U.S. (15 How.) 330, 343, 14 L.Ed. 717 (1854); Sewall v. Jones, 91 U.S. 171, 184, 23 L.Ed. 275 (1875); Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 41-42, 50 S.Ct. 9, 12-13, 74 L.Ed. 147 (1929). Often the Supreme Court noted that an accused product or process, to avoid infringement under the doctrine, must include "substantial and not merely colorable" differences from the patent claims. Singer Mfg. Co. v. Cramer, 192 U.S. 265, 286, 24 S.Ct. 291, 299, 48 L.Ed. 437 (1904); see also McCormick v. Talcott, 61 U.S. (20 How.) 402, 405, 15 L.Ed. 930 (1858); Duff v. Sterling Pump Co., 107 U.S. 636, 639, 2 S.Ct. 487, 490, 27 L.Ed. 517 (1883).
The Supreme Court mapped the modern contours of the doctrine of equivalents in its landmark Graver Tank decision. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). In Graver Tank, the Court addressed whether Graver Tank's use of a particular electric welding flux infringed Linde Company's patent. The patent claimed "essentially a combination of alkaline earth metal silicate and calcium fluoride." Id. at 610, 70 S.Ct. at 857. Graver Tank's accused flux substituted "silicates of calcium and manganese — the latter not an alkaline earth metal — for silicates of calcium and magnesium." Id. Because only exact duplicates literally infringe, id. at 607, 70 S.Ct. at 855-56, the Court recognized that infringement depended on the long-standing doctrine of equivalents. Id. at 608, 70 S.Ct. at 856.
In explaining the bases for the doctrine, the Supreme Court observed that limiting enforcement of exclusive patent rights to literal infringement "would place the inventor at the mercy of verbalism and would be subordinating substance to form." Graver Tank, 339 U.S. at 607, 70 S.Ct. at 856. Such a limitation, the Court reasoned, might even encourage infringers "to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough ... [to evade] the reach of law." Id.
Based on these predicates, the Supreme Court concluded, the doctrine applies if, and only if, the differences between the claimed and accused products or processes are insubstantial. Graver Tank, 339 U.S. at 610, 70 S.Ct. at 857. The Court expressed the doctrine in the following terms for the Graver Tank case:
Id. The Court defined the doctrine of equivalents in terms of the substantiality of the differences between the claimed and accused products or processes. The Supreme Court in Graver Tank thus made insubstantial differences the necessary predicate for infringement under the doctrine of equivalents.
In recent decisions, this court has also stressed the significance of this "insubstantial differences" standard. Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1043, 25 USPQ2d 1451, 1454 (Fed.Cir.1993); Charles Greiner & Co. v. Mari-Med Mfg., Inc., 962 F.2d 1031, 1036, 22 USPQ2d 1526, 1529 (Fed.Cir.1992); London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538, 20 USPQ2d 1456, 1458 (Fed.Cir.1991); Slimfold Mfg. Co. v. Kinkead Indus., Inc., 932 F.2d 1453, 1457, 18 USPQ2d 1842, 1846 (Fed.Cir.1991); Moleculon Research Corp. v. CBS, Inc., 872 F.2d 407, 409, 10 USPQ2d 1390, 1392 (Fed. Cir.1989); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935, 4 USPQ2d 1737, 1739 (Fed.Cir.1987) (en banc), cert. denied, 485 U.S. 961, 108 S.Ct. 1226, 99 L.Ed.2d 426, and cert. denied, 485 U.S. 1009, 108 S.Ct. 1474, 99 L.Ed.2d 703 (1988); Perkin-Elmer
In applying the doctrine of equivalents, it is often enough to assess whether the claimed and accused products or processes include substantially the same function, way, and result. Courts recognized this principle as early as 1817, when Justice Bushrod Washington, riding circuit, instructed a jury that "[w]here the [claimed and accused] machines are substantially the same, and operate in the same manner, to produce the same result, they must be in principle the same." Gray v. James, 10 F.Cas. 1015, 1016 (C.C.D.Pa.1817) (No. 5,718); see also Sanitary Refrigerator, 280 U.S. at 42, 50 S.Ct. at 13 ("[G]enerally speaking, one device is an infringement of another `if it performs substantially the same function in substantially the same way to obtain the same result.' ... [The patent claim] is nevertheless infringed by a device in which there is no substantial departure from the description in the patent, but a mere colorable departure therefrom.") (quoting Machine Co. v. Murphy, 97 U.S. 120, 125, 24 L.Ed. 935 (1877)) (emphasis added). Because examination of function, way, and result often discloses the substantiality of the differences between the accused and claimed products or processes, many courts, including the Supreme Court itself, have used this formulation to describe the doctrine of equivalents. See, e.g., Graver Tank, 339 U.S. at 608, 70 S.Ct. at 856 (quoting Sanitary Refrigerator, 280 U.S. at 42, 50 S.Ct. at 13); Machine Co. v. Murphy, 97 U.S. at 125, 24 L.Ed. 935.
It goes too far, however, to describe the function-way-result test as "the" test for equivalency announced by Graver Tank. The function-way-result test often suffices to assess equivalency because similarity of function, way, and result leaves little room for doubt that only insubstantial differences distinguish the accused product or process from the claims. But evaluation of function, way, and result does not necessarily end the inquiry. Indeed, the Supreme Court explained that the function-way-result test arose in an era characterized by relatively simple mechanical technology. Graver Tank, 339 U.S. at 609, 70 S.Ct. at 856-57 (reciting history of doctrine). As technology becomes more sophisticated, and the innovative process more complex, the function-way-result test may not invariably suffice to show the substantiality of the differences.
Thus evidence beyond function, way, and result is also relevant to the doctrine of equivalents. In Graver Tank, the Supreme Court identified and relied on factors in addition to similarity of function, way, and result. The Court considered that persons reasonably skilled in the art knew that the manganese in the accused flux was interchangeable for the magnesium in the claimed flux. 339 U.S. at 609, 612, 70 S.Ct. at 856-57, 858. The Court also permitted the fact-finder to infer infringing "imitation" from the lack of evidence that the accused infringer independently developed its flux. Id. at 612, 70 S.Ct. at 858.
The Supreme Court's reliance in Graver Tank on factors other than function, way, and result endorses consideration of all evidence relevant to the substantiality of the differences. Because "[e]quivalence, in the patent law, is not the prisoner of a formula," id. at 609, 70 S.Ct. at 856, the available relevant evidence may vary from case to case. When a trial record presents only evidence of function, way, and result, then application of the doctrine will necessarily rest on function, way, and result alone. When a record presents other evidence relevant to the substantiality of the differences, however, the fact-finder must consider it.
According to the Supreme Court, "[a]n important factor" to be considered, quite apart from function, way, and result, "is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was." Graver Tank, 339 U.S. at 609, 70 S.Ct. at 857. The precedent of this court has also stressed the importance of evidence of known interchangeability to show infringement under the doctrine. See Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1261, 9 USPQ2d 1962, 1969 (Fed.Cir.1989); Thomas & Betts Corp. v. Litton Sys., Inc., 720 F.2d 1572, 1579, 220 USPQ 1, 6 (Fed.Cir.1983). The known interchangeability of the accused and claimed elements is potent evidence that one of ordinary skill in the relevant art would have considered the change insubstantial. Without such evidence, the patentee will need other objective technological evidence demonstrating that the substitute nevertheless represents a change that the ordinary artisan would have considered insubstantial at the time of infringement.
Evidence of copying is also relevant to infringement under the doctrine of equivalents, see Graver Tank, 339 U.S. at 612, 70 S.Ct. at 858, not because the doctrine of equivalents rests on the subjective awareness or motivation of the accused infringer, but rather because copying suggests that the differences between the claimed and accused products or processes — measured objectively — are insubstantial. When an attempt to copy occurs, the fact-finder may infer that the copyist, presumably one of some skill in the art, has made a fair copy, with only insubstantial changes. Such an inference, of course, would not dominate the doctrine of equivalents analysis. Instead, where the inference arises, it must be weighed together with the other evidence relevant to the substantiality of the differences.
By considering evidence of copying, however, the Supreme Court did not imply that infringement under the doctrine requires bad faith or some other subjective component. Intent is not an element of infringement. See, e.g., Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 478, 94 S.Ct. 1879, 1884, 40 L.Ed.2d 315 (1974). A patent owner may exclude others from practicing the claimed invention, regardless of whether infringers even know of the patent:
Parker v. Hulme, 18 F.Cas. 1138, 1143 (C.C.E.D.Pa.1849) (No. 10,740); see also Kewanee, 416 U.S. at 478, 94 S.Ct. at 1884; Intel Corp. v. United States Int'l Trade Comm'n, 946 F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed.Cir.1991). The Supreme Court, in the exegesis of the doctrine in Graver Tank, notably does not mention a threshold showing of bad faith or evil intent. Proof of bad faith by an infringer may entitle the patent owner to enhanced damages and attorney fees for willful infringement under 35 U.S.C. §§ 284-285 (1988). Evidence of culpable conduct, however, is not a prerequisite nor necessary for application of the doctrine.
The Supreme Court applied the doctrine of equivalents in Graver Tank to prevent "fraud on a patent," 339 U.S. at 608, 70 S.Ct. at 856, not fraud by the accused infringer. As Graver Tank demonstrates, preventing "fraud on a patent" involves an objective assessment of the substantiality of the differences between the claimed and accused products or processes. The doctrine of equivalents does not rely on the subjective awareness or intent of the accused infringer. While the doctrine discourages the "unscrupulous copyist," 339 U.S. at 607, 70 S.Ct. at 856, its reach is not so limited. Thus, lack of
Evidence of "designing around" the patent claims is also relevant to the question of infringement under the doctrine. The ability of the public successfully to design around — to use the patent disclosure to design a product or process that does not infringe, but like the claimed invention, is an improvement over the prior art — is one of the important public benefits that justify awarding the patent owner exclusive rights to his invention. Designing around "is the stuff of which competition is made and is supposed to benefit the consumer." State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236, 224 USPQ 418, 424 (Fed.Cir. 1985). When a competitor becomes aware of a patent, and attempts to design around its claims, the fact-finder may infer that the competitor, presumably one of skill in the art, has designed substantial changes into the new product to avoid infringement. Again, the strength of this inference may vary from case to case. Evidence of designing around therefore weighs against finding infringement under the doctrine of equivalents.
Evidence that the accused infringer developed its product or process through independent research is not directly relevant to the question of infringement under the doctrine of equivalents. Independent development is not designing around. Independent development means that the accused infringer had no knowledge of the patented invention when it developed its product or process. Without knowledge, the independent developer could not have set out to make its product or process either similar to or different from the claimed invention. Unlike copying or designing around, therefore, independent development itself provides no information about the substantiality of the differences. Furthermore, because intent is not an element of infringement, independent development does not excuse infringement of the patent owner's right to exclude. See Parker v. Hulme, 18 F.Cas. at 1143. An independently developed product or process that falls within the patent claims or includes only insubstantial differences nevertheless infringes. See Kewanee, 416 U.S. at 478, 94 S.Ct. at 1884. In sum, those who make only insubstantial changes to a patented product or process are liable for infringement, regardless of their awareness of the patent and its disclosure.
Evidence of independent development is highly relevant, however, to refute a patent owner's contention that the doctrine of equivalents applies because the accused infringer copied, that is, intentionally appropriated the substance of the claimed invention. In Graver Tank, the Supreme Court linked the fact-finder's inference of copying to independent research. 339 U.S. at 612, 70 S.Ct. at 858. Because the record lacked evidence of independent development, the fact-finder could infer copying or "imitation." Id. When the patent owner asserts copying, evidence that the accused infringer developed its product or process without knowing of the patent becomes relevant in rebuttal. For this reason, the fact-finder must consider any evidence of independent development in a case where the patent owner alleges copying as probative of infringement under the doctrine of equivalents.
Infringement, whether literal or under the doctrine of equivalents, is a question of fact. Winans v. Denmead, 56 U.S. (15 How.) at 338, 14 L.Ed. 717; SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1125, 227 USPQ 577, 589 (Fed.Cir.1985) (en banc). The Supreme Court made this abundantly clear in Graver Tank:
339 U.S. at 609-10, 70 S.Ct. at 857. The Supreme Court thus reemphasized that infringement under the doctrine of equivalents is an issue of fact. When infringement is tried to the court, as in Graver Tank, an appellate court reviews the trial court's infringement finding for clear error. When tried to a jury, an appellate court reviews the jury verdict for lack of substantial evidence. See, e.g., Genentech, Inc. v. Wellcome Found. Ltd., 29 F.3d 1555, 1565, 31 USPQ2d 1161, 1168-69 (Fed.Cir.1994).
In several recent opinions, this court has referred to the doctrine of equivalents as "equitable."
By referring to the doctrine as a doctrine of fairness, neither the Supreme Court nor this court has invoked the myriad implications of an alternative to legal remedies. In addition, neither the Supreme Court nor this court has invoked equity in the technical sense of a set of principles originating in England to compensate for the historically harsh rules of common law. Graver Tank does not discuss any of the principles commonly attending the chancellor's invocation of equitable power, such as the "clean hands" doctrine, the elevated burden of proof, the abuse of discretion standard of review, or the mandatory balancing of the equities. Indeed, the Supreme Court has more than once stated that every patent owner is entitled to invoke the doctrine of equivalents — a proposition inimical to the hypothesis that the doctrine is equitable. See Sanitary Refrigerator, 280 U.S. at 42, 50 S.Ct. at 13; Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 556, 20 L.Ed. 33 (1871) ("Patentees ... are entitled in all cases to invoke to some extent the doctrine of equivalents...."). Moreover, the Supreme Court in Graver Tank credited the origin of the doctrine of equivalents to its own decision in Winans v. Denmead — a case at law, not equity. See Graver Tank, 339 U.S. at 608, 70 S.Ct. at 856; Winans v. Denmead, 56 U.S. (15 How.) at 338, 14 L.Ed. 717. Therefore, by its terms, Graver Tank did not impliedly transform a legal basis for recovery into an equitable one. In short, the Supreme Court's cases on the doctrine of equivalents foreclose a holding that the doctrine is a matter of equity to be applied at the court's discretion.
In answer to the first question posed by this court en banc, a finding of infringement under the doctrine of equivalents requires proof of insubstantial differences between
In answer to the second question posed by this court en banc, infringement under the doctrine of equivalents is an issue of fact to be submitted to the jury in a jury trial with proper instructions, and to be decided by the judge in a bench trial. The answer to the third question posed by this court en banc necessarily flows from the answer to the second question. The trial judge does not have discretion to choose whether to apply the doctrine of equivalents when the record shows no literal infringement.
This court reviews a jury verdict on the fact question of infringement under the doctrine of equivalents for prejudicial error in the jury instructions, Biodex Corp. v. Loredan Biomedical, Inc., 946 F.2d 850, 854, 20 USPQ2d 1252, 1254 (Fed.Cir.1991), cert. denied, 504 U.S. 980, 112 S.Ct. 2957, 119 L.Ed.2d 579 (1992), and lack of substantial evidence supporting the verdict, see Genentech, 29 F.3d at 1565.
While jury instructions must correctly state the law, they need only be sufficiently comprehensive to address the issues of material fact raised by the record evidence. Biodex, 946 F.2d at 854. Indeed, "[j]ury instructions must be confined to the issues as presented by the pleadings and evidence." American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1363, 220 USPQ 763, 773 (Fed.Cir.), cert. denied, 469 U.S. 821, 105 S.Ct. 95, 83 L.Ed.2d 41 (1984).
The sufficiency of jury instructions is not tested in a vacuum. "It is well established that [each] instruction `may not be judged in artificial isolation,' but must be considered in the context of the ... trial record." Estelle v. McGuire, 502 U.S. 62, 72, 112 S.Ct. 475, 482, 116 L.Ed.2d 385 (1991) (quoting Cupp v. Naughten, 414 U.S. 141, 147, 94 S.Ct. 396, 400, 38 L.Ed.2d 368 (1973)); see also Biodex, 946 F.2d at 862. The words of the instructions take on meaning from the context of what happened at trial, including how the parties tried the case and their arguments to the jury. Accordingly, we must examine the trial context in which the jury instructions were given by the trial court.
Hilton Davis offered evidence of and argued function, way, and result in asserting the doctrine of equivalents. Warner-Jenkinson responded in kind. Warner-Jenkinson also offered evidence of independent development, contending repeatedly that its lack of knowledge of the '746 patent when it developed its ultrafiltration process excused it from infringement under the doctrine. In its appeal brief, Warner-Jenkinson summarized its interpretation of the doctrine of equivalents:
As noted, however, the doctrine of equivalents is not an equitable remedy available only on a showing of the equities. Lack of awareness of the patent or its disclosure does not excuse infringement. Parker v. Hulme, 18 F.Cas. at 1143. Accordingly, Warner-Jenkinson could not succeed in erecting an equitable defense to infringement.
In this context, the trial court instructed the jury about the doctrine of equivalents in terms of function, way, and result:
(Emphasis added.) This formulation correctly stated that the jury "may" rely on the function-way-result test, recognizing that this test is often enough to show infringement under the doctrine. In particular, the trial court tailored its function-way-result instruction to the parties' reliance on evidence of function, way, and result in this case.
Moreover, the trial court's instructions correctly resisted Warner-Jenkinson's effort to erect an equitable threshold for application of the doctrine of equivalents. The doctrine of equivalents has no equitable or subjective component. The cases Warner-Jenkinson cites to the contrary — London, 946 F.2d at 1538, and Charles Greiner, 962 F.2d at 1035-36 — reaffirm that the Graver Tank objective criteria, as limited by prosecution history and prior art, confine the range of equivalents. These cases do not condition effective patent protection on proof of bad faith. Accidental or "innocent" infringement is still infringement. Intent becomes a requirement only if and when the patent owner seeks enhanced damages or attorney fees for willful infringement under 35 U.S.C. §§ 284-285. In this case, for example, the jury took Warner-Jenkinson's lack of intent into account when it found that Warner-Jenkinson did not willfully infringe. Therefore, under the trial court's instructions, Warner-Jenkinson's evidence of independent development played its proper role: it shielded Warner-Jenkinson from an enhanced damages award, but did not provide a basis for avoiding application of the doctrine. The evidence of independent development in this case, directed as it is only to the issue of whether the accused infringer acted with knowledge of the patent, is irrelevant to showing substantial differences. This court cannot fault the absence of any reference to such evidence in the jury instructions.
Under these circumstances, the trial court's function-way-result instruction correctly guided the jury to consider the relevant evidence. In a perfect world, the trial court might have provided further guidance — by instructing the jury, for instance, that Warner-Jenkinson's independent development was not an excuse to infringement. Nonetheless, the trial court's function-way-result instruction directed the jury to consider, in assessing infringement, the only evidence relevant to the substantiality of the differences that was offered at trial. Significantly, Warner-Jenkinson did not object to this instruction. Rather, Warner-Jenkinson objected to sending the doctrine of equivalents question to the jury at all, contending that independent development excused it from infringing.
The trial context left the jury to consider the evidence of function, way, and result presented by both parties, the only available evidence going to the substantiality of the differences. In the context of this trial, the instructions properly focused the jury on the evidence relevant to the doctrine of equivalents.
The '746 claims recite a pH "from approximately 6.0 to 9.0." Warner-Jenkinson at times used a lower pH of 5.0. The claims also recite a pressure of "approximately 200 to 400 p.s.i.g." Warner-Jenkinson used a pressure somewhere in a range of 200 to nearly 500 p.s.i.g.
Substantial evidence supports the jury finding that Warner-Jenkinson's pH variation from the claimed approximate range was insubstantial. The claimed pH limitation prevents damage to the membrane and produces a neutral final dye product. Dr. Cook, one of the inventors, testified that a pH of 5 would have the same effect as a pH of 6, as would any pH above 2. Even Warner-Jenkinson's expert agreed that Hilton Davis' process would operate at a pH of 5. The record contains substantial evidence that one of skill in the art would know that performing ultrafiltration at a pH of 5 would allow the membrane to perform the same function, in an equivalent way, to achieve the same result as at a pH of approximately 6 to 9.
Substantial evidence also supports the jury finding that Warner-Jenkinson's pressure for some of its membranes was in the claimed range of approximately 200 to 400
As for pore size, the trial record details the difficulty of measuring a membrane's exact pore size in light of variations in fluid and pressure conditions. The record contains considerable evidence, however, about the pore size necessary to separate dye molecules from smaller molecular impurities. The record thus includes substantial evidence that Warner-Jenkinson necessarily used membranes of the claimed "nominal pore diameter of 5 to 15 Angstroms" to accomplish ultrafiltration.
Nor does prosecution history estoppel preclude application of the doctrine of equivalents in this case. "Whenever prosecution history estoppel is invoked as a limitation to infringement under the doctrine of equivalents, `a close examination must be made as to, not only what was surrendered, but also the reason for such a surrender.'" Insta-Foam Prods., Inc. v. Universal Foam Sys., Inc., 906 F.2d 698, 703, 15 USPQ2d 1295, 1298 (Fed.Cir.1990) (quoting Bayer AG v. Duphar Int'l Research B.V., 738 F.2d 1237, 1243, 222 USPQ 649, 653 (Fed.Cir.1984)). The inventors amended the '746 claims to recite "a pH from approximately 6.0 to 9.0" to avoid the disclosure in the Booth patent of an ultrafiltration process operating at a pH higher than 9. This amendment surrendered pHs above 9, but does not bar Hilton Davis from asserting equivalency to processes such as Warner-Jenkinson's operating sometimes at a pH below 6.
Warner-Jenkinson performed the process disclosed in the '746 patent — purifying dye by collecting relatively large dye molecules on the concentrate side of a membrane. Warner-Jenkinson did not use precisely the claimed process parameters, but the jury found the differences between Warner-Jenkinson's and the claimed processes insubstantial. The record contains substantial evidence supporting this finding of infringement under the doctrine of equivalents.
While agreeing that the substantiality of the differences between the claimed and accused products or processes is the ultimate question under the doctrine of equivalents, one dissent contends that "[t]he authority to exercise the unique remedy which is the doctrine of equivalents lies exclusively in courts of equity." This dissent argues that, because the Patent Act of 1952 does not expressly provide a general remedy for infringement under the doctrine of equivalents, the doctrine must be, like other judge-created extensions of inadequate legal remedies, purely equitable. This reasoning, however, is a sharp departure from a century of Supreme Court decisions issued under a stable statutory regime.
The Supreme Court has long held that the question of infringement, whether literal or by equivalents, is a question of fact for the jury if properly demanded. For example, in Coupe v. Royer, 155 U.S. 565, 15 S.Ct. 199, 39 L.Ed. 263 (1895), the Court faced an accused infringer's contention that the trial court had improperly instructed the jury to the plaintiff's advantage regarding the question of infringement under the doctrine of equivalents. Remanding the case for a new trial, the Court held that, despite the lack of a genuine issue of fact regarding either the proper construction of the patent claim or the nature of the accused device, the question of infringement under the doctrine presented a question requiring trial to the jury. Id. at 579-80, 15 S.Ct. at 205. In so holding, the Court merely followed its decision in Winans v. Denmead: "whether, in point of fact, the defendant's [devices] did copy the plaintiff's invention, in the sense above explained [i.e., by an equivalent], is a question for the jury." Winans v. Denmead, 56 U.S. (15 How.) at 344, 14 L.Ed. 717. Citations for this principle can, of course, be multiplied. See, e.g.,
This dissent also contends that the claiming requirement compels limiting the doctrine of equivalents by equitable principles. The claiming requirement, however, was contained in the Patent Act of 1870, eighty years before Graver Tank. See Patent Act of 1870, ch. 230, § 26, 16 Stat. 198, 201 ("[B]efore any inventor or discoverer shall receive a patent ... he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery...."); see also Patent Act of 1836, ch. 357, § 6, 5 Stat. 117, 119 (requiring inventor to "particularly specify and point out the part ... which he claims"). Moreover the Supreme Court in Graver Tank reached its decision over Justice Black's dissent which also invoked the statutory claiming requirement against application of the doctrine. See Graver Tank, 339 U.S. at 613-14, 70 S.Ct. at 859 (Black, J., dissenting).
The Supreme Court explained that the doctrine is not inconsistent with the requirement for explicit claims. According to Graver Tank, the "theory on which [the doctrine of equivalents] is founded is that `if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.'" 339 U.S. at 608, 70 S.Ct. at 856 (quoting Machine Co. v. Murphy, 97 U.S. at 125, 24 L.Ed. 935) (emphasis added); see also Sanitary Refrigerator, 280 U.S. at 41-42, 50 S.Ct. at 12-13 ("There is a substantial identity, constituting infringement, where a device is a copy of the thing described by the patentee, `either without variation, or with such variations as are consistent with its being in substance the same thing.'"; quoting Burr v. Duryee, 68 U.S. (1 Wall.) 531, 573, 17 L.Ed. 650 (1864)); Machine Co. v. Murphy, 97 U.S. at 125, 24 L.Ed. 935 ("Authorities concur that the substantial equivalent of a thing, in the sense of the patent law, is the same as the thing itself...."). In other words, equivalency, like exact copying, gives rise to infringement liability because it too is a relationship of identity, a proposition quite consistent with the requirement that the patent claim "particularly point out" and thereby circumscribe the protected invention. See, e.g., 3 William C. Robinson, The Law of Patents for Useful Inventions § 894 (1890) (discussing the identity theory underlying infringement by equivalents). In addition, by citing Machine Co. v. Murphy for the concept of identity that undergirds infringement by equivalents, the Court in Graver Tank, decided eighty years after the advent of peripheral claiming, relied on a case involving a patent granted in 1859, 97 U.S. at 121, 24 L.Ed. 935, eleven years before the advent of peripheral claiming. Because the statutory definition of infringement has, as will be demonstrated below, remained virtually unchanged since 1790, the Court could rely on this pre-1870 case for the doctrine of equivalents. The dissent's equity model — and its underlying premise that the advent of peripheral claiming in the Patent Act of 1870 dramatically altered the legitimacy or basis of the doctrine of equivalents — would leave the Court's reliance on Machine Co. v. Murphy in Graver Tank utterly inexplicable.
The dissent also suggests that Congress could have, but has not, included the doctrine of equivalents in the Patent Act of 1952, 35 U.S.C. §§ 1-376 (1988 & Supp. V 1993). According to this dissent, "[i]f Congress wanted to provide for [infringement by] equivalents to what is claimed, it knew how to do it." This argument suffers at least three fatal flaws. First, the statutory definition of infringement, which appears in 35 U.S.C. § 271(a), makes no reference to claims at all. Thus, the definition of infringement is at best equivocal on the question of infringement under the doctrine of equivalents. Second, the Supreme Court itself has noted that "§ 271(a) of the new Patent Code [of 1952], which defines `infringement,' left intact the entire body of case law on direct infringement." Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 342, 81 S.Ct. 599, 602, 5 L.Ed.2d 592 (1961) (emphasis added). Thus, contrary to the dissent's inference that the Patent Act of 1952's silence repealed Graver Tank and its forebears, the Supreme Court in Aro states that section 271(a) left intact the doctrine of equivalents.
A separate dissent concurs in our conclusion that the function-way-result test is not "the" test for equivalents. This dissent, however, would prefer to treat the substantiality of the differences as "only one of the factors according to Graver, arguably the most important factor, which a court should consider in deciding whether to apply the" doctrine of equivalents. The Supreme Court, in our view, made the fundamental question "whether under the circumstances the change [in the accused product or process] was so insubstantial that ... invocation of the doctrine of equivalents [is] justified." Graver Tank, 339 U.S. at 610, 70 S.Ct. at 857.
In addition, this separate dissent argues that the accused infringer's intent is relevant to the question whether the accused product or process infringes under the doctrine. As clarified above, however, intent is not an element of direct infringement, whether literal or by equivalents. Neither Graver Tank nor any other authority supports the proposition that preventing "fraud on a patent," 339 U.S. at 608, 70 S.Ct. at 856, turns on the subjective awareness or intent of the accused infringer. Moreover, neither evidence of copying, independent development, nor "designing around" owes its relevance in a doctrine of equivalents analysis to the state of mind of the accused infringer. Infringement is, and should remain, a strict liability offense.
Finally, this dissent departs from our basic disposition of the case, arguing that our basic holding as to the status of the function-way-result test renders the trial court's instructions in this case plainly erroneous. As has been demonstrated, however, the trial court's instructions were sufficiently comprehensive to direct the jury to consider, in assessing infringement under the doctrine of equivalents, the only evidence relevant to the substantiality of the differences that the parties offered. No more is required. See Biodex, 946 F.2d at 853-54.
A third dissent contends that "because we know what the claim means and we know what process parameters Warner-Jenkinson uses, the issue of infringement under the doctrine [of equivalents] ... resolves itself into one of law," reviewable de novo on appeal. The Supreme Court squarely renounced arrogation of the fact-finding function in Graver Tank, however, recognizing that an appellate court is not best qualified to assess the facts in a doctrine of equivalents case:
Graver Tank, 339 U.S. at 609-10, 70 S.Ct. at 857 (emphasis added). In short, the Supreme Court settled the question of the standard of review in doctrine of equivalents cases, foreclosing the dissent's contention.
This dissent also argues for adoption of a new "legal limitation" on the doctrine of equivalents prohibiting "enlargement of the claim." The rule against enlargement of claim scope during claim construction is well settled. See, e.g., Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 278-79, 24 L.Ed. 344 (1877). This dissent errs, however, in arguing that application of the doctrine of equivalents enlarges the claim scope. Instead the doctrine of equivalents provides the same protection to the substance of the claim scope provided by the doctrine of literal infringement. As explained in Graver Tank, when there are no substantial differences between the claimed and accused products or processes, "they are the same" in the eyes of the patent law. Graver Tank, 339 U.S. at 608, 70 S.Ct. at 856 (quoting Machine Co. v. Murphy, 97 U.S. at 125, 24 L.Ed. 935). The rule against enlargement, although an essential tenet of claim construction, thus contributes nothing to the inquiry into infringement under the doctrine.
This dissent also purports to discern in some of the Supreme Court's decisions a second "legal limitation" on the doctrine of equivalents limiting "the range of infringing substitutions to those in which components were substituted which were known to be equivalents" when the patent issued. The dissent's analysis is flawed, however. The Court has recognized that post-issuance improvements can infringe under the doctrine. See Sanitary Refrigerator, 280 U.S. at 40-43, 50 S.Ct. at 12-13. Our cases have followed the same course. See, e.g., Moleculon, 872 F.2d at 409; Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1365, 219 USPQ 473, 483 (Fed.Cir.1983). In Graver Tank, furthermore, the Court recognized the ingenuity of would-be pirates, who may always be expected to find new ways to avoid the literal scope of a patent claim:
Graver Tank, 339 U.S. at 607, 70 S.Ct. at 856. The doctrine "evolved in response to this experience," id. at 608, 70 S.Ct. at 856, and stands as a bulwark against such "insubstantial changes," id. at 607, 70 S.Ct. at 856. Limiting the range of potentially infringing substitutions to those known at the time of the patent's issuance would undermine the doctrine, denying patent owners protection of the substance of their inventions against new forms of infringement.
Finally, this third dissent takes issue with the jury's evaluation of the evidence and this court's refusal to apply prosecution history estoppel. Graver Tank bound this court only to review the jury's fact findings and not to rely on our independent views. As has been demonstrated, each of the jury's fact findings is supported by substantial evidence. Therefore this court must affirm the jury's fact findings, regardless of what result this court might have reached had it been entrusted with fact finding at trial. See Lavender v. Kurn, 327 U.S. 645, 653, 66 S.Ct. 740, 744, 90 L.Ed. 916 (1946).
As for prosecution history estoppel, as explained, this doctrine turns on the reasons for claim amendments during prosecution. Insta-Foam, 906 F.2d at 703. That the '746 inventors amended the claims to recite "a pH from approximately 6.0 to 9.0" to avoid the prior art disclosure of a process operating at a pH higher than 9 does not bar Hilton Davis from asserting equivalency to Warner-Jenkinson's process sometimes operating at a pH below 6.
Substantial evidence supports the jury verdict of infringement under the doctrine of
Each party shall bear its own costs.
PAULINE NEWMAN, Circuit Judge, concurring.
The doctrine of equivalents has neither greatly excited the centers of legal scholarship, nor seriously stirred action-oriented industry. Indeed, there remains a telling silence on the part of the technology community, for or against. Despite the controversial changes proposed in opinions of this court, there has been little objective policy exploration, economic analysis, legislative proposal, or even a search for consensus. There has, of course, been a good deal of speculation flowing from the inconsistency of our decisions.
The court today holds that no change is appropriate in the common law of equivalency as developed by the Supreme Court. I join in that holding, for our conclusion is in accord with precedent, and this en banc decision provides needed repose: the proposed new test of a threshold "equity" determination has been laid to rest, and the criteria of Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097, 85 USPQ 328 (1950), have been reaffirmed. Indeed, any change in the legal and factual fundamentals so explicitly laid out by the Supreme Court is beyond our judicial authority. I have, however, come to doubt that the doctrine of equivalents is the best way to achieve the result for which it arose, and I encourage the technology-user community to consider whether new procedures, through the legislative process, may better serve the national interest.
Our decision, like every decision of patent principle, affects the national interest in technologic innovation. I have sought to understand how that effect is manifested in the doctrine of equivalents. In so doing I have taken an analytic path not discussed by the court, albeit a path that I believe underlies the common law of equivalency. This path has led me into the thicket of the sociology and economics of patent law, for I have attempted to place the basic question — the role and application of the doctrine of equivalents — into the practical context of the purposes and workings of the patent system, as informed by modern scholarship.
The parties and the amici curiae did not discuss this public interest aspect, although the consequences of our decision, as for all law, extend beyond those of the parties involved in the specific dispute. It is a consideration of passing complexity, for the mere availability of recourse to the doctrine of equivalents can affect technologic progress as well as commercial relationships, the core of the patent system. Thus I write to explain my decision, and the considerations that influenced it.
Technologic Innovation and the National Interest
The doctrine of equivalents derives from the principle that an inventor should be secure in the patent rights granted by the law, even against those who manage to avoid the letter of the invention as it was described or claimed in the patent document. Early in United States patent history Justice Story stressed the superior right of the inventor as against "mere colorable alterations:"
Odiorne v. Winkley, 18 F.Cas. 581, 582 (C.C.D.Mass.1814) (No. 10,432) (charging the jury). As in ensuing decisions, e.g., Winans v. Denmead, 56 U.S. (15 How.) 330, 343, 14 L.Ed. 717 (1854); Singer Mfg. Co. v. Cramer, 192 U.S. 265, 285-86, 24 S.Ct. 291, 299, 48 L.Ed. 437 (1904); and Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 41, 50 S.Ct. 9, 12, 74 L.Ed. 147 (1929); the trier of fact was directed to look to the substance of the invention, and ascertain whether the infringer took that substance. Although some legal theorists have argued that patent principles derived from property and contract law require greater precision than is available from equivalency, the Court's decisions on equivalency consistently emphasize the interest of justice, in aid of the constitutional purpose of technologic progress.
The juridical approach to equivalency began before patents contained "claims" in the detail in which they are now written, and did not change as claim style evolved. The Patent Act of 1836 required all patentees to state what was "claimed," a practice that was already the custom. See U.S. Patent Office, Information to Persons Having Business to Transact at the Patent Office (1836), reproduced in Karl Lutz, Evolution of the Claims of U.S. Patents, 20 J.Pat.Off. Soc'y 457, 464 (1938). The development of claim style
The public notice aspect of what the patentee "claims," upon interaction with the patent examiner and on consideration of the prior art, is a powerful argument for strict literal reading of claims, even if the result is injustice
The principle of equivalency thus serves a commercial purpose, as it adjusts the relationship between the originator and the second-comer who bore neither the burden of creation nor the risk of failure. However, there is also the major consideration of the progress of technology. How does the existence of a "doctrine" that transcends the statutory purpose of legal notice of the patent's scope affect that progress? Does the doctrine of equivalents affect the research, development, investment, and commercialization decisions of today's technologic industry, in a way that concerns the national interest?
And if not, what's all the fuss about?
Innovation and Equivalency
Despite our national dependence on technologic advance, there is a sparseness of practical study of whether and how the doctrine of equivalents affects modern industrial progress and the public welfare. However, a helpful debate is developing among scholars, centered upon the optimum scope of patent claims. For example, Robert P. Merges and Richard R. Nelson, On the Complex Economics of Claim Scope, 90 Colum.L.Rev. 839 (1990), suggest that the optimum claim scope is that which will promote "competition in research"; while Edmund W. Kitch, The Nature and Function of the Patent System, 20 J.L. & Econ. 265, 275-80 (1977), suggests that since competition in research is inefficient, broad claims to the originator would provide optimum incentives and serve the larger social welfare. These analyses have drawn thoughtful commentary and further development. For example, touching on the complexity of the issue of equivalency in Patent Law and Rent Dissipation, 78 Va. L.Rev. 305, 348 (1992), Mark F. Grady and Jay I. Alexander write that the "doctrine of equivalents is really the method through which the extent of an invention's technological signal is established." These and other controversial theories aid our understanding, although practical implementation seems to be quite elusive, for determination of the national interest is as complex as the many forms of technology and the varied research and industrial strategies of their development.
I need not belabor that the economic risk in developing new technology is high, that the potential return must warrant the risk, and that the return must pay for the failures as well as the successes. See Paul A. Samuelson & William D. Nordhaus, Economics 658 (12th ed. 1985) (in general, a higher return is required for higher risk than for lower risk investment). The goal on which we must concentrate is the public welfare, as summarized in Mazer v. Stein, 347 U.S. 201, 219, 74 S.Ct. 460, 471, 98 L.Ed. 630, 100 USPQ 325, 333 (1954):
The principle is today of international force, as the United States seeks to enhance its national strength and international trade with the aid of intellectual property. Indeed, recent economic history illustrates the stagnation of the economy coinciding with periods of diminished industrial investment in technologic advance. Professor Griliches, supra, at 291, wrote "Among the many explanations for the worldwide productivity slowdown in the 1970s, the exhaustion of inventive and technological opportunities remains a major suspect."
The analytic complexity with respect to the doctrine of equivalents arises because technologic
Improvements and Equivalency
Persons who appropriate the patentee's concept may add technologic value in a variety of ways: perhaps by developing a different path to the new markets opened by the patentee, perhaps by adapting later-developed technology to enhance that of the patentee, perhaps by perceiving alternatives and opportunities from a different perspective than that of the patentee. All of these activities would bear lower risk to the appropriator if the patentee's claims were strictly limited to their literal scope, for the patentee's access to the remedy of equivalency imposes upon the appropriator the risk of litigation, damages, and injunction.
Most (but perhaps not all) students of technologic innovation today accept the proposition that there is a larger welfare benefit when the inventor is protected against appropriability by a competitor who did not bear the commercial risk. The cost of substantially imitating an established product, with or without improvements, is usually lower, and always less risky, than the originator's cost of creating, developing, and marketing the new product. Such a competitor can act in a shorter time than was needed by the patentee, and undercut the return to the patentee. See Edwin Mansfield, Mark Schwartz & Samuel Wagner, Imitation Costs and Patents: An Empirical Study, 91 Econ.J. 907 (1981). Because of the diminished riskweighted incentive to the originator, it has generally been concluded that "total welfare, but not the welfare of consumers, would be increased by making it more difficult to produce close substitutes for existing products." Stanley M. Besen & Leo J. Raskind, An Introduction to the Law and Economics of Intellectual Property, 5 J.Econ.Persp. 3, 5 n. 2 (1991).
These and other economic studies support the role of the doctrine of equivalents as a mechanism that makes it more difficult to produce close substitutes, whether by imitation or improvement. There are additional policy refinements, however, for improvements occur on a continuum between minor and major. Not all improvements are equal, and neither are their implications for technologic growth. Much of the current writing on the economic and developmental implications of the scope of patent rights is directed to technologies that are rapidly evolving, primarily in the fields of biotechnology and electronics. There is a growing body of interesting thinking about how to adapt the traditional modes of patenting to the scientific and commercial needs of these technologies. See, e.g., Pamela Samuelson, Randall Davis, Mitchell D. Kapor & J.H. Reichman, A Manifesto Concerning the Legal Protection of Computer Programs, 94 Colum.L.Rev. 2308 (1994) (proposing a "hybrid" protection for computer software beyond that available from existing legal regimes); Dan L. Burk, Biotechnology and Patent Law: Fitting Innovation to the Procrustean Bed, 17 Rutgers Computer & Tech. L.J. 1 (1991). Indeed, some of the analyses relating equivalency and scientific/technologic advance, in the context of modern innovation practices, suggest the thought that the doctrine of equivalents today serves the unexpected purpose of being the only readily available tool for application of the law to new technologies. See, e.g., Yusing Ko, An Economic Analysis of Biotechnology Patent Protection, 102 Yale L.J. 777 (1992) (analyzing decisions that applied the doctrine of equivalents).
If minor improvements are likely to be captured by the doctrine of equivalents, this might cause the would-be competitor to move to diverging areas instead of simply tagging along at the periphery of the patentee's claims. On this theory the doctrine of equivalents, like the grant of broad claims, could encourage "leapfrogging" advances instead of minor improvements and substantial imitation. This would enhance the growth of technology overall, and thus serve the public
Competition and Equivalency
In thinking about the effect of the doctrine of equivalents on both innovators and competitors, one must consider how technology, the patent system, and competition interact. The question of equivalency is presented to judges after the competitive situation has crystallized, and thus we tend to focus on the technologic issues as they reach us in a lawsuit, and not on how the technology got to that stage. However, technologic advance, like scientific advance, usually proceeds in small, incremental steps, building on what has gone before, building on one's own work and the work of others. The steps, accumulating, may eventually produce the next generation of technologic progress. Yet each step, viewed alone, may be an insubstantial change. Even minor improvements can displace the originator while adding little to advancing the field. See Besen & Raskind, supra, at 5 & n. 2. It is the insubstantial change that is caught by the law of equivalency.
Competition in research and development is important to the nation. There are important distinctions between competition in the research (inventing) stage and in commercial activity. Competition in research, however inefficient its economics, serves the advancement of knowledge in myriad ways. It is often observed that investment in commercialization tends to be more risk-sensitive than investment in research, apparently since the costs of product development and capital plant often dwarf the cost of making the invention. Yet industrial innovation is served by the patent system when the commercial investment is made. To the extent that the doctrine of equivalents enlarges the value of the patent to the innovator it also increases the net social value, as well as serving as a risk-reducing factor in commercial investment. The relevant economic theories on these points are varied, and the analyses are interesting. See, e.g., Janusz A. Ordover, Economic Foundations and Considerations in Protecting Industrial and Intellectual Property, 53 Antitrust L.J. 503, 506-07 (1985) (discussing the effects on innovative efforts of competition in research and development).
The complexities of these relationships far exceed the highlights I have touched. On the present state of the law I have concluded that the doctrine of equivalents, on balance, serves the interest of justice and the public interest in the advancement of technology, by
Equivalency and Risk
Patent law provides rules of exclusion, priority, and competition that are understood by today's industrial enterprises. Whether from the viewpoint of the originator of technology or the appropriator, the impact of the doctrine of equivalents is as only one of many commercial uncertainties and possibilities. I doubt if much, or any, reliance is placed by originators on the doctrine of equivalents when specific investment decisions are made; at least not by those who have studied precedent. The effect of the doctrine of equivalents as an innovation incentive is more generalized, more subtle.
I believe that the major contribution of the doctrine of equivalents is now, and always has been, to the idea of a fairer, less technocratic, more practical patent system; one that is oriented toward encouraging technologic innovation and discouraging free riding; one that is not at the "mercy of verbalism," in the words of Graver Tank. In this way the doctrine of equivalents can contribute a degree of added investment confidence to the inherently risky environment of new technology. However, it will not serve that function if its application is so unpredictable that it can not be relied upon. Indeed, the determination of technologic equivalency should be reasonably predictable by not only the innovator but also the competitor. When applied to a particular patented invention, it should be reasonably predictable whether a specific device will be found "equivalent."
The possibility of infringement litigation is a risk factor for both the patentee and the appropriator. The patentee will have weighed the strength, breadth, and enforceability of the patent, along with other market benefits and risks, before making a major investment in commercialization. In contrast, for the second-comer these risks are evaluated only after the patentee's product has been proved successful in the marketplace. A competitor who operates within the "penumbra" of the claims, appropriating the inventor's contribution while skirting the claims, may be deemed to have taken a calculated commercial risk that includes possible litigation. The degree of uncertainty of the outcome necessarily affects the commercial risk; the very existence of a "doctrine" that is applied variably by judges, and at great expense to the parties, has an effect on business decisions.
Some amici curiae complained that as lawyers they can not advise clients with confidence about how close they can come to a patentee's invention, because of the doctrine of equivalents. However, no amicus guided us to resolution of the interests and rights of clients on both sides of the issue, or the national interest. Industry has been silent, except of course for Hilton Davis and Warner-Jenkinson, who have competently argued their positions, each finding sound support in this court's precedent. Uncertainty at the margins of competing policies is not unique to patent law, and is probably no more prevalent than in other commercial causes of action. However, the court's decision today provides no more certainty than did the 1950 decision in Graver Tank, leaving in place the problems of application of the doctrine that have concerned this court.
Uncertainty in the law always disserves the larger public interest, although usually one side or the other is served by it. The uncertainty in judicial application of the doctrine of equivalents surely serves the patentee, perhaps disproportionately. See Louis Kaplow, Rules versus Standards: An Economic Analysis, 42 Duke L.J. 557, 568-77 (1992) (discussing how the cost of compliance with law increases with imprecision of the law). A few authors have offered interesting suggestions for reducing the uncertainty while retaining the just purposes of the doctrine of equivalents, although most authors simply criticize the past without helpful suggestions for the future.
Economic analysis is reasonably consistent in its conclusion that technologic, commercial, and public interests coincide to favor law that favors the innovator as against the second-comer. However, the application of this analysis to the complexities of patent-dependent innovation is not fully understood. And the cases that reach us rarely present a simple choice, even when the "doctrine" is
Rethinking the Doctrine
Reviewing past decisions that turned on equivalency, one perceives a few dominant scenarios. Usually the accused infringer was already in the commercial field of the invention, and the patented invention was making inroads into its business, providing competitive pressure for technologic response. Occasionally, although rarely, the second-comer made the invention independently.
1. The patent actually claimed the aspect that is sought to be reached under the doctrine of equivalents, but:
2. The patent claims did not include a known substitute for a component of the claimed combination:
3. "Obvious" changes are made in the patentee's device, avoiding the literal scope of the claims:
4. Usually because of developments in technology, a part of the claimed combination is modified or becomes unnecessary:
In each of these four examples, infringement by equivalency was found in (a) but not in (b). It is not the doctrine of equivalents, but the uncertainty of its application, that causes the uncertainty in commercial relationships. Our decision today, while rejecting the proposed equitable considerations that would have added further uncertainty, does not answer the difficult question of improving the predictability and reducing the uncertainty of technologic decisionmaking. For this reason,
For example, the patent law places strong pressure on filing the patent application early in the development of the technology, often before the commercial embodiment is developed or all of the boundaries fully explored. Since the patentee is barred from enlarging the claims after two years from the date of issuance, later developments are excluded from the patent system unless they independently meet the criteria of patentability. From the originator's viewpoint, the inability to protect such developments may be a factor in recourse to the doctrine of equivalents. And from the viewpoint of the potential competitor, there is no opportunity to test possible encumbrances on later developments.
Most legal documents can be reformed, or amended, or supplemented. However, the available mechanisms for patent documents are extremely limited, for neither the reissue nor reexamination procedure permits adding to the disclosure. Thus some technologic variants can be reached only through litigation invoking the doctrine of equivalents. I invite creative thinking by the bar and technology communities, for if there were statutory procedures whereby patentees could protect their continuing work, there might be justification for limiting infringement to the literal scope of claims thus obtained.
The patent law is directed to the public purposes of fostering technological progress, investment in research and development, capital formation, entrepreneurship, innovation, national strength, and international competitiveness. Our review of the doctrine of equivalents takes place in this context, not as an abstraction insulated from commercial reality. The questions before us are not simple. However, until the technology community provides a better answer, I know of no improvement upon the Court's holding that the doctrine of equivalents may be invoked when needed to "temper unsparing logic and prevent an infringer from stealing the benefit of an invention." Graver Tank, 339 U.S. at 608, 70 S.Ct. at 856, 85 USPQ at 330 (quoting Royal Typewriter Co. v. Remington Rand, 168 F.2d 691, 692, 77 USPQ 517, 518 (1948)).
PLAGER, Circuit Judge, with whom Chief Judge ARCHER and Circuit Judges RICH and LOURIE join, dissenting.
The court today tells us some important things about the doctrine of equivalents. We are told that application of the doctrine turns on one primary test: the substantiality of the differences between the claimed and accused products.
Function-way-result still plays a part, although exactly what that part is may seem obscure to some. That test, it is explained, arose in days of relatively simple mechanical technology. More sophisticated and innovative products may require more sophisticated analysis and thus different evidence, although
The court also tells us that the burden is on the patentee to produce the necessary evidence of insubstantiality, and that these evidentiary questions are questions of fact.
Taken singly, most of these propositions are familiar. Packaged as they are, they may come as a revelation to many in the bar, as they no doubt do to the parties in this case. The court's statement that "[t]his case presents an opportunity to restate — not to revise — the test for infringement under the doctrine of equivalents" is difficult to take literally. What the court has given us is a recipe in which familiar ingredients are to be mixed in a different way, to produce what must be presumed to be a better product. But there is no reason to suppose that the new product will in fact be better. The mixing is still to be done in the dark, by the multiple hands of a jury under minimal instruction. When that product, an announced "yes, it infringes" or "no, it does not" arrives at this court, we will remain as blinded as we are now in our ability to pierce the doctrinal veil.
If we are to know where we are going with the doctrine of equivalents, we must know whence it came. The court denies that the doctrine has its roots in a court's traditional equity powers, but provides no substitute explanation for its origin. As a result, we are left with two major problems that are not satisfactorily resolved: what are the controlling bounds of the doctrine, and what are the proper respective roles of judge and jury.
As a preliminary matter, it may be asked why the court needs to undertake this inquiry into the doctrine of equivalents at all. Is something broke that needs fixing? The short answer is yes.
A related problem is that our current case law imposes no substantial constraints on the availability of the doctrine. Any patentee may invoke it as a second prong to an infringement suit, in addition to the statutory cause of literal infringement. Prior to 1870, the date when inventors were first statutorily required to particularly and distinctly claim their invention, see Act of July 8, 1870, § 26, 16 Stat. 201, the scope of protection turned on the embodiments disclosed in the specification. Courts read these specifications broadly, to include equivalents, in order to give the patentee the full scope of the invention. Over the past hundred or so years, that practice has given way to a focus on precisely what the inventor claims as the invention. The specification remains important, not as the definition of the invention, but as a description of it and as an aid in interpreting the language of the claims.
By today's opinion, the majority essentially blesses the continued unfettered use of the doctrine of equivalents, at the discretion of a jury, noting that in some cases at least the ritual chant will be quite sufficient justification for a rewriting of the claimed limitations. This ignores the fact that, after 1870, claims, not their equivalents, are the determinants of the scope of protection granted by the patent.
Another problem with the doctrine is that appellate review of many of these doctrine of equivalents cases is largely
In our review we must assume that the jury understood the technology, understood the law of patents and the policies that underlie it, understood the function, way, and result of the matter, and arrived at a considered decision. It is enough to sustain a jury verdict of infringement by equivalents if the trial court's instructions are without prejudicial error (oftentimes this translates into the less said the better), and if there is any substantial evidence in the record which the hypothetical reasonable juror could have believed, and so believing, arrived at the verdict. A plaintiff must have a virtually impossible case, or incompetent counsel, to fail to have something in the record which can be argued is substantial enough. In short, though the opinions we write, with their routine recitations of our standard of review followed by the inevitable citations, may tend to obscure the reality, the reality is that the doctrine of equivalents is a virtually uncontrolled and unreviewable license to juries to find infringement if they so choose. And this is done largely without regard to and independent of the express limitations of the patent claims which may have brought about their allowance by the Patent and Trademark Office (PTO) in the first place. See Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532-33, 3 USPQ2d 1321, 1324-25 (Fed.Cir.1987) ("One must start with the claim, and, though a `non-pioneer' invention may be entitled to some range of equivalents, a court may not, under the guise of applying the doctrine of equivalents, erase a plethora of meaningful structural and functional limitations of the claim on which the public is entitled to rely in avoiding infringement.... The statement should not be interpreted as sanctioning the treatment of claim limitations as insignificant or immaterial in determining infringement. `It is ... well settled that each element of a claim is material and essential, and that 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.'") (quoting Lemelson v. United States, 752 F.2d 1538, 1551, 224 USPQ 526, 533 (Fed.Cir.1985) (footnote omitted)). The obligation on the inventor to particularly point out and distinctly claim what the applicant regards as his invention, discussed below, the legitimate practice of competitive designing around, and the opportunities given to the public to benefit from the mandatory disclosures required of the patentee, all are thrown into disarray by this unpredictable aspect of current patent litigation.
Responsibility for these problems and for the unsatisfactory situation they create lies with the judges. It is the result of how we have interpreted Supreme Court opinions on
Turning, then, to the question of the doctrine's roots, and thus its boundaries, our examination begins, as it must, with the statute that creates and defines the patent right, 35 U.S.C. §§ 1-376.
This has been true for a long time. In the now century-old case of Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 278, 24 L.Ed. 344 (1877), the Supreme Court said:
Judge Rich, explaining current American law to European judges, described it this way:
Giles Rich, The Extent of the Protection and Interpretation of Claims—American Perspectives, 21 INT'L REV. INDUS. PROP. & COPYRIGHT L. 497, 499, 501 (1990).
Nothing in the statute talks about extending the patent right to the equivalents of what is claimed, or to any other version of the invention beyond that described and claimed in the specification. "The specification shall contain a written description of the invention ...," 35 U.S.C. § 112 ¶ 1, and the patent covers that which is "distinctly claim[ed]." 35 U.S.C. § 112 ¶ 2. If Congress wanted to provide for equivalents to what is claimed, it knew how to do it. In a means plus function claim, for example, the structure, material, or acts that support the claim are to be construed to cover the corresponding structure, material, or acts described in the specification "and equivalents thereof." 35 U.S.C. § 112 ¶ 6. One looks in vain for similar language qualifying the claims that are at the heart of the patent right.
Although courts are not empowered to rewrite or add to legislation, the English Chancellor took upon himself in an appropriate case, and American courts of equity have followed suit, the role of protecting legal rights, including rights created by statute, from abuse by a too-narrow application of the law causing an unjust result. See generally FLEMING JAMES, JR., CIVIL PROCEDURE 8-16 (1965); F.W. MAITLAND, EQUITY, 1-22 (1929). This power, however, was carefully cabined. There has to be a showing of truly special circumstances, of a situation in which a wrong would be committed by a mindless application of law. In such a situation, the court of equity does not grant new or unlimited rights to a claimant, but rather protects the claimant's established legal rights by providing a uniquely equitable remedy.
The legal rights established by a patent are defined by the claims. Competitors and other members of the public are entitled to rely on the scope of the claims set out in a patent, as the statute requires, and to design around the patentee's statutorily-protected rights. Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951, 28 USPQ2d 1936, 1939 (Fed. Cir.1993) ("It would not be appropriate for us now to interpret the claim differently just to cure a drafting error.... That would unduly interfere with the function of claims in putting competitors on notice of the scope of the claimed invention."). In the famous nose of wax analogy, the Supreme Court in White v. Dunbar, 119 U.S. 47, 51-52, 7 S.Ct. 72, 74-75, 30 L.Ed. 303 (1886), said:
In most cases, if the claims do not literally apply to the allegedly infringing product, that should end the matter. But, when there is a wrong for which there is no adequate remedy at law, equity courts have traditionally gone beyond the law to impose a just and equitable result. Thus in those special cases in which the competitor's product is literally different but the difference is so insubstantial as to constitute a `fraud on the patent,' a court in the exercise of its extraordinary equity power may extend the remedy of infringement in order to protect the rights of the patentee granted by law.
The power of courts of equity to deviate from the strict requirements of law is not without limits. Even in the interests of justice, courts of equity are not free to make unfettered and unreviewable decisions. They are as much subject to rules of law as are the law courts. Thomas Jefferson, arguing against giving federal courts broad equitable powers, said, "Relieve the judges from the rigour of text law, and permit them, with pretorian discretion, to wander into it's equity, and the whole legal system becomes incertain." 9 PAPERS OF THOMAS JEFFERSON 71 (J. Boyd ed. 1954). The supporters of a strong federal judiciary recognized the merits of the argument. In response to such concerns, Alexander Hamilton wrote, "To avoid an arbitrary discretion in the courts, it is indispensable that they should be bound down by strict rules and precedents which serve to define and point out their duty in every particular case that comes before them." THE FEDERALIST No. 78, at 529 (J. Cooke ed. 1961). This argument echoed the long-running fight between the common law courts of England and the emerging courts
The need for clear and reviewable boundaries is as applicable to patent law as to other areas of law, lest the power inherent in the doctrine of equivalents destroy the reliance on the scope of claims to which every competitor is entitled. "The inventor must `inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.'" United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 232, 63 S.Ct. 165, 168, 87 L.Ed. 232 (1942) (quoting General Elec. Co. v. Wabash Corp., 304 U.S. 364, 369, 58 S.Ct. 899, 902, 82 L.Ed. 1402 (1938)).
The majority opinion correctly recognizes the notion of protecting legal rights by extending a flexible remedy when the difference between the protected rights of the patentee and the product of the infringer is insubstantial. But the majority fails to acknowledge — indeed, denies — the equitable source of that remedy. The court states that the doctrine has "no equitable or subjective component," slip op. at 1522-23, but that confuses the jurisprudential basis of the power with the evidentiary reasons for its exercise. The court further states that the question of infringement, whether literal or by equivalents, is a question of fact, a proposition that no one challenges. But the court follows that statement with the conclusion that, since infringement by equivalents is a question of fact it must therefore be a question for a jury, as if equity courts in the course of their work never decide factual issues.
The court cites cases, such as Coupe v. Royer, an 1895 Supreme Court decision, arguing that it proves that "the question of infringement under the doctrine presented a question requiring trial to the jury." Slip op. at 1525. In addition to being somewhat antiquarian (the complaint was brought under the old form of action called trespass on the case), the opinion makes no such holding. The issue in the case was whether the patentee's machine for treating raw hides was infringed by the defendant's machine. There is nothing to indicate that the case involved anything other than a question of literal infringement as it was understood then, and the matter was tried to a jury. The trial judge instructed the jury at some length as to the meaning of the claim language, giving the language a broad construction. The Supreme Court found the judge's construction over-broad and erroneous, stating that "such construction must be in conformity with the self-imposed limitations which are contained in the claims," and cited to Keystone Bridge. On the relative roles of judge and jury, the court quoted from Robinson on Patents: "Where the defense denies that the invention used by the defendant is identical with that included in the plaintiffs patent, the court defines the patented invention as indicated by the language of the claims; the jury judges whether the invention so defined covers the art or article employed by the defendant." 155 U.S. at 579, 15 S.Ct. at 205. The judgment was reversed for a new trial under proper instructions.
As Coupe v. Royer and the other cases of that era and since establish, the law provides the patentee with a remedy for infringement of the express terms of the patentee's claims. The patentee, subject to the approval of the Commissioner of Patents and Trademarks, writes those claims, and may claim what he invents. His failure to claim what he might, or as clearly as he might, is a drafting problem, not a judicial one. This does not make light of the difficulty inherent in claim drafting, but merely identifies where the problem and its solution lie. The solution to the problem of inadequate or incomplete claim drafting is not arbitrary after-the-fact `interpretation' under the guise of `equivalents,' whether by judge or jury, that goes beyond
In this case, the patentee added a claim limitation of "a pH from approximately 6.0 to 9.0" in order to distinguish the Booth patent, which disclosed an ultrafiltration process using a higher pH. Why the inventors specified a low end of 6.0 is not discussed in the patent. It appears, however, that the designated lower limit was also intentional; Dr. Cook testified at trial that though the process would work to separate the dye from the impurities at pH-values as low as 2.0, a solution with a pH below 6.0 would cause "tremendous foaming problems in the plant." Each whole number below 6.0 represents a difference of 10 times the amount (the pH scale is logarithmic). Yet, under the function-way-result test approved here, a jury might well have found that a pH of 2 or 3 was equally violative under the doctrine. Surely the boundaries of a claim cannot be left that fluid and still have claims that perform their assigned mission. Courts, either at the trial or appellate level, must be prepared to police the application of this extraordinary power in order to protect the public's interest.
The majority's failure — or refusal — to acknowledge the uniquely equitable nature of the doctrine of equivalents with its built-in constraints leads to a basic error in the opinion, and that is the failure to effectively deal with the respective roles of judge and jury. The majority simply continues the status quo, which, if the plaintiff patentee chooses and the trial judge does not disagree, allows by default both literal infringement and infringement under the doctrine of equivalents to go to the jury.
The majority offers no persuasive explanation for its position. As it must, the majority recognizes that cases from this court and the Supreme Court often speak of the equitable nature of the relief afforded by the doctrine of equivalents. Slip op. at 1521, and n. 2. Then by way of
Indeed, it is easy to point to cases, old and new, in which, when a jury was impanelled, the function-way-result issue was given willynilly to the jury along with the issue of literal infringement. It is understandable that a trial judge, who gets one patent case every few years to try, would be comfortable doing this. The fact that defense counsel have not challenged the practice tells us little, other perhaps than that conventional thinking is easier than any other kind, or that counsel for today's patent infringer will, on the morrow, represent a patentee plaintiff, so that
Nor does the statement by the Court in Graver Tank, that "[a] finding of equivalence is a determination of fact," tell us who decides that question in a jury trial. The fact-law dichotomy discussed in Graver Tank, a non-jury case, was related to the question of the Supreme Court's standard of review when reviewing a judgment of a trial court following a bench trial. The Court had no occasion to discuss the difference between law and equity, and the respective roles of judge and jury.
To label something a fact issue tells us little about who should decide it. In traditional equitable matters — the rights of beneficiaries under trusts, mistake and fraud in contract disputes, domestic relations, to name just a few — questions of fact are regularly decided by judges. Just as matters of `fact' may be exclusively for the judge, and not for a jury, when the issue is claim interpretation, an issue we have only recently declared uniquely the responsibility of judges, Markman v. Westview Instruments, Inc., 52 F.3d 967, 34 USPQ2d 1321 (Fed.Cir. 1995) (en banc), so too matters of `fact' belong to the court when the court exercises its equitable powers in applying the doctrine of equivalents. Cf. Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d 1182, 1190, 25 USPQ2d 1561, 1568 (Fed.Cir.1993) (per curiam) ("A patentee has no right to a jury trial respecting the factual element of culpable intent as part of the defense of inequitable conduct.").
Absent some special statutory grant, juries do not exercise equitable powers. There is no issue of a right to a trial by jury under the Seventh Amendment; the court does not suggest that that is the source of the jury's role. By virtue of its unique place in our legal system, and by long-standing custom and tradition, equity powers are exercisable only by judges. The authority to exercise the unique remedy which is the doctrine of equivalents lies exclusively in courts of equity.
There are several ways to address the anomalous situation of having had juries involved previously in the application of the doctrine of equivalents. We might acknowledge the existence of the past practice of giving the issue of the doctrine of equivalents to juries; declare that practice to be antithetical to the jurisprudential roots of the doctrine; and end the practice. As a follow-up, we could give useful guidance to trial judges on how to assess when a situation called for the special imposition of equity into the otherwise statutorily-defined infringement context. This guidance necessarily would emphasize the importance of keeping such matters as copying, independent discovery, and wrongful intent conceptually separate and distinct. Further experience with determining when and in what circumstances the doctrine is appropriately applied would no doubt refine and extend our understanding of these matters.
This would be a bold and clean solution to the matter. Though bold, it would not be radical, its roots being squarely in the great traditions of our courts going back centuries to the office of the King's Chancellor. It would overturn no established law, and would clarify much confusion emanating from the old cases. And it cannot be denied that it would make a major contribution to bringing rationality to this area of patent law.
A second though less bold alternative might be to share the responsibility for the doctrine between judge and jury. Trial judges would be instructed that it is their responsibility to determine when the differences between the patent claims and the allegedly infringing product are so insubstantial, and the circumstances so sufficiently special, as to warrant making the remedy
Under this alternative, the trial judge could make the determination at the beginning of the trial process, for example in response to a motion for partial summary judgment regarding the patentee's count alleging infringement under the doctrine of equivalents. Or, in an appropriate case, the trial judge could await presentation of the evidence so as to better understand the extent of the differences between the accused product and the claims, and then rule in response to a motion for judgment on that count. In either event, this court could require that on appeal there would be detailed findings of fact and conclusions of law to review, regardless of what the jury did under the function-way-result test.
This second alternative, an amalgam of two quite diverse approaches to the issue, is not without its problems. In particular, the insubstantiality assessment made by the judge overlaps in considerable degree with the function-way-result analysis to be applied by the jury. Nevertheless, this alternative, though not as bold and not as clean as the first, still would have advanced the matter, and placed in the trial courts, and in this court on review, proper responsibility to police the availability of the extraordinary equitable relief granted under the doctrine, while preserving the role that has been accorded to the jury.
Regrettably, the court today neither cabins the availability of the doctrine, nor places responsibility for determining that availability where it belongs, in the judges who created the doctrine. The court's opinion makes at most a marginal contribution to our understanding of the notion of insubstantiality as an element in analysis. It leaves unchanged the present unsatisfactory decision process, and makes little effort to effectively incorporate its newly-articulated standard into the fabric of the law. At a minimum, it might have been expected that the court would express its disapproval of general jury verdicts of infringement under the doctrine, and insist that juries at least be required to articulate, through special interrogatories, the facts and conclusions that support these verdicts.
The importance of recognizing the equitable basis of the doctrine is not simply that of historical accuracy. The public interest is at issue. When the question is enforcing rights that are specifically defined by statute, it can be assumed that the legislative enactment incorporates the proper balance between private and public, and enforcement of the declared private right is in the public interest. When the question is one of equitable relief, the public interest is a factor that must be weighed in the balance in each case. "As always when federal courts contemplate equitable relief, our holding must also take account of the public interest." U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, ___ U.S. ___, ___, 115 S.Ct. 386, 392, 130 L.Ed.2d 233 (1994).
The matter before the court in these equivalents cases is not only the claims of the parties against each other, but the interest of
This court should accept the duty imposed on us by Congress, as the exclusive appellate forum short of the Supreme Court, to bring a consistent and rationalized practice to the doctrine of equivalents. If we had done that, we would probably have found it appropriate to vacate the decision before us and remand the case to the trial court for further proceedings consistent with that opinion. If we somehow go wrong in the details of how we structure this judicial exercise of equitable power, the Supreme Court, sooner or later, will correct us. It is better that the Supreme Court tell us that we did our duty incorrectly than that we failed to do it at all.
LOURIE, Circuit Judge, with whom Circuit Judges RICH and PLAGER join, dissenting.
I respectfully dissent from the majority's disposition of this case. I do so because the trial judge did not instruct the jury concerning the doctrine of equivalents ("DOE") in accordance with our opinion today.
I agree with the majority's conclusion that more is required for application of the DOE than meeting the FWR tests. For many years the courts have been focusing on FWR as the hallmark of a DOE analysis, citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097, 85 USPQ 328 (1950). For reasons I will elaborate on below, such a test has been inadequate, leading to confusion. Moreover, Graver did not prescribe this as the test for the DOE. The Supreme Court in Graver noted that equivalence is not a "prisoner of a formula," id. at 609, 70 S.Ct. at 856, and that other factors are involved, including whether the invention was a pioneering one, whether the defendant had engaged in independent research or was an imitator, whether those skilled in the art would have known of the interchangeability of the substituted ingredients, and the substantiality of the difference(s) between the accused and patented materials.
In view of the majority's determination that something more than FWR is required
One of the reasons why the courts have exhibited so much confusion over the DOE is the near exclusive focus on FWR, and the fact that the meaning of the word "way" is so obscure. The substantiality of the differences between a patented and an accused device has often been ignored or subsumed under the "way" component. Unfortunately, however, the "way" component is often satisfied when the substantiality criterion is not. Devices that perform the same function to achieve the same result in the same way may be very different. The result is that devices which should not be accorded the benefit of the DOE because of the substantiality of their differences from what is claimed can be improperly considered to be equivalent if only FWR are considered.
The field of chemistry is one in which this problem may often arise. Ironically, Graver Tank, the case that is our template, is a chemical case. Manganese silicate, the material substituted for magnesium silicate, is obviously a chemical, and the relationship between manganese and magnesium does raise questions of chemistry. However, the claims in that case are to a composition, more like those for a mechanical invention, in which one component is substituted for another. Thus, the function and result of that substitution, and even the way in which the questioned component operates, were able to be readily evaluated.
However, much of today's chemical research, and hence invention, consists of new chemical compounds defined by structure, and having a variety of chemical substituents, or structural pieces. New chemical compounds differ structurally from old compounds (that is what makes them new) and yet they may perform the same function (have the same use), provide the same result, and do so in the same way. The fact that they do so in the same way does not make them substantially the same in the way they are defined, i.e., by structure. I emphasized this point in my concurring opinion in Genentech, Inc. v. Wellcome Foundation, 29 F.3d 1555, 31 USPQ2d 1161 (Fed.Cir.1994), in which I pointed out that a protein containing 446 amino acids could not reasonably be held to infringe a claim to a material with 527 amino acids. The difference between the materials is enormous, irrespective of FWR. One can also consider the example of the well-known analgesics aspirin and ibuprofen. These compounds have the same function (to provide analgesia, anti-inflammatory activity, and lower temperature), do so in the same way (by inhibiting prostaglandin synthesis), and give the same results (kill pain, relieve inflammation, and lower fever). Yet, they have different structures, which makes them different compounds, and no knowledgeable person would consider that a claim to aspirin would be infringed by the sale of ibuprofen.
Moreover, if, following our guidance in Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 4 USPQ2d 1737 (Fed.Cir.1987)
However, I disagree with the majority's characterization of the "substantiality" issue. The majority emphasizes that it is the added factor prescribed by the Supreme Court in Graver Tank, the others being subsumed within it, rather than being only one of the added factors. The opinion states that the substantiality of the differences factor encompasses all the others, including the FWR test, and that the fact-finder must make a determination on this issue. I agree that substantiality is paramount. I also agree with the majority that the FWR test, along with the extent and number of differences, is an element in determining the substantiality of the differences between the invention and the accused product. Clearly, if the accused and claimed inventions are very different, there can be no infringement. However, the substantiality of the differences is still only one of the factors according to Graver, arguably the most important factor, which a court should consider in deciding whether to apply the DOE.
Graver Tank indicates that these other factors include whether independent development or copying has occurred, the knowledge or lack of knowledge of those skilled in the art of the interchangeability of contested elements, and the pioneer status of the claimed invention. Given the importance of claims in informing the public of what is patented, I would also include as added factors any behavior of the patentee that impairs the ability of the public to reasonably understand from the claims what is patented. Among these could be disclosure of an unclaimed embodiment in the patent specification, thereby leading the public to believe that what is unclaimed is disclaimed, when it is that unclaimed embodiment that the patentee later seeks to hold as an infringement under the DOE. See Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562-63, 19 USPQ2d 1500, 1504 (Fed.Cir.1991). I would also consider as a factor the failure of the patentee to seek reissue of the patent to cover such embodiment if it knew of the potential infringement during the permissible statutory time period, see 35 U.S.C. § 251.
I also believe that the majority misconstrues the meaning of the factors other than the substantiality of the differences. The majority limits the significance of copying to being part of the evaluation of substantiality. It denies that intent is meaningful and states that lack of independent development is not part of the equivalence evaluation. I believe this is incorrect. The substantiality evaluation, as noted, relates only to the difference(s) between the claimed and accused items, viz., how many differences there are and how substantial they are. Whether an accused infringer has copied or has independently developed its product is a separate matter relating to what the accused did and why, rather than how close its product is to the claimed invention.
One may readily envision a spectrum consisting of copying on one extreme, independent development on the other, and designing around somewhere in between. The latter two activities are clearly praiseworthy, being consistent with the goals of the patent law. Independent development involves doing one's own work, designing one's own product rather than attempting to copy and make minor changes in a patented product. It requires significant effort, which is readily provable. Copying and designing around are
Independent development is not, as the majority states, dependent upon lack of knowledge of the patented invention. This rarely happens in a world of instantaneous public information of new developments in just about every field. Inventors who engage in independent development almost always do so with knowledge of others' inventions, but they still try to make their own inventions. This is neither copying nor designing around.
Distance from the claims of a patent (the substantiality of the differences factor) and the history and purpose of one's product development (intent) are thus not synonymous, as the majority's linking of these issues would imply. One can make many changes such that there are substantial differences between its product and the claimed invention, while essentially copying the invention, and not have engaged in independent development. Such a "copier" might be considered to have designed around and not be held to be an infringer under the doctrine. Similarly, one can independently have developed a product that differs only insubstantially from the patented product and properly be held to infringe under the doctrine of equivalents. If the Graver Tank tests of substantiality, independent development, and copying are all to have meaning, they must be considered separately, and not be compressed into one test.
While the majority states that intent, or "bad faith," is not part of the evaluation of infringement, it is part of the copying-independent development spectrum noted by the Supreme Court in Graver. One who attempts to copy another's product stands in different shoes as compared with someone who attempts to independently develop his own product, but ends up close to the claims of someone else's patent. This is surely a question of intent, and it tracks the Court's Graver analysis in considering whether to apply the doctrine to the case at hand. The whole purpose of the doctrine is to defeat piracy and to do justice to a patentee. A pirate is one who intentionally copies a patented product, making only the most minor change to avoid literal infringement. An innocent developer who unintentionally happens to come close to the claims of a patent should be treated differently. The whole tenor of Graver Tank is to make that distinction. This factor is also distinct from the question of the substantiality of the differences. Intent to misappropriate someone else's invention is the hallmark of a pirate, and intent must therefore not be excluded if a suitable judgment is to be made concerning the applicability of the DOE. Therefore, I believe it is the province of the court to balance all these factors to determine whether it is appropriate to apply the DOE under the circumstances of the case.
It may be feared that considering intent under the DOE may lead to inconsistent results as between two different defendants, one who copies and one who independently invents. This is not likely to occur. Even if there are multiple parties selling the same product, but differently situated regarding the way they came to the product, patentees who have lost against one such party are not likely to sue the other. Similarly, when an infringer has lost an equivalents case, another party is not likely to persist in its commercial activity unless it has substantially better equities, in which case it deserves a different result. Moreover, it is parties who suffer the consequences of patent infringement, not products, and it is not inappropriate for different results to follow different behavior of different parties. The fact that intent is irrelevant in a literal infringement determination should not be controlling in a DOE situation. An accused infringer who is operating outside the claims of a patent is entitled to have its behavior considered differently
The pioneer status of the invention, not mentioned by the majority, is also not relevant to the substantiality of the differences between the invention and the accused device. However, it should be part of the DOE analysis. It has no relation to the differences between the claims and the accused device, being only a question of the impact of the patented invention in relation to the prior art at the time the invention was made. It was mentioned by the Court in Graver and must be considered when relevant. To the extent that the fact-finder endows a patented invention with the status of being pioneering, the more the application of the doctrine of equivalents is justified. Pioneers should be given more scope of protection than inventors in a crowded art. Competitors must stay further away to be safe.
It may be felt that the above framework is highly complicated. However, it includes little that the Supreme Court did not outline and rely on in Graver. Moreover, it makes sense. The substantiality of the differences factor is key, but the other factors are part of our law and meaningful. If one is to hold a party operating outside the literal scope of one's claims to be an infringer, contrary to the requirements of the statute, one has to be able to make a case incorporating the various elements outlined by Graver. If the Supreme Court wishes to simplify the analysis, it is of course free to do so. We are not.
Finally, I agree with Judge Plager that applicability of the doctrine should be for the court, not the jury. A finding of infringement under the DOE should properly be viewed as:
London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538, 20 USPQ2d 1456, 1458-59 (Fed.Cir.1991). See also Coleco Indus., Inc. v. United States Int'l Trade Comm'n, 573 F.2d 1247, 1258, 197 USPQ 472, 481 (CCPA 1978) ("The doctrine is an exception to the rule that patentees are limited to what they claim and is not applied in every case.") (Rich, J., concurring). Under a proper application of these factors, the DOE should be applied only in unusual cases, to frustrate piracy. The fact-finder should principally be focused on claims, as impliedly required by 35 U.S.C. § 112. Otherwise, the meaning of the claims is diminished, contrary to the statutory scheme that a patent specification shall conclude with claims that particularly point out and distinctly claim the invention.
In making this applicability determination, the court must exercise discretion in weighing the relevant factors. This sounds like a task for a judge, an equitable determination, rather than a question for a jury. I recognize that Supreme Court case law has not reserved determination of infringement under the doctrine to the judge. Graver states that infringement is a question of fact, arguably meaning that it is triable to a jury. The Court, although not recently, has reviewed jury cases involving the doctrine and seemingly endorsed leaving its application to the jury. See Royer v. Schultz Belting Co., 135 U.S. 319, 325, 10 S.Ct. 833, 835, 34 L.Ed. 214 (1890); Winans v. Denmead, 56 U.S. (15 How.) 330, 14 L.Ed. 717 (1854).
However, the Court has not ruled in modern times, under our current practice of relying on statutory claims, as to whether the question of the applicability of the doctrine, with all the factors it outlined, must be tried to a jury when properly requested. Graver, the Court's most recent pronouncement on
I consider that the DOE is an equitable remedy for the judge to decide whether to apply, or not to apply, perhaps after the jury has made factual findings as to all the relevant factors which the Graver opinion outlines.
I would vacate the judgment of the district court and remand for a reevaluation of the question of infringement under the doctrine of equivalents consistent with the above analysis.
NIES, Circuit Judge, dissenting, with whom ARCHER, Chief Judge, joins Part IV, Sections C2-4, D, and E.
I dissent. I concur in Judge Plager's dissent on the issue of infringement to the extent of his eloquent statement of the problem. However, I conclude that the determination of infringement under the "Doctrine of Equivalents," as articulated in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097, 85 USPQ 328 (1950) (Graver II), and prior Supreme Court precedent presents a series of questions of law, fact, and mixed law and fact. The meaning of the words in the claim must be defined by the court, a question of law. Also, the scope of protection which may be given the claim beyond its words is a question of law. In addition, the accused product or process must meet the limitations of the claim as defined by the court either literally or by equivalent means or steps, questions of fact.
Even though the ultimate finding of infringement is one of fact, once the words of the claim are interpreted and the elements of the accused product or process have been determined, "the correct application of the rule of equivalency" resolves itself into a question of law, whether trial is to the bench, Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 36, 50 S.Ct. 9, 10-11, 74 L.Ed. 147 (1929), or to the jury, Singer Co. v. Cramer, 192 U.S. 265, 275, 24 S.Ct. 291, 295, 48 L.Ed. 437 (1904). In this jury trial, the district court erred in denying the defendant's motion to direct a verdict in its favor. No infringement can be found as a matter of law upon a correct application of the doctrine of equivalents.
This appeal raises the basic question of a right to a jury trial on the issue of patent validity, which cries out for resolution. But, assuming that the jury has the role of resolving underlying factual issues, the district court's instructions to the jury were defective. The district court invited guidance from this court on how to use a jury in a patent case. We have not accepted the plea. The entire case, not merely the issue of infringement, was taken in banc.
Both Warner-Jenkinson and Hilton Davis manufacture dyes known as FD & C Red # 40 and FD & C Yellow # 6 which are used as colorants principally in foods, drugs, and cosmetics. The '746 patent claims a process for preparing dyes by subjecting their aqueous reaction mixtures to ultrafiltration under conditions that cause impurities to separate from the reaction mixture, yielding a high purity dye product.
Claim 1 is in Jepson format.
A third party, Osmonics, Inc., was known to specialize in the development of membranes and equipment for fluid purification by ultrafiltration. On July 9, 1982, Dr. Solter, then manager of research and development for the defendant, Warner-Jenkinson, instructed his engineering manager to contact Osmonics and have Osmonics process two of their dye preparations, including FD & C Red # 40. Osmonics performed the tests on August 17, 18, and 19, 1982, using its standard ultrafiltration process with various standard Osmonics membranes it selected as appropriate for the size of the molecules to be filtered. Osmonics' standard membranes had a pore size range of 4 Angstroms to 20 Angstroms, a pH range of from 2 to 8½ or 9, and a pressure range of 100 p.s.i.g. to 800 p.s.i.g. Despite successful indications, Warner-Jenkinson did not immediately continue with the project for FD & C Red # 40, but worked on other dyes not covered by the claims. Some years later after work on improvement of the Red # 40 dye chemistry for filtration purposes, after investigating various vendors of ultrafiltration equipment, Warner-Jenkinson went forward with commercial use of the process, utilizing Osmonics equipment. Such equipment was installed in February 1986 and Warner-Jenkinson was in commercial production, prior to being charged with infringement.
In 1982, Hilton Davis, like Warner-Jenkinson, also decided to investigate a substitute for the salting out process and hired Dr. Wayne Cook to head the project. Neither Dr. Cook, nor anyone else on the Hilton Davis project, was knowledgeable in filtration techniques. Dr. Rebhahn suggested dialysis techniques be used and disclosed the location of an old unused Osmonics device which Hilton Davis had on hand. Dr. Cook then called Osmonics to see if Osmonics could solve his problem. Upon receiving a favorable reply, and just after Warner-Jenkinson contacted Osmonics, Dr. Cook hired Osmonics to test Hilton Davis' Red # 40 dye solutions. Osmonics did not use dialysis,
On the basis of the test results, Hilton Davis filed a patent application in the names of Drs. Cook and Rebhahn on March 28, 1983, covering the ultrafiltration process for certain dyes. In response to rejections, in November 1984, a second (CIP) application was filed, changing various process parameters. After further amendments to overcome
In mid-October 1986, Warner-Jenkinson learned of the '746 patent through a reference to it in technical literature. It was unaware before then that Hilton Davis had developed a process similar to the one Warner-Jenkinson was using. On October 12, 1987, Warner-Jenkinson obtained an opinion of patent counsel: (1) that the patent was invalid for obviousness in view of a prior publication of ultrafiltration processes by Osmonics; and (2) that Warner-Jenkinson's process, which was conducted under process limitations outside the ranges set forth in the '746 claims, did not infringe literally or under the doctrine of equivalents.
Sometime later Hilton Davis tested a sample of Warner-Jenkinson's dye and, upon analysis, concluded that it appeared to be prepared by ultrafiltration. It is not possible to tell from the dye what process was used. Representatives of Hilton Davis and Warner-Jenkinson happened to meet in December of 1989, at which time Hilton Davis indicated that it might bring suit against Warner-Jenkinson on the '746 patent. Warner-Jenkinson denied infringement. Without further communication, Hilton Davis brought the instant suit a year later on April 1, 1991.
Trial was to a jury. Warner-Jenkinson defended on the ground of noninfringement and various grounds of invalidity. Throughout the trial, by summary judgment and JMOL motions and by objection to the court's instructions, Warner-Jenkinson urged that the issue of infringement under the doctrine of equivalents should not be submitted to the jury but on the record had to be decided by the court in its favor as a matter of law and/or equity. Respecting validity, Warner-Jenkinson also objected to giving the jury special verdicts requiring answers to ultimate legal issues. It lodged formal objections against the court's instructions which required the jury to decide, for example, obviousness. The court overruled Warner-Jenkinson's various objections to its proposed instructions and sent the case to the jury for answers to nine special verdicts covering the issues of obviousness, inventorship, best mode, willfulness, damages and infringement under the doctrine of equivalents. The jury returned verdicts in favor of Hilton Davis on Warner-Jenkinson's defenses. The jury further found the infringement was not willful and awarded $3,546,705 on Hilton Davis's claim. The district court entered judgment in accordance with the verdicts, denying Warner-Jenkinson's renewed motion for judgment as a matter of law (JMOL). A final judgment awarding damages and a permanent injunction were entered. Warner-Jenkinson appeals both validity and infringement issues. Hilton Davis did not appeal.
STANDARD OF REVIEW
To overturn a jury verdict on an ultimate issue of fact, the party against whom the verdict was rendered must satisfy either prong of the following test:
Markman v. Westview Instruments, Inc., 52 F.3d 967, 975-76, 34 USPQ2d 1321, 1326 (Fed.Cir.1995) (in banc); Read Corp. v. Portec, Inc., 970 F.2d 816, 821, 23 USPQ2d 1426, 1431 (Fed.Cir.1992); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 618-619, 225 USPQ 634, 636 (Fed.Cir.), cert. dismissed, 474 U.S. 976, 106 S.Ct. 340, 88 L.Ed.2d 326 (1985); Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1513, 220 USPQ 929, 936 (Fed.Cir.), cert. denied, 469 U.S. 871, 105 S.Ct. 220, 83 L.Ed.2d 150 (1984).
The "substantial evidence" standard of the first prong raises the question whether the jury's resolution of a factual dispute was reasonable. See Dana Corp. v. IPC Ltd. Partnership, 860 F.2d 415, 417, 8 USPQ2d 1692, 1694 (Fed.Cir.1988), cert. denied, 490 U.S. 1067, 109 S.Ct. 2068, 104 L.Ed.2d 633 (1989). In determining reasonableness, the trial court cannot assess the weight of conflicting evidence, pass on the credibility of
The second prong of the JMOL standard requires the court to apply the correct legal standard for liability to the established and undisputed facts. The movant must convince the court that the proper legal standard, as applied to that set of facts, does not support the verdict as a matter of law. Boyle v. United Technologies Corp., 487 U.S. 500, 513-14, 108 S.Ct. 2510, 2519, 101 L.Ed.2d 442 (1988) (citing St. Louis v. Praprotnik, 485 U.S. 112, 118-120, 108 S.Ct. 915, 921-22, 99 L.Ed.2d 107 (1988) (plurality opinion)); Ebker v. Tan Jay Int'l Ltd., 739 F.2d 812, 825-26 n. 17 (2d Cir.1984) (Friendly, J.); and 9 C. Wright & A. Miller, Federal Practice and Procedure § 2537, pp. 599-600 (1971); Structural Rubber Prod. v. Park Rubber Co., 749 F.2d 707, 717, 223 USPQ 1264, 1271-72 (Fed. Cir.1984); Dana Corp. 860 F.2d at 417-18, 8 USPQ2d at 1694-95. On appeal, to determine the correctness of the district court's ruling on JMOL, the appellate court applies the JMOL standard anew to the issues presented by the appeal. Read Corp., 970 F.2d at 821, 23 USPQ2d at 1431. See also, Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 762, 9 USPQ2d 1417, 1421 (Fed.Cir.1988), cert. denied, 493 U.S. 814, 110 S.Ct. 62, 107 L.Ed.2d 30 (1989).
Where an ultimate issue of law based on underlying disputed facts, e.g. obviousness of a patent, is submitted to a jury, our precedent holds that the same standard applies. Jurgens v. McKasy, 927 F.2d 1552, 1557, 18 USPQ2d 1031, 1035 (Fed.Cir.1991).
I dissent from the assignment of the issue of validity to a panel for decision. The Supreme Court has clearly stated that between infringement and validity, "validity has the greater public importance." Cardinal Chemical Co. v. Morton Int'l, Inc., ___ U.S. ___, ___, 113 S.Ct. 1967, 1977, 124 L.Ed.2d 1, 26 USPQ2d, 1721, 1729 (1993); Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 330, 65 S.Ct. 1143, 1145, 89 L.Ed. 1644 (1945). In my view, the in banc court should resolve the important issues raised herein respecting the trial of validity issues before a jury. Our precedent is unclear, if not conflicting.
A. Right to a Jury Trial
The defendant Warner-Jenkinson raised the defense of invalidity of the '746 patent on various statutory grounds. Over the objection of Warner-Jenkinson, these issues were submitted by "special verdicts" to the jury with general instructions on the law applicable to the legal questions. The jury returned with verdicts inter alia that claims 1, 2, 3, 13, and 14 were not proved invalid on any of the asserted grounds, namely (1) that the claimed invention would not have been obvious within the meaning of § 103; (2) that employees of Osmonics, rather than the named inventors, Drs. Cook and Rebhahn, invented all or a portion of the claimed invention (see § 102); and (3) that the inventors did not violate § 112 by failing to disclose a better mode of carrying out the invention than that set forth in the specification of the patent. Each of these issues is one of law, not fact, although based, of course, on underlying facts. The trial court denied Warner-Jenkinson's renewed motion for JMOL on these issues.
The right to a jury trial on validity is critical to determining trial procedures and the standard for appellate review. Prior to the creation of this court, the other circuits were in conflict on the issue of how to treat the ultimate question of obviousness. Some circuits considered obviousness a question of law for the court. Julie Research Lab., Inc. v. Guildline Instruments, Inc., 501 F.2d 1131, 1135-36, 183 USPQ 1, 4-5 (2nd Cir. 1974) ("The ultimate decision of invalidity/validity for obviousness/nonobviousness is one law."); Blohm & Voss AG v. Prudential-Grace Lines, Inc., 489 F.2d 231, 245, 180 USPQ 165, 176 (4th Cir.1973) ("Thus, we come to the ultimate legal question of validity, and it is clear that it is, in the final analysis, a question of law."), cert. denied, 419 U.S. 840, 95 S.Ct. 70, 42 L.Ed.2d 67 (1974); Dual Mfg. & Eng'g v. Burris Indus., Inc., 619 F.2d 660, 662-663, 205 USPQ 1157, 1160-1161 (7th Cir.) (in banc) (obviousness is a question of law), cert. denied, 449 U.S. 870, 101 S.Ct. 208, 66 L.Ed.2d 90 (1980). At least one circuit disagreed, concluding that obviousness presented a question of fact. Plastic Container Corp. v. Continental Plastics of Oklahoma, 708 F.2d 1554, 1558, 219 USPQ 26, 29 (10th Cir.1983) ("The Tenth Circuit treats the ultimate issue of obviousness as a question of fact subject to the `clearly erroneous' standard of review.").
In the Ninth Circuit, a slightly different practice evolved. There, district courts were permitted to give the issue of obviousness (a question of law) to the jury, but only for an advisory verdict. Garter-Bare Co. v. Munsingwear Inc., 723 F.2d 707, 710-711, 221 USPQ 751, 753 (9th Cir.) (court, in accepting jury verdict as advisory only, acted within its right in exercising duty to determine obviousness as a matter of law), cert. denied, 469 U.S. 980, 105 S.Ct. 381, 83 L.Ed.2d 316 (1984); Automation Electronics Corp. v. Sanders Instruments, Inc., 704 F.2d 1133, 1134, 218 USPQ 200, 201 (9th Cir.1983) ("Although the issue [of obviousness] may be submitted to the jury for a non-binding advisory opinion, it is the trial court's responsibility to make the final determination independent of the jury's recommendation.").
This court recently held in Lockwood, supra, that the issue of validity of a patent must be given to the jury as a matter of constitutional right.
B. Jury Instructions
Even following the Lockwood precedent that a jury decides the facts underlying questions of validity, I would hold that the instructions on validity in this case are fatally defective to achieve that purpose.
As an initial matter, the first step in determining validity or infringement is to interpret the claims in issue. Lemelson v. General Mills, Inc., 968 F.2d 1202, 1206, 23 USPQ2d 1284, 1287 (Fed.Cir.1992), cert. denied, ___ U.S. ___, 113 S.Ct. 976, 122 L.Ed.2d 131 (1993). Furthermore, claims must have the same meaning and scope for both purposes. Intervet America, Inc. v. Kee-Vet Lab. Inc., 887 F.2d 1050, 1053, 12 USPQ2d 1474, 1476 (1989); SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1471 (Fed. Cir.1988); W.L. Gore & Associates, Inc. v. Garlock, Inc., 842 F.2d 1275, 1279, 6 USPQ2d 1277, 1280 (Fed.Cir.1988). We have recently held as an in banc court that the district court must interpret the claims in its instructions to the jury. Markman v. Westview, 52 F.3d 967, 981-982, 34 USPQ2d 1321, 1331 (Fed.Cir.1995) ("the trial court ... should have instructed the jury as to the meaning of the claims"). The district court did not do so here. Under Markman, the error of a trial judge in failing to so instruct the jury was rendered harmless by that court's ruling on JMOL. Id. The same is not true here. Further, the district court ruled that an opinion of an "expert" on the meaning of the claim is fact evidence to be "weighed" by the jury in making their interpretation. Under Markman, such treatment of opinion testimony is improper by judge or jury. Id. at 983, 34 USPQ2d at 1332-33. The district court gave the following instruction to the jury:
This is an abdication of the court's responsibility. Without knowing the meaning given to the claim language by the jury, the correctness of a validity or infringement verdict cannot be meaningfully reviewed. The jury may simply have misconstrued the claim, for example, determining where pressure must be measured.
The special verdicts requested from the jury were not fact verdicts under Rule 49(a) of the Federal Rules of Civil Procedure.
The district court here gave instructions which treated the validity issues as ultimate facts. For example, the court instructed:
I would hold that instruction to be plain error. The issue of obviousness is a conclusion drawn after facts are established. Resolution of the facts merely brings one to the legal question, not its answer, which is a judgment call. Newell Co. v. Kenney Mfg. Co., 864 F.2d 757, 762, 9 USPQ2d 1417, 1421 (Fed.Cir.1988) ("[W]here the only issue is, as
The entirety of the instruction on obviousness appears as an Appendix to this section. The instructions refer to a number of difficult concepts without tying them to any factual dispute or evidence in this case. The jury was literally put to sea without navigational aid. It was repeatedly told it was the judge of the obviousness of the invention. As an example, I quote one paragraph, which in the context of the entirety of the instructions carries the same or greater force:
The instructions on obviousness could only have been gibberish to a lay jury. The instructions did not tell the jury what fact issues, if any, were in dispute which the jury must decide. An appellate court cannot provide proper appellate review on the basis of such general instructions. See Roberts, 723 F.2d at 1341, 221 USPQ at 519 (requiring instructions setting forth mandatory alternative verdicts).
These examples are sufficient to show that the instructions and special verdicts on validity issues in this case are fatally flawed. The ultimate decision on the validity of a patent should not be thrown into the black box of a jury to be reviewed under the substantial evidence standard. Structural Rubber, 749 F.2d at 718, 223 USPQ at 1272.
Roberts, 723 F.2d at 1341, 221 USPQ at 519. Here, there were no such instructions given. Meaningful review where there are material issues of fact is impossible. Structural Rubber, 749 F.2d at 723, 223 USPQ at 1276. Such error can be corrected only by a new trial. From the instructions in this case, it cannot be determined whether the jury decided against the defendant on the factual issues or the legal issues.
The trial court's ruling on the JMOL motion compounds the problem by its legally erroneous interpretation of the claim. The judge repeatedly stated that the inventors conceived a special process which skipped the salting out process and produced FDA certified quality dye, and determined obviousness on that basis. The claims do not require skipping the salting out step or producing FDA certifiable dye. Thus, the court's basis for distinguishing over the prior art is legally erroneous. Further, the court itself considered as evidence and relied on the legal
The judgment that the '746 patent was not invalid cannot stand. Regardless of what conclusion one might reach on the merits of the hotly contested issue of validity, particularly obviousness in view of Osmonics' work and publications before testing for either party, the more important question is: Was this issue properly tried? I dissent to the denial of in banc to resolve the jury trial issues raised by this appeal.
APPENDIX TO VALIDITY
Jury Instructions On Obviousness in this Case
A patent granted by the Patent and Trademark Office is invalid if the claimed subject matter as a whole would have been obvious to a person of ordinary skill in the pertinent art at the time the patented invention was made. Patentability shall not be negatived by the manner in which the invention was made.
In determining obviousness of the claimed subject matter of each of the claims of the patent in suit, the following steps should be taken by you: One, you should determine the scope and content of the prior art relied upon against the patent in suit. Two, you should then identify the difference, if any, between each claim of the patent in suit and the prior art. And three, you should determine the level of ordinary skill in the pertinent art at the time the invention of the patent in suit was made.
You must make each of the determinations as to [sic] of the time the Hilton Davis invention was made.
You should consider such secondary considerations as commercial success, long-felt but unresolved need, failure of others to solve the problem and acquiescence in the patent by others.
The defendant Warner-Jenkinson must prove invalidity because of obviousness by clear and convincing legal evidence.
During the course of this trial you have heard the term "prior art" used frequently. One of Warner-Jenkinson's assertions in this case is that there were certain prior public disclosures which constitute prior art within the meaning of the law. The term "prior art" includes that which was: One, known or used by others in this country before the date of invention by inventor; or
Two, patented or described in a printed publication in this or a foreign country before the date of invention; or
Three, patented or described in a printed publication in this or a foreign country for more than one year prior to the date of the application herein; or
Four, publicly used or on sale in this country more than one year prior to the date of the application therefor; or
Five, made or built by another person before the date of the invention where the thing made or built was not abandoned, suppressed or concealed.
The scope of the prior art is defined as that reasonably pertinent to the particular problem with which the inventor was involved.
I previously instructed you that when the United States Patent Office grants a patent it is presumed that the patent examiner is correct. If a patent challenger contends that a patent is invalid but relies only upon the same prior art that the examiner considered in granting the patent, he asserts that the examiner was wrong, and the presumption requires that he prove this by clear and convincing legal evidence.
If the patent challenger relies only on prior art, which is not more pertinent or relevant than the art considered by the examiner, then such challenger must also prove
If the patent challenger relies upon prior art which was not considered by the examiner, and which is more pertinent than that which was considered, then invalidity must still be proved by clear and convincing legal evidence, however, the patent challenger may have an easier time doing so.
In determining whether or not the claims of the patent in suit would have been obvious at the time, it is not necessary that there be absolute predictability of the result. It is only required that there be a reasonable probability the beneficial result will be achieved to show obviousness.
In reaching your determination on the issue of obviousness, you should consider whether the subject matter of the invention was also developed independently by other persons either before the alleged inventors of the patent in suit or about the same time.
It is fundamental in patent law that one who applies a known process to a known chemical does not thereby invent an unobvious patentable process unless it produces a different or an unexpected result over the prior art. If you find that defendant Warner-Jenkinson has proved by clear and convincing legal evidence that the process contained in the patent was an existing process, that plaintiff simply applied it to an existing chemical for ultrafiltration, and that the process failed to produce a different or unexpected result over the prior art, then you must find that the patented process is obvious and that the plaintiff's patent claims are invalid.
There have been frequent references to a person having ordinary skill in the art. Such a person is only hypothetical. It is that person who is presumed to be aware of all the pertinent prior art. The actual inventor's skill is irrelevant to the inquiry. A person of ordinary skill in the art is also presumed to be one who thinks along the line of conventional wisdom in the art.
To reach a proper conclusion, you must step backward in time and into the shoes worn by that hypothetical person when the invention was unknown and just before it was made. You must then determine, in light of all the legal evidence, whether the patent challenger has convincingly established that the claimed invention as a whole would have been obvious at the time to that hypothetical person.
You are also to determine the level of ordinary skill in the art to which the claimed invention pertains at the time the claimed invention was made. Factors to be considered in determining the level of ordinary skill in the pertinent art are: The educational level and years of experience of the person or persons who you find to have developed the processes that are the subject of this case and of others working in the pertinent art, the types of problems encountered in the art, the teachings of the prior art, patents, and publications of other persons or companies, and the sophistication of the technology.
One of the considerations of obviousness is the difference between the pertinent prior art and the claims of the Hilton Davis patent. You must consider the claimed invention as a whole.
The differences may seem slight, but it may also have been the key to success and advancement in the art resulting from the invention.
Instructions in early jury trials were directed to the particular case, not to legal abstractions. See, e.g., Coupe v. Royer, 155 U.S. 565, 570-573, 15 S.Ct. 199, 201-03, 39 L.Ed. 263 (1895); Johnson v. Root, 13 Fed. Cas. 823 (Cir.Ct.D.Mass.1858); Serrell v. Collins, 21 Fed.Cas. 1085 (Cir.Ct.S.D.N.Y.1857); Page v. Ferry, 18 Fed.Cas. 979 (Cir.Ct. E.D.Mich.1857).
A. Equivalents Under the Patent Act of 1952
"When all else fails, read the statute." One cannot improve on this advice from a law school professor, now long deceased. The only reference to equivalents in the Patent
If a patentee chooses to draft a claim in other form, it is reasonable to conclude Congress intended that the patentee should be bound by the literal language of the claim. In view of the liberality in current claiming practice, the need for the doctrine of equivalents because of difficulties in drafting claims to cover an invention in all possible forms is a rare case. If the invention can be claimed under § 112, ¶ 6, it should be so claimed so as to give notice that the inventor claims equivalents.
In addition, the application of the doctrine of equivalents to a specific claim is suspect because of the statutory requirements enacted in 1952 for obtaining a broadened reissuance of a patent, which were much stricter than under prior statutes. Section 251 provides that a patentee seeking to broaden the claims of its patent must file for reissue within two years of the patent's issuance. Moreover, under § 252, the period of protection is prospective only for the balance of the original term, not retroactive to the date of issuance of the patent, with respect to activities which do not infringe a claim in the original patent. Competitors are, thus, protected from liability for damages for infringement of claims broadened on reissue by provisions recognizing their "intervening rights." P.J. Federico, Intervening Rights in Patent Reissues, 30 Geo.Wash.L.Rev. 603-637 (1961-62) (discussing intervening rights generally). This rational balanced system provided by Congress is undermined by the judicially created doctrine of equivalents. To draw a parallel to reissue, the asserted claims of the '746 patent must be broadened to capture the accused process here; these claims are broadened more than two years after issuance of that patent; and no intervening rights are provided for the innocent user of the broadened claims.
The patentee is much better off evading the reissue procedure which Congress has provided, and resorting to its counterpart, the doctrine of equivalents, created out of the judiciary's sense of "fairness." If we are to persist in an extra-statutory remedy, it should be as fair to both sides as that provided in the statute.
Prior to the current statute, the judiciary created broadened reissues of a patent extrastatutorily as a matter of fairness to patentees, Miller v. Brass Co., 104 U.S. 350, 354, 26 L.Ed. 783 (1881), and later had to create the doctrine of intervening rights in fairness to infringers who had no notice in the time period between issuance and reissuance that their conduct would be held infringing. Sontag Chain Stores Co. v. Nat'l Nut Co., 310 U.S. 281, 293-294, 60 S.Ct. 961, 967, 84 L.Ed. 1204 (1940). Congress then amended the statute in 1952 to incorporate both "fairness" parts for broadened reissues.
Today, the doctrine of equivalents is as unfair as broadened reissues of a patent without intervening rights. Having created an extension of protection of a claim by the doctrine of equivalents, the judiciary should take it upon itself to establish intervening rights similar to those for claims changed on reissue. The absence of intervening rights has not been frozen statutorily. The doctrine is not in the current statute at all
B. Infringement By Equivalents Under Graver II
Inasmuch as I stand alone in advocating a straightforward interpretation of the current statute, I must accept, as I have in the past, that the doctrine of equivalents as enunciated in Graver II, continues to be viable. However, the Graver II doctrine was, in any event, misapplied in this case.
The jury was instructed:
The district court entered judgment on the jury's verdict of infringement and denied a JMOL motion. The majority approves the instructions as the sum and substance of the doctrine of equivalents, relying on closing argument of counsel to flesh them out to include the test it adopts of limiting infringement to "insubstantial" changes, a test not in the instructions. Nothing can save these instructions, least of all attorney argument. If nothing else, the district court told the jury that it must apply the law as stated in the court's instructions.
The doctrine of equivalents is a much more complex concept than that set out in the jury instructions or in the majority opinion. The doctrine is comparable to the concept of determining
The majority's analysis of infringement under the doctrine of equivalent does not "restate" the Supreme Court standard. The majority in banc has "revised" the doctrine to eliminate the legal safeguards that Supreme Court precedent had built into the doctrine's application to protect the public from unknowable infringement as here. Securing rewards to patentees may not override due process. Yet, the public's right to reasonable notice of prohibited conduct surfaces nowhere in the majority opinion. Contrary to the majority, the Supreme Court placed clear limitations on the legal scope of protection of a claim under the doctrine. As now defined by this court, a doctrine which rests on fairness has been made wholly arbitrary. The majority holds, first, that a patent inherently covers equivalents of the product or process regardless of how the invention is described in the specification or claim and, second, that infringement depends on finding as a fact that the changes in the accused product or process are "insubstantial."
From a review of Supreme Court precedent covering the doctrine under the predecessor statute, the determination of the scope of protection involves a judgment call by the district court that the words of the claim should or should not be controlling. The scope of a claim may be broader or narrower or the same as the words of a claim. But the scope can never be broader than the invention. That decision is, as Judges Plager and Lourie state, based in part on the equities but, in the past, the conclusion was not only made by the judge in equity but also at law. But whether made at law or in equity, the ultimate conclusion that the doctrine applies to a set of established facts has been subject to plenary review on appeal, as in Graver II.
Applying these principles to the present case, the district court erred in not determining the meaning and scope of the claim in suit. The question of scope is whether one of skill in the art would understand that a specific element of the claim is not the only means that may be used in the claimed invention. The answer depends on the nature of the invention, the claim language, the description of the invention in the specification, other claims in the patent, the arguments and amendments made during prosecution, the obviousness of the change, the prior art, the alleged infringer's own conduct, and any other circumstances from which notice that the literal words of the claim are not meant to control might be inferred. In addition to the court's determination of the range of equivalent components, the fact question of equivalency carries restrictions: (1) the doctrine of equivalents may not be used to enlarge a claim; infringement requires that every limitation of a claim must be met by at least an equivalent substituent in the accused product or process; (2) legal equivalency of a substituent is established by the knowledge in the art at the time the patent is issued; and (3) the substituent must perform essentially the same function as the element which it replaces so that overall the accused product or process and the claimed invention can be said to operate by substantially the same means to achieve the same or substantially the same result. These restrictions must be part of the jury instructions.
The majority entirely omits the step of determining whether, as a matter of law, an element of the claim extends to equivalents, a requirement of the Supreme Court after 1870. It contorts the doctrine to overall equivalency to the claimed invention and further states that equivalency is found as of the time of the infringement. "Known" equivalency
Prior Federal Circuit precedent has taken a generous view of the doctrine, making infringement by equivalents the automatic second step when literal infringement is not proved, as the majority reaffirms today.
C. Historical Perspective
What is the "Doctrine of Equivalents"? What makes the doctrine so contentious? Simply stated, despite the statutory provisions that define infringement as the unauthorized making, using, or selling of a patented invention (35 U.S.C. § 271), and that require the inventor to "particularly point out and distinctly claim the subject matter which the applicant regards as his invention" (§ 112, ¶ 2), infringement may or may not be restricted under our jurisprudence to what the inventor sets out in the claims which define his invention. But with the extension of the legal protection for a patented invention beyond the literal words of the claims, the public's right to notice of what conduct is forbidden by a patent is compromised. How to balance these conflicting interests under the current statute and Patent Office procedures is a question the Supreme Court has not addressed.
1. Origin of the Doctrine
A review of the origins of the doctrine of equivalents is not merely interesting "filler" in this opinion. A prior decision respecting the doctrine of equivalents cannot be properly understood if the decision is divorced from the statutory and judicially imposed requirements for claim specificity, from examination procedures in the Patent Office applicable at the time to the patent in issue, and from the legal terminology of the period.
No mention of "claims" appears in the Act of 1790 or Act of Feb. 21, 1793, Ch. 11, 1 Stat. 318, and there was no procedure for administrative examination to determine patentability of an invention. Under these statutes, the invention merely had to be described so as to "distinguish [it from] other things before known" and "in the case of a machine [to explain] the principle by which it may be distinguished from other inventions." See Karl B. Lutz, Evolution of the Claims of U.S. Patents, 20 J.Pat.Off.Soc'y 134 (Feb. 1938), 20 J.Pat.Off.Soc'y 377 (Apr.1938), 20 J.Pat.Off.Soc'y 457 (May 1938). One who used the "essence" of the invention was an infringer. See Odiorne v. Winkley, (No. 10,432) 18 F.Cas. 581 (C.C.Mass., 1814).
Recognizing that the public should be informed by the patent document itself as to
In response to such judicial direction, the requirement for a claim to an invention first appeared in the Act of 1836. However, as interpreted by the Supreme Court, a claim under the 1836 Act did not limit the scope of protection.
The "well settled" principle of law there stated was not only a test for determining whether an accused device was an infringement, but also a test for determining whether a patent was valid. Indeed, the doctrine of equivalents originated as a test for patentability. If the patented invention substituted a known equivalent for an element in a known process or product, merely varied the shape of a known product, or made other immaterial variations, the alleged invention was held to lack "invention", being "anticipated".
The conflict over the legitimacy of the doctrine as a test for infringement first surfaced in Winans v. Denmead, 56 U.S. (15 How.) 330, 14 L.Ed. 717 (1853), a 5-4 decision of the Supreme Court. The split in Winans was prompted by the Justices' differing interpretations of the statutory requirement that a claim to an invention be made in a patent. The claim of the Winans patent was directed to coal cars which were
Id. at 342-43, 14 L.Ed. 717 (emphasis added).
Four Justices, in vigorous dissent, voiced a contrary view of the effect of the statutory claim requirement:
Id. at 347, 14 L.Ed. 717.
The divergent views of the Justices in Winans are reiterated in the majority and dissenting opinions in Graver II, almost a hundred years later. The century-old debate over the function of patent claims has become crystallized under the rubrics of "central" claiming and "peripheral" claiming. As explained in Ellis, supra note 14, at § 4:
The majority in Winans endorsed central claiming, subordinating the claim to the fuller description and the drawings of the invention contained in other parts of the patent. As under earlier statutes, one infringed the material parts of the invention "as described" in the specification. A claim was treated essentially as a preferred embodiment of the invention. It continued to be left to the courts to sift through the entirety of the patent description to determine what were the material elements embodying the "principle" or "essence" of the invention for both validity and infringement purposes.
The amendment of the patent statute by the Act of 1870,
This view represented a clear departure from earlier case law. The courts were relieved by the "distinct" claiming requirement of the 1870 Act from sorting out "material" elements of an invention. Henceforth, that was done by what the inventor specified in the claims. All elements of a claim are "essential" or "material." This development coincided with the development of substantive examination of patent applications by a corps of technical examiners in the Patent Office. The claim language became the focus of examination. As held in Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 278-79, 24 L.Ed. 344 (1877):
See also White v. Dunbar, 119 U.S. 47, 50-52, 7 S.Ct. 72, 74-75, 30 L.Ed. 303 (1886) (claim may not be enlarged by the "objective of the invention"); James v. Campbell, 104 U.S. 356, 370, 26 L.Ed. 786 (1881).
In addition to the requirement of distinct claims, the Act of 1870 changed the way patent cases were thereafter tried. Jury trials virtually disappeared, not to be seen again in any numbers for over a century, indeed, until the creation of this court.
Another development which was to have a profound effect on patent jurisprudence was the creation of the Circuit Courts of Appeal in 1890. These courts became effectively the final arbiters in patent cases with the Supreme Court intervening generally only where the circuits were in conflict on the validity or infringement of a particular patent. See e.g., Sanitary Refrigerator, 280 U.S. at 36, 50 S.Ct. at 10-11. As is well known, conflict in patent law developed and persisted among the circuits.
When these developments occurred at the end of the 19th century, distinct claiming was in its infancy and the concept was not clearly understood. Some courts embraced peripheral claiming in its most rigid literalism. Infringement was limited to the literal language of the claim so that, absent claim language which brought in equivalent components, no equivalency infringement was recognized. Typical are the statements in Fulton Co. v. Powers Regulator Co., 263 F. 578, 580-81 (2d Cir.1920) (citation omitted):
and in Goodrich v. Ford Motor Co., 97 F.2d 427, 430-31 (6th Cir.1938):
For a review of the few cases where infringement by equivalents was found, see Ellis, supra note 14 at §§ 49-61.
It is important to keep in mind that the claiming concept was being developed by equity judges. Equity courts had full power to interpret and construe documents or even reform them in the interests of "equity." An equity judge with a bent for liberal protection for particular important inventions felt free to go behind the literal letter of the document to examine the overall equities between
The Supreme Court decisions after the 1870 Act continued to apply a doctrine of equivalents test for infringement but in a restrained form. The principle of Winans that a claim covered other forms of the invention as a matter of law whether or not the patentee added an express declaration to that effect was no longer followed. The Court required language in the claim or at least in the specification which indicated that the claim should be interpreted or construed to cover equivalents.
This restrictive view is articulated in McClain v. Ortmayer, 141 U.S. 419, 425, 12 S.Ct. 76, 78, 35 L.Ed. 800 (1891), where the Court states:
The Court treated "pioneer" inventions more generously. A typical claim during the latter part of the 19th century literally incorporated the specification into the claim and a typical question was whether the scope of protection should be limited to the structure disclosed in the specification. In Sessions v. Romadka, 145 U.S. 29, 31, 12 S.Ct. 799, 799-800, 36 L.Ed. 609 (1892), the claim at issue read:
The letter references are to parts set out in the specification. In reversing on the issue of infringement, the Court stated:
Id. at 45, 12 S.Ct. at 803. Because of the pioneer nature of the invention, the Court concluded that the claim should not be limited by the letter references back to the specification. But see Lehigh Valley R. Co. v. Kearney, 158 U.S. 461, 469, 15 S.Ct. 871, 874, 39 L.Ed. 1055 (1895) (contra where the invention was merely an improvement).
The above cases illustrate the critical point. The scope of protection, whether liberal or narrow, was treated as a separate question from the fact of equivalency. Under the Act of 1870, the Court continued to hold that the construction of a patent claim was an issue of law for the court alone, not the jury. Market St. Cable Ry. Co. v. Rowley, 155 U.S. 621, 625, 15 S.Ct. 224, 226, 39 L.Ed. 284 (1895). The Court instructed the jury on the scope of the invention. Coupe, 155 U.S. at 579-80, 15 S.Ct. at 205. See also Singer Co., 192 U.S. at 275, 24 S.Ct. at 292; Heald v. Rice, 104 U.S. 737, 749, 26 L.Ed. 910 (1882).
In holding that the doctrine was not restricted to pioneer inventions, the Court reiterated in Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 414, 28 S.Ct. 748, 749, 52 L.Ed. 1122 (1908), that the
See also Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 569, 18 S.Ct. 707, 723, 42 L.Ed. 1136 (1898) (Court analyzing effect of claim language referring back to specification); Sanitary Refrigerator, 280 U.S. at 36, 50 S.Ct. at 11 ("Both Circuit Courts of Appeal recognized that the [patent in suit] had some range of equivalents."); Singer Co., 192 U.S. at 285, 24 S.Ct. at 299 (Court "determined proper construction" and denied "broadening of the scope of the invention" beyond express limitations).
Under the foregoing precedent, infringement depended not only on the interpretation of the words of the claims, but also upon the court's determination that the literal words of the claim should or should not control. Thus, the court determined both the meaning and scope of the claim. My reading of the Supreme Court's decisions of the era leads me to conclude that the Court generally used the word "interpret" when it was speaking of the meaning of the words and "construe" in connection with determining protection beyond the words, that is, the "scope" of protection for the claim, as in contract law. 3 A. Corbin, Contracts § 534 (1960); 4 S. Williston, Contracts § 602 (Jaeger ed. 1961); ALI, Restatement (Second), Contracts § 226, Comment c. (Tent. Draft No. 5. Mar. 31, 1970). This distinction leads to understanding some of the niceties in the Court's analyses. However, interpretation and construction are now used interchangeably, see Markman, 52 F.3d at 976 n. 6, 34 USPQ2d at 1326 n. 6, and, in any event, any difference in these words is irrelevant to the issue in this case. Both the "meaning and scope" of a patent claim were treated as issues of law for the court to decide.
Because of the narrow view of many judges respecting the legal scope of protection and, thus, the need to cover variations expressly in the turn of the century era, the numbers of claims in patents proliferated to cover variations. The Patent Office sometimes fixed the number of claims arbitrarily. It also became the practice to use broad terms so as to claim as broadly as possible. The elements in the claim were frequently described as a nonspecific "means" for performing a function. Ellis, supra note 14 at § 16. Thus, by claiming in this or a similar manner, an accused infringer could be brought under the literal claim language.
The application of the doctrine of equivalents then took a twist. Despite the literal claim language expressed as a "means," (i.e., any means), infringement extended only to the structure or elements disclosed in the specification as embodiments of the invention and equivalents of such structure — not to all equivalents. See, e.g., Continental Paper Bag, 210 U.S. at 412-13, 28 S.Ct. at 748-49.
A critical decision of the Supreme Court on claiming practice was handed down in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3 (1946). The Court declared an invention could not be claimed by a functional "means" expression at the "point of novelty." Such language rendered the claim "indefinite" under Rev. Stat. 4888. (This ruling was overruled in the 1952 Act, now 35 U.S.C. § 112, ¶ 6 which allows any element of a claim to be expressed as a "means.")
During the 1930's and 1940's, the Supreme Court spoke frequently about the criticality of claim language so as to provide the public with notice of protected rights and to encourage innovation by others. In holding claims invalid, the Court stated, for example, in Permutit Co. v. Graver Corp., 284 U.S. 52, 60, 52 S.Ct. 53, 55, 76 L.Ed. 163 (1931):
And in United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236, 63 S.Ct. 165, 170, 87 L.Ed. 232 (1942), it stated:
However, the Court did not take the opportunity when presented to do away with the doctrine of equivalents, a principal cause of such uncertainty. See Martin J. Adelman and Gary L. Francione, The Doctrine of Equivalents in Patent Law: Questions that Pennwalt Did Not Answer, 137 U.Pa.L.Rev. 673, 682-83 (1989). In Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 62 S.Ct. 513, 86 L.Ed. 736 (1942), the Court merely equivocated on the doctrine's continued viability. Concluding that, in any event, estoppel precluded a finding of infringement by equivalency, the Court stated:
Id. at 136, 62 S.Ct. at 518.
2. Legal Limitations on Infringing Equivalents
Under each of the variants of the doctrine, the Supreme Court limited the range of permissible infringing equivalents by rules and tenets of construction which provided a measure of certainty against unknowing infringement by equivalency.
a. Known Equivalents
It logically follows from the original rationale of Winans that a patentee intends to claim equivalents that an inventor could not be deemed to claim what one of skill in the art did not know at the time the patent issued. Thus, the Court limited the range of infringing substitutions to those in which components were substituted which were known to be equivalents. Where the invention was an improvement on a known process or machine, the substitution had to be known in that art as an equivalent at the time the patent issued. Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 556, 20 L.Ed. 33 (1870). In Gill v. Wells, 89 U.S. (22 Wall.) 1, 28-30, 22 L.Ed. 699 (1874), the Court used the phrase "legal equivalent within the meaning of the Patent law" to identify this restriction on infringing equivalents. Equivalency-in-fact was not enough. The Court explained:
Gill, 89 U.S. at 28, 30, 22 L.Ed. 699 (emphasis added).
The case of Gould v. Rees, 82 U.S. (15 Wall.) 187, 21 L.Ed. 39 (1872), cited in Gill, is particularly instructive on the legal insufficiency of an equivalency-in-fact test to determine infringement. The Court held that the instructions to the jury were legally erroneous in failing to preclude certain equivalents from the ambit of infringement. Id. at 194-95, 21 L.Ed. 39. On a challenge to the instructions, the Court stated:
Id. at 193-95, 21 L.Ed. 39 (emphasis added).
As indicated, the Court mandated a broader range of infringing equivalents for what it termed "primary" or "pioneer" inventions or for an invention having particular merit.
129 U.S. at 289-90, 9 S.Ct. at 308.
The tenet that the substitution had to be a known equivalent at the issue date was consistently applied prior to Graver and was explicitly reiterated in 1946 by the Supreme Court in Halliburton Oil Well Cementing, 329 U.S. at 13, 67 S.Ct. at 12, shortly before Graver II, where the Court explained:
Thus, the law preceding Graver II was that equivalency had to be known at the date of the patent.
b. Prosecution History Estoppel
A construction of the claim to cover equivalents is precluded to the extent of the actions taken and the statements made by the patentee to the Patent Office in securing the patent grant. A patentee is not entitled, after patent issuance, to have protection from a claim extend to devices or processes or elements therein which during prosecution the inventor treated as a different invention from the one for which the inventor sought and obtained protection. Even where the scope could extend to equivalents, infringement is barred by reason of the patentee's manifest intent.
The precedent is voluminous in which the Court applied estoppel based on prosecution as a matter of law. See Sutter v. Robinson, 119 U.S. 530, 541, 7 S.Ct. 376, 381-82, 30 L.Ed. 492 (1886) ("[Patentee] is not at liberty now to insist upon a construction of his patent [i.e., legal effect] which will include what he was expressly required to abandon and disavow as a condition of the grant."); Keystone Driller Co. v. Northwest Eng'g Corp., 294 U.S. 42, 48, 55 S.Ct. 262, 265, 79 L.Ed. 747 (1935) (Principle applied "that where such broad claims are denied and a narrower substituted, the patentee is estopped to read the granted claim as the equivalent of those which were rejected." (footnote omitted));
c. Prior Art Limitations
Somewhat related to the rationale of prosecution history estoppel, which applies to an element, is the tenet that a claim to a product or process cannot be construed so as to encompass the same or substantially the same overall product or process in the prior art. Keystone Driller, 294 U.S. at 46-47, 55 S.Ct. at 264 ("We hold, in view of the prior art and of the file wrapper, the petitioner is not entitled to a broad reading of the claim."); Computing Scale Co. v. Automatic Scale Co., 204 U.S. 609, 617, 27 S.Ct. 307, 310-11, 51 L.Ed. 645 (1907) ("[I]t is well settled that the claim as allowed must be read and interpreted with reference to the rejected claim, and to the prior state of the art, and cannot be so construed as to cover either what was rejected by the Patent Office or disclosed by prior devices." (quoting Hubbell v. United States, 179 U.S. 77, 80, 21 S.Ct. 24, 25, 45 L.Ed. 95 (1900))); Knapp v. Morss, 150 U.S. 221, 224-25, 14 S.Ct. 81, 82, 37 L.Ed. 1059 (1893) (same). Accord Wilson Sporting Goods Co. v. David Geoffrey & Assoc., 904 F.2d 677, 684, 14 USPQ2d 1942, 1948 (Fed.Cir.), cert. denied, 498 U.S. 992, 111 S.Ct. 537, 112 L.Ed.2d 547 (1990).
d. No Enlargement of the Claim
Because of the importance of claim limitations in modern patent practice, litigants frequently argue today that infringement by equivalents ipso facto "enlarges" the claim to cover unclaimed subject matter. In a sense, that is true. When infringement is found under the doctrine, the claim protects something not literally specified in the claim. But a distinction can be drawn that is not too esoteric between substitution of an equivalent for a component in an invention and enlarging the metes and bounds of the invention beyond what is claimed. And it is a distinction that the Supreme Court has consistently drawn. Enlargement of the metes and bounds of the claim requires reexamination by the office charged with that function, now the Patent and Trademark Office. In contrast, assuming the PTO had done its job, as we must, known equivalents of a claim element were considered in determining patentability of an issued claim.
Hilton Davis argues that the Warner-Jenkinson process is an "equivalent" of the claimed process. In rejecting the patentee's similar assertion of overall equivalency as the test for infringement, the Supreme Court held in Burr v. Duryee, 68 U.S. (1 Wall.) 531, 573, 17 L.Ed. 650 (1863):
Where a claim to an invention is expressed as a combination of elements, as here, "equivalents" in the sobriquet "Doctrine of Equivalents" refers to the equivalency of an element or part of the invention with one that is substituted in the accused product or process. The theory of infringement under the doctrine is that substitution of an equivalent for a part of a claimed combination means that the accused process or product is substantially the same as the claimed invention. Graver II, 339 U.S. at 608, 70 S.Ct. at 856; Sanitary Refrigerator, 280 U.S. at 41-42, 50 S.Ct. at 13; Union Paper Bag Machine Co. v. Murphy, 97 U.S. 120, 125, 24 L.Ed. 935 (1877). An infringing product or process may also be referred to as an "equivalent" of the invention, but more than overall equivalency
This view that the accused device or process must be more than "equivalent" overall reconciles the Supreme Court's position on infringement by equivalents with its concurrent statements that "the courts have no right to enlarge a patent beyond the scope of its claims as allowed by the Patent Office." Minerals Separation, 250 U.S. at 347, 39 S.Ct. at 499 (quoting Keystone Bridge, 95 U.S. at 278, 24 L.Ed. 344). The "scope" is not enlarged if courts do not go beyond the substitution of equivalent elements.
In Minerals Separation, the claims in issue specified the use of "a fraction of one percent of oil" in a process to improve the concentration of ore. The Court rejected the argument that the claims were indefinite because a precise fraction was not specified. Id. at 338, 39 S.Ct. at 496. But, by the same token, the express limitation to less than one percent fixed the scope of protection. Thus, the defendant's use of oil in excess of one percent did not constitute infringement. Id. at 354, 39 S.Ct. at 501-02.
The prohibition against enlargement of a claim had been explicated earlier in the cited case Keystone Bridge, 95 U.S. at 278-79, 24 L.Ed. 344, as follows:
Similarly, the Court has repeatedly held that the complete elimination of an element in a claimed combination creates a different invention. Vance v. Campbell, 66 U.S. (1 Black) 427, 429-30, 17 L.Ed. 168 (1861); Schumacher v. Cornell, 96 U.S. 549, 554, 24 L.Ed. 676 (1877); accord Pennwalt v. Durand-Wayland, Inc., 833 F.2d 931, 4 USPQ2d 1737 (Fed.Cir.1987) (in banc), cert. denied, 485 U.S. 1009, 108 S.Ct. 1474, 99 L.Ed.2d 703 (1988). Equivalency encompasses merely substitutions in the patented combination. As held by the Court in Union Water-Meter, 101 U.S. at 337, 25 L.Ed. 1024:
See also Yale Lock Mfg. Co. v. Sargent, 117 U.S. 373, 378, 6 S.Ct. 931, 934, 29 L.Ed. 950 (1886) ("The defendant does not use the same combination, and employs no device as an equivalent and substitute for the omitted element.", citing Union Water-Meter and Gage v. Herring, 107 U.S. 640, 2 S.Ct. 819, 27 L.Ed. 601 (1883)). In the Court's view, where an equivalent is substituted for an element, the combination may remain essentially the same invention, not one broader than that of the claim, i.e., a species claim remains a species claim. Conversely, to enforce the claim against a combination lacking even one element or its equivalent would extend coverage to a different invention because the claim is thereby broadened. The accused infringement is, ipso facto, not substantially the same as the patented invention without at least an equivalent substituent for each element of a claim. Infringement requires, inter alia, that every limitation of a claim be satisfied exactly or by an equivalent. Pennwalt, 833 F.2d at 935, 4 USPQ2d at 1739-40; Read Corp., 970 F.2d at 822, 23 USPQ2d at 1431. See Cimiotti Unhairing Co. v. American Fur Refining Co., 198 U.S. 399, 410, 25 S.Ct. 697, 702, 49 L.Ed. 1100 (1905), and cases cited therein.
It would unnecessarily lengthen this already lengthy opinion to review all of the permutations of the doctrine as applied to inventions of various types and character preceding the Graver II decision.
3. Graver II
The majority states that "the Supreme Court mapped the modern contours of the doctrine of equivalents in its landmark Graver Tank decision," slip op. at 1517, and concludes that infringement may be found under that precedent. Clearly not. The majority has taken an errant detour off the map drawn in the Graver II decision.
The importance of Graver II lies in the Court's affirmation that the doctrine "continues today ready and available for utilization when the proper circumstances for its application arise." Graver II, 339 U.S. at 608, 70 S.Ct. at 856. In the Graver decisions, the Supreme Court reviewed a case raising issues of the validity and infringement of a patent owned by Linde Air Products Company for an electric welding process and for fluxes to be used therewith. The district court had held certain flux claims and all process claims invalid. Those claims merely required silicates or metallic silicates as the principal constituent of the flux. While nine operative silicates (including manganese) were listed in the specification,
Id. at 199, 75 USPQ at 238. To answer that question, the court considered the entirety of the patent and its prosecution. Looking to the specification, the court concluded that manganese was taught as a substituent in the invention and noted that the inventors specifically stated that other suitable materials including manganese could form the main body of the flux. Thus, applying the doctrine, the court entered judgment of infringement.
The Court of Appeals affirmed validity and infringement of the narrow claims, 167 F.2d 531, 538-39, 77 USPQ 207, 213 (7th Cir.1948), cert. granted, 335 U.S. 810, 69 S.Ct. 50, 93 L.Ed. 366 (1948), but reversed the judgment of invalidity of the broad claims, holding that they were valid as to the nine listed operative embodiments. Id. at 538, 77 USPQ at 212. In the first Supreme Court decision, Graver Tank Mfg Co. v. Linde Air Prods. Co., 336 U.S. 271, 69 S.Ct. 535, 93 L.Ed. 672 (1949) (Graver I), the Court unanimously upheld the validity and infringement of the narrow claims, two justices separately concurring on the issues of validity.
The second Graver decision, 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (Graver II), followed the grant of a petition for rehearing (337 U.S. 910, 69 S.Ct. 1046, 93 L.Ed. 1722) limited to the question of infringement of the four valid flux claims under the doctrine. Specifically, the Court stated that on rehearing the issue was limited to "the applicability of the doctrine of equivalents to the findings of fact in this case." Id. at 910-11, 69 S.Ct. at 1046. See also Graver II, 339 U.S. at 606, 70 S.Ct. at 855. The infringer urged that the doctrine conflicted with the statutory requirement for distinct claims and should be eliminated as a basis for infringement. See Arthur H. Swanson, A Discussion of the Application of the Doctrine of Equivalents in the Graver v. Linde Case, 33 J.Pat.Off. Soc'y 19, 32 (Jan. 1951).
The Graver II analysis of infringement began by restating the general purposes behind recognition of infringement by an imitation which does not copy every literal detail of a patented invention. To accept literalism would encourage the unscrupulous copyist. "[U]nimportant and insubstantial changes and substitutions in the patent" should not escape the reach of the law. Graver II, 339 U.S. at 607, 70 S.Ct. at 855-56. The Court denounced minor variations made to "conceal and shelter the piracy," and saw unfairness in placing an inventor "at the mercy of verbalism." Id. The Court explained that the essence of the doctrine of equivalents, which had been applied since Winans (56 U.S. (15 How.) 330, 14 L.Ed. 717) and ever since, is that one may not practice a "fraud on a patent." Graver II, 339 U.S. at 608, 70 S.Ct. at 856.
On the issue raised by the petition, the Court was unpersuaded to write an obituary for the doctrine. The Court reaffirmed its
The Court reaffirmed its precedent that both pioneer and secondary inventions were entitled to protection under the doctrine, although though the area of equivalence may vary under the circumstances. It discussed the "reverse" doctrine of equivalents, citing Westinghouse, 170 U.S. 537, 568, 18 S.Ct. 707, 722, 42 L.Ed. 1136, a case with claims drafted referring back to the specification.
Id. As will be explained, I have added the emphasis to show how I believe the passage should be read.
Turning to the facts in Graver, the Court noted that the accused and patented products were "alike" in all respects except for the substitution of manganese for magnesium and stated:
Id. at 610, 70 S.Ct. at 857.
The Court noted the evidence of record and the findings of the trial judge therefrom that the accused "Lincolnweld" flux and the patented composition were substantially identical, that they were equivalent for welding purposes, and that "for all practical purposes, manganese silicate can be efficiently and effectually substituted for calcium and magnesium silicates as the major constituent of the welding composition." These findings were held not clearly erroneous. Id. at 611-12, 70 S.Ct. at 858.
With respect to whether invocation of the doctrine was justified under the circumstances, the Court stated:
Id. at 612, 70 S.Ct. at 858.
Once the Court decided to reendorse the doctrine, the Graver facts presented a routine case for affirming infringement. The infringer made a substitution for one ingredient in an improved patented flux composition. There was no "enlargement." The substituted ingredient was known by those skilled in the art to be equivalent to the ingredient of the claim, having been used in prior art fluxes. The scope of the claim could include equivalents because of the extension to equivalents in the description in the specification and the broad (invalid) claims of the patent. Under such circumstances, the substitution of manganese for magnesium was only a "colorable" change.
It must be noted that the Court did not speak in Graver II of the need for notice to the public by the claim. However, the facts of Graver were unique: the manganese flux was a protected embodiment of the invention when the infringer began its use. It was disclosed in the specification as an example of the broad claims of the patent, as issued, to a flux containing metallic silicates. Graver I, 336 U.S. at 276, 69 S.Ct. at 538-39. Only after Graver I were these claims finally invalidated. Id. at 276-79, 69 S.Ct. at 538-40. Thus, the maxim that disclosed but unclaimed subject matter is deemed to be dedicated to the public
The majority seizes on the sentence "A finding of equivalence is a determination of fact," Graver II, 339 U.S. at 609, 70 S.Ct. at 856-57, as a declaration by the Graver II Court that the determination of infringement under the doctrine is entirely a fact question and, therefore, for the jury. This would be a remarkable change from what the law had been. I read the statement in context to say "What constitutes equivalency ... of an ingredient not contained in the patent with one that was ... is a determination of fact." It would be helpful to the position I advocate if the Court had expressly declared that the meaning and scope of a claim remain questions of law for the court. However, applying the doctrine of equivalents to the Court's language, I equate "the application of the doctrine of equivalents," the words the Court used, with determining the proper scope of the claim.
The Graver Court overturned none of its precedent that the meaning and scope of a claim are issues of law. To the contrary, the Court relied on Winans, Sanitary Refrigerator, Union Paper Bag Machine Co., Gould, and Westinghouse, id. at 608-09, 70 S.Ct. at 856, all of which reflect that principle. The legal effect of a claim. i.e., its scope, is a matter for the court to decide as an issue of law, not fact.
4. The Patent Act of 1952
The major revision of the patent statute in 1952 says nothing about infringement based on equivalency overall or to elements of a claim except in section 112, ¶ 6. It was argued, after enactment of the 1952 Act, post-Graver II, that the judicial doctrine of "equivalents" conflicted with the 1952 Act and should be eliminated. See Noll v. O.M. Scott Co., 467 F.2d 295, 299 n. 2, 175 USPQ 392, 396 n. 2 (6th Cir.1972), cert. denied, 411 U.S. 965, 93 S.Ct. 2143, 36 L.Ed.2d 685 (1973); 1970 Am.Pat.L. Ass'n Bull. 27-29. However, the appellate courts continued to apply Graver Tank both affirmatively and negatively under varying formulations of the standard. See Mead Digital Sys., Inc. v. A.B. Dick Co., 723 F.2d 455, 221 USPQ 1035
The Supreme Court itself has not spoken on the doctrine after enactment of the current statute. It has, however, used similar language in construing claims for validity purposes by reference to the specification, prior art, and the prosecution history. Graham v. John Deere, 383 U.S. 1, 33-34, 86 S.Ct. 684, 702, 15 L.Ed.2d 545 (1966) (claims carefully drafted; not free to assert broader view of invention);
Our precedent has also drawn a fact/law distinction, albeit not clearly, between the tripartite test and at least some restrictions on the scope of infringing equivalents. As stated in Thomas & Betts Corp. v. Litton Sys. Inc., 720 F.2d 1572, 1579, 220 USPQ 1, 6 (Fed.Cir.1983), we held:
Conversely, we have declared de novo review is required for the legal questions of: (1) the meaning of the claim (Markman, 52 F.3d at 970-71, 34 USPQ2d at 1322; Read Corp., 970 F.2d at 821, 23 USPQ2d at 1431); (2) whether an asserted range of equivalents would cover what is already in the public domain (Wilson Sporting Goods, 904 F.2d at 683, 14 USPQ2d at 1948); and (3) prosecution history estoppel (Texas Instruments, Inc. v. United States Int'l Trade Comm'n, 988 F.2d 1165, 1173, 26 USPQ2d 1018, 1024 (Fed.Cir.1993)). Properly understood, as previously explained, these questions are merely subparts under the larger question of the scope of protection to which the claim is entitled. Accord Ziegler, 483 F.2d at 867, 177 USPQ at 487. We have, however, never articulated that under the doctrine the scope of equivalents is a separate legal question.
In sum, I conclude that a finding of infringement under the doctrine is a mixed question of law and fact. In a jury case, proper instructions must identify factual issues and legal limitations on finding equivalency. On the other hand, the meaning and scope of a claim are issues of law for the trial judge to decide. In ruling on the issue, I would require the trial judge to explain the basis for its conclusion that a competitor would have notice that the claim covers equivalent elements of the claimed product or process.
As will become evident, the trial judge in this case sent the case to the jury without any restrictions on what was a legal equivalent beyond the tripartite test and their "finding" of no estoppel (an issue of law). Further, the court legally erred in holding, post-verdict, that "the doctrine of equivalents applies" under the circumstances of this case.
1. The Patent Claims in Suit are Wrongfully Enlarged to Find Infringement
As indicated, the claimed invention consists of a combination of steps in a process for ultrafiltration of certain dyes. Specifically,
The accused process of Warner-Jenkinson operates at a hydrostatic pressure of 500 p.s.i.g.
Claimed Process Process Against Use ofApprox. 200-400 500 psig 500 psig or less psig pH from approx. pH 5.0 any pH under 6.0-9.0 9.01
The majority nowhere recognizes the Supreme Court's binding precedent prohibiting enlargement of the scope of a claim, which is dispositive of this appeal without further analysis.
Sanitary Refrigerator, 280 U.S. at 36, 50 S.Ct. at 11. Further, the most recent decision of the Supreme Court on point, Singer Co., 192 U.S. 265, 24 S.Ct. 291, held that under such circumstances the trial court erred in not directing a verdict for the defendant on a proper application of the doctrine of equivalents. As stated therein with emphasis added:
Id. at 275, 24 S.Ct. at 295.
The Supreme Court then itself considered the structure of the accused device and, contrary to the majority opinion today, treated the issue of the "substantiality" of the change from the patented invention as a question for the court, not the jury:
Id. at 285-86, 24 S.Ct. at 299 (emphasis added).
In the present case, and as held in Singer, because we know what the claim means and we know what process parameters Warner-Jenkinson uses, the issue of infringement under the doctrine, that is, the scope of the claim, resolves itself into one of law. Under a correct application of the doctrine of equivalents, the trial court erred in denying Warner-Jenkinson's JMOL.
Nothing in Graver II warrants the finding of infringement in this case. The accused process does not substitute equivalents for each claim element. Hilton Davis set the range of equivalent pH and pressure values by the claim language "approximately 6.0 to 9.0" and "approximately 200 to 400 p.s.i.g." It was not proved that 5.0 is the equivalent to one of skill in the art of approximately 6.0 to 9.0 pH or 500 p.s.i.g. is similarly equivalent to approximately 200-400 p.s.i.g. Hilton Davis had no claiming difficulties as in Graver.
2. Prosecution History Estoppel
Finally, with respect to the pH step, an additional restriction comes into play. The examiner required the specific pH range to be added to the claim to overcome prior art. The prosecution history contains the following Examiner's Interview Summary:
Hilton Davis amended its claim accordingly. Furthermore, Hilton Davis's selection of a lower limit of 6.0 was intentional. Dr. Cook, an inventor, testified that Hilton Davis's process foamed undesirably if the pH dropped below 6.0. The specific amendment of the pH range by Hilton Davis in response to the Examiner's rejection precludes capturing the different process step of a pH of 5.0 used by Warner-Jenkinson.
Finding a process with a pH of 5.0 to be an infringement, assuming a pH of 5.0 and a pH of 6.0 were equivalents, would violate the principle of prosecution history estoppel. In I.T.S. Rubber, 272 U.S. at 444-45, 47 S.Ct. at 141, the Court stated:
Accord Exhibit Supply, 315 U.S. at 136-37, 62 S.Ct. at 518-19; Lehigh Valley, 158 U.S. at 469, 15 S.Ct. at 874.
Having narrowed the claim's range of pH to secure the Examiner's withdrawal of his prior rejection, Hilton Davis may not now resort to the doctrine to cover equivalents thereof. This would render nugatory the specific limitation of the range of pH.
Hilton Davis's concession that a pH of 5.0 is not "approximately 6.0 to 9.0" and that 500 psig is not "approximately 200 to 400 psig" should have ended this charge of infringement as a matter of law. There was no material fact issue on infringement to give to the jury. The only disputed fact issue here relates to the pore size of the membrane. However, that dispute becomes immaterial because the undisputed facts are controlling in any event. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). As a matter of law, the pH and pressure values in Warner-Jenkinson's process are outside the legal scope of protection of the '746 patent. It is surplusage to point out that Warner-Jenkinson was not a "copyist" but developed its own process independently, an important factor in Graver II.
Under controlling Supreme Court precedent, the standard for infringement under the doctrine includes the legal limitation that a claim may not be enlarged beyond what was allowed by the Patent Office. In addition, the prosecution history creates an estoppel respecting the pH limitation. As in Sanitary Refrigerator, 280 U.S. 30, 50 S.Ct. 9, and Singer Co., 192 U.S. 265, 24 S.Ct. 291, the issue of infringement resolves to a question of law.
As Warner-Jenkinson argues, it has been held liable without any possibility of notice that its process fell within the claims of the '746 patent. Claims must tell the public not only what it cannot do but also what it can do. Permutit Co., 284 U.S. at 60, 52
I would reverse the judgment of infringement.
(Emphasis added.) Counsel for Warner-Jenkinson relied on the differences in function, way, and result between the claimed and accused processes and on its independent development:
(Emphasis added.) Thus, the jury received the case with emphasis on the substantiality of the differences supplied in closing arguments and focus on the function-way-result test supplied by jury instructions.
Claim 1 Yes (infringed) X No (not infringed) _____ _____ Claim 2 Yes (infringed) X No (not infringed) _____ _____ Claim 3 Yes (infringed) X No (not infringed) _____ _____ Claim 13 Yes (infringed) X No (not infringed) _____ _____ Claim 14 Yes (infringed) X No (not infringed) _____ _____
Claim 1, the only independent claim found to be infringed, reads:
(Alphabetic designations, paragraphing and emphasis added.) The dependent claims need not be considered separately in this case.
As we have previously noted in Argus Chem. Corp. v. Fibre Glass-Evercoat Co., 759 F.2d 10, 14 n. 5, 225 USPQ 1100, 1102 n. 5 (Fed.Cir.), cert. denied, 474 U.S. 903, 106 S.Ct. 231, 88 L.Ed.2d 230 (1985), the current meaning of "anticipation" is different. "Anticipation" now carries a narrower meaning, namely, that the invention lacks novelty. Under the current statute, any differences from a prior art device would be analyzed for "obviousness." 35 U.S.C. § 103. Graham v. John Deere, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).
That is no longer true under the current statute. Under the Patent Act of 1952, the Supreme Court has definitively ruled that "validity of a patent is a question of law." Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966) (specifically adopting the view of the concurring opinion in Great Atlantic & Pacific Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 155, 71 S.Ct. 127, 131-32, 95 L.Ed. 162, 87 USPQ 303, 307 (1950)). See also Sakraida v. Ag Pro, Inc., 425 U.S. 273, 280, 96 S.Ct. 1532, 1536, 47 L.Ed.2d 784 (1976) ("The ultimate test of patent validity is one of law."); Lear, Inc. v. Adkins, 395 U.S. 653, 676, 89 S.Ct. 1902, 1914, 23 L.Ed.2d 610 (1969) (remanding so that Lear can argue invalidity "to the California courts in the first instance."); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566-67, 1 USPQ2d 1593, 1596 (Fed.Cir.), cert. denied, 481 U.S. 1052, 107 S.Ct. 2187, 95 L.Ed.2d 843 (1987) ("Like all legal conclusions, that under § 103 rests on a factual evidentiary foundation.").
See also MAC Corp. v. Williams Patent Crusher & Pulverizer Co., 767 F.2d 882, 884 n. 3, 226 USPQ 515, 517 n. 3 (Fed.Cir.1985).