*1
injury
apparent
circumstances where
was less
than in
this. Landis v. North American
I am constrained to withhold assent to a decision that passes in I presents silence what think a serious issue. GRAVER TANK & LINDE CO., MFG. INC. et al.
AIR PRODUCTS CO. Argued May 29, No. 1950. March 1950.—Decided *2 V. Koykka argued petitioners. Thomas cause for the Oberlin, Ashley F. With him on brief were John M. the Duzer, Byron. Van James Stewart and Charles L. R. John T. Cahill argued R. cause the Richard Wolfe for respondent. them on brief A. With the were James Fowler, Jr. and E. Becker. Loftus opinion delivered the Justice Jackson
Mr. Court. Air
Linde for Products owner of Jones an for welding process electric fluxes to be there- used with, brought against Lincoln infringement action companies. and the two Graver trial four The court held flux infringed claims valid and and certain flux other Q. claims and all process claims 231. invalid. U. S. P. Appeals Court of findings validity affirmed infringement as to four flux claims but reversed trial court and process held valid the claims and the re- maining contested flux claims. 167 F. 2d We granted certiorari, 335 U. judg- S. reversed the Appeals ment the Court of as it insofar reversed court, trial and reinstated District Court decree. S. 271. Rehearing granted, U. limited to the question infringement of four valid flux claims applicability and to the of equivalents the doctrine of fact case. 337 S. 910. findings U. single issue
At it should be noted that the outset holding court’s before us is whether the trial will sustained. infringed four flux claims have been was unani- validity of these claims Any issue as to mously previous decision this Court determined validity their cannot be renewed now and attack on The disclo- rehearing. reason limitation on been sure, claims, adequately art have and the opinions and in the opinion in our former described the courts below. compo- device or determining whether an accused patent, must had infringes
sition valid resort If instance to the words of the claim. accused first clearly infringement matter falls within the claim, *3 made that end of out and is the it. permit have imi- recognized
But courts also patented every tation copy of a invention does not which protection literal detail would be convert thing. into a and hollow useless Such encourage limitation would leave room for—indeed —the copyist and unscrupulous unimportant to make insub- changes patent which, stantial and substitutions in though adding enough would to take the nothing, copied claim, matter outside the and hence outside pirate invention, reach of law. One seeks to an who like pirate play, one who seeks book copyrighted or may expected to introduce minor variations to conceal and piracy. Outright dupli- shelter the forthright and very type cation is a dull and rare infringement. To prohibit place mercy no other would the inventor at the and verbalism would be subordinating substance to deprive form. him It would of the benefit of inven- his tion and would foster concealment rather than disclosure of inventions, which primary purposes is one of the system. response this equivalents The doctrine evolved experience. The may essence of the doctrine is that one practice patent. not on a almost Originating a fraud Denmead, century in the v. ago case of Winans How. applied Court and 330, consistently has been today courts, ready the lower federal and continues proper utilization when the available for circumstances temper “To application unsparing logic its arise. prevent infringer stealing from the benefit an patentee may pro invention”1 invoke this doctrine to producer performs ceed device “if it against substantially the same substantially function the same way Sanitary Refrigerator to obtain the same result.” Winters, Co. v. 30, theory 280 U. S. 42. The on which it is “if founded two devices do same work in substantially way, accomplish same substan tially result, they though the same are the even same, they name, form, shape.” differ Co. v. Machine Murphy, 120, operates doctrine only in patentee pioneer favor of the of a or primary also for invention, secondary but of a inven tion consisting a combination of ingredients old produce Buerk, results, new and useful v. Imhaeuser U. S. 655, although equivalence may vary the area under the Paper Bag circumstances. See Continental Co. Paper Bag Eastern 210 U. 414-415, S. *4 Seymour Osborne, cited; cases v. 11 516, 556; Wall. Gould Rees, v. 15 Wall. 192. The wholesome realism of always doctrine is not in applied favor of a but is against sometimes used him. Thus, where a device changed is in principle so far from patented article performs same or similar in a function sub stantially way, different but nevertheless falls within the Boyal Typewriter Remington
1 L. Hand in Rand, v.Co. 168 F. 2d 691, 692. equivalents claim, the doctrine of the
literal words patentee’s claim and defeat be used to restrict the may Boyden Power Westinghouse infringement. action for development, early In Brake U. its S. involving devices usually applied in cases doctrine was components. in mechanical equivalence where there was were also however, principles the same Subsequently, equivalence where there was applied compositions, to is ingredients. Today the doctrine between chemical in com- equivalents or chemical applied mechanical and cases collected positions or devices. See discussions 1937) 489-492; (Deller’s §§ in Patents ed. Walker on (1949) Claims 59-60. Ellis, §§ Patent must determined equivalency be What constitutes and the patent, art, of the against the context in Equivalence, particular of the ease. circumstances is not prisoner of a formula and law, is not the It does not be in a vacuum. an absolute to considered every in complete identity every purpose require equal determining equivalents, things respect. by the and, be other thing may equal same to each some- things purposes may for most different token, same equivalents. given times be Consideration must patent, ingredient is purpose for which used ingredi- other qualities it has when combined with the perform. ents, and function which it intended reasonably skilled important persons An is whether factor interchangeability have known of the the art would with one that of an not contained ingredient was.
A fact. finding equivalence determination testimony form: any through Proof can made by documents, in the experts technology; or others versed course, and, the dis- including treatises; texts and fact, prior art. Like other issue closures requires credibility, balancing final determination *5 persuasiveness weight and evidence. It is to be de- decision, court cided trial and court’s under general principles appellate not be review, should dis- clearly Particularly unless this so turbed erroneous. is in a depends upon familiarity much with field where so usually specific problems principles scientific and con- tained and general knowledge storehouse of experience.
In us, welding case have before we two electric compositions or fluxes: Union- patented composition, melt and composition, Grade the accused Lincolnweld 660. The under which Unionmelt is made claims essentially a combination of alkaline earth metal silicate fluoride; actually contains, and calcium how- Unionmelt ever, of calcium and magnesium, silicates two alkaline earth composition metal silicates. is simi- Lincolnweld’s lar to Unionmelt’s, except that it substitutes silicates of calcium an manganese latter not alkaline earth —the metal —for magnesium. silicates of calcium and all respects, compositions other the two me- are alike. The chanical methods which these are em- compositions ployed are similar. operation identical They produce kind same of weld. quality question which emerges thus sub- is whether the stitution of manganese which is not earth alkaline metal for magnesium is, under the circum- case, stances of this and in view of the technology art, change of such substance as to make the doctrine of equivalents inapplicable; conversely, change whether under circumstances was insub- so stantial trial court’s invocation the doctrine of equivalents justified. attempting all-inclusive,
Without to we note the following in the evidence record: Chemists familiar with manganese two fluxes testified that and magnesium many were (R. similar 669). their reactions testimony by There metallurgist that alkaline earth *6 in natural in ores their manganese are often found metals purpose in the fluxes they and that serve the same state that “in the sense and testified (R. 831-832); chemist an alkaline included patent” manganese could be as of the cor- was (R. 297). metal Much of this testimony earth inorganic recognized texts on roborated reference addition, in chemistry (R. 332). Particularly important, in art, prior of the also contained were disclosures pre- 1,754,566, which patent, record. Miller No. The suit, manganese in of sili- patent taught ceded the use 971). (R. 969, Manganese in fluxes welding cate 1,467,825, similarly patent, in the Armor No. disclosed 1346). composition (R. a welding which also described no of kind to show And the record contains evidence inde- developed that Lincolnweld was as result experiments. pendent research essay independent It is not Court to for this even This is the function evaluation of this evidence. no observed, “To And, trial court. as we have heretofore applicable appropriately . . . type case more us, largely than to before where the evidence is the one may a trial experts as which court testimony oc- trial enlightened by scientific demonstrations. This record cupied weeks, during which, as the some three with counsel shows, judge the trial visited laboratories welding experts actual and to observe demonstrations taught by welding and of accused as prior He stages of the art. infringing it, and of various operations and welding of various pictures viewed motion many experts and and other tests heard witnesses.” 271, 274-275. U. S. on him that judge trial found the evidence before composition
the Lincolnweld flux substantially operation are identical result. suit in all respects equiva- found He also that Lincolnweld is purposes. welding to Unionmelt for And he con- lent practical manganese all purposes, that “for silicate cluded efficiently effectually can for substituted calcium major magnesium silicates as constituent welding composition.” conclusions adequately These are supported record; certainly they clearly erroneous.2 appropriate
It is difficult to conceive of case more application equivalents. of the doctrine of The dis- closures of the made manganese art clear that compositions. silicate was a useful ingredient welding Specialists problems welding familiar with the com- *7 positions manganese equivalent understood that was and magnesium compo- could be substituted for in the patented sition of the flux their observations were confirmed the literature chemistry. Without some explanation developed or indication Lincolnweld that by independent research, trial properly court could infer that accused flux is the result of imitation rather than experimentation or invention. Though infringe- ment was not literal, changes which avoid literal infringement are only. colorable We conclude that trial judgment infringement court’s respecting the four flux claims was proper, and we adhere to our decision' on this aspect the case.
Affirmed. part no Mr. took the consideration Justice Minton or decision of this case. Douglas Black, Justice with whom Mr. Justice
Mr. concurs, dissenting.
1 heartily agree with the Court that “fraud” is bad, “piracy” evil, reprehensible. is is “stealing” inBut (a), Rule 52 Procedure, Federal Rules of provides part: Civil “Findings of shall clearly erroneous, fact not be set unless aside regard given due opportunity shall to the trial court judge credibility of the of the witnesses.” with such charged petitioners case, where justify the principles do not lofty
malevolence, these prior deci- Congress of Acts of Court’s sterilization today’s mentioned are even none of which sions, opinion. respond- involved here describe only claims major proportion “containing a flux as a product
ent’s found The trial court metal silicate.” earth of alkaline man- “composed principally flux used petitioners that is not Finding “manganese also that ganese silicate.” that metal,” trial court admitted earth an alkaline respondent’s “literally infringe” petitioners’ flux did not judicial “doctrine it invoked patent. Nevertheless earth for “alkaline to broaden the claim equivalents” ground On the “manganese.” to embrace metals” so as . . . proper is substitute manganese “the that fact respondent’s specification” fully disclosed need be made that “no determination patent, it concluded fact outside teachings a known whether chemical . manganese equivalent is an . . .” follows the find- today’s unquestioningly Since affirmance *8 necessarily relies on ings court, of the trial this Court specifications doing, In it violates what the revealed.1 so that Congress discussing mandate of without even direct mandate. 4888, 33, provides
R. 35 U. C. amended, §S. as S. § particularly point “shall out and dis- applicant tinctly part, improvement, claim the or combination discovery.” which he claims as his invention or We have very precludes held in this invok- case that this statute ing specifications ambiguous to alter a free claim from language, grant “it is which measures since the claim
1 painstakingly For this reason the tidbits evidence selected from by significance, the record this Court have no since the trial court beyond avowedly specifications did not themselves. look 614 2 Co., Mfg. v. patentee.”
to the Graver Co. Linde 336 specifically is dedi- U. S. is not claimed 271, What public. g., v. See, cated to the e. Miller Brass U. S. 352. For the function of claims under R. S. 350, 4888, we frequently reiterated, as have is to exclude § specifically from all patent monopoly field that is not may See, claimed, appear specifications. whatever g., States, e. v. 320 U. Marconi Wireless Co. United S. 1, 23, tacitly cases there cited. the Court Today rejects departs prin- those It from underlying cases. Dunbar, ciple which, pointed as the Court out in White 119 U. forbids treating S. claim “like a nose of may wax which be turned and twisted direction, merely referring to specification, so as something to make it include than, more or something different from, express. what its words . . . The claim statutory is a prescribed for requirement, very purpose making patentee precisely his define what inven- is; unjust tion public, as well as an evasion law, construe init a manner different from the plain import of its terms.” Giving this benefit of a it did precisely claim is no “unjust public” less to the and no less an of R. evasion S. merely § because done the name of the “doctrine equivalents.” seeking justify its emasculation of R. S. 4888 § potential parading hardships which literal enforcement might conceivably impose patentees on who had for some reason failed to claim complete protection for their dis- coveries, the Court fails even to program mention the hardships alleviation of such which Congress itself approval This judge’s Court’s of the trial specifications resort is ironic well original opinion as as unfortunate. In its this Court *9 rejected respondent’s very language contention that the invoked here support infringement applied to should be to validate a claim other upheld. wise too to broad 336 S.U. reissue 64 authorizes § S. C. provided.
has U. inoperative” or “wholly partly patent a is patents where “inadvertence, accident, from arising to errors due certain while section does And the patentee. or mistake” the expand claim, his expressly permit not doing interpreted justify it to reluctantly Court has this That Co., 350, 353-354. 104 U. S. Miller v. Brass so. accompanied by warning was however, interpretation, of claims should be enlargement for that “Reissues the 355. And Con the rule.” Id. at exception and not by privilege reissue gress hedge careful was Office, the Patent conditions. It also entrusted exacting whether authority with initial to determine courts, ****8 for justified,3 of a claim and barred suits expansion Like infringement expansion. retroactive based on such plan adequately opinion, congressional the Court’s protects patentees “piracy,” “stealing.” from “fraud,” businessmen opinion, protects Unlike the Court's also judicial expansion infringement from retroactive suits and patent ex sphere beyond of a monopoly just, fair, and reasonable. pressly plan authorizes. is what by undercutting this decision In effect it is nullified relieving purpose provision law “This was inserted ascertaining duty from the the exact invention the courts patentee by conjecture, from a laborious exam inference and derived inventions, comparison previous and a thereof with that ination of duty upon Office. by is now cast the Patent claimed him. This scrutinized, be, examined, lim is, supposed or There his claim ited, If the office and made to conform to what he entitled to. asks, appeal. he But him that he has an refuses to allow all enlarge beyond scope right of its claim no courts have Office, appellate to which Patent tribunal as allowed terms of claim in a applications referred. When the contested (as they always be), patentee, should are clear and distinct Yeomans, brought upon patent, is it. Merrill v. bound in a suit Keystone Bridge Iron Co. Phoenix S. 568.” 94 U.
274, 278. *10 safeguards. the Court has as wise recognized heretofore 143, 148. See Milcor Co. Steel v. Fuller One need not be on prophet suggest today’s rhapsody to that of of equivalents” will, the virtue the “doctrine direct case, of contravention the Miller supra, enlargement make “exception.” claims the “rule” rather than the equivalents” Whatever the merits “doctrine where of a patent differences between claims and the minimis, allegedly infringing product de colorable only, and substance, without should have doctrine application no to the facts For the case. differences respondent’s between welding petitioners’ substance and claimed flux nearly were not slight. so claims relied upon here any did involve or mechanical structure process lay in where invention or construction method rather than in the they materials used. were Rather wholly particular particular based on using materials for purpose. Respondent’s assignors experimented with sev- silicates, eral metallic including that of Ac- manganese. cording specifications to (if these are consid- ered) concluded they that while several were “more or less efficacious in prefer our we process, use silicates earth alkaline metals.” Several of their claims which this Court found too broad be valid encompassed man- ganese silicate; only claims found valid not. did Yet today the Court disregards that crucial deficiency, holding infringed by composition those claims of which 88.49% by weight manganese silicate. study view of the experimentation intense
respondent’s assignors with manganese silicate, it would be frivolous to contend that specifically failure to include in a precise substance claim was unintentional. Nor respondent does attempt give that or other ex- planation for its omission. But the similar use manga- in prior expired patents, nese referred to in the Court’s opinion, far raises more than suspicion that its elimina- from fear that its claims stemmed
tion from the valid subsequent might name result denial inclusion respondent’s patent. invalidation’ I think had petitioners Under these circumstances would follow the right on the that this Court to act belief precise *11 that a claims plain Congress patent’s of mandates expansion mark of those monopoly boundaries, and that its ain only obtained manganese include could be claims to today ruling proceeding. The Court’s statutory reissue patent “piracy” for “fraud” and stage more sets the from faithful against expected than could be business plan protect enacted congressionally observance judicial precise patent expansion against business rely what a manufacturer cannot on claims. Hereafter at able, a must claims. He language patent the how peril heavy infringement damages, the forecast technologi- far a in particular unversed a court relatively considering expand cal after language field will the claim’s To testimony experts the in field. technical assumption men enterprise on burden business the possess prescience for the of com- such bodes ill kind petitive economy professed our goal. that is way specific naturally has problems approached
The much with A to do the decisions reached. host of I cases, have have the referred, to some which treated 17-year monopoly authorized valid as a narrow patents exception competitive enterprise system. to our For that have reason, emphasized importance leaving they the all knowledge preempted free to utilize not business men g., Sontag claim. E. patent precise language v. Nut Stores Co. cases there cited. Sontag McReynolds, case Mr. Justice for speaking part: “In Court, said under unanimous case might consideration have included application original patent, for claims enough broad petitioner’s machine, accused but embrace did not. 'gave public This to understand’ that whatever might not claimed 'did not within come his ” rightfully by anyone.’ made Id. at 293. contrary approach today it to Court’s causes re- principle. treat from this The damages sound retroac- tively against petitioners assessed for what was authorized today until are but the initial on the installment cost that retreat. Douglas,
Mr. Justice dissenting. applies The Court equivalents way doctrine of which and statutory subverts constitutional scheme patents. use of
The claims of the are limited to a flux “contain ing major proportion of alkaline earth metal silicate.” Manganese silicate, flux infringe, is held to alkaline earth metal silicate. It was disclosed application and then excluded from the It claims. *12 public therefore property. became Mahn v. Har See wood, 112 U. S. It was, 361. to be sure, mentioned specifications. But the measure to be found in the claims, specifications. Mil cor Steel Co. v. Fuller 143, 145, 146. The specifications can be used to expand limit but never to the claim. Ortmayer, See McClain v. U. S.
The Court now allows the doctrine of equivalents to erase those time-honored Moreover, rules. a doctrine protect which is said to against practicing “a fraud on a patent” is used to extend a composition to a patented. could not be For manganese silicate had been by prior covered patents, expired. now Thus we end with a strange anomaly: monopoly is obtained on an unpatented unpatentable article.