Warner Jenkinson Co., Inc. v. Hilton Davis Chemical Co. - Oral Argument

Argument of Richard G. Taranto

Chief Justice Rehnquist: Well, we'll hear argument now in Number 95-728, Warner-Jenkinson Company, Inc., v. Hilton Davis Chemical Co.--

Mr. Taranto.

Mr. Taranto: Mr. Chief Justice and may it please the Court:

The Federal Circuit's ruling should be reversed because it violates two aspects of the fundamental principle that it is up to the patentee through its own drafting and through the available PTO processes to define its patent boundaries before the patent issues, not later, in an infringement action.

Our narrower point is that once Hilton Davis accepted rather than appealed from, the PTO's demand that it write the specific pH limit into the patent, that limit became binding under this Court's doctrine of prosecution history, or file wrapper estoppel.

Unknown Speaker: Factual inquiry, Mr. Taranto.

What is pH?

Mr. Taranto: The pH is a measure of the acidity of a solution, which ordinarily--

Unknown Speaker: Thank you.

Mr. Taranto: --stands for the potential of hydrogen, so that wine would be very acidic, water not at all, et cetera.

Unknown Speaker: But the lower the pH, the higher the acidity?

Mr. Taranto: Yes.

Unknown Speaker: So it's that kind of measure.

Mr. Taranto: It's upside down that way, yes.

This Court's doctrine of prosecution history, or file wrapper estoppel has always said, in a way unaffected by Graver Tank, that there should be no second-guessing of the reason for the examiner's demand for a limit once the patentee has accepted that demand and bypassed the appeal.

That principle states a critical limit on any otherwise available doctrine of equivalents, and itself requires reversal here.

Unknown Speaker: Does that raise... I'm sorry.

Go ahead.

Does that place you in the following odd position, and I may not understand your position, so let me raise it now.

Your... sort of your fallback position is that the doctrine not to apply only in a case in which the so-called point of equivalence was within the claim that was actually made, but which for some reason would not have been enforceable, the claim was, for whatever reason, too broad.

And yet, if I understand you correctly, and that's what your position would be, then the person who claims too much, but invalidly, is in a better position than the person who, before the patent examiner, gives up more than he has to, because the Patent Office indicates that without such a concession they won't give their approval, and doesn't that present a sort of a anomalous position that the person who goes the whole hog and more is going to end up in a better position than the individual who concedes too much simply to get the patent through.

Mr. Taranto: Well, I think that the fundamental point is that it's in the PTO that the process of negotiating about proper breadth can and does take place.

If someone comes in, as applicants have an inherent incentive to do, and seek broader coverage because it gives them greater rights and more opportunity to exclude the world from something, then a process takes place.

In most cases the examiner will reject an initial application, and there is a discussion about why.

Here, there were, I think, two or three rejections of the initial application, basically because of the obviousness of the filtering of these dyes.

But then, as I think is indicated at pages 103 and 107 of the Joint Appendix, as Hilton Davis' description of its interview with the examiner shows, Hilton Davis went into the examiner and the examiner said, okay, now I'm persuaded that if your pH is above 9, it won't be obvious anymore.

But it also... he also said, make sure the pH is above 6, and he pointed specifically to the specification, the part of the long disclosure that says, here's where we say what we know works.

So it is, in fact, apparent in this record why the examiner said 6 as the lower limit, and the Federal circuit just missed that.

Now, it I think would generally be true that a patentee... I'm not sure I understood exactly the--

Unknown Speaker: Well, I think it's still the case... accepting everything you say, as I understand your position, it's still the case that when the PTO is perhaps asleep at the switch and it let's a claim through which in fact is broader than would ultimately prevail, that is the one case in which in your fallback position the doctrine of substantial equivalents would be recognized, is that correct?

Mr. Taranto: --Well, that's right.

If--

Unknown Speaker: Yes.

Mr. Taranto: --The narrower ground, the prosecution history estoppel ground, in this case applies only where there's a rejection of a broader claim, or a claim that then introduces a limit, and the patent applicant has bypassed the appeal mechanism for challenging that.

There are other situations where there's a potential estoppel without a rejection and amendment where the applicant says something to put the world on notice that he interprets his claim in a particular way.

That's not this case.

If the PTO is, as you say, asleep at the switch--

Unknown Speaker: And that wouldn't be good enough for you, I mean, on your fallback position.

That would not be recognized in that case.

Equivalents would not be recognized in that case on your view, is that correct?

Mr. Taranto: --That equivalents would not be recognized?

Unknown Speaker: That's right.

Mr. Taranto: That would be okay for--

Unknown Speaker: Yes.

Mr. Taranto: --For my position.

Unknown Speaker: Sure.

Mr. Taranto: Right.

This particular case involves an example of a specific demand for a limit written into the patent that the applicant accepted, and there's a good reason for Congress' having insisted that the right way to challenge those limits is through the appeal mechanism.

One reason is that it make sense to assume that the PTO examiner in fact had a good reason if the applicant bypasses the appeal, but there are also two important structural advantages.

One is that disputes about the proper flexibility or clarity or breadth of the patent are resolved before it's issued, and the second is that in the internal appeal mechanism the examiner participates, and so the PTO can clarify whether... can clarify the reasons for the rejection.

The alternative is that in the infringement action, where the PTO is a complete stranger, PTO isn't there.

The court and the parties are let to speculate, and this is a--

Unknown Speaker: Mr. Taranto, you've said... maybe I have it wrong... that the PTO made a mistake of fact as to the 6 and above.

Mr. Taranto: --I'm sorry, I--

Unknown Speaker: So what you're saying about the... when the PTO makes it precise, that's it and you can't have any doctrine of equivalents, but wasn't there a difference between requiring 9 and under and the 6?

I thought it was the prior art that was the blockage to going above 9.

Mr. Taranto: --Right.

There are different reasons for the... for... I don't think the PTO made a mistake of fact at all.

I think the PTO got it exactly right.

Unknown Speaker: No.

No, you said the Federal circuit--

Mr. Taranto: Oh, the Federal circuit did, yes.

Unknown Speaker: --thinking that 6 had nothing to do with the PTO's concern, but if the PTO did have a concern and insisted on the number 6 being put in, approximately 6, that concern was different than the prior art ruled out a patent or a number higher than 9.

Mr. Taranto: Yes.

There are two different reasons.

There's one reason for insisting that the patent come down no longer than 9, and another reason for insisting that it come down no lower than 6.

Prior art--

Unknown Speaker: Higher than that?

Mr. Taranto: --Higher than 6.

Prior art was the reason to say, exclude everything above 9.

Another equally important reason why the patent would have been invalid if it had been below 6 is that a claim may not be broader than the specification discloses that the process works.

You look at this specification, in which Hilton Davis laid out all the experiments it had done, nowhere does it show how to make its process work.

Unknown Speaker: What would happen if... this is a hypothetical case, not this case.

The inventor says, below 6 it works but not very well.

You get a lot of foaming, and the result isn't quite as good.

You really shouldn't be playing around below 6 or you're not going to get a very good result.

What should the patent disclose in that case?

And let's presume further that an infringer still saves money if he uses the process under... an alleged infringer still saves money if he goes under 6 rather than does the salting method.

It's much better than salting, but it isn't as good as 6 and 9.

Mr. Taranto: Right.

I think that, as you say, that would be a hypothetical, since as the inventor here specifies--

Unknown Speaker: Let's... this is a hypothetical.

Mr. Taranto: --Right.

It partly depends on what the purpose of the process is.

If the purpose of the process is not just to filter a little bit of solution but is, as the inventor testified here, the whole purpose is to create an economical way of doing it in industrial quantities, then foaming problems would simply not serve that... would defeat that purpose, and at that point the patent wouldn't be useful for that purpose.

But what the examiner and the applicant would be discussing in that situation is whether the utility requirement of the statute is met in those conditions, and that would... I don't know how exactly that discussion would come out, but our point is that that's the proper place for the discussions.

Unknown Speaker: Is that a proper use of purpose?

I mean, you mean there are two different purposes?

If one purpose is to filter efficiently and another purpose is to filter inefficiently, do you get a separate patent for filtering inefficiently?

Mr. Taranto: No, I--

Unknown Speaker: Don't both patents have the same purpose, namely, of filtering?

Mr. Taranto: --Right.

I was, I guess, using the term purpose there in the sense of function from the language of function-way-result that has often been used as the touchstone for equivalents analysis.

Unknown Speaker: Yes, I mean that.

You think that for equivalents analysis it would make a difference whether--

Mr. Taranto: Well, I'm in the position of being uncertain exactly what does make a difference.

I mean, the function-way-result test has often been said, including by Judge Hand, as just another way of stating the problem.

I think it is right that every one of the judges in the Federal circuit indicated that the function-way-result test was not a terribly satisfactory way to proceed, and the basis--

Unknown Speaker: --But if you don't have the equivalents doctrine, then, in the example that you and I have just discussed you have to do one of two things, limit your patent to the most efficient range, or (b)... and suffer infringers, and suffer alleged infringers, or (b) expand the patent to an inefficient zone.

Mr. Taranto: --Right, and I--

Unknown Speaker: And it seems to me the equivalents doctrine protects against that.

Mr. Taranto: --Well, I... let me try to answer that.

What I meant to say is, there wouldn't be a bar on getting the extra range just because it's inefficient.

The question would be whether the requirements for patentability are met, and there are lots of patents that are not even improvements over prior things or particularly efficient, but are novel and nonobvious and useful in the sense of the statute, so efficiency is not a requirement.

If Hilton Davis had in fact thought that its process worked, that it actually performed the function for which it was trying to get the patent, it surely would have written its claim to include that.

By bypass--

Unknown Speaker: Mr. Taranto, on your fallback position where you're talking about the PTO insisting on a limit, how much kind of analogy to legislative history are we letting ourselves in for there?

Is it always perfectly clear why the PTO does what it does?

Mr. Taranto: --No, I think not, and I think that's a principal reason why our position is that looking behind the insistence on a limit for the reason for that insistence is not a good idea in an infringement action because it often will not be clear--

Unknown Speaker: Well, can you always find, in the PTO history, the insistence on a limit?

Supposing a limit is ultimately accepted by the patent applicant, can you always find that that was as a result of the insistence of the PTO?

Mr. Taranto: --I think always would be too strong.

There will be many, many cases in which the applicant... you have the original application.

The examiner says, I reject it for the following reasons, and writes an explanation, so that the task of interpreting those documents to see, not what the reason for the rejection is, but that there was a demand in order to obtain the patent for a certain limit to be placed in, that is something that, like other kinds of textual interpretation, sometimes will generate disputes but very often will not, as here it did not.

It's another thing entirely to look behind... once you've concluded the PTO said there must be this lower limit, there's no dispute about that, to then second-guess whether the PTO should have insisted on that limited by reexamining the reasons, and what happens, I think, is when you don't have the PTO there as a party, which you would in the internal appeal in the infringement action, you have mistakes being made.

The Federal circuit here simply ignored--

Unknown Speaker: Mr. Taranto, perhaps I should ask your opponent this rather than you, but if it was essential that there be a lower limit on the pH, how can it be that the injunction takes away the lower limit entirely, if I read it correctly?

Mr. Taranto: --Right, it does, and we've scratched our heads about that as well.

One of the... I think what happened as a factual matter is that independently of Hilton Davis, Warner-Jenkinson, before it even learned of the patent, figured out how to do this process with a different chemistry that made it able to use a lower pH.

At the time the--

Unknown Speaker: But see, the puzzling thing about it is, the court of appeals seems to think 5.0 is equivalent to 6.0.

Mr. Taranto: --That it makes no scientific difference.

Unknown Speaker: Makes no... but then the district court seemed to think 0.0 would also be equivalent.

Is that a fair reading of the fact they granted that relief?

Mr. Taranto: I think that is a fair reading of what the district court... what the district court did, yes.

Now, our broader point is that in fact the erasing of a limit that was imposed in the PTO after internal correction mechanisms are bypassed is really only the most extreme application of the Federal circuit's broad doctrine of equivalents, which suffers from the same basic problem.

It broadly undermines the statute's fundamental decision that it is in the PTO that patentees are supposed to define their asserted inventions, with any needed breadth and flexibility of language to be negotiated there, so that the resulting patent has boundaries that have been approved by the PTO and that give reliable notice of the monopolized territory.

Unknown Speaker: What does that do to Graver and to the cases that it relied on, going way back into the 19th Century?

Mr. Taranto: Well, let me talk about Graver in particular.

I think that the principle of the statute can be summarized as a principle of disclosure through approved claims.

Graver did not depart from the basic requirement of disclosure, that somebody sitting down, other inventors trying to work in the same field, competitors, by reading the documents, including with the knowledge of skilled people who understand the terms, but by reading the documents can determine where the boundaries are, because in Graver, there was actual disclosure, not in the remaining valid claim, but both in the broader invalid claim and in the specification of what the defendant was doing.

There was no problem there either of bypassing the PTO process of approval, or of not disclosing some kind of equivalent later determined in court to be scientifically unimportant in its change.

That would... seems to us, is the basic rule that ought to apply in limiting any doctrine of equivalents.

Before Graver, I think it is right to say that, with one arguable exception, this Court had not expanded any patent claims for... in this century, and that Graver was well recognized at the time as a... an anomaly in that situation.

The court came... entertained the notion only several years before in the Exhibit Supply case of simply repudiating the doctrine as fundamentally incompatible with the notion of a claiming system.

What Graver does say is that, at least on its facts, that there was a kind of... I guess Graver doesn't say this, but on its facts it was a kind of technical impediment to a proper claim.

Unknown Speaker: When you begin to talk abut a case on its facts, that always suggests that you either want to limit it or overrule it.

Mr. Taranto: Yes.

I think that the portion of Graver that needn't be touched at all, and that is that our position doesn't affect at all, is the requirement that if there's going to be an equivalent so as to expand the patent's scope beyond the understandable meaning of the claims, then it can't go beyond what is disclosed.

Unknown Speaker: You're talking about the manganese and the... and disclosure in Graver?

Mr. Taranto: The manganese, that's right.

Unknown Speaker: Which, of course, would have made the patent invalid if it had been exposed, because it was part of the prior art.

Mr. Taranto: Well, that wasn't apparently part of what was in issue in this Court at the time.

Unknown Speaker: In other words, they never answered Justice Douglas.

Mr. Taranto: Right, and then the case did continue for a dozen years where that question was raised again, but the basic requirement that the patent itself somewhere must disclose the equivalent is entirely consistent with Graver.

Unknown Speaker: Why is it that Graver should be limited?

I mean, it's a decision of this Court.

What are the reasons why any departure from it at all should take place?

Mr. Taranto: Well, I don't think that a departure from it needs to take place, depending on how broadly one reads it.

Graver is written, I think, in such a way as to focus on a host of facts that on the equities there seem to make a compelling case for finding infringement.

The critical facts, we suggest, and therefore a perfectly familiar way of reading the case, is as limited to the situation where the patent itself disclosed the equivalent.

Now, as for a broader reading, our basic position is that a broader reading is inappropriate, because it would fundamentally repudiate the long line of authority in which this Court said the claims define the reliable boundaries of the patent monopoly.

And if it's an undisclosed equivalent, an undisclosed extension of the patent, something that a reader couldn't determine, only an experimenter could determine, then it runs smack into the very notion of invention that this Court was very explicit about in the U.S. Industrial Chemicals case, which we discussed in our reply brief and this Court relied on several times in Markman, where the Court said, it doesn't matter if all the scientists agree that a small change would not make a scientific difference.

It doesn't even matter if the patentee knew that that small change would not make a scientific difference.

The patentee didn't say so, and it's only what the patent asserts as the invention that's the protected--

Unknown Speaker: But that was decided several years before Graver.

Mr. Taranto: --Right, but Graver is entirely consistent with that, and what we're suggesting is that Graver is properly read as consistent with that, rather than a broader version which would say that every other inventor, every competitor, when reading the patent, has not only to understand its terms to know where the boundary lines are, but also has to undertake experiments to see whether a change, a ten-factor change of the pH from 6 down to 5 would change the functioning of the process.

Unknown Speaker: So if the... counsel cannot foresee every possible circumstance in which this invention could be used, and a new circumstance arises, one that the Patent Office had thought it wouldn't work.

They didn't think a cylindrical tank would work on mountaintops, or that this would work at a low... at a high... at a low pH, and they were wrong.

The invention works at that low pH, or on the mountaintop.

The patentee is just out of luck?

Mr. Taranto: Well, the--

Unknown Speaker: How can counsel foresee everything?

Mr. Taranto: --Well, counsel can't foresee everything, but the patentees themselves have a number of protections.

One is, they can amend their... or file continuing applications while the original application is pending if they learn more doing the experiments.

Section 102 of the statute says to patentees, even if you've gotten your patent, you basically have a 1-year risk-free period to do more experimenting, figure out if you would expand it, and during that 1 year your patent won't be used as essentially prior art against you.

You can then go back, and if you've done something new, fine, write a new patent.

And of course you have the reissue process, which Congress wrote specifically for the purpose of saying, if you made a mistake when you wrote your original patent, come back and broaden it, but subject to certain conditions, 2 years, and others who are using the same thing have intervening rights protection.

What the doctrine of equivalents does in its broad form is to say that all patents are subject to incourt redefinition through scientific testimony, and that fundamentally defeats the clear notice function of the claiming system.

If I may reserve the balance of my time.

Unknown Speaker: Very well, Mr. Taranto.

Mr. Wallace, we'll hear from you.

Argument of Lawrence G. Wallace

Mr. Wallace: Thank you, Mr. Chief Justice, and may it please the Court:

In last April's decision in Markman v. Westview, this Court recognized that the scope of protection afforded by a patent grant is defined by the claim or claims, yet in the Graver Tank decision in 1950 the Court rightly noted that outright duplication of a patented invention is rare, so the difficulty that the courts have faced over the years is how to protect the substance of the claims against misappropriation through trivial or colorable or insubstantial substitutions, however you want to call them, without depriving the public of the notice to which it's entitled, and without enlarging the claims in the course of litigation, that is the dilemma.

And it... I think it's helpful also to think of it in terms of the statutory policies.

How can inventors be given adequate incentive to make the disclosures under the patent system that contribute to the advancement of science and technology by a--

Unknown Speaker: Well, if we assume, Mr. Wallace, that there should be a doctrine of equivalents, and that the pH 5 procedure here probably should qualify under it, what should be the division of function between the judge and the jury?

What should have happened here in the trial court, in your view?

Mr. Wallace: --Well, we... we spoke in a very qualified way in only one footnote of our brief, footnote 3, to that because the Markman decision was pending before the Court at the time we filed, and we felt that that would shed considerable light on it.

And in light of Markman, which has now held that it is exclusively within the province of the Court to interpret patent claims so as to define, so as to define the patentee's rights against literal infringement, it really would be incongruous to adopt a different rule to define the rights against nonliteral infringement.

To the extent that this is, and we think it is to a great extent a matter of interpreting the scope of the claims, it is similarly, in our view, a matter for the judge to do.

This may--

Unknown Speaker: Well, what is left, then, for the jury in coming to the ultimate conclusion of infringement?

I don't see that anything is left.

Mr. Wallace: --In some cases there will not be anything left for the jury, just as was recognized in Markman.

If the judge is--

Unknown Speaker: Well, and on the reasoning of Markman, are we in a position to take from the jury the ultimate issue?

Mr. Wallace: --Well--

Unknown Speaker: I should have thought not.

Mr. Wallace: --It depends on what is factually disputed, Mr. Justice.

If, for example, to cite a very simple example, the judge decides based on evidence as to the proper scope of protection afforded by this claim that a pH level of 5 would be an insubstantial difference that is within the scope of protection, but a pH level of 4 would require the opposite conclusion, and there were a factual dispute about what the defendant actually did, or the extent to which it did one or the other, that, of course, would be something to be resolved by the jury.

The jury would still have to decide whether the conduct engaged in by the defendant infringed upon the scope of protection as defined by the judge.

Unknown Speaker: But in a case in which there was no question, let's say, about the pH level in fact of the alleged infringer's process, then the jury verdict would be a pure formality.

Mr. Wallace: That would be true under Markman with respect to literal infringement, also, if--

Unknown Speaker: In this case, then, the court should have... or could have instructed the jury, ladies and gentlemen of the jury, I instruct you as a matter of law that the process when used at level 5 is within the scope of the patent under the equivalents doctrine?

Mr. Wallace: --That is in our view a determination for the court to make in defining the scope of protection of that element of the patent claim.

Unknown Speaker: Mr. Wallace, may I just clarify one thing, because what you've said is substantially different from what I gathered from your footnote, and it is different from what Judges Plager and Lourie said.

They said the reason this doesn't go to the jury is because it's equitable.

I understand you to be saying, no, you recognize that the color of the claim depends on the relief, and so... but you're saying it's like defining the claim.

Therefore, even though the case is entirely legal... say we just want damages, no injunction... the case is entirely legal, but it goes to the judge.

You are disavowing what was the suggestion of this note, that it somehow the legal law equity divide that places this in the judge's bailiwick.

Mr. Wallace: I think that the equitable origins of the doctrine of equivalents in affording a remedy, the equitable nature of it is relevant, and--

Unknown Speaker: That I don't follow, Mr. Wallace, because as I understand, this was a courtmade doctrine developed for cases, could be applied in a case where injunctive relief was sought, could be applied where legal relief was sought, and--

Mr. Wallace: --That is correct.

Unknown Speaker: --It wasn't an equitable remedy to relieve the rigors of the harsh common law system.

It was the way common law courts operate.

They had a doctrine, and they applied it.

Mr. Wallace: Well, we recognize that the doctrine has been applied in what used to be considered common law causes of action for damages for infringement, which is--

Unknown Speaker: And Story, I take it, is authority for the fact that it always was.

Mr. Wallace: --And these are the reasons why I stated our position the way I did, that this is largely a matter of claim interpretation, which is the first thing we said in that footnote.

We also mentioned the equitable nature of the doctrine, but we're not saying that when there is a factual dispute about what the alleged infringer did, that that is not a matter for the--

Unknown Speaker: May I ask this question, Mr Wallace: what is the Government's position with regard... I assume the judge is going to make the decision now.

Does the equivalence have to have been apparent to a person skilled in the art at the time the patent issued or at the time of trial?

Mr. Wallace: --We... our position is at the time of infringement, not at the... not at the time of trial, but not at the time--

Unknown Speaker: But not at the time the patent issued, either.

Mr. Wallace: --the patent issued, either.

Unknown Speaker: If it was not apparent at the time the patent issued, it nevertheless could become equivalent by later... because of later learning?

Mr. Wallace: Because... that's right.

It could still be just an insubstantial substitution.

We give an example in our brief of a--

Unknown Speaker: So that if the infringement action... say you have continuing development, it might be that at one time 5 would be equivalent, a few years later, 4 might be equivalent, and then today you could have no lower limit.

That could very well develop.

Mr. Wallace: --Well--

Unknown Speaker: That's the Government's view, isn't it?

Mr. Wallace: --the utility of the doctrine is whether somebody at the time of the alleged act that infringes is misappropriating what the patent has granted to the patentee to assure the commercial viability of his invention in return for disclosing it to the public, and that depends on what someone knowledgeable in the state of the art would recognize to be a substitution at the time that the infringement occurs.

Unknown Speaker: Mr. Wallace, do I understand that the United States is attempting to persuade other nations to adopt something equivalent to the doctrine of equivalents, and if that's correct, what is the definition that the United States is recommending to the rest of the world, and how does it differ, if it does, from the Federal circuit's decision here?

Mr. Wallace: Well, in our negotiations we've pointed to the doctrine as developed in this country, and so far as I'm aware have just said that something comparable as it would fit within your particular system should be recognized in order to afford the protection, and one of the amicus briefs in this case, the brief for Shearon Corporation, cites a very recent decision in Japan, which for the first time recognized and applied a doctrine comparable to our doctrine of equivalents, but it's very hard to equate our system, that involves examination in the Patent Office, with other systems which may not.

I believe my time has expired.

Unknown Speaker: Thank you, Mr. Wallace.

Mr. Schmit, we'll hear from you.

Argument of David E. Schmit

Mr. Schmit: Mr. Chief Justice, and may it please the Court:

I'd like to respond first to Mr. Taranto's argument that we cannot invoke the doctrine of equivalents in this case because the inventors intentionally surrendered pH's below 6.

I think if we look at the record in this case we find one peculiarity, although I don't think this Court has spoken on the question.

The Federal circuit has found that this doctrine of prosecution history estoppel, the intentional surrender of claim coverage, is a question of law, normally.

In this case, however, the parties agreed to submit that question to the jury, and an instruction was given to the jury on prosecution history estoppel.

It appears on page 60 of the Joint Appendix, and it essentially asks the jury to consider the reasons why surrender was made, if surrender were made.

The finding of fact to be implied from the jury's verdict of infringement is that there was no such surrender.

That fact having been established by the jury, and now having been reviewed by the trial court in the posttrial motions and by the Federal circuit, I suggest creates a very limited scope of review.

Unknown Speaker: What precisely, Mr. Schmit, was the question that the parties agreed to submit to the jury?

Mr. Schmit: Whether or not the doctrine of equivalents was applicable in this case, because of surrender of patent claim coverage that had been made before the United States Patent and Trademark Office, and in the instruction that was given to the jury, the trial court defined what prosecution history estoppel was, that it precludes a patent owner from obtaining a claim construction through the application of the doctrine of equivalents that would resurrect subject matter surrendered during prosecution of a patent application.

Unknown Speaker: Well, I suppose we can still reverse that if there's no substantial evidence to support it.

Mr. Schmit: But in this case, I think what it was incumbent upon Warner-Jenkinson to show was that, based upon the written record in the Patent Office, there was a clear showing that Hilton Davis had intended to and in fact did surrender coverage below 6.

The only evidence we have in the written record of the Patent Office is that Hilton Davis was attempting to distinguish from the prior art that showed a pH above 9.

There was no prior art that was before the Patent Office where Hilton Davis had in our view to show a pH below 6.

Unknown Speaker: But the patent examiner demanded that they not go below 6.

Mr. Schmit: There's no evidence, Justice Scalia, that the patent examiner ever demanded that limit be put in.

In fact, there's no evidence why that limit was put in the Patent Office record.

Let me give an example.

Unknown Speaker: Well, wasn't it true that the specifications described experiments within the range of 06--

Mr. Schmit: That's correct.

Unknown Speaker: --And none below 6?

Mr. Schmit: Yes.

It was silent on anything below 6--

Unknown Speaker: Yes.

Mr. Schmit: --that's correct, but there was no indication that the process would not work below 6.

I think there's a lot of case law that says that there is a presumption that the patentee, the inventors are intending to claim as much as they possibly can.

That's why when we have a doctrine of prosecution history estoppel we require clear and convincing evidence--

Unknown Speaker: If they wanted to claim as much as they possibly can, they simply should have said zero to 9.

Mr. Schmit: --They... they should have, and had I written the claim today knowing what I know, it would have been written differently.

[Laughter]

Unknown Speaker: And apparently the district judge agrees with you, because that's what the injunction requires, doesn't it?

Mr. Schmit: What we learned during the evidence in the case was, outside the written record of the Patent Office, was that the process would work all the way down to a pH of 2.

That evidence was submitted to overcome arguments that were made by Warner-Jenkinson that there is supposed tremendous foaming problems below 6.

What the inventor testified to was, yes, the process would foam, but it would still work to operate to purify the dye all the way down to 2, and so based upon that, the judge entered the injunction.

Unknown Speaker: Does that mean that if some third party used a pH down to 1 or 2, that he would also be an infringer under the doctrine of equivalents?

Mr. Schmit: We would have to then examine whether or not we have an insubstantial difference, whether--

Unknown Speaker: Well, you don't, according to this record.

Isn't that clear?

Mr. Schmit: --Well, that's what the judge found in entering the injunction, so based upon the facts of this case within the operation of this particular process, a pH of 2 is equivalent to a pH of 6.

Unknown Speaker: Well, why--

--Mr.--

--Why didn't the patentee, Hilton Davis here, use the statutory scheme for a subsequent amendment of the scope of the patent if that's the position it wanted to take.

There is a statutory provision that enables a patent applicant who's given a patent to come back in requesting an enlargement of the scope.

Mr. Schmit: Yes, Justice O'Connor.

That's the reissuing statute.

Unknown Speaker: Yes.

Mr. Schmit: Yes.

Unknown Speaker: And so if that isn't done, it seems to me that it makes the use of the doctrine of equivalents to cover something like that questionable.

Mr. Schmit: The statutory scheme for a reissuance exists to correct defects in patents where the patent owner recognizes there's something defective in the patent, either because they have misstated something, or they realized they didn't claim as much as they had--

Unknown Speaker: Well, that's this case.

They now want to assert something they didn't claim, which is a pH below 6.

Mr. Schmit: --But the difference in reissuance is, it permits you to enlarge the scope of the claim within the 2-year statutory period.

Unknown Speaker: Right.

Mr. Schmit: The doctrine of equivalents operates on a different premise, and that is that you're not enlarging the scope of the claim.

All you are doing is substituting equivalents for what you have literally claimed.

Let me provide an analogy.

Synonyms.

We have a word, the word car.

We have synonyms to that word, automobile, motorcar.

If we substitute one for the other, we aren't enlarging the scope of the--

Unknown Speaker: Yes, but it's very different here, where there's been a specified range of the pH, and Hilton Davis wants to claim that something that isn't within that scope is nonetheless protected.

Mr. Schmit: --And if we are to have the doctrine of equivalents, it says that we have the right to include within our patent not only that which we have expressly, literally claimed, but all those things which are equivalent because of insubstantial differences.

In this case, there was the additional issue--

Unknown Speaker: But it's very hard to conclude that it's insubstantial when it's outside the limits that the patent owner has agreed to have.

Mr. Schmit: --But I think that's the very reason that the doctrine of equivalents exists, so that the patent owner is not forced to only have as coverage and to be protected against what they have literally claimed.

Unknown Speaker: Mr. Schmit--

Mr. Schmit: Yes.

Unknown Speaker: --before we get by the argument prior to the equivalents argument, namely whether there was a waiver, you say that the record discloses... does not disclose that the examiner demanded that 6 be the level?

Mr. Schmit: As a condition of the grant, yes.

Unknown Speaker: Why don't you look at page 107 of the Joint Appendix, which is the patentee's record of interview, and it says the examiner stated that on presentation of such arguments, namely the arguments that had been made above showing four major points of difference, coupled with an amendment in claim 1 inserting the pH range from 6 to 9.

In accordance with the specification disclosure at page 12, and I gather the specification disclosure was the reason he picked 6, he would reconsider his rejection as based on--

Mr. Schmit: That's correct, and if we look at the rest of the record we find the reason that the examiner was suggesting that was--

Unknown Speaker: --He wasn't suggesting it.

He said he... this is the only basis on which he said he would reconsider it, namely, you insert a range from 6 to 9.

Mr. Schmit: --And the only reason that we could learn from the record, the written record for that type of amendment was to avoid pH's above 9 that were in the prior art.

Unknown Speaker: Well, what about the specification disclosure?

Mr. Schmit: The specification did disclose 6, and up to 9, but the question here--

Unknown Speaker: So that's what he was basing it on, and doesn't the patent have to comply with the specification?

Mr. Schmit: --What the claim has to do is, it has to enable a person of ordinary skills in the art to practice the invention, that what this... what we have here is, the examiner's suggesting that 6 be put in to be absolutely sure that that enablement requirement was met.

Unknown Speaker: Well, you're saying he suggests it be put in.

His only agreement to reconsider has as one of its conditions inserting the pH range from 6 to 9.

I mean, you can call it a suggestion if you like, so long as you say he suggests that unless you do that he won't reconsider it.

Mr. Schmit: But if we look at the rest of the written record in the case, we find that the only reason that any pH limitation was being put in was to avoid the prior art.

They had to provide this enablement function.

Unknown Speaker: Well, the other side said there's another reason, that is, that the specification has to comply with the patent.

Mr. Schmit: Well--

Unknown Speaker: And the specification here was only 6 and above.

Mr. Schmit: --I disagree with that premise.

I think it's basic patent law that the claim could be broader than the specifications.

The question is, have you taught in your patent enough to enable a person of ordinary skill in the art to practice the invention?

If you teach them 6 will work, and if a person of ordinary skill in the art also knows that 5 will work, as they must in order to apply the doctrine of equivalents, then we have enablement.

Unknown Speaker: Well, whatever the reason was, at least he says it has to be from 6 to 9.

Now, your argument is, well, he had no reason for the 6.

Mr. Schmit: That's right.

Unknown Speaker: He had a reason for the 9, no reason for the 6, and therefore we can disregard the 6.

That requires whoever's conducting this to not only see what he said, but go further back into the history and see the reasons for what he said.

Mr. Schmit: That's entirely correct.

Unknown Speaker: I don't like history.

I'm not inclined to--

[Laughter]

--want to go any further back than I have to.

But isn't it true, there is a reason for the 6, and that is, isn't the patent supposed to teach the person who wants to read and figure out how this thing will work?

Isn't there an implied representation in the patent that the device will work, and if you don't know whether it will work below 6 or 9, you can't make that representation, and you didn't know.

Mr. Schmit: We know that because the doctrine of equivalents was applied in this case, that the person of ordinary skill in the art--

Unknown Speaker: Well, but you didn't know it... did you know it at that time, or the time of the infringement?

When does the doctrine of equivalents come into being?

Mr. Schmit: --I agree with the Government that the doctrine of equivalents should apply--

Unknown Speaker: All right, so you wouldn't... you didn't necessarily know it at the time the patent issued.

Mr. Schmit: --Not necessarily.

Unknown Speaker: In fact, you... if you had, you would have said you had experimented at these lower levels, presumably.

Mr. Schmit: For whatever reason, it wasn't in the patent.

Unknown Speaker: But you can answer Justice Stevens question yes, that you put in 6 because you knew it would work at that level, and you weren't sure it would work below, and still not surrender your position.

Mr. Schmit: That's correct.

Unknown Speaker: Can you go back for a second to Justice O'Connor's question, and you were talking about synonyms.

I'm trying to understand how the doctrine of equivalents works.

Suppose that I have invented five chemicals, A, B, C, D, E, and you put them together and it grows hair, for example.

[Laughter]

And then sometime in the future, 15 years from now, people discover a new chemical, didn't even exist before.

It's called X, and it does the same as A, and so they do the same thing, but they use X, and then I guess that's equivalent, and then I'm going to obviously say, then they invent Y, and then Z, and pretty soon instead of A, B, C, D and E, what we have are five totally new chemicals, didn't exist before, but still grows hair in the same way, same function, same... now, is that supposed to be equivalent?

Mr. Schmit: I think we apply the same test.

Unknown Speaker: All right.

If that's so, you see, I think the lawyers on the other side are arguing, my goodness, we're supposed to advise clients, and we have no idea how to do it, because we read the patent thing and we know with this doctrine people might discover all kinds of new chemicals in the future, and we just don't know how to do it, and so what we're groping for, is there then no limitation on this doctrine of equivalents?

I mean, how do you prevent it from becoming so uncertain an element that it becomes impossible to advise the client?

Mr. Schmit: I think the way to answer that is to say that when the client asks for the advice, you take that point in time and ask, at that point in time, is A, B, C, D, and F equivalent to X.

Unknown Speaker: But you've... oh--

Mr. Schmit: At the time the advice is being sought.

Tomorrow, it may change, but at least as of the point in time that we're talking about right now, what does the person of ordinary skill in the art know about these equivalents?

Is there an insubstantial difference?

I'd like to also respond to Mr.... to my colleague's arguments about being disclosed in the patent.

Unknown Speaker: --Before you do that, can you just clarify your opening statement?

It is your view that ordinarily the question of the prior history and what that precludes, that that is ordinarily a question for the judge, but it was just happenstance that the parties agreed that it would go to the jury, because I thought that that was one question for this Court to decide.

If you're not disputing it, then I guess everybody agrees that prosecution history estoppel is for the Court.

Mr. Schmit: I think my point was that I couldn't find that this Court had spoken on it.

The Federal circut has, and has said it's a question of law, and that's the rule that we've always followed, but in this case, because it was submitted to the jury, then we treated it as a question.

Unknown Speaker: Right, but you don't dispute that the rule is prosecution history estoppel is a question for the Court?

Mr. Schmit: Yes.

Unknown Speaker: Okay.

But it's not an issue that we have to decide in this case.

Mr. Schmit: I don't believe so, no.

Unknown Speaker: And would you concede that it was even within the question that we took?

Mr. Schmit: It does not appear to be.

Unknown Speaker: No, it doesn't.

Mr. Schmit: The question went more to the existence of the doctrine we quoted.

Unknown Speaker: It was a question about the substance of the doctrine.

Mr. Schmit: The requirement of being disclosed in the patent, first, the doctrine of equivalents is an objective inquiry.

To require disclosure in the patent makes it into a subjective inquiry, what does the patentee know, rather than what the person who has ordinary skill in the art know.

We also have a practical problem.

Unknown Speaker: So you think we have no room within the doctrine for looking at the culpability of the alleged infringer?

Mr. Schmit: Well, that is the entire question, the culpability of the alleged infringer.

What I think Mr. Taranto was getting at was, in order to have an equivalent, you must state it in the patent, and that's what I'm disagreeing with at this point.

There are hundreds of thousand of issued patents that are still active, many more applications which have been filed, which cannot now be amended to put those types of equivalent in.

You would be depriving people of many, many expectations that they would be protected for equivalents.

Unknown Speaker: On the other hand, there ought to be some reasonable limitation to its use, so that it isn't dredged up in every single infringement case, and as appears to be the case today.

Mr. Schmit: What I think Graver and some of its predecessors tell us, it's available for use in any case where there's no literal infringement, but there are limits.

One of the limits we've talked about is prosecution history estoppel.

There is another limit that you cannot claim equivalents that would cause you to read on, to run into the prior art, that is, to invalidate your patent.

There are limitations inherent in the operation of the doctrine of equivalents itself.

Only insubstantial changes qualify.

I might analogize--

Unknown Speaker: Your insubstantial you define as a tenfold reduction in the acidity.

Mr. Schmit: --Yes, in the context of this process, that's true.

Unknown Speaker: I don't--

Mr. Schmit: All right, let me give an example--

Unknown Speaker: --That sounds substantial.

That sounds substantial to me.

Mr. Schmit: --Let me clarify with perhaps an example.

Suppose... a soft drink has a pH of 3.

Water has a pH of 7.

They're both equally applicable to quench thirst, irrespective of their pH.

Goldfish wouldn't thrive very well at a pH of 3 in a soft drink, but would in water, so in the context of what the application is, in the context of the invention, a pH of 5, or a pH of 6 may make no difference.

In fact, here it didn't.

Another context, a slight change of pH may make the water--

Unknown Speaker: But pH was central enough to the invention that it was specified.

I mean, you know, when I'm drinking water or Coke I don't specify what the pH is, but it was central enough to the invention here that it was specified in the patent.

Mr. Schmit: --Yes, and there were several reasons why the pH had some importance to this invention.

First, it had to lie within the range that it would not destroy the numbering that was doing the filtering, so you could not get too acid or too alkyl.

Secondly, the process has to operate within a certain range, or else you end up with a product that is so acid, a dye, or so alkaline that it can't be used as a practical matter.

So there are limits, and one of the limits is 9.

There is also probably a lower limit that, as the inventor testified, you wouldn't want to go below 2 because it would cause the membrane to be eaten up.

Unknown Speaker: I'm still a little worried about the army of experts possibly in a chemical case or biotechnology, on either side arguing that two substances that are made up really of very different chemicals are in fact made up of chemicals that do the equivalent thing, and at some period of time it would have been obvious to some group of people.

It's the uncertainty inherent in that kind of procedure that makes me ask if you can consider some limitations on this doctrine that would prevent my concern from becoming real.

Mr. Schmit: I think as long as we have questions of fact and law and scientific inquiries like this we're going to have that problem, which brings me to the jury question, the issue really, because I think that was another concern that my colleague had.

Our position is--

Unknown Speaker: Well, I thought you agreed a moment ago that it needn't be decided in this case and wasn't even included in the question presented.

Mr. Schmit: --Well, the word jury was in the question.

Unknown Speaker: Yes--

--Do you think that's enough?

Mr. Schmit: Well, I don't know.

[Laughter]

I would just state, though, I think Markman draws the line between what is for the court and what is for the jury.

On one side of the line we have claim construction, clearly for the judge.

On the other side of the line we have infringement, clearly for the jury.

Unknown Speaker: Mr. Schmit, isn't it true that in fashioning relief in an infringement case, once the... there's a determination whether by the judge or jury that there's been infringement, normally the judge will have to enter an injunction, and won't he then, he or she then have to face up to the problem of what is the permissible boundary line which the infringer may no longer cross?

Mr. Schmit: Yes, and this is a control that the judge could exercise over just how far the doctrine of equivalents can go in fashioning this--

Unknown Speaker: So before the case is over, the judge is going to have to perform that task.

Mr. Schmit: --Yes.

Unknown Speaker: Well, do you think the judge can perform that task simply de novo, when he comes to considering the injunction?

If, in fact, say a jury has found... a particular way the judge could say, well, since this is equitable I'm going to kind of disregard that finding of fact?

Mr. Schmit: I don't think the judge can do that, but I think, like what happened in this particular case, where the jury came back with a finding implied that a pH of 5 was an infringement, and the judge took the limit all the way down to 2, is going beyond what the jury did, but I don't think you can ignore a factual finding by the jury.

In Markman, the line that was drawn was between the construction of the instrument and the character of the thing invented, and this Court quoted from the Bischoff case back in 1869.

On the one hand we have construction of the instrument.

The character of the invention is really the heart of the invention, as you stated in Markman, how it functions, the way in which it does it, the result that it gives.

That's the distinction to be made.

In Real Typewriter, which was talked about in the Graver case, Judge Learned Hand said that a patent is like any other legal instrument, but it's peculiar in this, that after all aids to interpretation have been exhausted and the scope of the claims has been enlarged as far as the words can be stretched, on proper occasions the court may make them cover more than their meaning will bear.

There are times that resort to the doctrine of equivalents.

That's what distinguishes, I think, between judge and between jury.

The doctrine of equivalents I submit, I think is more vital today than it's ever been.

There was a time when an inventor could go out in the barn and cobble up an invention, but today it requires so much expense and so much risk by companies, particularly in the biotechnology area, to come up with inventions that they need the protection the doctrine of equivalents affords, and I urge this Court to affirm the Federal circuit, who sees these cases every day.

Unknown Speaker: May I ask you just one last question?

We talked earlier about culpability being relevant.

Mr. Schmit: Yes.

Unknown Speaker: What about designing around a patent?

Is that a plus or a minus?

Mr. Schmit: It's a factor to be considered.

Unknown Speaker: And which way does it cut, is what I'm asking?

[Laughter]

Mr. Schmit: What the Federal circuit teaches us, as implied from Graver, that if a patentee... if an accused infringer makes an attempt to design around the patent there is an inference to be drawn by the trier of fact that they have attempted to incorporate substantial changes.

It's merely an inference, so it's merely one factor that can be considered in the whole--

Unknown Speaker: I'm still not quite clear whether you're saying it's a plus or a minus.

Is it a factor that favors the infringer, or favors the patentee?

Mr. Schmit: --It favors the infringer if--

Unknown Speaker: Yes.

Mr. Schmit: --they make the attempt to design around it.

Unknown Speaker: And that's clear from the Fifth Circuit model instructions.

The Fifth Circuit has approved the model instructions on infringement, and it does say that designing around is a factor in favor of the alleged infringer, just as copying is a factor in favor of the patentee.

Mr. Schmit: That's true.

That's true.

I didn't mean to imply from culpability that the subjective intent of the infringer should be a factor.

This is an objective test, and whether or not the infringer intended to infringe or did not intend to infringe is irrelevant, as I think Colonial Oil teaches.

Unknown Speaker: But the irony is, he tries to get something that's commercially useful and as close to the patent as is lawful, and that's designing around in a way.

In another way, it's copying.

I mean, the line between the two is kind of fuzzy.

Mr. Schmit: What the infringer must do then is to make substantial changes, which I think benefits everybody, because now, instead of little, incremental changes, you have big changes in technology, and I think that benefits everyone.

Thank you very much.

Unknown Speaker: Thank you, Mr. Schmit.

Mr. Taranto, you have 2 minutes remaining.

Rebuttal of Richard G. Taranto

Mr. Taranto: If I could make a couple of quick points, the estoppel point I think, set out at page 28 and 29 of our petition, is, I think, widely recognized as the single most important limit in defining the scope of the doctrine of equivalents.

Unknown Speaker: But it really wasn't in the questions presented.

I mean, that's the major problem I have with that issue.

Mr. Taranto: Well, I guess I... we intended it to be in the question presented.

The question presented said whether infringement should always be available based on a mere finding of substantial difference.

We said no, and the first primary limit we suggested was prosecution history estoppel as part of 28 and 29.

Unknown Speaker: This is in your petition?

Mr. Taranto: Yes.

It is 28--

Unknown Speaker: Even though the accused product or process is outside the literal scope of the claim.

I don't see where it refers to prosecution history.

Mr. Taranto: --Right, it did not use that label.

Prosecution history estoppel comes up only when you have a defendant's product that is outside the literal terms of the patent, otherwise there's nothing to estop, otherwise you have literal infringement, so it is in every text the essential limit in defining the scope of the doctrine of equivalents.

The important thing that has happened now to the doctrine of equivalents is that it has become the rule, rather than the exception.

What that means is that under a substantial differences standard other inventors, who often do make important incremental changes working in the same field, don't know where the boundaries are that they can work, and here a boundary was set at 6.

The examiner explicitly, at page 107, referring to 10... to page 22 of the Joint Appendix, said, the reason is that's all that's enabled in the specification, exactly as in the... in all of this Court's prior cases.

Unknown Speaker: But there's no disagreement on the estoppel history question, as in the abstract.

The way you assert... it's presented here, both sides agree there's such a thing--

Mr. Taranto: I know, and I--

Unknown Speaker: --as estoppel history.

They just disagree as to whether such estoppel occurred here.

Mr. Taranto: --I don't think so.

I think there are two fundamental legal disagreements.

The Federal circuit said, we've reexamined the reason, and then it said, we discount all reasons except prior art.

Those are legally incorrect, and if we change those and say the reason doesn't matter, there was a demand, and second, that even if you do look at the reason, invalidity for overbreadth is no worse than prior art.

Chief Justice Rehnquist: Thank you, Mr. Taranto.

The case is submitted.