Bill Goodwine's Wiki - User contributions [en]

Talk:In re Kahn, CAFC 04-1616 (2006)

2010-04-14T03:45:32Z

Maura: Created page with ' == Maura == First, the Board rejected the argument that the invention’s intended use supports patentability, noting that “the manner in which a claimed apparatus is intende…'

== Maura ==

First, the Board rejected the argument that the invention’s intended use supports patentability, noting that “the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus [from] a prior art apparatus satisfying the claimed structural limitations.” Id. at 5-6. Second, the Board rejected the argument that because “the purposes of the [prior art] references . . . are different from the [invention’s] purpose,” the invention is non-obvious, explaining that “[t]he law . . . does not require that references be combined for reasons contemplated by an inventor” and that “prior art need not suggest the same problem set forth by appellant.” Id. at 6-7. Third, the Board rejected the arguments that features of a secondary reference be capable of incorporation into the structure of a primary reference and that the invention be suggested completely by one reference. Id. at 7. Finally, the Board rejected a “long-felt need” argument, explaining that Khan had not presented any objective evidence of a long-standing problem or long-standing need in the art. Id. at 11-12.

However, mere identification in the prior art of each element is insufficient to defeat the patentability of the combined subject matter as a whole. Id. at 1355, 1357.

The “motivation-suggestion-teaching” requirement protects against the entry of hindsight into the obviousness analysis, a problem which § 103 was meant to confront. See 35 U.S.C. § 103 (stating that obviousness must be assessed “at the time the invention was made”);

(internal quotations omitted)). By requiring the Board to explain the motivation, suggestion, or teaching as part of its prima facie case, the law guards against hindsight in all cases—whether or not the applicant offers evidence on secondary considerations—which advances Congress’s goal of creating a more practical, uniform, and definite test for patentability.

The analogous-art test requires that the Board show that a reference is either in the field of the applicant’s endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection.

The motivation-suggestion-teaching test picks up where the analogous art test leaves off and informs the Graham analysis. To reach a non-hindsight driven conclusion as to whether a person having ordinary skill in the art at the time of the invention would have viewed the subject matter as a whole to have been obvious in view of multiple references, the Board must provide some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct. The requirement of such an explanation is consistent with governing obviousness law, see § 103(a); Graham, 383 U.S. at 35; Dann, 425 U.S. at 227-29, and helps ensure predictable patentability determinations.

In considering motivation in the obviousness analysis, the problem examined is not the specific problem solved by the invention but the general problem that confronted the inventor before the invention was made.

Therefore, the “motivation-suggestion-teaching” test asks not merely what the references disclose, but whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims. See Cross Med. Prods., 424 F.3d at 1321-24. From this it may be determined whether the overall disclosures, teachings, and suggestions of the prior art, and the level of skill in the art—i.e., the understandings and knowledge of persons having ordinary skill in the art at the time of the invention—support the legal conclusion of obviousness.

“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”

(“A judicially noticed fact must be one not subject to reasonable dispute in that it is either (1) generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.”);

In re Kahn, CAFC 04-1616 (2006)

2010-04-14T03:41:24Z

Maura: Created page with 'United States Court of Appeals for the Federal Circuit 04-1616 (Serial No. 08/773,282) IN RE LEONARD R. KAHN Leonard R. Kahn, pro se, of New York, New York. John M. Whealan, …'

United States Court of Appeals for the Federal Circuit

04-1616 (Serial No. 08/773,282)

IN RE LEONARD R. KAHN

Leonard R. Kahn, pro se, of New York, New York.

John M. Whealan, Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, for the Director of the United States Patent and Trademark Office. With him on the brief were Linda Moncys Isacson and Raymond T. Chen, Associate Solicitors. Of counsel was Mary L. Kelly.

Appealed from: United States Patent and Trademark Office, Board of Patent Appeals and Interferences
United States Court of Appeals for the Federal Circuit

DECIDED: March 22, 2006

Before MICHEL, Chief Judge, LINN, and PROST, Circuit Judges.

LINN, Circuit Judge.

Leonard R. Kahn (“Kahn”) appeals from the final decision of the Board of Patent Appeals and Interferences (“Board”) concluding that claims 1–20 in patent application number 08/773,282 (“the ’282 application”) are unpatentable as obvious under 35 U.S.C. § 103.<ref>The Board also affirmed its own rejection of claims 21 and 22 as being non-enabled under 35 U.S.C. § 112, ¶ 1; however, in his opening brief on appeal Kahn withdrew those claims, leaving only claims 1–20 before us.</ref> Because the factual findings underlying the Board’s conclusion are supported by substantial evidence, and because the Board did not commit legal error in concluding that the claims would have been obvious, we affirm.

I. BACKGROUND
A. The Invention

The ’282 application, filed on December 24, 1996 as a continuation-in-part of a series of continuing applications dating back to 1989, involves a “reading machine” that may be used by the blind. Prior to the application, machines that employed memory and display components by which material could be “read” using hand-held optical pens and speech synthesizers were known in the art. While a user can control these devices by hand to repeat words and to read at various speeds, such control is cumbersome, which makes it difficult for a blind user to study complex publications. Kahn addressed this problem and claims invention in a device that is operated by eye control and sound localization such that it can read out loud the word “looked at” by the user.

Kahn treats claims 1–20 as a group with claim 1 being representative:

1. A reading machine suitable for use by totally blind individuals for reading the complete text, or a selected portion thereof, of a document stored in storage means, at the option of the user, comprising:
(a) means of storing at least a portion of the text of the document to be read,
(b) means for retrieving a selected portion of said stored text made available for immediate “reading,”
(c) means for producing an acoustical display of the selected portion of said stored text, in a page-like format,
(d) means for determining the location on the acoustical display towards which the user is “looking,” and
(e) means for generating speech sounds verbalizing the word that is formatted to appear on the acoustical display at the location the user
is “looking” towards.

A preferred embodiment of the ‘282 patent is illustrated below in Figure 1.
(FIgure omitted)

In operation,
*[t]he information being “read” . . . is fed through intermediate storage means to speech synthesizer means for converting the written information to electrical waves representing speech sounds. These electric waves are *fed to . . . a four speaker array wherein the speakers are located in a fashion so that the artificial sound image can be placed at various points on the artificial screen or page allowing the user to hear the words at the *desired locations. These locations would be selected by the user looking at a specific location on the artificial screen or page.

*The user would then move his or her eyes to “look” where the next word would be expected to appear, i.e., directly to the right of the spoken word. This would then cause the next word to be “spoken” and the sound *image would appear slightly to the right. This motion is achieved by energizing the four speaker array with different levels of audio power. . . .

*When the user completes the “reading” of the last word on the page, . . . the reader would have the option of rereading a section on the page or causing the page to be “turned.” If the user wishes to reread . . . , he can *direct his attention to the material to be reread by “looking” at the portion of the page where he remembers hearing the material.
*On the other hand, if he wishes to continue reading the material he can turn the page by looking along the bottom line past the right hand edge of the “page”. The first word on the new page would be heard when the *reader directed his or her attention to the upper left hand corner of the page where the first word on the new page would be expected.

’282 application at 11-13.

According to the specification, the device can employ a conventional scanner to input data; a conventional character recognition device to translate and send data to a storage device; and a page generator to take data from the storage device and format it for a visual display and for a word selector, the latter of which can send the data to a conventional speech synthesizer. After an optical sensor detects where a user is “looking” and a word is “selected” for vocalization, the synthesizer feeds an audio signal to a localizer control. Loud speakers are arranged at the corners of the “page” to allow the user to confirm localization of sound. The specification further indicates that
*[t]here are a number of devices available for sensing where an individual is looking. For example, Garwin et. al. 4,595,990 . . . , Anderson et. al. 4,579,533 . . . and Stanton 4,322,744 . . . . More specifically, Anderson’s [sic] patent discusses feed-back which may be visual, auditory or tactile to verify decisions by eye control equipment.

*However, such inventions are not suitable for totally blind individuals who are not verifying where they are looking but are using their eyes to direct which part of the artificial page should be read to produce a sound *image. This makes essential a two dimensional stereo sound stage which the blind person solely depends upon.

’282 application at 16.

B. The Prior Art

The Board’s rejection was based on Garwin et al., U.S. Patent No. 4,595,990 (issued June 17, 1986) (“Garwin”), in view of Anderson et al., U.S. Patent No. 4,406,626 (issued Sept. 27, 1983) (“Anderson ’626”), Anderson et al., U.S. Patent No. 4,579,533 (issued April 1, 1986) (“Anderson ’533”), and Stanton, U.S. Patent No. 4,322,744 (issued March 30, 1982) (“Stanton”). The Board alternatively used Anderson ’626 or ’533 as primary references.

Garwin discloses an eye-controlled interactive information processor that senses the portion of a visual display at which the user is looking. The processor is connected to the display, which, in turn, can be partitioned so that different information is displayed in discrete areas. By gazing in different directions, the user informs the processor of the displayed item that is selected. Garwin, col. 2, ll. 60-68. The preferred embodiment employs a reflected light eye-tracking device to determine where the user is looking. Id., col. 3, l. 66–col. 4, l. 62. The eye-interactive control generally uses a technique where the user is presented with a number of targets having some meaning, such as “words or phrases” displayed on screen. Id., col. 9, ll. 62-67. “Visual, auditory or tactile” feedback is then given to the user to indicate that a selection has been received. Id., col. 2, ll. 10-11; col. 11, ll. 59-64. The user then can verify or cancel the selection. Id., col. 10, ll. 1-6. Garwin states that “it will be apparent to one skilled in the art that . . . the benefits of the invention will be achieved by many types of apparatus.” Id., col. 2, ll. 50- 53. It can be used for “request[ing] display of a page of text from a . . . table of contents,” id., col. 3, ll. 42-44, or “[other] presentation of textual material,” id., col. 10, ll. 31-33.

Anderson ’626 discloses an interactive “electronic teaching aid” which enables a user viewing text on a display to designate any words or portion of text for immediate audible vocalization. Anderson ’626, col. 1, l. 8; col. 2, ll. 11-17. The components include: a selector switch, which when in the “text” position, causes data to be transmitted to a monitor and displayed in legible form, id., col. 3, ll. 27-31; an advance button, which when depressed allows the user to select and retrieve the next page of text from memory, id., col. 3, ll. 31-41; a memory, which can store each word of the text coded for speech, id., col. 3, l. 66–col. 4, l. 6; and a word designator light pen, which the user can place on a word to hear the word vocalized through the speaker, id., col. 3, ll. 54-68; col. 10, ll. 51-58. Anderson ’533 discloses an improved microprocessor-based version of Anderson ’626. Anderson ’533, col. 1, ll. 19-24, 41-56.

Stanton discloses an acoustical imaging system for use by visually impaired individuals that uses horizontal and vertical directional sound to represent visual aspects of an environment. Stanton states that a user can locate “the position of a virtual sound source as representing a point in space” such that different signals may represent different directions. Stanton, col. 1, ll. 58-61. The preferred embodiment features four loud speakers or transducers mounted at the corners of a vertical display panel. Id., col. 2, ll. 54-55. When the user moves the cursor, the sound emanating from the speakers is phase shifted to produce a virtual sound seeming to come from a particular location related to the position of the cursor. Id., col. 1, l. 66–col. 2, l. 2; col. 2, ll. 55-63. In another embodiment, a quadraphonic headset is used in place of the transducers to achieve the effect of producing a virtual sound identifying a position. Id., col. 4, ll. 26- 35. Stanton states that the device may be used as a “rudimentary reading device.” Id., col. 1, ll. 62.

C. The Board Decisions

Kahn filed the ’282 application with 22 claims as a continuation-in-part of application number 07/645,102 (“the ’102 application”), which was filed in 1991. The ’102 application was a continuation-in-part of a series of abandoned continuing applications dating back to application number 07/338,597, which was filed in 1989. While claims 21 and 22 of the ’282 application are not at issue in this appeal, the Board addressed those claims on several occasions, which led to the creation of a substantial Board history. As a result, the final decision with respect to the obviousness rejection of claims 1–20 spans three decisions, which include Ex Parte Kahn, No. 2004-1091 (B.P.A.I. June 30, 2004) (“2004 decision”); Ex Parte Kahn, No. 2000-1130 (B.P.A.I. Feb. 24, 2003) (“2003 decision”); and Ex Parte Kahn, No. 94-2233 (B.P.A.I. Sept. 21, 1995) (“1995 decision”).

In its 1995 decision, after reversing the examiner’s anticipation rejection, the Board sua sponte rejected the relevant claims under § 103. The Board found that Garwin taught “the concepts of determining where on a display screen a user is ‘looking’ . . . and giving either visual or auditory feedback to the user” and that “[w]hile nothing specific is said as to acoustically reproducing a word displayed at that location, common sense . . . indicate[s] that such an auditory feedback response is appropriate in view of such auditory feedback confirmation clearly suggested by Anderson ’533 or ’626.” 1995 decision, slip op. at 5 (emphasis in original). The Board found that “to whatever extent Garwin is not concerned with text per se, [the Anderson] references are” and “teach the advantages of text display with audio reproduction,” concluding that

*the artisan would have found it to have been obvious to have modified Garwin for display of text passages and selection of works therefrom with vocalization thereof as feedback confirmation, all as taught by Anderson *’626 or ’533 . . . [or] to have modified either of these Anderson references to use the eye control of Garwin so that the user’s hands would have been free for other tasks.

Id., slip op. at 5-6. The Board found that Stanton “teaches the benefit of acoustic imaging in reading systems” and that “[i]t would have, thus, been further obvious to the artisan to add advantageous acoustic imaging to either of the above-noted modified devices of Garwin or the Anderson patents which would have word positions acoustically and visually indicated.” Id., slip op. at 6.

In its 2003 decision, the Board expressly incorporated the findings and rationale from both its 1995 decision and the Examiner’s Answer filed on April 24, 2000. 2003 decision, slip op. at 3-4. In the Answer, the Examiner had explained that Garwin teaches “a buffer memory which stores at least a portion of the information derived from sensing means and means for subsequently retrieving the sensed information,” “means for displaying stored written text,” and “means for determining which word of the displayed text the user is looking towards”; that Anderson ’626 teaches “means for generating speech sounds verbalizing the looked at word”; and that Stanton teaches “means for verbalizing each word the user’s eyes are directed towards in two dimensional stereo.” Examiner’s Answer at 5-6. Rejecting Kahn’s argument that hindsight drove the combination of references, the Board reiterated that the rationale of the 1995 decision was correct and explained that motivation “clearly is based upon a prospective look at the state of the art.” 2003 decision, slip op. at 8-11.

The Board addressed several other arguments. First, the Board rejected the argument that the invention’s intended use supports patentability, noting that “the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus [from] a prior art apparatus satisfying the claimed structural limitations.” Id. at 5-6. Second, the Board rejected the argument that because “the purposes of the [prior art] references . . . are different from the [invention’s] purpose,” the invention is non-obvious, explaining that “[t]he law . . . does not require that references be combined for reasons contemplated by an inventor” and that “prior art need not suggest the same problem set forth by appellant.” Id. at 6-7. Third, the Board rejected the arguments that features of a secondary reference be capable of incorporation into the structure of a primary reference and that the invention be suggested completely by one reference. Id. at 7. Finally, the Board rejected a “long-felt need” argument, explaining that Khan had not presented any objective evidence of a long-standing problem or long-standing need in the art. Id. at 11-12.

In its 2004 decision, the Board entered a final rejection of claims 1–20 based on its 2003 decision. Kahn timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

II. DISCUSSION A. The Parties’ Arguments

Khan advances two main arguments. First, Khan asserts that the Board’s finding of motivation to combine was unsupported by substantial evidence. Citing In re Lee, 277 F.3d 1338 (Fed. Cir. 2002), and In re Rouffet, 149 F.3d 1350 (Fed. Cir. 1998), Khan argues that the Board overstated the knowledge of the skilled artisan and employed improper hindsight. Specifically, Khan asserts that a skilled artisan would not have sought to augment Garwin with sound because the resulting device would be more expensive and less reliable for the purpose intended by Garwin. He contends that just because Stanton teaches use of sound to confirm a visual perception of a shape like a letter—which provides a “rudimentary” reading capability—does not mean that the reference teaches how to enable a blind user to “read” and “reread” entire words and phrases quickly. Khan further contends that Stanton teaches away from a system that employs iris eye direction sensing because Stanton requires the user to hold his head steady, because eyes are not involved in its localization procedure, and because the combined device would be expensive and inoperable. Second, Khan argues that the court should take “judicial notice” that his reading machine addresses a “long-felt, but unresolved need,” and that this consideration is sufficient to rebut a prima facie case of obviousness.

The Patent and Trademark Office (“PTO”) counters that Lee and Rouffet are distinguishable because here the Board identified motivations to combine the references based on specific statements in the references and on the nature of the problem to be solved. As to long-felt need, the PTO argues that Kahn proffered no actual evidence, and that Kahn’s argument alone is insufficient to rebut a prima facie case.

B. Standard of Review

A claimed invention is unpatentable if the differences between it and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the pertinent art. 35 U.S.C. § 103(a) (2000); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). The ultimate determination of whether an invention would have been obvious is a legal conclusion based on underlying findings of fact. In re Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999). We review the Board’s ultimate determination of obviousness de novo. Id. However, we review the Board’s underlying factual findings, including a finding of a motivation to combine, for substantial evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).

Substantial evidence is something less than the weight of the evidence but more than a mere scintilla of evidence. Id. at 1312 (citing Consol. Edison Co. v. NLRB, 305 U.S. 197, 229-30 (1938)).
Consol. Edison, 305 U.S. at 229-30. In reviewing the record, we must take into account evidence that both justifies and detracts from the factual determinations. Gartside, 203 F.3d at 1312 (citing Universal Camera Corp. v. NLRB, 340 U.S. 474, 487-88 (1951)). We note that the possibility of drawing two inconsistent conclusions from the evidence does not prevent the Board’s findings from being supported by substantial evidence. Id. Indeed, if a reasonable mind might accept the evidence as adequate to support the factual conclusions drawn by the Board, then we must uphold the Board’s determination. Id.

C. Analysis

In assessing whether subject matter would have been non-obvious under § 103, the Board follows the guidance of the Supreme Court in Graham v. John Deere Co. The Board determines “‘the scope and content of the prior art,’” ascertains “‘the differences between the prior art and the claims at issue,’” and resolves “‘the level of ordinary skill in the pertinent art.’” Dann v. Johnston, 425 U.S. 219, 226 (1976) (quoting Graham, 383 U.S. at 17). Against this background, the Board determines whether the subject matter would have been obvious to a person of ordinary skill in the art at the time of the asserted invention. Graham, 383 U.S. at 17. In making this determination, the Board can assess evidence related to secondary indicia of non-obviousness like “commercial success, long felt but unresolved needs, failure of others, etc.” Id., 383 at 17-18; accord Rouffett, 149 F.3d at 1355. We have explained that
*[t]o reject claims in an application under section 103, an examiner must show an unrebutted prima facie case of obviousness . . . . On appeal to the Board, an applicant can overcome a rejection by showing insufficient *evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.

Rouffett, 149 F.3d at 1355.

Most inventions arise from a combination of old elements and each element may
often be found in the prior art. Id. at 1357. However, mere identification in the prior art of each element is insufficient to defeat the patentability of the combined subject matter as a whole. Id. at 1355, 1357. Rather, to establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the Board must articulate the basis on which it concludes that it would have been obvious to make the claimed invention. Id. In practice, this requires that the Board “explain the reasons one of ordinary skill in the art would have been motivated to select the references and to combine them to render the claimed invention obvious.” Id. at 1357-59. This entails consideration of both the “scope and content of the prior art” and “level of ordinary skill in the pertinent art” aspects of the Graham test.

When the Board does not explain the motivation, or the suggestion or teaching, that would have led the skilled artisan at the time of the invention to the claimed combination as a whole, we infer that the Board used hindsight to conclude that the invention was obvious. Id. at 1358. The “motivation-suggestion-teaching” requirement protects against the entry of hindsight into the obviousness analysis, a problem which § 103 was meant to confront. See 35 U.S.C. § 103 (stating that obviousness must be assessed “at the time the invention was made”); Dembiczak, 175 F.3d at 998 (“[I]t is this phrase that guards against entry into the tempting but forbidden zone of hindsight.” (internal quotations omitted)); Giles S. Rich, Laying the Ghost of the Invention Requirement, 1 APLA Q.J. 26-45 (1972), reprinted in 14 Fed. Cir. B.J. 163, 170 (2004) (“To protect the inventor from hindsight reasoning, the time is specified to be the time when the invention was made.”) (emphasis in original). The Supreme Court recognized the hindsight problem in Graham and proposed that “legal inferences” resulting from “secondary considerations” might help to overcome it. 383 U.S. at 36 (“[Secondary considerations] may also serve to guard against slipping into use of hindsight, and to resist the temptation to read into the prior art the teachings of the invention in issue.” (internal quotations omitted)). By requiring the Board to explain the motivation, suggestion, or teaching as part of its prima facie case, the law guards against hindsight in all cases—whether or not the applicant offers evidence on secondary considerations—which advances Congress’s goal of creating a more practical, uniform, and definite test for patentability. See Dann, 424 U.S. at 225-26 (“[I]t was only in 1952 that Congress, in the interest of ‘uniformity and definiteness,’ articulated the requirement in a statute.” (quoting S. Rep. No. 1979, at 6 (1952); H.R. Rep. No. 1923, at 7 (1952))); Graham, 383 U.S. at 17 (“The § 103 [test], when followed realistically, will permit a more practical test of patentability.”).

Although our predecessor court was the first to articulate the motivation- suggestion-teaching test, a related test—the “analogous art” test—has long been part of the primary Graham analysis articulated by the Supreme Court. See Dann, 425 U.S. at 227-29; Graham, 383 U.S. at 35.<ref>In Graham, Cook Chemical challenged the court’s reliance on a reference that it believed was not in a “pertinent prior art,” arguing that while the invention involved a container having a “pump sprayer,” the reference related to containers having “pouring spouts.” 383 U.S. at 35. In reaching the conclusion that the claimed subject matter was obvious, the Court rejected Cook’s argument, explaining that the problem to be solved was a mechanical closure problem and that a closure device in such a closely related art was a pertinent reference. Id. Similarly, in Dann, the invention involved the use of automatic data processing equipment to analyze transactions within a single bank account. 425 U.S. at 227-28. The Dirk reference that the Court relied upon in making its obviousness case involved a similar system used in a non-banking context. Id. at 228. Citing Graham, the Court explained that a person of ordinary skill in the art would be aware of this reference and the Court could rely upon it in making its obviousness case because “[w]hile the Dirk’s invention is not designed specifically for application to the banking industry many of its characteristics and capabilities are similar to those of respondent’s system.” Id. at 229.</ref> The analogous-art test requires that the Board show that a reference is either in the field of the applicant’s endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). References are selected as being reasonably pertinent to the problem based on the judgment of a person having ordinary skill in the art. Id. (“[I]t is necessary to consider ‘the reality of the circumstances,’—in other words, common sense—in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” (quoting In re Wood, 599 F.2d 1032, 1036 (C.C.P.A. 1979))). We have explained that this test begins the inquiry into whether a skilled artisan would have been motivated to combine references by defining the prior art relevant for the obviousness determination, and that it is meant to defend against hindsight. See id.; In re Clay, 966 F.2d 656, 659-60 (Fed. Cir. 1992).<ref>In In re Clay, we reasoned that
[i]f a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. An inventor may well have been motivated to consider the reference when making his invention. If it is directed to a different purpose, the inventor would accordingly have had less motivation or occasion to consider it.
966 F.2d at 659-60. In In re Oetiker, we held that “the combination of elements from non-analogous sources, in a manner that reconstructs the applicant’s invention only with the benefit of hindsight, is insufficient to present a prima facie case of obviousness.” 977 F.2d at 1447.</ref>

The motivation-suggestion-teaching test picks up where the analogous art test leaves off and informs the Graham analysis. To reach a non-hindsight driven conclusion as to whether a person having ordinary skill in the art at the time of the invention would have viewed the subject matter as a whole to have been obvious in view of multiple references, the Board must provide some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct. The requirement of such an explanation is consistent with governing obviousness law, see § 103(a); Graham, 383 U.S. at 35; Dann, 425 U.S. at 227-29, and helps ensure predictable patentability determinations.

A suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art,
*as the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references. . . . The test for an implicit showing is what the combined teachings, knowledge of *one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art.

In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000) (internal citations omitted). However, rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. See Lee, 277 F.3d at 1343-46; Rouffett, 149 F.3d at 1355-59. This requirement is as much rooted in the Administrative Procedure Act, which ensures due process and non-arbitrary decisionmaking, as it is in § 103. See id. at 1344-45.

In considering motivation in the obviousness analysis, the problem examined is not the specific problem solved by the invention but the general problem that confronted the inventor before the invention was made. See, e.g., Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1372 (Fed. Cir. 2000) (“Although the suggestion to combine references may flow from the nature of the problem, ‘[d]efining the problem in terms of its solution reveals improper hindsight in the selection of the prior art relevant to obviousness.’” (internal citation omitted) (quoting Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 881 (Fed. Cir. 1998))); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law does not require that the references be combined for the reasons contemplated by the inventor.”); Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1337 (Fed. Cir. 2005) (characterizing the relevant inquiry as “[would] an artisan of ordinary skill in the art at the time of the invention, confronted by the same problems as the inventor and with no knowledge of the claimed invention,[] have selected the various elements from the prior art and combined them in the manner claimed”); see also Graham, 383 U.S. at 35 (characterizing the problem as involving mechanical closures rather than in terms more specific to the patent in the context of determining the pertinent prior art). Therefore, the “motivation-suggestion-teaching” test asks not merely what the references disclose, but whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims. See Cross Med. Prods., 424 F.3d at 1321-24. From this it may be determined whether the overall disclosures, teachings, and suggestions of the prior art, and the level of skill in the art—i.e., the understandings and knowledge of persons having ordinary skill in the art at the time of the invention—support the legal conclusion of obviousness. See Princeton Biochemicals, 411 F.3d at 1338 (pointing to evidence supplying detailed analysis of the prior art and the reasons one of ordinary skill would have possessed the knowledge and motivation to combine).

In this case, Khan does not dispute that each element of his claimed invention can be found in either Garwin, Anderson ’533 and ’626, or Stanton, or that each reference lies in the pertinent art. Nor does Khan take issue with the Board’s finding that a person having ordinary skill in the art would have been motivated to modify Anderson ’533 or ’626 in view of Garwin, or vice versa. See Garwin, col. 2, ll. 50-53, col. 10, ll. 31-35 (stating that “it will be apparent to one skilled in the art that . . . the benefits of the invention will be achieved by many types of apparatus” which may be “virtually [any device] susceptible of control by a computer, including . . . [those geared] to presentation of textual material”).

Rather, Khan’s challenge to the sufficiency of the evidence supporting the Board’s prima facie case is directed at the motivation to apply the teachings of Stanton to achieve the claimed invention. In the 1995 decision, the Board found that Stanton “teaches the benefit of acoustic imaging in reading systems.” The Board carefully examined the Anderson/Garwin combination and recognized that a skilled artisan confronted with the problem faced by Kahn would have been led by the teaching of Stanton “to add advantageous acoustic imaging” to the Anderson/Garwin combination so that it would have “word positions acoustically and visually indicated.”

Stanton teaches that “[its] invention relates to augmentation of vision of those who have lost vision or have had their visual faculties diminished,” col. 1, ll. 6-8, that it is “useful in teaching a deprivee to apprehend the position of a virtual sound source as representing a point in space,” id., ll. 58-59, and that it may be used as a “rudimentary reading device,” id., ll. 61-62. A skilled artisan, who knows of a “learning machine” that is capable of reading a word aloud by selecting the word on the screen at which the user is looking and seeks to provide a visually-impaired user better control over word localization, <ref>Kahn does not argue that one of ordinary skill in the art at the time of the in view of invention would be unaware of the nature of this problem, and there is nothing in the record to suggest this to be the case, unlike the facts in the decision of our predecessor court in In re Spinnoble, 405 F.2d 578 (C.C.P.A. 1969).</ref>would have reason to solve that problem by adding two-dimensional sound in view of Stanton’s express teaching that two-dimensional sound can be used to “substitute” for the lost sense of sight, to locate a point in space, and to create a “rudimentary reading device” for the visually impaired. See Cross Med. Prods., 424 F.3d at 1323 (holding that “[o]ne of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings”). Because the Board need only establish motivation to combine by a preponderance of the evidence to make its prima facie case, see In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002), we conclude that substantial evidence supports the finding of a motivation to combine the teachings of Stanton to the Anderson/Garwin combination. Although a reasonable person might reach the opposite conclusion, there is far more than a “mere scintilla” of evidence present from which a reasonable mind could find a motivation to combine.

We reject Khan’s argument that the Board overstated the knowledge of the person having ordinary skill in the art or employed improper hindsight in making its prima facie case. In both Lee and Rouffet, the Board recognized that the knowledge of the skilled artisan could provide the motivation to combine but concluded that no such knowledge was articulated and placed on the record. Lee, 277 F.3d at 1343-45; Rouffet, 149 F.3d at 1357-59. In this case, motivation to combine was articulated and placed on the record. As to the Anderson/Garwin combination, the Board identified the desire to free up the hands of the Anderson user as the problem confronted and found that Garwin itself evidenced the broad applicability of its optical controls to the claimed invention. As to the addition of Stanton, the Board identified express teachings in Stanton of “the benefit of acoustic imaging in reading systems” and properly related those teachings to the Anderson/Garwin combination.

We find Khan’s remaining arguments unpersuasive. First, even if applying Stanton to Garwin resulted in a device that would be less effective for the purpose intended by Garwin, the teaching of the Garwin reference is not limited to the specific invention disclosed. See In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (explaining that “[t]he use of patents as references is not limited to what the patentees describe as their own inventions” (internal quotations omitted)). As noted above, Garwin states that his invention is intended to be applied to “virtually [any device] susceptible of control by a computer, including . . . [those geared] to presentation of textual material,” Garwin, col. 2, ll. 50-53; col. 10, ll. 31-35. Second, although Khan may have envisioned something different than the skilled artisan when he looked at Stanton because Stanton teaches only a rudimentary reading device, the skilled artisan need not be motivated to combine Stanton for the same reason contemplated by Khan. See In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor.” (citing In re Kronig, 539 F.2d 1300, 1304 (C.C.P.A. 1976))). Third, Khan’s argument that Stanton itself teaches away from the combination with Garwin lacks support in the reference. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Nothing in Stanton can be said to discourage a person having ordinary skill in the art from using the visual-input control taught in Garwin in the claimed combination or to lead the skilled artisan in a direction divergent from the path taken by Kahn.

Finally, we note that Kahn had an opportunity to rebut the Board’s prima facie case by offering evidence of objective indicia of non-obviousness. Khan put on no evidence, but invites this court to take “judicial notice” of the long-felt but unresolved need for a device that will help the blind read. We must decline Khan’s invitation for the following reasons. First, “long-felt but unresolved need” is not the kind of undisputed fact to which courts are accustomed to taking “judicial notice” because a finding either way can “reasonably be questioned.” See Fed. R. Evid. 201(b) (“A judicially noticed fact must be one not subject to reasonable dispute in that it is either (1) generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.”); In re Fielder, 471 F.2d 640, 642-43 (C.C.P.A. 1973) (declining to take judicial notice of prior art references that appellant submitted as objective evidence of non-obviousness because appellant did not offer references to the Board and they were not part of the record). Second, our precedent requires that the applicant submit actual evidence of long-felt need, as opposed to argument. This is because “[a]bsent a showing of long- felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of nonobviousness.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004); accord In re Wright, 569 F.2d 1124, 1127 (C.C.P.A. 1977).

III. CONCLUSION

Because the factual findings underlying the Board’s analysis, including the findings on motivation to combine, are supported by substantial evidence, we conclude that the Board did not err in rejecting claims 1–20 as prima facie obvious. Because Khan did not rebut the Board’s prima facie case, the Board’s decision is
AFFIRMED.

===Footnotes===
<references/>

Main Page

2010-04-14T03:09:32Z

Maura: /* ALPHABETICAL LISTING OF CASES */

<big>'''Intellectual Property for Engineers: ESTEEM Reading Course, Spring 2010'''</big>

=ALPHABETICAL LISTING OF CASES=

*[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]
*[[Alza Corp. v. Mylan Laboratories, 464 F.3d 1286, (2006)]]
*[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
*[[Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961)]]
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)]]
*[[Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)]]
*[[Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)]]
*[[Bonito Boats. v. Thunder Craft, 489 U.S. 141 (1989)]]
*[[Chester v. Miller, 906 F.2d 1574 (1990)]]
*[[Diamond v. Diehr, 450 U.S. 175 (1981)]]
*[[Egbert v. Lippmann, 104 U.S. 333 (1881))]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)]]
*[[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
*[[Gould v. Hellwarth, 472 F2d 1383 (1973)]]
*[[Graham v. John Deere, 383 U.S. 1 (1966)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]
*[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850) ]]
*[[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]
*[[In Re Rouffet]]
*[[In Re Bilski]]
**[[In Re Bilski, Dky concurring opinion]]
**[[In Re Bilski, Newman dissenting opinion]]
**[[In Re Bilski, Mayer dissenting opinion]]
**[[In Re Bilski, Rader dissenting opinion]]
*[[In re Brana, 51 F.3d 1560 (1995)]]
*[[In re Hall (full text)]]
*[[In re Kahn, CAFC 04-1616 (2006)]]
*[[J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)]]
*[[Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)]]
*[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
*[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]
*[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
*[[Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]
*[[Microsoft Corp v. At&T Corp.]]
*[[Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)]]
*[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]
*[[Pfaff v. Wells Electronics: full text]]
*[[Pfaff vs. Wells Electronics]]
*[[Philips Electric Co. v. Thermal Industries, Inc. (full text)]]
*[[Quanta Computers Inc v. LG Electronics (full text)]]
*[[Reiner v. I. Leon Co. (full text)]]
*[[South Corp. v. US]]
*[[South Corp. v. US (full text)]]
*[[South Corp. v. US 690 F.2d 1368 (1982)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]
*[[Traffix Devices, Inc. vs. Marketing Displays, Inc.]]
*[[US v. Adams, 383 U.S. 39 (1966)]]
*[[US v. Adams (full text)]]
*[[U.S. v. Univis Lens Co., 316 U.S. 241 (1942)]]
*[[Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc. (full text)]]
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
**[[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
**[[Warner-Jenkinson v. Hilton Davis Respondent Brief]]
*[[Winner International Royalty Co. v. Wang, 202 F.3d 1340 (2000)]]

=[[INTRODUCTION]]=
This is a summary. Click on the title for the full chapter: [[INTRODUCTION]]

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[NONOBVIOUSNESS]]=
This is a summary. Click on the title for the full chapter: [[NONOBVIOUSNESS]]

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[INFRINGEMENT]]=
This is a summary. Click on the title for the full chapter: [[INFRINGEMENT]]

=[[THE PATENT DOCUMENT]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT DOCUMENT]]

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
This is a summary. Click on the title for the full chapter: [[NOVELTY]]

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

Outline:
*Literal Infringement
*The Doctrine of Equivalents

=[[UTILITY]]=
This is a summary. Click on the title for the full chapter: [[UTILITY]]

=[[PATENTABLE SUBJECT MATTER]]=
This is a summary. Click on the title for the full chapter: [[PATENTABLE SUBJECT MATTER]]

Can computer programs, algorithms, laws of nature, life forms, plants, ''etc.'' be patented. In particular, are the following patentable:

* Plants
* Algorithms and Computer Programs
* Scientific Facts?

In a recent case
* State Street (1998)
the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

=[[FOREIGN AND DOMESTIC PRIORITY]]=
This is a summary. Click on the title for the full chapter: [[FOREIGN AND DOMESTIC PRIORITY]]

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT APPLICATION]]

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=[[INVENTOR ELIGIBILITY]]=
This is a summary. Click on the title for the full chapter: [[INVENTOR ELIGIBILITY]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=[[ANTICIPATION]]=
This is a summary. Click on the title for the full chapter: [[ANTICIPATION]]

=[[PRIOR ART]]=
This is a summary. Click on the title for the full chapter: [[PRIOR ART]]

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

Justice clipart, copyright [http://etc.usf.edu/clipart/ FCIT.]

Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)

2010-04-12T03:22:48Z

Maura: Created page with '97 U.S. 126 24 L.Ed. 1000 ELIZABETH v. PAVEMENT COMPANY. October Term, 1877 APPEAL from the Circuit Court of the United States for the District of New Jersey. The facts are…'

97 U.S. 126

24 L.Ed. 1000

ELIZABETH v. PAVEMENT COMPANY.

October Term, 1877

APPEAL from the Circuit Court of the United States for the District of New Jersey.
The facts are stated in the opinion of the court.
Mr. A. Q. Keasbey and Mr. Charles F. Blake for the appellants.
Mr. Clarence A. Seward and Mr. B. Williamson, contra.

MR. JUSTICE BRADLEY delivered the opinion of the court.

This suit was brought by the American Nicholson Pavement Company against the city of Elizabeth, N. J., George W. Tubbs, and the New Jersey Wood- Paving Company, a corporation of New Jersey, upon a patent issued to Samuel Nicholson, dated Aug. 20, 1867, for a new and improved wooden pavement, being a second reissue of a patent issued to said Nicholson Aug. 8, 1854. The reissued patent was extended in 1868 for a further term of seven years. A copy of it is appended to the bill; and, in the specification, it is declared that the nature and object of the invention consists in providing a process or mode of constructing wooden block pavements upon a foundation along a street or roadway with facility, cheapness, and accuracy, and also in the creation and construction of such a wooden pavement as shall be comparatively permanent and durable, by so uniting and combining all its parts, both superstructure and foundation, as to provide against the slipping of the horses' feet, against noise, against unequal wear, and against rot and consequent sinking away from below. Two plans of making this pavement are specified. Both require a proper foundation on which to lay the blocks, consisting of tarred-paper or hydraulic cement covering the surface of the road-bed to the depth of about two inches, or of a flooring of boards or plank, also covered with tar, or other preventive of moisture. On this foundation, one plan is to set square blocks on end arranged like a checker-board, the alternate rows being shorter than the others, so as to leave narrow grooves or channel-ways to be filled with small broken stone or gravel, and then pouring over the whole melted tar or pitch, whereby the cavities are all filled and cemented together. The other plan is, to arrange the blocks in rows transversely across the street, separated a small space (of about an inch) by strips of board at the bottom, which serve to keep the blocks at a uniform distance apart, and then filling these spaces with the same material as before. The blocks forming the pavement are about eight inches high. The alternate rows of short blocks in the first plan and the strips of board in the second plan should not be higher than four inches. The patent has four claims, the first two of which, which are the only ones in question, are as follows:——

'I claim as an improvement in the art of constructing pavements:

'1. Placing a continuous foundation or support, as above described, directly upon the roadway; then arranging thereon a series of blocks, having parallel sides, endwise, in rows, so as to leave a continuous narrow groove or channel-way between each row, and then filling said grooves or channel- ways with broken stone, gravel, and tar, or other like materials.

'2. I claim the formation of a pavement by laying a foundation directly upon the roadway, substantially as described, and then employing two sets of blocks: one a principal set of blocks, that shall form the wooden surface of the pavement when completed, and an auxiliary set of blocks or strips of board, which shall form no part of the surface of the pavement, but determine the width of the groove between the principal blocks, and also the filling of said groove, when so formed between the principal blocks, with broken stone, gravel, and tar, or other like material.'

The bill charges that the defendants infringed this patent by laying down wooden pavements in the city of Elizabeth, N. J., constructed in substantial conformity with the process patented, and prays an account of profits, and an injunction.

The defendants answered in due course, admitting that they had constructed, and were still constructing, wooden pavements in Elizabeth, but alleging that they were constructed in accordance with a patent granted to John W. Brocklebank and Charles Trainer, dated Jan. 12, 1869, and denied that it infringed upon the complainant.

They also denied that there was any novelty in the alleged invention of Nicholson, and specified a number of English and other patents which exhibited, as they claimed, every substantial and material part thereof which was claimed as new.

They also averred that the alleged invention of Nicholson was in public use, with his consent and allowance, for six years before he applied for a patent, on a certain avenue in Boston called the Mill-dam; and contended that said public use worked an abandonment of the pretended invention.

These several issues, together with the question of profits, and liability on the part of the several defendants to respond thereto, are the subjects in controversy before us.

We do not think that the defence of want of novelty has been successfully made out. Nicholson's invention dates back as early as 1847 or 1848. He filed a caveat in the Patent Office, in August, 1847, in which the checker-board pavement is fully described; and he constructed a small patch of pavement of both kinds, by way of experiment, in June or July, 1848, in a street near Boston, which comprised all the peculiarities afterwards described in his patent; and the experiment was a successful one. Before that period, we do not discover in any of the forms of pavements adduced as anticipations of his, any one that sufficiently resembles it to deprive him of the claim to its invention. As claimed by him, it is a combination of different parts or elements, consisting, as the appellant's counsel, with sufficient accuracy for the purposes of this case, enumerates them, 1st, of the foundation prepared to exclude moisture from beneath; 2d, the parallel-sided blocks; 3d, the strips between these blocks, to keep them at a uniform distance and to create a space to be filled with gravel and tar; and, 4th, the filling. Though it may be true that every one of these elements had been employed before, in one kind of pavement or another, yet they had never been used in the same combination and put together in the same manner as Nicholson combined and arranged them, so as to make a pavement like his. The one which makes the nearest approach to it, and might, perhaps, be deemed sufficiently like to deprive Nicholson of the merit of invention, is that of John Hosking, which, in one form, consisted of alternate rows of short and long blocks, the latter partially resting on the former by their being mutually rabbeted so as to fit together. The spaces thus formed between the longer blocks, and on the top of the shorter ones, were filled with loose stone and cement or asphalt, substantially the same as in Nicholson's pavement. It would be very difficult to sustain Nicholson's patent if Hosking's stood in his way. But the only evidence of the invention of the latter is derived from an English patent, the specification of which was not enrolled until March, 1850, nearly two years after Nicholson had put his pavement down in its completed form, by way of experiment, in Boston. A foreign patent, or other foreign printed publication describing an invention, is no defence to a suit upon a patent of the United States, unless published anterior to the making of the invention or discovery secured by the latter, provided that the American patentee, at the time of making application for his patent, believed himself to be the first inventor or discoverer of the thing patented. He is obliged to make oath to such belief when he applies for his patent; and it will be presumed that such was his belief, until the contrary is proven. That was the law as it stood when
Nicholson obtained his original patent, and it is the law still. Act of 1836, sects. 7, 15; Act of 1870, sects. 24, 25, 61; Rev. Stat., sects. 4886, 4887, 4920; and see Curtis, Patents, sects. 375, 375a. Since nothing appears to show that Nicholson had any knowledge of Hosking's invention or patent prior to his application for a patent in March, 1854, and since the evidence is very full to the effect that he had made his invention as early as 1848, the patent of Hosking cannot avail the defence in this suit.

It is unnecessary to make an elaborate examination of the other patents which were referred to for the purpose of showing an anticipation of Nicholson's invention. They are mostly English patents, and we will only advert in a summary way to such of them as seem to be most nearly relevant to the question in controversy, premising that in England the enrolment of the specification is the first publication of the particulars of a patented invention.

Stead's patent, enrolled in November, 1838, shows a plan of pavement consisting of a series of hexagonal, triangular, or square-sided blocks, standing close together on the surface of the roadway, in a layer of sand, and being a little smaller at the bottom than at the top, so as to admit a packing of sand, or pitch and sand, in the interstices between them, below the surface. Small recesses at the top, around the edges of the blocks, are suggested, apparently for giving a better hold to the horses' feet. It had no prepared foundation like Nicholson's, and no spaces filled with gravel, &c.

Parkin's patent, enrolled October, 1839, proposes a pavement to consist of blocks leaning upon each other, and connected together with a mixture of sand and bitumen, and connected by keys laid in grooves, and having grooves cut in the surface, either across the blocks or along their edges, to give the horses a better foothold. This plan exhibits no spaces to be filled with gravel or other filling.

Wood's patent, enrolled in April, 1841, shows a pavement made of adjoining blocks fitted together, but alternately larger and smaller at the top, like the frustrum of a pyramid, and not parallel-sided; those larger at the top standing slightly higher than the others, so that when pounded down, or pressed by rollers or loaded vehicles, they would act as wedges, binding the whole pavement more tightly together. No filling is used on the surface, and no prepared foundation is suggested. In one form of his pavement he describes continuous grooves, the grooves being formed of blocks which are shorter than the others; and states that the groove is to be filled with concrete, coal-tar, &c., mixed with gravel or sand: but there is no foundation described for the pavement; and the description given for laying down the pavement, viz. by ramming down the taller blocks after considerable surface has been covered by the pavement, shows that the road-bed on which the blocks are to be laid is to be a yielding one, capable of conforming itself to the under surface of the blocks in the same way as sand does to the ordinary stone pavement when the stones are rammed.

Perring's patent, enrolled January, 1843, shows a pavement consisting, in one form, of blocks leaning one upon another in rows, with strips of board between the rows, coming to within an inch or so of the top of the pavement, and the same distance from the bottom, leaving gutters for the water underneath, and the adjoining rows being connected with pins passing through the strips of board. The rows are thus separated to enable the horses' feet to get a better hold. No filling is suggested, and, indeed, would not be admissible, as the boards have no support but the pins; and no prepared foundation is required.

Crannis & Kemp's patent, enrolled Aug. 21, 1843, presents, amongst other things, first, a pavement consisting of rows of blocks adjoining each other, but each block having a small recess on one side, on the surface, to enable the horses to get a better foothold; secondly, a pavement of alternate blocks adjoining each other, but differing in width, and slightly differing in height, the top of one block being rounded off so as to make a groove next to the adjoining blocks, and the rounded blocks in one row alternating with the rectangular-topped blocks in the next row, the object of rounding off the alternate blocks being to give a foothold to the horses. This pavement is to be built on a flooring of plank, either of one or two thicknesses, but without any preparation to exclude moisture, and it has no filling in the depressions or grooves formed by rounding the alternate blocks.

A French patent, granted to Hediard in 1842, shows a pavement constructed of rows of blocks laid on a board foundation, cemented together by a thin filling (four-tenths of an inch thick) of cement or mastic, from top to bottom; no provision being made to prevent the accession of moisture from the ground below, and no strips between the rows to keep them separate from each other.
None of these pavements combine all the elements of Nicholson's, much less a combination of those elements arranged and disposed according to his plan. We think they present no ground for invalidating his patent, and no defence to this suit.

The next question to be considered is, whether Nicholson's invention was in public use or on sale, with his consent and allowance, for more than two years prior to his application for a patent, within the meaning of the sixth, seventh, and fifteenth sections of the act of 1836, as qualified by the seventh section of the act of 1839, which were the acts in force in 1854, when he obtained his patent. It is contended by the appellants that the pavement which Nicholson put down by way of experiment, on Mill-dam Avenue in Boston, in 1848, was publicly used for the space of six years before his application for a patent, and that this was a public use within the meaning of the law.

To determine this question, it is necessary to examine the circumstances under which this pavement was put down, and the object and purpose that Nicholson had in view. It is perfectly clear from the evidence that he did not intend to abandon his right to a patent. He had filed a caveat in August, 1847, and he constructed the pavement in question by way of experiment, for the purpose of testing its qualities. The road in which it was put down, though a public road, belonged to the Boston and Roxbury Mill Corporation, which received toll for its use; and Nicholson was a stockholder and treasurer of the corporation. The pavement in question was about seventy-five feet in length, and was laid adjoining to the toll-gate and in front of the toll-house. It was constructed by Nicholson at his own expense, and was placed by him where it was, in order to see the effect upon it of heavily loaded wagons, and of varied and constant use; and also to ascertain its durability, and liability to decay. Joseph L. Lang, who was toll-collector for many years, commencing in 1849, familiar with the road before that time, and with this pavement from the time of its origin, testified as follows: 'Mr. Nicholson was there almost daily, and when he came he would examine the pavement, would often walk over it, cane in hand, striking it with his cane, and making particular examination of its condition. He asked me very often how people liked it, and asked me a great many questions about it. I have heard him say a number of times that this was his first experiment with this pavement, and he thought that it was wearing very well. The circumstances that made this locality desirable for the purpose of obtaining a satisfactory test of the durability and value of the pavement were: that there would be a better chance to lay it there; he would have more room and a better chance than in the city; and, besides, it was a place where most everybody went over it, rich and poor. It was a great thoroughfare out of Boston. It was frequently travelled by teams having a load of five or six tons, and some larger. As these teams usually stopped at the toll-house, and started again, the stopping and starting would make as severe a trial to the pavement as it could be put to.'

This evidence is corroborated by that of several other witnesses in the cause; the result of the whole being that Nicholson merely intended this piece of pavement as an experiment, to test its usefulness and durability. Was this a public use, within the meaning of the law?

An abandonment of an invention to the public may be evinced by the conduct of the inventor at any time, even within the two years named in the law. The effect of the law is, that no such consequence will necessarily follow from the invention being in public use or on sale, with the inventor's consent and allowance, at any time within two years before his application; but that, if the invention is in public use or on sale prior to that time, it will be conclusive evidence of abandonment, and the patent will be void.

But, in this case, it becomes important to inquire what is such a public use as will have the effect referred to. That the use of the pavement in question was public in one sense cannot be disputed. But can it be said that the invention was in public use? The use of an invention by the inventor himself, or of any other person under his direction, by way of experiment, and in order to bring the invention to perfection, has never been regarded as such a use. Curtis, Patents, sect. 381; Shaw v. Cooper, 7 Pet. 292.

Now, the nature of a street pavement is such that it cannot be experimented upon satisfactorily except on a highway, which is always public.
When the subject of invention is a machine, it may be tested and tried in a building, either with or without closed doors. In either case, such use is not a public use, within the meaning of the statute, so long as the inventor is engaged, in good faith, in testing its operation. He may see cause to alter it and improve it, or not. His experiments will reveal the fact whether any and what alterations may be necessary. If durability is one of the qualities to be attained, a long period, perhaps years, may be necessary to enable the inventor to discover whether his purpose is accomplished. And though, during all that period, he may not find that any changes are necessary, yet he may be justly said to be using his machine only by way of experiment; and no one would say that such a use, pursued with a bona fide intent of testing the qualities of the machine, would be a public use, within the meaning of the statute. So long as he does not voluntarily allow others to make it and use it, and so long as it is not on sale for general use, he keeps the invention under his own control, and does not lose his title to a patent.

It would not be necessary, in such a case, that the machine should be put up and used only in the inventor's own shop or premises. He may have it put up and used in the premises of another, and the use may inure to the benefit of the owner of the establishment. Still, if used under the surveillance of the inventor, and for the purpose of enabling him to test the machine, and ascertain whether it will answer the purpose intended, and make such alterations and improvements as experience demonstrates to be necessary, it will still be a mere experimental use, and not a public use, within the meaning of the statute.
Whilst the supposed machine is in such experimental use, the public may be incidentally deriving a benefit from it. If it be a grist-mill, or a carding-machine, customers from the surrounding country may enjoy the use of it by having their grain made into flour, or their wool into rolls, and still it will not be in public use, within the meaning of the law.

But if the inventor allows his machine to be used by other persons generally, either with or without compensation, or if it is, with his consent, put on sale for such use, then it will be in public use and on public sale, within the meaning of the law.

If, now, we apply the same principles to this case, the analogy will be seen at once. Nicholson wished to experiment on his pavement. He believed it to be a good thing, but he was not sure; and the only mode in which he could test it was to place a specimen of it in a public roadway. He did this at his own expense, and with the consent of the owners of the road. Durability was one of the qualities to be attained. He wanted to know whether his pavement would stand, and whether it would resist decay. Its character for durability could not be ascertained without its being subjected to use for a considerable time. He subjected it to such use, in good faith, for the simple purpose of ascertaining whether it was what he claimed it to be. Did he do any thing more than the inventor of the supposed machine might do, in testing his invention? The public had the incidental use of the pavement, it is true; but was the invention in public use, within the meaning of the statute? We think not. The proprietors of the road alone used the invention, and used it at Nicholson's request, by way of experiment. The only way in which they could use it was by allowing the public to pass over the pavement.

Had the city of Boston, or other parties, used the invention, by laying down the pavement in other streets and places, with Nicholson's consent and allowance, then, indeed, the invention itself would have been in public use, within the meaning of the law; but this was not the case. Nicholson did not sell it, nor allow others to use it or sell it. He did not let it go beyond his control. He did nothing that indicated any intent to do so. He kept it under his own eyes, and never for a moment abandoned the intent to obtain a patent for it.

In this connection, it is proper to make another remark. It is not a public knowledge of his invention that precludes the inventor from obtaining a patent for it, but a public use or sale of it. In England, formerly, as well as under our Patent Act of 1793, if an inventor did not keep his invention secret, if a knowledge of it became public before his application for a patent, he could not obtain one. To be patentable, an invention must not have been known or used before the application; but this has not been the law of this country since the passage of the act of 1836, and it has been very much qualified in England. Lewis v. Marling, 10 B. & C. 22. Therefore, if it were true that during the whole period in which the pavement was used, the public knew how it was constructed, it would make no difference in the result.

It is sometimes said that an inventor acquires an undue advantage over the public by delaying to take out a patent, inasmuch as he thereby preserves the monopoly to himself for a longer period than is allowed by the policy of the law; but this cannot be said with justice when the delay is occasioned by a bona fide effort to bring his invention to perfection, or to ascertain whether it will answer the purpose intended. His monopoly only continues for the allotted period, in any event; and it is the interest of the public, as well as himself, that the invention should be perfect and properly tested, before a patent is granted for it. Any attempt to use it for a profit, and not by way of experiment, for a longer period than two years before the application, would deprive the inventor of his right to a patent.

The next question for consideration is, whether the defendants have infringed the patent of Nicholson. On this question we entertain no doubt. The pavement put down by the defendants in the city of Elizabeth differs in nothing from that described by Nicholson in his patent, except in the form of the strips placed between the rows of blocks, and the nicks or grooves made in the blocks to fit them. In Nicholson's description, they are simply strips of board standing endwise on the foundation. The patent describes the strips as 'so arranged as to form spaces of about one inch in thickness between the rows of principal blocks. The auxiliary strip may be about half the height of the principal block; but it must not be permitted to fill up the grooves permanently and entirely, when the pavement is completed, or to perform any part of the pavement.' The strips used by the defendants are substantially the same as here described, and perform the same office. The only difference in their construction and application between the blocks is, that they are bevelled, by being made wider at the top than at the bottom,—the extra width of the top part being let into a notch or groove in the blocks. If they perform the additional office, of partially sustaining the pressure of the blocks and locking them together, they do not any the less perform the office assigned to them in Nicholson's pavement. Their peculiar form and application may constitute an improvement on his pavement, but it includes his.

It is objected, that the blocks of the Elizabeth pavement have not parallel sides, as prescribed in Nicholson's patent, by reason of the notch or groove in the side, into which the strips are fitted; but this notch or groove does not take from the blocks their general conformity to the requisition of the patent. They are parallel-sided blocks, with a groove made in the lower part to receive the edges of the strips. The parallel-sided blocks described in Nicholson's patent were probably intended to distinguish them from such blocks as those described in Stead's patent, which were hexagonal and triangular in form; or those in Wood's patent, which were of a pyramidal shape, the opposite sides being at an angle with each other. As contradistinguished from these, both the Nicholson blocks and those used by the appellants are properly denominated blocks with parallel sides.
The next subject for consideration is the form and principles of the decree rendered by the court below. The bill prayed a decree for damages and profits; but, as it was filed before the passage of the act of July 8, 1870, which first authorized courts of equity to allow damages in addition to profits, the court below correctly held that a decree for profits alone could be rendered. It is unnecessary here to enter into the general question of profits recoverable in equity by a patentee. The subject, as a whole, is surrounded with many difficulties, which the courts have not yet succeeded in overcoming. But one thing may be affirmed with reasonable confidence, that, if an infringer of a patent has realized no profit from the use of the invention, he cannot be called upon to respond for profits; the patentee, in such case, is left to his remedy for damages. It is also clear that a patentee is entitled to recover the profits that have been actually realized from the use of his invention, although, from other causes, the general business of the defendant, in which the invention is employed, may not have resulted in profits,—as where it is shown that the use of his invention produced a definite saving in the process of a manufacture. Mowry v. Whitney, 14 Wall. 434; Cawood Patent, 94 U. S. 695. On the contrary, though the defendant's general business be ever so profitable, if the use of the invention has not contributed to the profits, none can be recovered. The same result would seem to follow where it is impossible to show the profitable effect of using the invention upon the business results of the party infringing. It may be added, that, where no profits are shown to have accrued, a court of equity cannot give a decree for profits, by way of damages, or as a punishment for the infringement. Livingston v. Woodworth, 15 How. 559. But when the entire profit of a business or undertaking results from the use of the invention, the patentee will be entitled to recover the entire profits, if he elects that remedy. And in such a case, the defendant will not be allowed to diminish the show of profits by putting in unconscionable claims for personal services or other inequitable deductions. Rubber Company v. Goodyear, 9 Wall. 788. These general propositions will hardly admit of dispute; and they will furnish us some guide in deciding the questions raised in this case.

Only the defendants have appealed; and the errors assigned by them on this branch of the case are the following:——

1st, 'The court erred in decreeing that the complainants do recover of the defendants, the city of Elizabeth and George W. Tubbs, the sums set forth in the decree, because the master did not find that said defendants had made any profits, which failure to find was not excepted to by complainants, and because no proof was offered by complainants of any profits whatever made by said defendants.'

2d, 'The court erred in finding that the profits received by the defendants were the fruits of the use of the devices described and claimed in the first and second claims of the Nicholson patent,—there being no proof of any advantage derived by the defendants from such use of the Nicholson devices,— or was incident to the use of the devices of the Brocklebank & Trainer patent. The failure to specifically show such profits makes the recovery nominal.'

3d, 'The court erred in decreeing the whole amount of profits made by the New Jersey Wood-Paving Company in the construction of the pavements referred to in the master's report. Whereas, if any profits ought to have been decreed, they should have been conflned to the amount of the license for a royalty which the complainants had been accustomed to receive, and were bound by the terms of their title to accept, from any party constructing such pavement in New Jersey.'

We will consider these assignments in order.

The first seems to be well taken. The party who made the profit by the construction of the pavement in question was the New Jersey Wood-Paving Company. The city of Elizabeth made no profit at all. It paid the same for putting down the pavement in question that it was paying to the defendant in error for putting down the Nicholson pavement proper; namely, $4.50 per square yard. It made itself liable to damages, undoubtedly, for using the patented pavement of Nicholson; but damages are not sought, or, at least, are not recoverable, in this suit. Profits only, as such, can be recovered therein. The very first evidence which the appellees offered before the master was, the contracts made between the city and the other defendants for the construction of the pavement; and these contracts show the fact that the city was to pay the price named, and that any benefit to be derived from the construction of the pavement was to be enjoyed by the contractors.

It is insisted that the defendants, by answering jointly, admitting that they were jointly co-operating in laying the pavement, precluded themselves from making this defence. We do not think so. That admission is not inconsistent with the actual facts of the case, to wit, that this co-operation consisted of a contract for having the pavement made, on one side, and a contract to make it, on the other; and is by no means conclusive as to which party realized profit from the transactions. The complainants themselves, by their own evidence, showed that the contractors and not the city realized it.

The appellant, Tubbs, is in the same predicament with the city. Several of the contracts were made in his name, it is true; but they were made in behalf of the New Jersey Wood-Paving Company, for whose use and benefit the contracts were made and completed. Tubbs only received a salary for his superintendence.

The next assignment of error, based on the hypothesis that the profits received by the defendants were not the fruits of the use of Nicholson's invention, appears to us destitute of foundation. This matter is so fully and ably presented in the opinion of the Circuit Court as to require but little discussion from us. The Nicholson pavement was a complete thing, consisting of a certain combination of elements. The defendants used it as such,—the whole of it. If they superadded the addition made to it by Brocklebank & Trainer, they failed to show that such addition contributed to the profits realized. The burden of proof was on them to do this. The evidence, if it shows any thing, tends to prove that the addition diminished the profits instead of increasing them; but it could not have had much influence either way, inasmuch as the evidence shows that the profit made on this pavement was about the same as that made on the pavement of Nicholson, without the improvement. The appellants, however, obtained an allowance of nearly $14,000 for the royalty paid by them for the use of the Brocklebank & Trainer patent. This allowance went so far in diminution of the profits recovered.

Equally without foundation is the position taken by the appellants, that other pavements, approaching in resemblance to that of Nicholson, were open to the public, and that the specific difference between those pavements and Nicholson's was small, and that, therefore, the Nicholson patent was entitled to only a small portion of the profits realized. Nicholson's pavement, as before said, was a complete combination in itself, differing from every other pavement. The parts were so correlated to each other, from bottom to top, that it required them all, put together as he put them, to make the complete whole, and to produce the desired result. The foundation impervious to moisture, the blocks arranged in rows, the narrow strips between them for the purposes designated, the filling over those strips, cemented together, as shown by the patent,—all were required. Thus combined and arranged, they made a new thing, like a new chemical compound. It was this thing, and not another, that the people wanted and required. It was this that the appellants used, and, by using, made their profit, and prevented the appellee from making it. It is not the case of a profit derived from the construction of an old pavement together with a superadded profit derived from adding thereto an improvement made by Nicholson, but of an entire profit derived from the construction of his pavement as an entirety. A separation of distinct profit derived from Brocklebank & Trainer's improvement, if any such profit was made, might have been shown; but, as before stated, the appellants failed to show that any such distinct profit was realized.

We have looked over the various items claimed by the appellants by way of reduction of profits, and disallowed by the master and by the court below, and we are satisfied with the result which they reached. The gross profits of the work over actual expenses for material and labor were conceded to be $123,610.78. The total deductions claimed before the master amounted to $139,875.63, which would have been considerably more than sufficient to absorb the whole profits. The master and the court allowed deductions to the amount of $48,618.62, which reduced the profits to $74,992.16, for which amount the decree was rendered. The deductions overruled and disallowed amounted to $91,257.85. Of these, $31,111.92 was a profit of twenty per cent, which the appellants claimed they had a right to add to the actual cost of lumber and other materials and labor. It is only necessary to state the claim to show its preposterousness. Other items were one of $7,000 for salaries, and another of $3,000 for rent, for a period of time that occurred after the work was completed. Another item was one of $2,675.09 for the cost of a dock which the parties built on their own land; and another of $25,000, paid for an interest in the Brocklebank & Trainer patent. As the appellants still hold these properties, we cannot well conceive what the purchase of them has to do in this account. They also claim $15,241.33 for that amount abated from the assessments of some of their stockholders who owned lands along the streets paved.

As this was a gratuity which they made to themselves, they cannot claim a deduction for it here. The last item was $6,572.75, claimed to have been profits made upon other work, which were allowed to be included in these contracts. As this is not explained in any satisfactory way, we think the master did right in rejecting it.

We are entirely satisfied with the disposition made of these various items, and with the correctness of the decree, so far as the statement of the account is concerned.

But the appellants assign a third error. They insist that the appellee, as assignor of the Nicholson patent for the State of New Jersey (which was the ground of its title), was entitled to recover only thirty-one cents per square yard in any event,—being limited to that charge for the use of the patent by the terms of the assignment; sixteen cents of which was to be paid to the proprietors, and fifteen to be retained by the appellee.
This matter is quite satisfactorily disposed of in the opinion of the court below. The stipulation was between third parties, and the appellants have no concern in it. It only applied, by its terms, to cases where, by reason of the decisions of the courts, or otherwise, it should be found impracticable for the appellees to obtain contracts for laying the pavement in any town or city, or where the work of constructing pavements should be required by law to be let under public lettings, open to general competition. The object was to secure as extensive a use of the pavement as possible, as thereby the emoluments of the proprietors would be increased. But the assignment gave to the appellee the exclusive right in the patent for the State of New Jersey. It did not prohibit the appellee from constructing the pavements itself, if it could obtain contracts for doing so, and making thereby any profit it could. There was no obstacle to its doing this in the city of Elizabeth. On the contrary, it did obtain from the city large contracts, and would have obtained more if the appellants had not interfered. There is nothing in this state of things which entitles the latter, after making large profits from the use of the invention, to refuse to respond therefor. It is not for them to say that the hands of the appellee are tied by its contract with its grantor. This would be to take advantage of their own wrong. Whatever bearing the stipulation in the assignment may have on the measure of damages, in an action at law, it affords no defence to the appellants when called upon to account for the profits which they have wrongfully made by pirating the invention.

We think there is no error in the decree of the Circuit Court, except in making the city of Elizabeth and George W. Tubbs accountable for the profits. As to them a decree for injunction only to prevent them from constructing the pavement during the term of the patent, should have been rendered; which, of course, cannot now be made. As to the New Jersey Wood-Paving Company, the decree was in all respects correct. A decree for costs in the court below should be awarded against all the defendants.

The decree of the Circuit Court, therefore, must be reversed with costs, and the cause remanded to said court with instructions to enter a decree in conformity with this opinion; and it is
So ordered.

Main Page

2010-04-09T14:18:17Z

Maura: /* ALPHABETICAL LISTING OF CASES */

<big>'''Intellectual Property for Engineers: ESTEEM Reading Course, Spring 2010'''</big>

=ALPHABETICAL LISTING OF CASES=

*[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]
*[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
*[[Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961)]]
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)]]
*[[Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)]]
*[[Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)]]
*[[Bonito Boats. v. Thunder Craft, 489 U.S. 141 (1989)]]
*[[Chester v. Miller, 906 F.2d 1574 (1990)]]
*[[Diamond v. Diehr, 450 U.S. 175 (1981)]]
*[[Egbert v. Lippmann, 104 U.S. 333 (1881))]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)]]
*[[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
*[[Gould v. Hellwarth, 472 F2d 1383 (1973)]]
*[[Graham v. John Deere, 383 U.S. 1 (1966)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]
*[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850) ]]
*[[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]
*[[In Re Rouffet]]
*[[In Re Bilski]]
**[[In Re Bilski, Dky concurring opinion]]
**[[In Re Bilski, Newman dissenting opinion]]
**[[In Re Bilski, Mayer dissenting opinion]]
**[[In Re Bilski, Rader dissenting opinion]]
*[[In re Brana, 51 F.3d 1560 (1995)]]
*[[In re Hall (full text)]]
*[[J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)]]
*[[Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)]]
*[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]
*[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
*[[Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]
*[[Microsoft Corp v. At&T Corp.]]
*[[Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)]]
*[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]
*[[Pfaff v. Wells Electronics: full text]]
*[[Pfaff vs. Wells Electronics]]
*[[Philips Electric Co. v. Thermal Industries, Inc. (full text)]]
*[[Quanta Computers Inc v. LG Electronics (full text)]]
*[[Reiner v. I. Leon Co. (full text)]]
*[[South Corp. v. US]]
*[[South Corp. v. US (full text)]]
*[[South Corp. v. US 690 F.2d 1368 (1982)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]
*[[Traffix Devices, Inc. vs. Marketing Displays, Inc.]]
*[[US v. Adams, 383 U.S. 39 (1966)]]
*[[US v. Adams (full text)]]
*[[U.S. v. Univis Lens Co., 316 U.S. 241 (1942)]]
*[[Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc. (full text)]]
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
**[[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
**[[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=[[INTRODUCTION]]=
This is a summary. Click on the title for the full chapter: [[INTRODUCTION]]

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[NONOBVIOUSNESS]]=
This is a summary. Click on the title for the full chapter: [[NONOBVIOUSNESS]]

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[INFRINGEMENT]]=
This is a summary. Click on the title for the full chapter: [[INFRINGEMENT]]

=[[THE PATENT DOCUMENT]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT DOCUMENT]]

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
This is a summary. Click on the title for the full chapter: [[NOVELTY]]

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

Outline:
*Literal Infringement
*The Doctrine of Equivalents

=[[UTILITY]]=
This is a summary. Click on the title for the full chapter: [[UTILITY]]

=[[PATENTABLE SUBJECT MATTER]]=
This is a summary. Click on the title for the full chapter: [[PATENTABLE SUBJECT MATTER]]

Can computer programs, algorithms, laws of nature, life forms, plants, ''etc.'' be patented. In particular, are the following patentable:

* Plants
* Algorithms and Computer Programs
* Scientific Facts?

In a recent case
* State Street (1998)
the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

=[[FOREIGN AND DOMESTIC PRIORITY]]=
This is a summary. Click on the title for the full chapter: [[FOREIGN AND DOMESTIC PRIORITY]]

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT APPLICATION]]

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=[[INVENTOR ELIGIBILITY]]=
This is a summary. Click on the title for the full chapter: [[INVENTOR ELIGIBILITY]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=[[ANTICIPATION]]=
This is a summary. Click on the title for the full chapter: [[ANTICIPATION]]

=[[PRIOR ART]]=
This is a summary. Click on the title for the full chapter: [[PRIOR ART]]

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

Justice clipart, copyright [http://etc.usf.edu/clipart/ FCIT.]

Main Page

2010-04-09T04:07:56Z

Maura: /* ALPHABETICAL LISTING OF CASES */

<big>'''Intellectual Property for Engineers: ESTEEM Reading Course, Spring 2010'''</big>

=ALPHABETICAL LISTING OF CASES=

*[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]
*[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
*[[Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961)]]
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)]]
*[[Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)]]
*[[Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)]]
*[[Bonito Boats. v. Thunder Craft, 489 U.S. 141 (1989)]]
*[[Chester v. Miller, 906 F.2d 1574 (1990)]]
*[[Diamond v. Diehr, 450 U.S. 175 (1981)]]
*[[Egbert v. Lippmann, 104 U.S. 333 (1881))]]
*[[Elizabeth v. Pavement Company, 97 U.S. 126 (1877)]]
*[[Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)]]
*[[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
*[[Gould v. Hellwarth, 472 F2d 1383 (1973)]]
*[[Graham v. John Deere, 383 U.S. 1 (1966)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]
*[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850) ]]
*[[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]
*[[In Re Rouffet]]
*[[In Re Bilski]]
**[[In Re Bilski, Dky concurring opinion]]
**[[In Re Bilski, Newman dissenting opinion]]
**[[In Re Bilski, Mayer dissenting opinion]]
**[[In Re Bilski, Rader dissenting opinion]]
*[[In re Brana, 51 F.3d 1560 (1995)]]
*[[In re Hall (full text)]]
*[[J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)]]
*[[Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)]]
*[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]
*[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
*[[Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]
*[[Microsoft Corp v. At&T Corp.]]
*[[Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)]]
*[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]
*[[Pfaff v. Wells Electronics: full text]]
*[[Pfaff vs. Wells Electronics]]
*[[Philips Electric Co. v. Thermal Industries, Inc. (full text)]]
*[[Quanta Computers Inc v. LG Electronics (full text)]]
*[[Reiner v. I. Leon Co. (full text)]]
*[[South Corp. v. US]]
*[[South Corp. v. US (full text)]]
*[[South Corp. v. US 690 F.2d 1368 (1982)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]
*[[Traffix Devices, Inc. vs. Marketing Displays, Inc.]]
*[[US v. Adams, 383 U.S. 39 (1966)]]
*[[US v. Adams (full text)]]
*[[U.S. v. Univis Lens Co., 316 U.S. 241 (1942)]]
*[[Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc. (full text)]]
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
**[[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
**[[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=[[INTRODUCTION]]=
This is a summary. Click on the title for the full chapter: [[INTRODUCTION]]

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[NONOBVIOUSNESS]]=
This is a summary. Click on the title for the full chapter: [[NONOBVIOUSNESS]]

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[INFRINGEMENT]]=
This is a summary. Click on the title for the full chapter: [[INFRINGEMENT]]

=[[THE PATENT DOCUMENT]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT DOCUMENT]]

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
This is a summary. Click on the title for the full chapter: [[NOVELTY]]

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

Outline:
*Literal Infringement
*The Doctrine of Equivalents

=[[UTILITY]]=
This is a summary. Click on the title for the full chapter: [[UTILITY]]

=[[PATENTABLE SUBJECT MATTER]]=
This is a summary. Click on the title for the full chapter: [[PATENTABLE SUBJECT MATTER]]

Can computer programs, algorithms, laws of nature, life forms, plants, ''etc.'' be patented. In particular, are the following patentable:

* Plants
* Algorithms and Computer Programs
* Scientific Facts?

In a recent case
* State Street (1998)
the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

=[[FOREIGN AND DOMESTIC PRIORITY]]=
This is a summary. Click on the title for the full chapter: [[FOREIGN AND DOMESTIC PRIORITY]]

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT APPLICATION]]

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=[[INVENTOR ELIGIBILITY]]=
This is a summary. Click on the title for the full chapter: [[INVENTOR ELIGIBILITY]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=[[ANTICIPATION]]=
This is a summary. Click on the title for the full chapter: [[ANTICIPATION]]

=[[PRIOR ART]]=
This is a summary. Click on the title for the full chapter: [[PRIOR ART]]

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

Justice clipart, copyright [http://etc.usf.edu/clipart/ FCIT.]

Talk:Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)

2010-04-09T04:07:20Z

Maura: Created page with ' == Maura == The rule that an inventor may not competitively exploit his machine or process for more than a year before applying for a patent thereon does not apply to an invento…'

== Maura ==
The rule that an inventor may not competitively exploit his machine or process for more than a year before applying for a patent thereon does not apply to an inventor who continues for more than a year to practice his invention for his private purposes or his own enjoyment and who does not thereby extend the period of his commercial monopoly, although such an inventor, by too long a concealment, will also lose right to a patent. 35 U.S.C.A. § 31.

The kernel of them is the following: ‘the inventor's main purpose in his use of the process prior to August 6, 1941, and especially in respect to all jobs for owners not known to him, was commercial, and * * * an experimental purpose in connection with such use was subordinate only.’ Upon this finding he concluded as matter of law that, since the use before the critical date- August 6, 1941- was not primarily for the purposes of experiment, the use was not excused*518 for that reason.

Section one of the first and second Patent Acts, 1 Stat. 109 and 318, declared that the petition for a patent must state that the subject matter had not been ‘before known or used.’ Section six of the Act of 1836, 5 Stat. 117, changed this by providing in addition that the invention must not at the time of the application for a patent have been ‘in public use or on sale’ with the inventor's ‘consent or allowance’; and Sec. 7 of the Act of 1839, 5 Stat. 353, provided that ‘no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the application for a patent * * * except on proof of abandonment of such invention to the public; or that such purchase, sale, or prior use has been for more than two years prior to such application * * *.’ Section 4886 of the Revised Statutes made it a condition upon patentability that the invention shall not have been ‘in public use or on sale for more than two years prior to his application,’ and that it shall not have been ‘proved to have been abandoned.’ This is in substance the same as the Act of 1839, and is precisely the same as Sec. 31 of Title 35, U.S.C.A. except that the prior use is now limited to the United States, and to one year before the application. Sec. 1, Chap. 391, 29 Stat. 692; Sec. 1, Chap. 450, 53 Stat. 1212, 35 U.S.C.A. § 31.

‘If the public, with the knowledge and tacit consent of the inventor, be permitted to use the invention, without opposition, it is a fraud on the public afterwards to take out a patent.’ The Supreme Court affirmed a judgment for the defendant, on the ground that the invention had been ‘known or used before the application.’ ‘If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should * * * make and sell his invention publicly, and thus gather the whole profits, * * * it would materially retard the progress of science and the useful arts' to allow him fourteen years of legal monopoly ‘when the danger of competition should force him to secure the exclusive right’

But in Peerless Roll Leaf Co. v. Griffin & Sons, supra, 2 Cir., 29 F.2d 646, where the patent was for a machine, which had been kept secret, but whose output had been freely sold on the market, we sustained the patent on the ground that ‘the sale of the product was irrelevant, since no knowledge could possibly be acquired of the machine in that way. In this respect the machine differs from a process * * * or from any other invention necessarily contained in a product’ 29 F.2d at page 649.

...we confused two separate doctrines: (1) The effect upon his right to a patent of the inventor's competitive exploitation of his machine or of his process; (2) the contribution which a prior use by another person makes to the art. Both do indeed come within the phrase, ‘prior use’; but the first is a defence for quite different reasons from the second.

Such a forfeiture has nothing to do with abandonment, which presupposes a deliberate, though not necessarily an express, surrender of any right to a patent. Although the evidence of both may at times overlap, each comes from a quite different legal source: one, from the fact that by renouncing the right the inventor irrevocably surrenders it; the other, from the fiat of Congress that it is part of the consideration for a patent that the public shall as soon as possible begin to enjoy the disclosure.

It is indeed true that an inventor may continue for more than a year to practice his invention for his private purposes of his own enjoyment and later patent it. But that is, properly considered, not an exception to the doctrine, for he is not then making use of his secret to gain a competitive advantage over others; he does not thereby extend the period of his monopoly. Besides, as we have Seen, even that privilege has its limits, for he may conceal it so long that he will lose his right to a patent even though he does not use it at all. With that question we have not however any concern here.

Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)

2010-04-09T04:05:31Z

Maura:

Circuit Court of Appeals, Second Circuit.

METALLIZING ENGINEERING CO., Inc., v. KENYON BEARING & AUTO PARTS CO., Inc., et al.

No. 131.
Jan. 10, 1946.

Writ of Certiorari Denied May 6, 1946.

See 66 S.Ct. 1016.

Appeal from the District Court of the United States for the District of Connecticut.

Action by the Metallizing Engineering Company, Inc., against the Kenyon Bearing & Auto Parts Company, Inc., and others for patent infringement. From a judgment, 62 F.Supp. 42, holding valid and infringed claims 1, 2, 3, 4, 5, 6, 6, and 11, of Reissue Patent No. 22,397, issued to John F. Meduna, the plaintiff's assignor, on November 30, 1943, based on the original patent No. 2,320,327, which had been issued on May 25, 1943, upon application filed August 6, 1942, defendants appeal.

Judgment reversed and complaint dismissed.

Reissue Patent No. 22,397, on process of conditioning a metal surface for bonding thereto applied spray metal, is invalid for too long competitive exploitation before application for patent.

Inventor's competitive exploitation of his machine or process for more than one year prior to application for patent operates as a forfeiture of right to patent regardless of how little public may have learned about the invention. 35 U.S.C.A. § 31.

Forfeiture of inventor's right to patent invention because of competitive exploitation prior to application is not the equivalent of an “abandonment” which presupposes a deliberate, though not necessarily an express, surrender of any right to a patent. 35 U.S.C.A. § 31.
[4] KeyCite Citing References for this Headnote
291 Patents 291II Patentability
291II(E) Prior Public Use or Sale 291k75 k. What Constitutes Public Use. Most Cited Cases
Under the patent law, it is a part of the consideration for a patent that the public shall, as soon as possible, begin to enjoy the disclosure.
[5] KeyCite Citing References for this Headnote
291 Patents 291II Patentability
291II(E) Prior Public Use or Sale 291k75 k. What Constitutes Public Use. Most Cited Cases

The rule that an inventor may not competitively exploit his machine or process for more than a year before applying for a patent thereon does not apply to an inventor who continues for more than a year to practice his invention for his private purposes or his own enjoyment and who does not thereby extend the period of his commercial monopoly, although such an inventor, by too long a concealment, will also lose right to a patent. 35 U.S.C.A. § 31.

*516 Morris Kirschstein, of New York City, and Clifford H. Bell, of Hartford, Conn., for appellants.

Louis Burgess, Burgess & Dinklage, and Ralph D. Dinklage, all of New York City, for appellee.

Before L. HAND, AUGUSTUS N. HAND, and CLARK, Circuit Judges.

*517 L. HAND, Circuit Judge. The defendants appeal from the usual decree holding valid and infringed all but
three of the claims of a reissued patent, issued to the plaintiff's assignor, Meduna; the original patent issued on May 25, 1943, upon an application filed on August 6, 1942. The patent is for the process of ‘so conditioning a metal surface that the same is, as a rule, capable of bonding thereto applied spray metal to a higher degree than is normally procurable with hitherto known practices' (p. 2, lines 1-5). It is primarily useful for building up the worn metal parts of a machine. The art had for many years done this by what the patent calls ‘spray metal,’ which means metal sprayed in molten form upon the surface which it is desired to build up. This process is called ‘metalizing,’ and it had been known for nearly thirty years before Meduna's invention; but about fifteen or twenty years ago it was found that, to secure a satisfactory bond between the ‘spray metal’ and the surface, the surface must be roughened so that there would be fine undercut areas in it upon which the sprayed surface could take hold; and of course the surface must itself be clean. The art had developed two ways of producing such a surface; one, by sand-blasting, and the other, by a tool, so adjusted in a lathe as to tear tiny channels: ‘screw-threading.’ Meduna's invention was to prepare the surface by first depositing upon it a preliminary layer of metal by means of a process, disclosed in Patent No. 1,327,267, issued to Brewster and Wisehan, on January 6, 1920. This process was practiced by what the art knew as the ‘McQuay-Norris' machine, which was ‘more particularly adapted and intended for use in the filling of cavities which may occur in castings or other metal objects' (p. 1, lines 17-20). The ‘McQuay-Norris' device was operated by electric power, one terminal of the circuit being connected with the work, and the other being a fusable electrode, which melted at the temperature developed in the circuit, and deposited parts of itself at the places desired upon closing of the circuit by contact with the work. The process was described as follows (p. 2, lines 47-57): ‘The electrode is moved from spot to spot in the cavity and the foregoing operation repeated until the surface of the blowhole is covered by a deposit of the metal by the electrode. It will thus be Seen that the surface of the blow-hole is covered by a number of small particles of metal of the electrode, all of which particles are welded to the particular portion of the surface of the blow-hole with which the electrode contacted.’ After this has been done, ‘a peening hammer is employed to peen the metal which has been introduced into the blow-hole, thus causing the metal to be compacted, and any inequalities of the surface of the metal reduced’ (p. 2, lines 63-68). Meduna did not peen the metal, indeed peening would have been entirely unfitted to his purpose, as it would have pressed together the undercut deposits which later serve to catch the hold the ‘spray metal.’ Moreover, his purpose was not to fill up ‘blow-holes,’ or fissures; but, as we have said, to prepare worn surfaces for rebuilding. However, he used the McQuay- Norris machine unchanged, prescribing a voltage of preferably not more than twenty volts- ordinarily between two and nine- and an amperage of between two hundred and three or four hundred. The surface was to be ‘repetitiously contacted and preferably repetitiously contact stroked with the electrode on successive areas, the stroking action depositing on these areas small amounts of electrode material firmly bonded thereto. Alternatively the electrode may be applied with a stippling action to the metal surface. While these procedures essentially involve breaking and making contact between the metal surface and the electrode, it is also possible, and sometimes advisable, to move the electrode relative to the base while maintaining resistant heating contact therebetween’ (p. 2 lines 72-76; p. 3, lines 1-8).

[1] The only question which we find necessary to decide is as to Meduna's public use of the patented process more than one year before August 6, 1942. The district judge made findings about this, which are supported by the testimony and which we accept. They appear as findings 8, 9, 10, 11, 12 and 13 on pages 46 and 47 of volume 62 of the Federal Supplement; and we cannot improve upon his statement. The kernel of them is the following: ‘the inventor's main purpose in his use of the process prior to August 6, 1941, and especially in respect to all jobs for owners not known to him, was commercial, and * * * an experimental purpose in connection with such use was subordinate only.’ Upon this finding he concluded as matter of law that, since the use before the critical date- August 6, 1941- was not primarily for the purposes of experiment, the use was not excused*518 for that reason. Smith & Griggs Manufacturing Co. v. Sprague, 123 U.S. 249, 256, 8 S.Ct. 122, 31 L.Ed. 141; Aerovox Corp. v. Polymet Manufacturing Corp., 2 Cir., 67 F.2d 860, 862. Moreover, he also concluded that the use was not public but secret, and for that reason that its predominantly commercial character did prevent it from invalidating the patent. For the last he relied upon our decisions in Peerless Roll Leaf Co. v. Griffin & Sons, 29 F.2d 646, and Gillman v. Stern, 114 F.2d 28. We think that his analysis of peerless Roll Leaf Co. v. Griffin & Sons, was altogether correct, and that he had no alternative but to follow that decision; on the other hand, we now think that we were then wrong and that the decision must be overruled for reasons we shall state. Gillman v. Stern, supra, was, however, rightly decided.

Section one of the first and second Patent Acts, 1 Stat. 109 and 318, declared that the petition for a patent must state that the subject matter had not been ‘before known or used.’ Section six of the Act of 1836, 5 Stat. 117, changed this by providing in addition that the invention must not at the time of the application for a patent have been ‘in public use or on sale’ with the inventor's ‘consent or allowance’; and Sec. 7 of the Act of 1839, 5 Stat. 353, provided that ‘no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the application for a patent * * * except on proof of abandonment of such invention to the public; or that such purchase, sale, or prior use has been for more than two years prior to such application * * *.’ Section 4886 of the Revised Statutes made it a condition upon patentability that the invention shall not have been ‘in public use or on sale for more than two years prior to his application,’ and that it shall not have been ‘proved to have been abandoned.’ This is in substance the same as the Act of 1839, and is precisely the same as Sec. 31 of Title 35, U.S.C.A. except that the prior use is now limited to the United States, and to one year before the application. Sec. 1, Chap. 391, 29 Stat. 692; Sec. 1, Chap. 450, 53 Stat. 1212, 35 U.S.C.A. § 31. So far as we can find, the first case which dealt with the effect of prior use by the patentee was Pennock v. Dialogue, 2 Pet. 1, 4, 7 L.Ed. 327, in which the invention had been completed in 1811, and the patent granted in 1818 for a process of making hose by which the sections were joined together in such a way that the joints resisted pressure as well as the other parts. It did not appear that the joints in any way disclosed the process; but the patentee, between the discovery of the invention and the grant of the patent, had sold 13,000 feet of hose; and as to this the judge charged: ‘If the public, with the knowledge and tacit consent of the inventor, be permitted to use the invention, without opposition, it is a fraud on the public afterwards to take out a patent.’ The Supreme Court affirmed a judgment for the defendant, on the ground that the invention had been ‘known or used before the application.’ ‘If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should * * * make and sell his invention publicly, and thus gather the whole profits, * * * it would materially retard the progress of science and the useful arts' to allow him fourteen years of legal monopoly ‘when the danger of competition should force him to secure the exclusive right’ 2 Pet. at page 19, 7 L.Ed. 327. In Shaw v. Cooper, 7 Pet. 292, 8 L.Ed. 689, the public use was not by the inventory, but he had neglected to prevent it after he had learned of it, and this defeated the patent. ‘Whatever may be the intention of the inventor, if he suffers his invention to go into public use, through any means whatsoever, without an immediate assertion of his right, he is not entitled to a patent’ 7 Pet. at page 323, 8 L.Ed. 689. In Kendall v. Winsor, 21 How. 322, 16 L.Ed. 165, the inventor had kept the machine secret, but had sold the harness which it produced, so that the facts presented the same situation as here. Since the jury brought in a verdict for the defendant on the issue of abandonment, the case adds nothing except for the dicta on page 328 of 21 How., 16 L.Ed. 165: ‘the inventor who designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention for the public, comes not within the policy or objects of the Constitution or acts of Congress.’ In Egbert v. Lippmann, 104 U.S. 333, 26 L.Ed. 755, although the patent was for the product which was sold, nothing could be learned about it without taking it apart, yet it was a public use within the statute. In Hall v. Macneale, 107 U.S. 90, 2

S.Ct. 73, 27 L.Ed. 367, the situation was the same.

In the lower courts we may begin with the often cited decision in Macbeth-Evans Glass Co. v. General Electric Co., 6 Cir., 246 F. 695, which concerned a process patent*519 for making illuminating glass. The patentee had kept the process as secret as possible, but for ten years had sold the glass, although this did not, so far as appears, disclose the process. The court held the patent invalid for two reasons, as we understand them: the first was that the delay either indicated an intention to abandon, or was of itself a forfeiture, because of the inconsistency of a practical monopoly by means of secrecy and of a later legal monopoly by means of a patent. So far, it was not an interpretation of ‘prior use’ in the statute; but, beginning on page 702 of 246 F. 695 Judge Warrington seems to have been construing that phrase and to hold that the sales were such a use. In Allinson Manufacturing Co. v. Ideal Filter Co., 8 Cir., 21 F.2d 22, the patent was for a machine for purifying gasoline: the machine was kept secret, but the gasoline had been sold for a period of six years before the application was filed. As in Macbeth-Evans Glass Co. v. General Electric Co., supra, 6 Cir., 246 F. 695, the court apparently invalidated the patent on two grounds: one was that the inventor had abandoned the right to a patent, or had forfeited it by his long delay. We are disposed however to read the latter part- pages 27 and 28 of 21 F.2d- as holding that the sale of gasoline was a ‘prior use’ of the machine, notwithstanding its concealment. Certainly, the following quotation from Pitts v. Hall, Fed. Cas. No. 11,192, 2 Blatchf. 229, was not otherwise apposite; a patentee ‘is not allowed to derive any benefit from the sale or use of his machine, without forfeiting his right, except within two years prior to the time he makes his application.’ On the other hand in Stresau v. Ipsen, 77 F.2d 937, 22 C.C.P.A. (Patents) 1352, the Court of Customs and Patent Appeals did indeed decide that a process claim might be valid when the inventor had kept the process secret but had sold the product.

Coming now to our own decisions (the opinions in all of which I wrote), the first was Grasselli Chemical Co. v. National Aniline & Chemical Co., 2 Cir., 26 F.2d 305, in which the patent was for a process which had been kept secret, but the product had been sold upon the market for more than two years. We held that, although the process could not have been discovered from the product, the sales constituted a ‘prior use,’ relying upon Egbert v. Lippmann, supra, 104 U.S. 333, 26 L.Ed. 755, and Hall v. Macneale, supra, 107 U.S. 90, 2 S.Ct. 73, 27 L.Ed. 367. There was nothing in this inconsistent with what we are now holding. But in Peerless Roll Leaf Co. v. Griffin & Sons, supra, 2 Cir., 29 F.2d 646, where the patent was for a machine, which had been kept secret, but whose output had been freely sold on the market, we sustained the patent on the ground that ‘the sale of the product was irrelevant, since no knowledge could possibly be acquired of the machine in that way. In this respect the machine differs from a process * * * or from any other invention necessarily contained in a product’ 29 F.2d at page 649. So far as we can now find, there is nothing to support this distinction in the authorities, and we shall try to show that we misapprehended the theory on which the prior use by an inventor forfeits his right to a patent. In Aerovox Corp. v. Polymet Manufacturing Corp., supra, 2 Cir., 67 F.2d 860, the patent was also for a process, the use of which we held not to have been experimental, though not secret. Thus our decision sustaining the patent was right; but apparently we were by implication reverting to the doctrine of the Peerless case when we added that it was doubtful whether the process could be detected from the product, although we cited only Hall v. Macneale, supra, 107 U.S. 90, 2 S.Ct. 73, 27 L.Ed. 367, and Grasselli Chemical Co. v. National Aniline Co., supra (2 Cir., 26 F.2d 305). In Gillman v. Stern, supra, 2 Cir., 114 F.2d 28, it was not the inventor, but a third person who used the machine secretly and sold the product openly, and there was therefore no question either of abandonment or forfeiture by the inventor. The only issue was whether a prior use which did not disclose the invention to the art was within the statute; and it is well settled that it is not. As in the case of any other anticipation, the issue of invention must then be determined by how much the inventor has contributed any new information to the art. Gayler v. Wilder, 10 How. 477, 496, 497, 13 L.Ed. 504; Tilghman v. Proctor, 102 U.S. 707, 711, 26 L.Ed. 279; Carson v. American B. & R. Co., 9 Cir., 11 F.2d 766, 770, 771, 26 L.Ed. 279; Carson v. American B. & R. Co., 9 Cir., 11 F.2d 766, 770, 771; Boyd v. Cherry, C.C. Iowa, 50 F. 279, 283; Acme Flexible Clasp Co. v. Cary Manufacturing Co., C.C.N.Y., 96 F. 344, 347; Ajax Metal Co. v. Brady Brass Co., C.C.N.Y., 155 F. 409, 415, 416; Anthracite Separator Co. v. Pollock, C.C.Pa., 175 F. 108, 111.

[2] [3] [4] From the foregoing it appears that in *520 Peerless Roll Leaf Co. v. Griffin & Sons, supra, 2 Cir., 29 F.2d 646, we confused two separate doctrines: (1) The effect upon his right to a patent of the inventor's competitive exploitation of his machine or of his process; (2) the contribution which a prior use by another person makes to the art. Both do indeed come within the phrase, ‘prior use’; but the first is a defence for quite different reasons from the second. It had its origin- at least in this country- in the passage we have quoted from Pennock v. Dialogue, supra, 2 Pet. 1, 7 L.Ed. 327; i.e., that it is a condition upon an inventor's right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly. It is true that for the limited period of two years he was allowed to do so, possibly in order to give him time to prepare an application; and even that has been recently cut down by half. But if he goes beyond that period of probation, he forfeits his right regardless of how little the public may have learned about the invention; just as he can forfeit it by too long concealment, even without exploiting the invention at all. Woodbridge v. United States, 263 U.S. 50, 44 S.Ct. 45, 68 L.Ed. 159; Macbeth-Evans Glass Co. v. General Electric Co., supra, 6 Cir., 246 F. 695. Such a forfeiture has nothing to do with abandonment, which presupposes a deliberate, though not necessarily an express, surrender of any right to a patent. Although the evidence of both may at times overlap, each comes from a quite different legal source: one, from the fact that by renouncing the right the inventor irrevocably surrenders it; the other, from the fiat of Congress that it is part of the consideration for a patent that the public shall as soon as possible begin to enjoy the disclosure.

[5] It is indeed true that an inventor may continue for more than a year to practice his invention for his private purposes of his own enjoyment and later patent it. But that is, properly considered, not an exception to the doctrine, for he is not then making use of his secret to gain a competitive advantage over others; he does not thereby extend the period of his monopoly. Besides, as we have Seen, even that privilege has its limits, for he may conceal it so long that he will lose his right to a patent even though he does not use it at all. With that question we have not however any concern here.

Judgment reversed; complaint dismissed.

C.A.2,1946. Metallizing Engineer. Co. v. Kenyon Bearing & A.P. Co., 153 F.2d 516, 68 U.S.P.Q. 54

END OF DOCUMENT

Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)

2010-04-09T04:05:04Z

Maura: Created page with 'Circuit Court of Appeals, Second Circuit. METALLIZING ENGINEERING CO., Inc., v. KENYON BEARING & AUTO PARTS CO., Inc., et al. No. 131. Jan. 10, 1946. Writ of Certiorari Den…'

Circuit Court of Appeals, Second Circuit.

METALLIZING ENGINEERING CO., Inc., v. KENYON BEARING & AUTO PARTS CO., Inc., et al.

No. 131.
Jan. 10, 1946.

Writ of Certiorari Denied May 6, 1946.

See 66 S.Ct. 1016.

Appeal from the District Court of the United States for the District of Connecticut.

Action by the Metallizing Engineering Company, Inc., against the Kenyon Bearing & Auto Parts Company, Inc., and others for patent infringement. From a judgment, 62 F.Supp. 42, holding valid and infringed claims 1, 2, 3, 4, 5, 6, 6, and 11, of Reissue Patent No. 22,397, issued to John F. Meduna, the plaintiff's assignor, on November 30, 1943, based on the original patent No. 2,320,327, which had been issued on May 25, 1943, upon application filed August 6, 1942, defendants appeal.

Judgment reversed and complaint dismissed.

Reissue Patent No. 22,397, on process of conditioning a metal surface for bonding thereto applied spray metal, is invalid for too long competitive exploitation before application for patent.

Inventor's competitive exploitation of his machine or process for more than one year prior to application for patent operates as a forfeiture of right to patent regardless of how little public may have learned about the invention. 35 U.S.C.A. § 31.

Forfeiture of inventor's right to patent invention because of competitive exploitation prior to application is not the equivalent of an “abandonment” which presupposes a deliberate, though not necessarily an express, surrender of any right to a patent. 35 U.S.C.A. § 31.
[4] KeyCite Citing References for this Headnote
291 Patents 291II Patentability
291II(E) Prior Public Use or Sale 291k75 k. What Constitutes Public Use. Most Cited Cases
Under the patent law, it is a part of the consideration for a patent that the public shall, as soon as possible, begin to enjoy the disclosure.
[5] KeyCite Citing References for this Headnote
291 Patents 291II Patentability
291II(E) Prior Public Use or Sale 291k75 k. What Constitutes Public Use. Most Cited Cases
http://campus.westlaw.com.proxy.library.nd.edu/result/default.wl?r...=DOC&spa=003654480-2000&historytype=F&scxt=WL&rs=WLW10.03&fn=_top Page 2 of 8
Find Result - 153 F.2d 516 4/8/10 6:21 PM
The rule that an inventor may not competitively exploit his machine or process for more than a year before applying for a patent thereon does not apply to an inventor who continues for more than a year to practice his invention for his private purposes or his own enjoyment and who does not thereby extend the period of his commercial monopoly, although such an inventor, by too long a concealment, will also lose right to a patent. 35 U.S.C.A. § 31.

*516 Morris Kirschstein, of New York City, and Clifford H. Bell, of Hartford, Conn., for appellants.

Louis Burgess, Burgess & Dinklage, and Ralph D. Dinklage, all of New York City, for appellee.

Before L. HAND, AUGUSTUS N. HAND, and CLARK, Circuit Judges.

*517 L. HAND, Circuit Judge. The defendants appeal from the usual decree holding valid and infringed all but
three of the claims of a reissued patent, issued to the plaintiff's assignor, Meduna; the original patent issued on May 25, 1943, upon an application filed on August 6, 1942. The patent is for the process of ‘so conditioning a metal surface that the same is, as a rule, capable of bonding thereto applied spray metal to a higher degree than is normally procurable with hitherto known practices' (p. 2, lines 1-5). It is primarily useful for building up the worn metal parts of a machine. The art had for many years done this by what the patent calls ‘spray metal,’ which means metal sprayed in molten form upon the surface which it is desired to build up. This process is called ‘metalizing,’ and it had been known for nearly thirty years before Meduna's invention; but about fifteen or twenty years ago it was found that, to secure a satisfactory bond between the ‘spray metal’ and the surface, the surface must be roughened so that there would be fine undercut areas in it upon which the sprayed surface could take hold; and of course the surface must itself be clean. The art had developed two ways of producing such a surface; one, by sand-blasting, and the other, by a tool, so adjusted in a lathe as to tear tiny channels: ‘screw-threading.’ Meduna's invention was to prepare the surface by first depositing upon it a preliminary layer of metal by means of a process, disclosed in Patent No. 1,327,267, issued to Brewster and Wisehan, on January 6, 1920. This process was practiced by what the art knew as the ‘McQuay-Norris' machine, which was ‘more particularly adapted and intended for use in the filling of cavities which may occur in castings or other metal objects' (p. 1, lines 17-20). The ‘McQuay-Norris' device was operated by electric power, one terminal of the circuit being connected with the work, and the other being a fusable electrode, which melted at the temperature developed in the circuit, and deposited parts of itself at the places desired upon closing of the circuit by contact with the work. The process was described as follows (p. 2, lines 47-57): ‘The electrode is moved from spot to spot in the cavity and the foregoing operation repeated until the surface of the blowhole is covered by a deposit of the metal by the electrode. It will thus be Seen that the surface of the blow-hole is covered by a number of small particles of metal of the electrode, all of which particles are welded to the particular portion of the surface of the blow-hole with which the electrode contacted.’ After this has been done, ‘a peening hammer is employed to peen the metal which has been introduced into the blow-hole, thus causing the metal to be compacted, and any inequalities of the surface of the metal reduced’ (p. 2, lines 63-68). Meduna did not peen the metal, indeed peening would have been entirely unfitted to his purpose, as it would have pressed together the undercut deposits which later serve to catch the hold the ‘spray metal.’ Moreover, his purpose was not to fill up ‘blow-holes,’ or fissures; but, as we have said, to prepare worn surfaces for rebuilding. However, he used the McQuay- Norris machine unchanged, prescribing a voltage of preferably not more than twenty volts- ordinarily between two and nine- and an amperage of between two hundred and three or four hundred. The surface was to be ‘repetitiously contacted and preferably repetitiously contact stroked with the electrode on successive areas, the stroking action depositing on these areas small amounts of electrode material firmly bonded thereto. Alternatively the electrode may be applied with a stippling action to the metal surface. While these procedures essentially involve breaking and making contact between the metal surface and the electrode, it is also possible, and sometimes advisable, to move the electrode relative to the base while maintaining resistant heating contact therebetween’ (p. 2 lines 72-76; p. 3, lines 1-8).

[1] The only question which we find necessary to decide is as to Meduna's public use of the patented process more than one year before August 6, 1942. The district judge made findings about this, which are supported by the testimony and which we accept. They appear as findings 8, 9, 10, 11, 12 and 13 on pages 46 and 47 of volume 62 of the Federal Supplement; and we cannot improve upon his statement. The kernel of them is the following: ‘the inventor's main purpose in his use of the process prior to August 6, 1941, and especially in respect to all jobs for owners not known to him, was commercial, and * * * an experimental purpose in connection with such use was subordinate only.’ Upon this finding he concluded as matter of law that, since the use before the critical date- August 6, 1941- was not primarily for the purposes of experiment, the use was not excused*518 for that reason. Smith & Griggs Manufacturing Co. v. Sprague, 123 U.S. 249, 256, 8 S.Ct. 122, 31 L.Ed. 141; Aerovox Corp. v. Polymet Manufacturing Corp., 2 Cir., 67 F.2d 860, 862. Moreover, he also concluded that the use was not public but secret, and for that reason that its predominantly commercial character did prevent it from invalidating the patent. For the last he relied upon our decisions in Peerless Roll Leaf Co. v. Griffin & Sons, 29 F.2d 646, and Gillman v. Stern, 114 F.2d 28. We think that his analysis of peerless Roll Leaf Co. v. Griffin & Sons, was altogether correct, and that he had no alternative but to follow that decision; on the other hand, we now think that we were then wrong and that the decision must be overruled for reasons we shall state. Gillman v. Stern, supra, was, however, rightly decided.

Section one of the first and second Patent Acts, 1 Stat. 109 and 318, declared that the petition for a patent must state that the subject matter had not been ‘before known or used.’ Section six of the Act of 1836, 5 Stat. 117, changed this by providing in addition that the invention must not at the time of the application for a patent have been ‘in public use or on sale’ with the inventor's ‘consent or allowance’; and Sec. 7 of the Act of 1839, 5 Stat. 353, provided that ‘no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the application for a patent * * * except on proof of abandonment of such invention to the public; or that such purchase, sale, or prior use has been for more than two years prior to such application * * *.’ Section 4886 of the Revised Statutes made it a condition upon patentability that the invention shall not have been ‘in public use or on sale for more than two years prior to his application,’ and that it shall not have been ‘proved to have been abandoned.’ This is in substance the same as the Act of 1839, and is precisely the same as Sec. 31 of Title 35, U.S.C.A. except that the prior use is now limited to the United States, and to one year before the application. Sec. 1, Chap. 391, 29 Stat. 692; Sec. 1, Chap. 450, 53 Stat. 1212, 35 U.S.C.A. § 31. So far as we can find, the first case which dealt with the effect of prior use by the patentee was Pennock v. Dialogue, 2 Pet. 1, 4, 7 L.Ed. 327, in which the invention had been completed in 1811, and the patent granted in 1818 for a process of making hose by which the sections were joined together in such a way that the joints resisted pressure as well as the other parts. It did not appear that the joints in any way disclosed the process; but the patentee, between the discovery of the invention and the grant of the patent, had sold 13,000 feet of hose; and as to this the judge charged: ‘If the public, with the knowledge and tacit consent of the inventor, be permitted to use the invention, without opposition, it is a fraud on the public afterwards to take out a patent.’ The Supreme Court affirmed a judgment for the defendant, on the ground that the invention had been ‘known or used before the application.’ ‘If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should * * * make and sell his invention publicly, and thus gather the whole profits, * * * it would materially retard the progress of science and the useful arts' to allow him fourteen years of legal monopoly ‘when the danger of competition should force him to secure the exclusive right’ 2 Pet. at page 19, 7 L.Ed. 327. In Shaw v. Cooper, 7 Pet. 292, 8 L.Ed. 689, the public use was not by the inventory, but he had neglected to prevent it after he had learned of it, and this defeated the patent. ‘Whatever may be the intention of the inventor, if he suffers his invention to go into public use, through any means whatsoever, without an immediate assertion of his right, he is not entitled to a patent’ 7 Pet. at page 323, 8 L.Ed. 689. In Kendall v. Winsor, 21 How. 322, 16 L.Ed. 165, the inventor had kept the machine secret, but had sold the harness which it produced, so that the facts presented the same situation as here. Since the jury brought in a verdict for the defendant on the issue of abandonment, the case adds nothing except for the dicta on page 328 of 21 How., 16 L.Ed. 165: ‘the inventor who designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention for the public, comes not within the policy or objects of the Constitution or acts of Congress.’ In Egbert v. Lippmann, 104 U.S. 333, 26 L.Ed. 755, although the patent was for the product which was sold, nothing could be learned about it without taking it apart, yet it was a public use within the statute. In Hall v. Macneale, 107 U.S. 90, 2

S.Ct. 73, 27 L.Ed. 367, the situation was the same.

In the lower courts we may begin with the often cited decision in Macbeth-Evans Glass Co. v. General Electric Co., 6 Cir., 246 F. 695, which concerned a process patent*519 for making illuminating glass. The patentee had kept the process as secret as possible, but for ten years had sold the glass, although this did not, so far as appears, disclose the process. The court held the patent invalid for two reasons, as we understand them: the first was that the delay either indicated an intention to abandon, or was of itself a forfeiture, because of the inconsistency of a practical monopoly by means of secrecy and of a later legal monopoly by means of a patent. So far, it was not an interpretation of ‘prior use’ in the statute; but, beginning on page 702 of 246 F. 695 Judge Warrington seems to have been construing that phrase and to hold that the sales were such a use. In Allinson Manufacturing Co. v. Ideal Filter Co., 8 Cir., 21 F.2d 22, the patent was for a machine for purifying gasoline: the machine was kept secret, but the gasoline had been sold for a period of six years before the application was filed. As in Macbeth-Evans Glass Co. v. General Electric Co., supra, 6 Cir., 246 F. 695, the court apparently invalidated the patent on two grounds: one was that the inventor had abandoned the right to a patent, or had forfeited it by his long delay. We are disposed however to read the latter part- pages 27 and 28 of 21 F.2d- as holding that the sale of gasoline was a ‘prior use’ of the machine, notwithstanding its concealment. Certainly, the following quotation from Pitts v. Hall, Fed. Cas. No. 11,192, 2 Blatchf. 229, was not otherwise apposite; a patentee ‘is not allowed to derive any benefit from the sale or use of his machine, without forfeiting his right, except within two years prior to the time he makes his application.’ On the other hand in Stresau v. Ipsen, 77 F.2d 937, 22 C.C.P.A. (Patents) 1352, the Court of Customs and Patent Appeals did indeed decide that a process claim might be valid when the inventor had kept the process secret but had sold the product.

Coming now to our own decisions (the opinions in all of which I wrote), the first was Grasselli Chemical Co. v. National Aniline & Chemical Co., 2 Cir., 26 F.2d 305, in which the patent was for a process which had been kept secret, but the product had been sold upon the market for more than two years. We held that, although the process could not have been discovered from the product, the sales constituted a ‘prior use,’ relying upon Egbert v. Lippmann, supra, 104 U.S. 333, 26 L.Ed. 755, and Hall v. Macneale, supra, 107 U.S. 90, 2 S.Ct. 73, 27 L.Ed. 367. There was nothing in this inconsistent with what we are now holding. But in Peerless Roll Leaf Co. v. Griffin & Sons, supra, 2 Cir., 29 F.2d 646, where the patent was for a machine, which had been kept secret, but whose output had been freely sold on the market, we sustained the patent on the ground that ‘the sale of the product was irrelevant, since no knowledge could possibly be acquired of the machine in that way. In this respect the machine differs from a process * * * or from any other invention necessarily contained in a product’ 29 F.2d at page 649. So far as we can now find, there is nothing to support this distinction in the authorities, and we shall try to show that we misapprehended the theory on which the prior use by an inventor forfeits his right to a patent. In Aerovox Corp. v. Polymet Manufacturing Corp., supra, 2 Cir., 67 F.2d 860, the patent was also for a process, the use of which we held not to have been experimental, though not secret. Thus our decision sustaining the patent was right; but apparently we were by implication reverting to the doctrine of the Peerless case when we added that it was doubtful whether the process could be detected from the product, although we cited only Hall v. Macneale, supra, 107 U.S. 90, 2 S.Ct. 73, 27 L.Ed. 367, and Grasselli Chemical Co. v. National Aniline Co., supra (2 Cir., 26 F.2d 305). In Gillman v. Stern, supra, 2 Cir., 114 F.2d 28, it was not the inventor, but a third person who used the machine secretly and sold the product openly, and there was therefore no question either of abandonment or forfeiture by the inventor. The only issue was whether a prior use which did not disclose the invention to the art was within the statute; and it is well settled that it is not. As in the case of any other anticipation, the issue of invention must then be determined by how much the inventor has contributed any new information to the art. Gayler v. Wilder, 10 How. 477, 496, 497, 13 L.Ed. 504; Tilghman v. Proctor, 102 U.S. 707, 711, 26 L.Ed. 279; Carson v. American B. & R. Co., 9 Cir., 11 F.2d 766, 770, 771, 26 L.Ed. 279; Carson v. American B. & R. Co., 9 Cir., 11 F.2d 766, 770, 771; Boyd v. Cherry, C.C. Iowa, 50 F. 279, 283; Acme Flexible Clasp Co. v. Cary Manufacturing Co., C.C.N.Y., 96 F. 344, 347; Ajax Metal Co. v. Brady Brass Co., C.C.N.Y., 155 F. 409, 415, 416; Anthracite Separator Co. v. Pollock, C.C.Pa., 175 F. 108, 111.

[2] [3] [4] From the foregoing it appears that in *520 Peerless Roll Leaf Co. v. Griffin & Sons, supra, 2 Cir., 29 F.2d 646, we confused two separate doctrines: (1) The effect upon his right to a patent of the inventor's competitive exploitation of his machine or of his process; (2) the contribution which a prior use by another person makes to the art. Both do indeed come within the phrase, ‘prior use’; but the first is a defence for quite different reasons from the second. It had its origin- at least in this country- in the passage we have quoted from Pennock v. Dialogue, supra, 2 Pet. 1, 7 L.Ed. 327; i.e., that it is a condition upon an inventor's right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly. It is true that for the limited period of two years he was allowed to do so, possibly in order to give him time to prepare an application; and even that has been recently cut down by half. But if he goes beyond that period of probation, he forfeits his right regardless of how little the public may have learned about the invention; just as he can forfeit it by too long concealment, even without exploiting the invention at all. Woodbridge v. United States, 263 U.S. 50, 44 S.Ct. 45, 68 L.Ed. 159; Macbeth-Evans Glass Co. v. General Electric Co., supra, 6 Cir., 246 F. 695. Such a forfeiture has nothing to do with abandonment, which presupposes a deliberate, though not necessarily an express, surrender of any right to a patent. Although the evidence of both may at times overlap, each comes from a quite different legal source: one, from the fact that by renouncing the right the inventor irrevocably surrenders it; the other, from the fiat of Congress that it is part of the consideration for a patent that the public shall as soon as possible begin to enjoy the disclosure.

[5] It is indeed true that an inventor may continue for more than a year to practice his invention for his private purposes of his own enjoyment and later patent it. But that is, properly considered, not an exception to the doctrine, for he is not then making use of his secret to gain a competitive advantage over others; he does not thereby extend the period of his monopoly. Besides, as we have Seen, even that privilege has its limits, for he may conceal it so long that he will lose his right to a patent even though he does not use it at all. With that question we have not however any concern here.

Judgment reversed; complaint dismissed.

C.A.2,1946. Metallizing Engineer. Co. v. Kenyon Bearing & A.P. Co., 153 F.2d 516, 68 U.S.P.Q. 54

END OF DOCUMENT

Talk:Elizabeth v. Pavement Company, 97 U.S. 126 (1877)

2010-04-09T04:00:19Z

Maura: Created page with ' == Maura == A foreign patent, or other foreign printed publication describing an invention, is no defence to a suit upon a patent of the United States, unless published anterio…'

== Maura ==

A foreign patent, or other foreign printed publication describing an invention, is no defence to a suit upon a patent of the United States, unless published anterior to the making of the invention or discovery secured by the latter, provided that the American patentee, at the time of making application for his patent, believed himself to be the first inventor or discoverer of the thing patented. He is obliged to make oath to such belief when he applies for his patent; and it will be presumed that such was his belief, until the contrary is proven.

An abandonment of an invention to the public may be evinced by the conduct of the inventor at any time, even within the two years named in the law. The effect of the law is, that no such consequence will necessarily follow from the invention being in public use or on sale, with the inventor's consent and allowance, at any time within two years before his application; but that, if the invention is in public use or on sale prior to that time, it will be conclusive evidence of abandonment, and the patent will be void.

If durability is one of the qualities to be attained, a long period, perhaps years, may be necessary to enable the inventor to discover whether his purpose is accomplished. And though, during all that period, he may not find that any changes are necessary, yet he may be justly said to be using his machine only by way of experiment; and no one would say that such a use, pursued with a bona fide intent of testing the qualities of the machine, would be a public use, within the meaning of the statute. So long as he does not voluntarily allow others to make it and use it, and so long as it is not on sale for general use, he keeps the invention under his own control, and does not lose his title to a patent.

Nicholson did not sell it, nor allow others to use it or sell it. He did not let it go beyond his control. He did nothing that indicated any intent to do so. He kept it under his own eyes, and never for a moment abandoned the intent to obtain a patent for it.

It is not a public knowledge of his invention that precludes the inventor from obtaining a patent for it, but a public use or sale of it.

It is sometimes said that an inventor acquires an undue advantage over the public by delaying to take out a patent, inasmuch as he thereby preserves the monopoly to himself for a longer period than is allowed by the policy of the law; but this cannot be said with justice when the delay is occasioned by a bona fide effort to bring his invention to perfection, or to ascertain whether it will answer the purpose intended. His monopoly only continues for the allotted period, in any event; and it is the interest of the public, as well as himself, that the invention should be perfect and properly tested, before a patent is granted for it. Any attempt to use it for a profit, and not by way of experiment, for a longer period than two years before the application, would deprive the inventor of his right to a patent.

But one thing may be affirmed with reasonable confidence, that, if an infringer of a patent has realized no profit from the use of the invention, he cannot be called upon to respond for profits; the patentee, in such case, is left to his remedy for damages. It is also clear that a patentee is entitled to recover the profits that have been actually realized from the use of his invention, although, from other causes, the general business of the defendant, in which the invention is employed, may not have resulted in profits,—as where it is shown that the use of his invention produced a definite saving in the process of a manufacture.

Elizabeth v. Pavement Company, 97 U.S. 126 (1877)

2010-04-09T03:58:46Z

97 U.S. 126

24 L.Ed. 1000

ELIZABETH v. PAVEMENT COMPANY.

October Term, 1877

APPEAL from the Circuit Court of the United States for the District of New Jersey.

The facts are stated in the opinion of the court.

Mr. A. Q. Keasbey and Mr. Charles F. Blake for the appellants.

Mr. Clarence A. Seward and Mr. B. Williamson, contra.

MR. JUSTICE BRADLEY delivered the opinion of the court.

This suit was brought by the American Nicholson Pavement Company against the city of Elizabeth, N. J., George W. Tubbs, and the New Jersey Wood- Paving Company, a corporation of New Jersey, upon a patent issued to Samuel Nicholson, dated Aug. 20, 1867, for a new and improved wooden pavement, being a second reissue of a patent issued to said Nicholson Aug. 8, 1854. The reissued patent was extended in 1868 for a further term of seven years. A copy of it is appended to the bill; and, in the specification, it is declared that the nature and object of the invention consists in providing a process or mode of constructing wooden block pavements upon a foundation along a street or roadway with facility, cheapness, and accuracy, and also in the creation and construction of such a wooden pavement as shall be comparatively permanent and durable, by so uniting and combining all its parts, both superstructure and foundation, as to provide against the slipping of the horses' feet, against noise, against unequal wear, and against rot and consequent sinking away from below. Two plans of making this pavement are specified. Both require a proper foundation on which to lay the blocks, consisting of tarred-paper or hydraulic cement covering the surface of the road-bed to the depth of about two inches, or of a flooring of boards or plank, also covered with tar, or other preventive of moisture. On this foundation, one plan is to set square blocks on end arranged like a checker-board, the alternate rows being shorter than the others, so as to leave narrow grooves or channel-ways to be filled with small broken stone or gravel, and then pouring over the whole melted tar or pitch, whereby the cavities are all filled and cemented together. The other plan is, to arrange the blocks in rows transversely across the street, separated a small space (of about an inch) by strips of board at the bottom, which serve to keep the blocks at a uniform distance apart, and then filling these spaces with the same material as before. The blocks forming the pavement are about eight inches high. The alternate rows of short blocks in the first plan and the strips of board in the second plan should not be higher than four inches. The patent has four claims, the first two of which, which are the only ones in question, are as follows:——

'I claim as an improvement in the art of constructing pavements:

'1. Placing a continuous foundation or support, as above described, directly upon the roadway; then arranging thereon a series of blocks, having parallel sides, endwise, in rows, so as to leave a continuous narrow groove or channel-way between each row, and then filling said grooves or channel- ways with broken stone, gravel, and tar, or other like materials.

'2. I claim the formation of a pavement by laying a foundation directly upon the roadway, substantially as described, and then employing two sets of blocks: one a principal set of blocks, that shall form the wooden surface of the pavement when completed, and an auxiliary set of blocks or strips of board, which shall form no part of the surface of the pavement, but determine the width of the groove between the principal blocks, and also the filling of said groove, when so formed between the principal blocks, with broken stone, gravel, and tar, or other like material.'

The bill charges that the defendants infringed this patent by laying down wooden pavements in the city of Elizabeth, N. J., constructed in substantial conformity with the process patented, and prays an account of profits, and an injunction.

The defendants answered in due course, admitting that they had constructed, and were still constructing, wooden pavements in Elizabeth, but alleging that they were constructed in accordance with a patent granted to John W. Brocklebank and Charles Trainer, dated Jan. 12, 1869, and denied that it infringed upon the complainant.

They also denied that there was any novelty in the alleged invention of Nicholson, and specified a number of English and other patents which exhibited, as they claimed, every substantial and material part thereof which was claimed as new.

They also averred that the alleged invention of Nicholson was in public use, with his consent and allowance, for six years before he applied for a patent, on a certain avenue in Boston called the Mill-dam; and contended that said public use worked an abandonment of the pretended invention.

These several issues, together with the question of profits, and liability on the part of the several defendants to respond thereto, are the subjects in controversy before us.

We do not think that the defence of want of novelty has been successfully made out. Nicholson's invention dates back as early as 1847 or 1848. He filed a caveat in the Patent Office, in August, 1847, in which the checker-board pavement is fully described; and he constructed a small patch of pavement of both kinds, by way of experiment, in June or July, 1848, in a street near Boston, which comprised all the peculiarities afterwards described in his patent; and the experiment was a successful one. Before that period, we do not discover in any of the forms of pavements adduced as anticipations of his, any one that sufficiently resembles it to deprive him of the claim to its invention. As claimed by him, it is a combination of different parts or elements, consisting, as the appellant's counsel, with sufficient accuracy for the purposes of this case, enumerates them, 1st, of the foundation prepared to exclude moisture from beneath; 2d, the parallel-sided blocks; 3d, the strips between these blocks, to keep them at a uniform distance and to create a space to be filled with gravel and tar; and, 4th, the filling. Though it may be true that every one of these elements had been employed before, in one kind of pavement or another, yet they had never been used in the same combination and put together in the same manner as Nicholson combined and arranged them, so as to make a pavement like his. The one which makes the nearest approach to it, and might, perhaps, be deemed sufficiently like to deprive Nicholson of the merit of invention, is that of John Hosking, which, in one form, consisted of alternate rows of short and long blocks, the latter partially resting on the former by their being mutually rabbeted so as to fit together. The spaces thus formed between the longer blocks, and on the top of the shorter ones, were filled with loose stone and cement or asphalt, substantially the same as in Nicholson's pavement. It would be very difficult to sustain Nicholson's patent if Hosking's stood in his way. But the only evidence of the invention of the latter is derived from an English patent, the specification of which was not enrolled until March, 1850, nearly two years after Nicholson had put his pavement down in its completed form, by way of experiment, in Boston. A foreign patent, or other foreign printed publication describing an invention, is no defence to a suit upon a patent of the United States, unless published anterior to the making of the invention or discovery secured by the latter, provided that the American patentee, at the time of making application for his patent, believed himself to be the first inventor or discoverer of the thing patented. He is obliged to make oath to such belief when he applies for his patent; and it will be presumed that such was his belief, until the contrary is proven. That was the law as it stood when Nicholson obtained his original patent, and it is the law still. Act of 1836, sects. 7, 15; Act of 1870, sects. 24, 25, 61; Rev. Stat., sects. 4886, 4887, 4920; and see Curtis, Patents, sects. 375, 375a. Since nothing appears to show that Nicholson had any knowledge of Hosking's invention or patent prior to his application for a patent in March, 1854, and since the evidence is very full to the effect that he had made his invention as early as 1848, the patent of Hosking cannot avail the defence in this suit.

It is unnecessary to make an elaborate examination of the other patents which were referred to for the purpose of showing an anticipation of Nicholson's invention. They are mostly English patents, and we will only advert in a summary way to such of them as seem to be most nearly relevant to the question in controversy, premising that in England the enrolment of the specification is the first publication of the particulars of a patented invention.

Stead's patent, enrolled in November, 1838, shows a plan of pavement consisting of a series of hexagonal, triangular, or square-sided blocks, standing close together on the surface of the roadway, in a layer of sand, and being a little smaller at the bottom than at the top, so as to admit a packing of sand, or pitch and sand, in the interstices between them, below the surface. Small recesses at the top, around the edges of the blocks, are suggested, apparently for giving a better hold to the horses' feet. It had no prepared foundation like Nicholson's, and no spaces filled with gravel, &c.

Parkin's patent, enrolled October, 1839, proposes a pavement to consist of blocks leaning upon each other, and connected together with a mixture of sand and bitumen, and connected by keys laid in grooves, and having grooves cut in the surface, either across the blocks or along their edges, to give the horses a better foothold. This plan exhibits no spaces to be filled with gravel or other filling.

Wood's patent, enrolled in April, 1841, shows a pavement made of adjoining blocks fitted together, but alternately larger and smaller at the top, like the frustrum of a pyramid, and not parallel-sided; those larger at the top standing slightly higher than the others, so that when pounded down, or pressed by rollers or loaded vehicles, they would act as wedges, binding the whole pavement more tightly together. No filling is used on the surface, and no prepared foundation is suggested. In one form of his pavement he describes continuous grooves, the grooves being formed of blocks which are shorter than the others; and states that the groove is to be filled with concrete, coal-tar, &c., mixed with gravel or sand: but there is no foundation described for the pavement; and the description given for laying down the pavement, viz. by ramming down the taller blocks after considerable surface has been covered by the pavement, shows that the road-bed on which the blocks are to be laid is to be a yielding one, capable of conforming itself to the under surface of the blocks in the same way as sand does to the ordinary stone pavement when the stones are rammed.

Perring's patent, enrolled January, 1843, shows a pavement consisting, in one form, of blocks leaning one upon another in rows, with strips of board between the rows, coming to within an inch or so of the top of the pavement, and the same distance from the bottom, leaving gutters for the water underneath, and the adjoining rows being connected with pins passing through the strips of board. The rows are thus separated to enable the horses' feet to get a better hold. No filling is suggested, and, indeed, would not be admissible, as the boards have no support but the pins; and no prepared foundation is required.

Crannis & Kemp's patent, enrolled Aug. 21, 1843, presents, amongst other things, first, a pavement consisting of rows of blocks adjoining each other, but each block having a small recess on one side, on the surface, to enable the horses to get a better foothold; secondly, a pavement of alternate blocks adjoining each other, but differing in width, and slightly differing in height, the top of one block being rounded off so as to make a groove next to the adjoining blocks, and the rounded blocks in one row alternating with the rectangular-topped blocks in the next row, the object of rounding off the alternate blocks being to give a foothold to the horses. This pavement is to be built on a flooring of plank, either of one or two thicknesses, but without any preparation to exclude moisture, and it has no filling in the depressions or grooves formed by rounding the alternate blocks.

A French patent, granted to Hediard in 1842, shows a pavement constructed of rows of blocks laid on a board foundation, cemented together by a thin filling (four-tenths of an inch thick) of cement or mastic, from top to bottom; no provision being made to prevent the accession of moisture from the ground below, and no strips between the rows to keep them separate from each other.

None of these pavements combine all the elements of Nicholson's, much less a combination of those elements arranged and disposed according to his plan. We think they present no ground for invalidating his patent, and no defence to this suit.

The next question to be considered is, whether Nicholson's invention was in public use or on sale, with his consent and allowance, for more than two years prior to his application for a patent, within the meaning of the sixth, seventh, and fifteenth sections of the act of 1836, as qualified by the seventh section of the act of 1839, which were the acts in force in 1854, when he obtained his patent. It is contended by the appellants that the pavement which Nicholson put down by way of experiment, on Mill-dam Avenue in Boston, in 1848, was publicly used for the space of six years before his application for a patent, and that this was a public use within the meaning of the law.

To determine this question, it is necessary to examine the circumstances under which this pavement was put down, and the object and purpose that Nicholson had in view. It is perfectly clear from the evidence that he did not intend to abandon his right to a patent. He had filed a caveat in August, 1847, and he constructed the pavement in question by way of experiment, for the purpose of testing its qualities. The road in which it was put down, though a public road, belonged to the Boston and Roxbury Mill Corporation, which received toll for its use; and Nicholson was a stockholder and treasurer of the corporation. The pavement in question was about seventy-five feet in length, and was laid adjoining to the toll-gate and in front of the toll-house. It was constructed by Nicholson at his own expense, and was placed by him where it was, in order to see the effect upon it of heavily loaded wagons, and of varied and constant use; and also to ascertain its durability, and liability to decay. Joseph L. Lang, who was toll-collector for many years, commencing in 1849, familiar with the road before that time, and with this pavement from the time of its origin, testified as follows: 'Mr. Nicholson was there almost daily, and when he came he would examine the pavement, would often walk over it, cane in hand, striking it with his cane, and making particular examination of its condition. He asked me very often how people liked it, and asked me a great many questions about it. I have heard him say a number of times that this was his first experiment with this pavement, and he thought that it was wearing very well. The circumstances that made this locality desirable for the purpose of obtaining a satisfactory test of the durability and value of the pavement were: that there would be a better chance to lay it there; he would have more room and a better chance than in the city; and, besides, it was a place where most everybody went over it, rich and poor. It was a great thoroughfare out of Boston. It was frequently travelled by teams having a load of five or six tons, and some larger. As these teams usually stopped at the toll-house, and started again, the stopping and starting would make as severe a trial to the pavement as it could be put to.'

This evidence is corroborated by that of several other witnesses in the cause; the result of the whole being that Nicholson merely intended this piece of pavement as an experiment, to test its usefulness and durability. Was this a public use, within the meaning of the law?

An abandonment of an invention to the public may be evinced by the conduct of the inventor at any time, even within the two years named in the law. The effect of the law is, that no such consequence will necessarily follow from the invention being in public use or on sale, with the inventor's consent and allowance, at any time within two years before his application; but that, if the invention is in public use or on sale prior to that time, it will be conclusive evidence of abandonment, and the patent will be void.

But, in this case, it becomes important to inquire what is such a public use as will have the effect referred to. That the use of the pavement in question was public in one sense cannot be disputed. But can it be said that the invention was in public use? The use of an invention by the inventor himself, or of any other person under his direction, by way of experiment, and in order to bring the invention to perfection, has never been regarded as such a use. Curtis, Patents, sect. 381; Shaw v. Cooper, 7 Pet. 292.

Now, the nature of a street pavement is such that it cannot be experimented upon satisfactorily except on a highway, which is always public.

When the subject of invention is a machine, it may be tested and tried in a building, either with or without closed doors. In either case, such use is not a public use, within the meaning of the statute, so long as the inventor is engaged, in good faith, in testing its operation. He may see cause to alter it and improve it, or not. His experiments will reveal the fact whether any and what alterations may be necessary. If durability is one of the qualities to be attained, a long period, perhaps years, may be necessary to enable the inventor to discover whether his purpose is accomplished. And though, during all that period, he may not find that any changes are necessary, yet he may be justly said to be using his machine only by way of experiment; and no one would say that such a use, pursued with a bona fide intent of testing the qualities of the machine, would be a public use, within the meaning of the statute. So long as he does not voluntarily allow others to make it and use it, and so long as it is not on sale for general use, he keeps the invention under his own control, and does not lose his title to a patent.

It would not be necessary, in such a case, that the machine should be put up and used only in the inventor's own shop or premises. He may have it put up and used in the premises of another, and the use may inure to the benefit of the owner of the establishment. Still, if used under the surveillance of the inventor, and for the purpose of enabling him to test the machine, and ascertain whether it will answer the purpose intended, and make such alterations and improvements as experience demonstrates to be necessary, it will still be a mere experimental use, and not a public use, within the meaning of the statute.
Whilst the supposed machine is in such experimental use, the public may be incidentally deriving a benefit from it. If it be a grist-mill, or a carding-
machine, customers from the surrounding country may enjoy the use of it by having their grain made into flour, or their wool into rolls, and still it will not be in public use, within the meaning of the law.

But if the inventor allows his machine to be used by other persons generally, either with or without compensation, or if it is, with his consent, put on sale for such use, then it will be in public use and on public sale, within the meaning of the law.

If, now, we apply the same principles to this case, the analogy will be seen at once. Nicholson wished to experiment on his pavement. He believed it to be a good thing, but he was not sure; and the only mode in which he could test it was to place a specimen of it in a public roadway. He did this at his own expense, and with the consent of the owners of the road. Durability was one of the qualities to be attained. He wanted to know whether his pavement would stand, and whether it would resist decay. Its character for durability could not be ascertained without its being subjected to use for a considerable time. He subjected it to such use, in good faith, for the simple purpose of ascertaining whether it was what he claimed it to be. Did he do any thing more than the inventor of the supposed machine might do, in testing his invention? The public had the incidental use of the pavement, it is true; but was the invention in public use, within the meaning of the statute? We think not. The proprietors of the road alone used the invention, and used it at Nicholson's request, by way of experiment. The only way in which they could use it was by allowing the public to pass over the pavement.

Had the city of Boston, or other parties, used the invention, by laying down the pavement in other streets and places, with Nicholson's consent and allowance, then, indeed, the invention itself would have been in public use, within the meaning of the law; but this was not the case. Nicholson did not sell it, nor allow others to use it or sell it. He did not let it go beyond his control. He did nothing that indicated any intent to do so. He kept it under his own eyes, and never for a moment abandoned the intent to obtain a patent for it.

In this connection, it is proper to make another remark. It is not a public knowledge of his invention that precludes the inventor from obtaining a patent for it, but a public use or sale of it. In England, formerly, as well as under our Patent Act of 1793, if an inventor did not keep his invention secret, if a knowledge of it became public before his application for a patent, he could not obtain one. To be patentable, an invention must not have been known or used before the application; but this has not been the law of this country since the passage of the act of 1836, and it has been very much qualified in England. Lewis v. Marling, 10 B. & C. 22. Therefore, if it were true that during the whole period in which the pavement was used, the public knew how it was constructed, it would make no difference in the result.

It is sometimes said that an inventor acquires an undue advantage over the public by delaying to take out a patent, inasmuch as he thereby preserves the monopoly to himself for a longer period than is allowed by the policy of the law; but this cannot be said with justice when the delay is occasioned by a bona fide effort to bring his invention to perfection, or to ascertain whether it will answer the purpose intended. His monopoly only continues for the allotted period, in any event; and it is the interest of the public, as well as himself, that the invention should be perfect and properly tested, before a patent is granted for it. Any attempt to use it for a profit, and not by way of experiment, for a longer period than two years before the application, would deprive the inventor of his right to a patent.

The next question for consideration is, whether the defendants have infringed the patent of Nicholson. On this question we entertain no doubt. The pavement put down by the defendants in the city of Elizabeth differs in nothing from that described by Nicholson in his patent, except in the form of the strips placed between the rows of blocks, and the nicks or grooves made in the blocks to fit them. In Nicholson's description, they are simply strips of board standing endwise on the foundation. The patent describes the strips as 'so arranged as to form spaces of about one inch in thickness between the rows of principal blocks. The auxiliary strip may be about half the height of the principal block; but it must not be permitted to fill up the grooves permanently and entirely, when the pavement is completed, or to perform any part of the pavement.' The strips used by the defendants are substantially the same as here described, and perform the same office. The only difference in their construction and application between the blocks is, that they are bevelled, by being made wider at the top than at the bottom,—the extra width of the top part being let into a notch or groove in the blocks. If they perform the additional office, of partially sustaining the pressure of the blocks and locking them together, they do not any the less perform the office assigned to them in Nicholson's pavement. Their peculiar form and application may constitute an improvement on his pavement, but it includes his.

It is objected, that the blocks of the Elizabeth pavement have not parallel sides, as prescribed in Nicholson's patent, by reason of the notch or groove in the side, into which the strips are fitted; but this notch or groove does not take from the blocks their general conformity to the requisition of the patent. They are parallel-sided blocks, with a groove made in the lower part to receive the edges of the strips. The parallel-sided blocks described in Nicholson's patent were probably intended to distinguish them from such blocks as those described in Stead's patent, which were hexagonal and triangular in form; or those in Wood's patent, which were of a pyramidal shape, the opposite sides being at an angle with each other. As contradistinguished from these, both the Nicholson blocks and those used by the appellants are properly denominated blocks with parallel sides.

The next subject for consideration is the form and principles of the decree rendered by the court below. The bill prayed a decree for damages and profits; but, as it was filed before the passage of the act of July 8, 1870, which first authorized courts of equity to allow damages in addition to profits, the court below correctly held that a decree for profits alone could be rendered. It is unnecessary here to enter into the general question of profits recoverable in equity by a patentee. The subject, as a whole, is surrounded with many difficulties, which the courts have not yet succeeded in overcoming. But one thing may be affirmed with reasonable confidence, that, if an infringer of a patent has realized no profit from the use of the invention, he cannot be called upon to respond for profits; the patentee, in such case, is left to his remedy for damages. It is also clear that a patentee is entitled to recover the profits that have been actually realized from the use of his invention, although, from other causes, the general business of the defendant, in which the invention is employed, may not have resulted in profits,—as where it is shown that the use of his invention produced a definite saving in the process of a manufacture. Mowry v. Whitney, 14 Wall. 434; Cawood Patent, 94 U. S. 695. On the contrary, though the defendant's general business be ever so profitable, if the use of the invention has not contributed to the profits, none can be recovered. The same result would seem to
follow where it is impossible to show the profitable effect of using the invention upon the business results of the party infringing. It may be added, that, where no profits are shown to have accrued, a court of equity cannot give a decree for profits, by way of damages, or as a punishment for the infringement. Livingston v. Woodworth, 15 How. 559. But when the entire profit of a business or undertaking results from the use of the invention, the patentee will be entitled to recover the entire profits, if he elects that remedy. And in such a case, the defendant will not be allowed to diminish the show of profits by putting in unconscionable claims for personal services or other inequitable deductions. Rubber Company v. Goodyear, 9 Wall. 788. These general propositions will hardly admit of dispute; and they will furnish us some guide in deciding the questions raised in this case.

Only the defendants have appealed; and the errors assigned by them on this branch of the case are the following:——

1st, 'The court erred in decreeing that the complainants do recover of the defendants, the city of Elizabeth and George W. Tubbs, the sums set forth in the decree, because the master did not find that said defendants had made any profits, which failure to find was not excepted to by complainants, and because no proof was offered by complainants of any profits whatever made by said defendants.'

2d, 'The court erred in finding that the profits received by the defendants were the fruits of the use of the devices described and claimed in the first and second claims of the Nicholson patent,—there being no proof of any advantage derived by the defendants from such use of the Nicholson devices,— or was incident to the use of the devices of the Brocklebank & Trainer patent. The failure to specifically show such profits makes the recovery nominal.'

3d, 'The court erred in decreeing the whole amount of profits made by the New Jersey Wood-Paving Company in the construction of the pavements referred to in the master's report. Whereas, if any profits ought to have been decreed, they should have been conflned to the amount of the license for a royalty which the complainants had been accustomed to receive, and were bound by the terms of their title to accept, from any party constructing such pavement in New Jersey.'

We will consider these assignments in order.

The first seems to be well taken. The party who made the profit by the construction of the pavement in question was the New Jersey Wood-Paving Company. The city of Elizabeth made no profit at all. It paid the same for putting down the pavement in question that it was paying to the defendant in error for putting down the Nicholson pavement proper; namely, $4.50 per square yard. It made itself liable to damages, undoubtedly, for using the patented pavement of Nicholson; but damages are not sought, or, at least, are not recoverable, in this suit. Profits only, as such, can be recovered therein. The very first evidence which the appellees offered before the master was, the contracts made between the city and the other defendants for the construction of the pavement; and these contracts show the fact that the city was to pay the price named, and that any benefit to be derived from the construction of the pavement was to be enjoyed by the contractors.

It is insisted that the defendants, by answering jointly, admitting that they were jointly co-operating in laying the pavement, precluded themselves from making this defence. We do not think so. That admission is not inconsistent with the actual facts of the case, to wit, that this co-operation consisted of a contract for having the pavement made, on one side, and a contract to make it, on the other; and is by no means conclusive as to which party realized profit from the transactions. The complainants themselves, by their own evidence, showed that the contractors and not the city realized it.
The appellant, Tubbs, is in the same predicament with the city. Several of the contracts were made in his name, it is true; but they were made in behalf of the New Jersey Wood-Paving Company, for whose use and benefit the contracts were made and completed. Tubbs only received a salary for his superintendence.

The next assignment of error, based on the hypothesis that the profits received by the defendants were not the fruits of the use of Nicholson's invention, appears to us destitute of foundation. This matter is so fully and ably presented in the opinion of the Circuit Court as to require but little discussion from us. The Nicholson pavement was a complete thing, consisting of a certain combination of elements. The defendants used it as such,—the whole of it. If they superadded the addition made to it by Brocklebank & Trainer, they failed to show that such addition contributed to the profits realized. The burden of proof was on them to do this. The evidence, if it shows any thing, tends to prove that the addition diminished the profits instead of increasing them; but it could not have had much influence either way, inasmuch as the evidence shows that the profit made on this pavement was about the same as that made on the pavement of Nicholson, without the improvement. The appellants, however, obtained an allowance of nearly $14,000 for the royalty paid by them for the use of the Brocklebank & Trainer patent. This allowance went so far in diminution of the profits recovered.

Equally without foundation is the position taken by the appellants, that other pavements, approaching in resemblance to that of Nicholson, were open to the public, and that the specific difference between those pavements and Nicholson's was small, and that, therefore, the Nicholson patent was entitled to only a small portion of the profits realized. Nicholson's pavement, as before said, was a complete combination in itself, differing from every other pavement. The parts were so correlated to each other, from bottom to top, that it required them all, put together as he put them, to make the complete whole, and to produce the desired result. The foundation impervious to moisture, the blocks arranged in rows, the narrow strips between them for the purposes designated, the filling over those strips, cemented together, as shown by the patent,—all were required. Thus combined and arranged, they made a new thing, like a new chemical compound. It was this thing, and not another, that the people wanted and required. It was this that the appellants used, and, by using, made their profit, and prevented the appellee from making it. It is not the case of a profit derived from the construction of an old pavement together with a superadded profit derived from adding thereto an improvement made by Nicholson, but of an entire profit derived from the construction of his pavement as an entirety. A separation of distinct profit derived from Brocklebank & Trainer's improvement, if any such profit was made, might have been shown; but, as before stated, the appellants failed to show that any such distinct profit was realized.

We have looked over the various items claimed by the appellants by way of reduction of profits, and disallowed by the master and by the court below, and we are satisfied with the result which they reached. The gross profits of the work over actual expenses for material and labor were conceded to be $123,610.78. The total deductions claimed before the master amounted to $139,875.63, which would have been considerably more than sufficient to $123,610.78. The total deductions claimed before the master amounted to $139,875.63, which would have been considerably more than sufficient to absorb the whole profits. The master and the court allowed deductions to the amount of $48,618.62, which reduced the profits to $74,992.16, for which amount the decree was rendered. The deductions overruled and disallowed amounted to $91,257.85. Of these, $31,111.92 was a profit of twenty per cent, which the appellants claimed they had a right to add to the actual cost of lumber and other materials and labor. It is only necessary to state the claim to show its preposterousness. Other items were one of $7,000 for salaries, and another of $3,000 for rent, for a period of time that occurred after the work was completed. Another item was one of $2,675.09 for the cost of a dock which the parties built on their own land; and another of $25,000, paid for an interest in the Brocklebank & Trainer patent. As the appellants still hold these properties, we cannot well conceive what the purchase of them has to do in this account. They also claim $15,241.33 for that amount abated from the assessments of some of their stockholders who owned lands along the streets paved. As this was a gratuity which they made to themselves, they cannot claim a deduction for it here. The last item was $6,572.75, claimed to have been profits made upon other work, which were allowed to be included in these contracts. As this is not explained in any satisfactory way, we think the master did right in rejecting it.

We are entirely satisfied with the disposition made of these various items, and with the correctness of the decree, so far as the statement of the account is concerned.

But the appellants assign a third error. They insist that the appellee, as assignor of the Nicholson patent for the State of New Jersey (which was the ground of its title), was entitled to recover only thirty-one cents per square yard in any event,—being limited to that charge for the use of the patent by the terms of the assignment; sixteen cents of which was to be paid to the proprietors, and fifteen to be retained by the appellee.
This matter is quite satisfactorily disposed of in the opinion of the court below. The stipulation was between third parties, and the appellants have no concern in it. It only applied, by its terms, to cases where, by reason of the decisions of the courts, or otherwise, it should be found impracticable for the appellees to obtain contracts for laying the pavement in any town or city, or where the work of constructing pavements should be required by law to be let under public lettings, open to general competition. The object was to secure as extensive a use of the pavement as possible, as thereby the emoluments of the proprietors would be increased. But the assignment gave to the appellee the exclusive right in the patent for the State of New Jersey. It did not prohibit the appellee from constructing the pavements itself, if it could obtain contracts for doing so, and making thereby any profit it could. There was no obstacle to its doing this in the city of Elizabeth. On the contrary, it did obtain from the city large contracts, and would have obtained more if the appellants had not interfered. There is nothing in this state of things which entitles the latter, after making large profits from the use of the invention, to refuse to respond therefor. It is not for them to say that the hands of the appellee are tied by its contract with its grantor. This would be to take advantage of their own wrong. Whatever bearing the stipulation in the assignment may have on the measure of damages, in an action at law, it affords no defence to the appellants when called upon to account for the profits which they have wrongfully made by pirating the invention.

We think there is no error in the decree of the Circuit Court, except in making the city of Elizabeth and George W. Tubbs accountable for the profits. As to them a decree for injunction only to prevent them from constructing the pavement during the term of the patent, should have been rendered; which, of course, cannot now be made. As to the New Jersey Wood-Paving Company, the decree was in all respects correct. A decree for costs in the court below should be awarded against all the defendants.

The decree of the Circuit Court, therefore, must be reversed with costs, and the cause remanded to said court with instructions to enter a decree in conformity with this opinion; and it is

So ordered

Talk:Egbert v. Lippmann, 104 U.S. 333 (1881)

2010-04-09T03:52:30Z

Maura: Created page with ' == Maura == The sixth, seventh, and fifteenth sections of the act of July 4, 1836, c. 357 (5 Stat. 117), as qualified by the seventh section of the act of March 8, 1839, c. 88 …'

== Maura ==

The sixth, seventh, and fifteenth sections of the act of July 4, 1836, c. 357 (5 Stat. 117), as qualified by the seventh section of the act of March 8, 1839, c. 88 (id. 353), were in force at the date of his application. Their effect is to render letters-patent invalid if the invention which they cover was in public use, with the consent and allowance of the inventor, for more than two years prior to his application. Since the passage of the act of 1839 it has been strenuously contended that the public use of an invention for more than two years before such application, even without his consent and allowance, renders the letters-patent therefor void.

We observe, in the first place, that to constitute the public use of an invention it is not necessary that more than one of the patented articles should be publicly used. The use of a great number may tend to strengthen the proof, but one well-defined case of such use is just as effectual to annul the patent as many.

We remark, secondly, that, whether the use of an invention is public or private does not necessarily depend upon the number of persons to whom its use is known. If an inventor, having made his device, gives or sells it to another, to be used by the donee or vendee, without limitation or restriction, or injunction of secrecy, and it is so used, such use is public, even though the use and knowledge of the use may be confined to one person.

Nevertheless, if its inventor sells a machine of which his invention forms a part, and allows it to be used without restriction of any kind, the use is a public one. So, on the other hand, a use necessarily open to public view, if made in good faith solely to test the qualities of the invention, and for the purpose of experiment, is not a public use within the meaning of the statute.

"An abandonment of an invention to the public may be evinced by the conduct of the inventor at any time, even within the two years named in the law. The effect of the law is that no such consequence will necessarily follow from the invention being in public use or on sale, with the inventor's consent and allowance, at any time within the two years before his application; but that, if the invention is in public use or on sale prior to that time, it will be conclusive evidence of abandonment, and the patent will be void." Elizabeth v. Pavement Company, supra.

MR. JUSTICE MILLER dissenting.

The sixth section of the act of July 4, 1836, c. 357, makes it a condition of the grant of a patent that the invention for which it was asked should not, at the time of the application for a patent, "have been in public use or on sale with the consent or allowance" of the inventor or discoverer. Section fifteen of the same act declares that it shall be a good defense to an action for infringement of the patent, that it had been in public use or on sale with the consent or allowance of the patentee before his application. This was afterwards modified by the seventh section of the act of March 3, 1839, c. 88, which declares that no patent shall be void on that ground unless the prior use has been for more than two years before the application.

This is the law under which the patent of the complainant is held void by the opinion just delivered. The previous part of the same section requires that the invention must be one "not known or used by others" before the discovery or invention made by the applicant. In this limitation, though in the same sentence as the other, the word "public" is not used, so that the use by others which would defeat the applicant, if without his consent, need not be public; but where the use of his invention is by his consent or allowance, it must be public or it will not have that affect.

Egbert v. Lippmann, 104 U.S. 333 (1881)

2010-04-09T03:51:03Z

Maura: Created page with '104 US 333 Egbert v. Lippmann 104 U.S. 333 104 U.S. 333 26 L.Ed. 755 EGBERT v. LIPPMANN. Oct. Term, 1881 APPEAL from the Circuit Court of the United States for the Southern D…'

104 US 333 Egbert v. Lippmann

104 U.S. 333 104 U.S. 333 26 L.Ed. 755

EGBERT v. LIPPMANN.

Oct. Term, 1881

APPEAL from the Circuit Court of the United States for the Southern District of New York.
The facts are stated in the opinion of the court.
Mr. J.C. Clayton and Mr. Anthony Q. Keasbey for the appellant.
Mr. John B. Staples, contra.

MR. JUSTICE WOODS delivered the opinion of the court.

This suit was brought for an alleged infringement of the complainant's reissued letters-patent, No. 5216, dated Jan. 7, 1873, for an improvement in corset-springs.

The original letters bear date July 17, 1866, and were issued to Samuel H. Barnes. The reissue was made to the complainant, under her then name, Frances Lee Barnes, executrix of the original patentee.

The specification for the reissue declares:—

"This invention consists in forming the springs of corsets of two or more metallic plates, placed one upon another, and so connected as to prevent them from sliding off each other laterally or edgewise, and at the same time admit of their playing or sliding upon each other, in the direction of their length or longitudinally, whereby their flexibility and elasticity are greatly increased, while at the same time much strength is obtained."

The second claim is as follows:—

"A pair of corset-springs, each member of the pair being composed or two or more metallic plates, placed on on another, and fastened together at their centres, and so connected at or near each end that they can move or play on each other in the direction of their length."

The bill alleges that Barnes was the original and first inventor of the improvement covered by the reissued letters-patent, and that it had not, at the time of his application for the original letters, been for more than two years in public use or on sale, with his consent or allowance.

The answer takes issue on this averment and also denies infringement. On a final hearing the court dismissed the bill, and the complainant appealed.

As the second defense above mentioned, it is sufficient to say that the evidence establishes beyond controversy the infringement by the defendants of the second claim of the reissue.

We have, therefore, to consider whether the defense that the patented invention had, with the consent of the inventor, been publicly used for more than two years prior to his application for the original letters, is sustained by the testimony in the record.

The sixth, seventh, and fifteenth sections of the act of July 4, 1836, c. 357 (5 Stat. 117), as qualified by the seventh section of the act of March 8, 1839, c. 88 (id. 353), were in force at the date of his application. Their effect is to render letters-patent invalid if the invention which they cover was in public use, with the consent and allowance of the inventor, for more than two years prior to his application. Since the passage of the act of 1839 it has been strenuously contended that the public use of an invention for more than two years before such application, even without his consent and allowance, renders the letters-patent therefor void.

It is unnecessary in this case to decide this question, for the alleged use of the invention covered by the letters-patent to Barnes is conceded to have been with his express consent.

The evidence on which the defendants rely to establish a prior public use of the invention consists mainly of the testimony of the complainant.

She testifies that Barnes invented the improvement covered by his patent between January and May, 1855; that between the dates named the witness and her friend Miss Cugier were complaining of the breaking of their corset-steels. Barnes, who was present, and was an intimate friend of the witness, said he thought he could make her a pair that would not break. At their next interview he presented her with a pair of corset-steels which he himself had made. The witness wore these steels a long time. In 1858 Barnes made and presented to her another pair, which she also wore a long time. When the corsets in which these steels were used wore out, the witness ripped them open and took out the steels and put them in new corsets. This was done several times.

It is admitted, and, in fact, is asserted, by complainant, that these steels embodied the invention afterwards patented by Barnes and covered by the reissued letters-patent on which this suit is brought.

Joseph H. Sturgis, another witness for complainant, testifies that in 1863 Barnes spoke to him about two inventions made by himself, one of which was a corset-steel, and that he went to the house of Barnes to see them. Before this time, and after the transactions testified to by the complainant, Barnes and she had intermarried. Barnes said his wife had a pair of steels made according to his invention in the corsets which she was then wearing, and if she would take them off he would show them to witness. Mrs. Barnes went out, and returned with a pair of corsets and a pair of scissors, and ripped the corsets open and took out the steels. Barnes then explained to witness how they were made and used.

This is the evidence presented by the record, on which the defendants rely to establish the public use of the invention by the patentee's consent and allowance.

The question for our decision is, whether this testimony shows a public use within the meaning of the statute.

We observe, in the first place, that to constitute the public use of an invention it is not necessary that more than one of the patented articles should be publicly used. The use of a great number may tend to strengthen the proof, but one well-defined case of such use is just as effectual to annul the patent as many. McClurg v. Kingsland, 1 How. 202; Consolidated Fruit-Jar Co. v. Wright, 94 U.S. 92; Pitts v. Hall, 2 Blatchf. 229. For instance, if the inventor of a mower, a printing-press, or a railway-car makes and sells only one of the articles invented by him, and allows the vendee to use it for two years, without restriction or limitation, the use is just as public as if he had sold and allowed the use of a great number.

We remark, secondly, that, whether the use of an invention is public or private does not necessarily depend upon the number of persons to whom its use is known. If an inventor, having made his device, gives or sells it to another, to be used by the donee or vendee, without limitation or restriction, or injunction of secrecy, and it is so used, such use is public, even though the use and knowledge of the use may be confined to one person.

We say, thirdly, that some inventions are by their very character only capable of being used where they cannot be seen or observed by the public eye. An invention may consist of a lever or spring, hidden in the running gear of a watch, or of a rachet, shaft, or cog-wheel covered from view in the recesses of a machine for spinning or weaving. Nevertheless, if its inventor sells a machine of which his invention forms a part, and allows it to be used without restriction of any kind, the use is a public one. So, on the other hand, a use necessarily open to public view, if made in good faith solely to test the qualities of the invention, and for the purpose of experiment, is not a public use within the meaning of the statute. Elizabeth v. Pavement Company, 97 U.S. 126; Shaw v. Cooper, 7 Pet. 292.

Tested by these principles, we think the evidence of the complainant herself shows that for more than two years before the application for the original letters there was, by the consent and allowance of Barnes, a public use of the invention, covered by them. He made and gave to her two pairs of corset- steels, constructed according to his device, one in 1855 and one in 1858. They were presented to her for use. He imposed no obligation of secrecy, nor any condition or restriction whatever. They were not presented for the purpose of experiment, nor to test their qualities. No such claim is set up in her testimony. The invention was at the time complete, and there is no evidence that it was afterwards changed or improved. The donee of the steels used them for years for the purpose and in the manner designed by the inventor. They were not capable of any other use. She might have exhibited them to any person, or made other steels of the same kind, and used or sold them without violating any condition or restriction imposed on her by the inventor.

According to the testimony of the complainant, the invention was completed and put into use in 1855. The inventor slept on his rights for eleven years. Letters-patent were not applied for till March, 1866. In the mean time, the invention had found its way into general, and almost universal, use. A great part of the record is taken up with the testimony of the manufacturers and venders of corset-steels, showing that before he applied for letters the principle of his device was almost universally used in the manufacture of corset-steels. It is fair to presume that having learned from this general use that there was some value in his invention, he attempted to resume, by his application, what by his acts he had clearly dedicated to the public.

"An abandonment of an invention to the public may be evinced by the conduct of the inventor at any time, even within the two years named in the law. The effect of the law is that no such consequence will necessarily follow from the invention being in public use or on sale, with the inventor's consent and allowance, at any time within the two years before his application; but that, if the invention is in public use or on sale prior to that time, it will be conclusive evidence of abandonment, and the patent will be void." Elizabeth v. Pavement Company, supra.

We are of opinion that the defense of two years' public use, by the consent and allowance of the inventor, before he made application for letters- patent, is satisfactorily established by the evidence.

MR. JUSTICE MILLER dissenting.

The sixth section of the act of July 4, 1836, c. 357, makes it a condition of the grant of a patent that the invention for which it was asked should not, at the time of the application for a patent, "have been in public use or on sale with the consent or allowance" of the inventor or discoverer. Section fifteen of the same act declares that it shall be a good defense to an action for infringement of the patent, that it had been in public use or on sale with the consent or allowance of the patentee before his application. This was afterwards modified by the seventh section of the act of March 3, 1839, c. 88, which declares that no patent shall be void on that ground unless the prior use has been for more than two years before the application.

This is the law under which the patent of the complainant is held void by the opinion just delivered. The previous part of the same section requires that the invention must be one "not known or used by others" before the discovery or invention made by the applicant. In this limitation, though in the same sentence as the other, the word "public" is not used, so that the use by others which would defeat the applicant, if without his consent, need not be public; but where the use of his invention is by his consent or allowance, it must be public or it will not have that affect.

The reason of this is undoubtedly that, if without his consent others have used the machine, composition, or manufacture, it is strong proof that he was not the discoverer or first inventor. In that case he was not entitled to a patent. If the use was with his consent or allowance, the fact that such consent or allowance was first obtained is evidence that he was the inventor, and claimed to be such. In such case, he was not to lose his right to a patent, unless the use which he permitted was such as showed an intention of abandoning his invention to the public. It must, in the language of the act, be in public use or on sale. If on sale, of course the public who buy can use it, and if used in public with his consent, it may be copied by others. In either event there is an end of his exclusive right of use or sale.

The work public is, therefore, an important member of the sentence. A private use with consent, which could lead to no copy or reproduction of the machine, which taught the nature of the invention to no one but the party to whom such consent was given, which left the public at large as ignorant of this as it was before the author's discovery, was no abandonment to the public, and did not defeat his claim for a patent. If the little steep spring inserted in a single pair of corsets, and used by only one woman, covered by her outer-clothing, and in a position always withheld from public observation, is a public use of that piece of steel, I am at a loss to know the line between a private and a public use.

The opinion argues that the use was public, because, with the consent of the inventor to its use, no limitation was imposed in regard to its use in public. It may be well imagined that a prohibition to the party so permitted against exposing her use of the steel spring to public observation would have been supposed to be a piece of irony. An objection quite the opposite of this suggested by the opinion is, that the invention was incapable of a public use. That is to say, that while the statute says the right to the patent can only be defeated by a use which is public, it is equally fatal to the claim, when it is permitted to be used at all, that the article can never be used in public.

I cannot on such reasoning as this eliminate from the statute the word public, and disregard its obvious importance in connection with the remainder of the act, for the purpose of defeating a patent otherwise meritorious.

Main Page

2010-04-09T03:47:14Z

Maura: /* ALPHABETICAL LISTING OF CASES */

<big>'''Intellectual Property for Engineers: ESTEEM Reading Course, Spring 2010'''</big>

=ALPHABETICAL LISTING OF CASES=

*[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]
*[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
*[[Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961)]]
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)]]
*[[Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)]]
*[[Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)]]
*[[Bonito Boats. v. Thunder Craft, 489 U.S. 141 (1989)]]
*[[Chester v. Miller, 906 F.2d 1574 (1990)]]
*[[Diamond v. Diehr, 450 U.S. 175 (1981)]]
*[[Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)]]
*[[Egbert v. Lippmann, 104 U.S. 333 (1881))]]
*[[Elizabeth v. Pavement Company, 97 U.S. 126 (1877)]]
*[[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
*[[Gould v. Hellwarth, 472 F2d 1383 (1973)]]
*[[Graham v. John Deere, 383 U.S. 1 (1966)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]
*[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850) ]]
*[[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]
*[[In Re Rouffet]]
*[[In Re Bilski]]
**[[In Re Bilski, Dky concurring opinion]]
**[[In Re Bilski, Newman dissenting opinion]]
**[[In Re Bilski, Mayer dissenting opinion]]
**[[In Re Bilski, Rader dissenting opinion]]
*[[In re Brana, 51 F.3d 1560 (1995)]]
*[[In re Hall (full text)]]
*[[J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)]]
*[[Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)]]
*[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]
*[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
*[[Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]
*[[Microsoft Corp v. At&T Corp.]]
*[[Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)]]
*[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]
*[[Pfaff v. Wells Electronics: full text]]
*[[Pfaff vs. Wells Electronics]]
*[[Philips Electric Co. v. Thermal Industries, Inc. (full text)]]
*[[Quanta Computers Inc v. LG Electronics (full text)]]
*[[Reiner v. I. Leon Co. (full text)]]
*[[South Corp. v. US]]
*[[South Corp. v. US (full text)]]
*[[South Corp. v. US 690 F.2d 1368 (1982)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]
*[[Traffix Devices, Inc. vs. Marketing Displays, Inc.]]
*[[US v. Adams, 383 U.S. 39 (1966)]]
*[[US v. Adams (full text)]]
*[[U.S. v. Univis Lens Co., 316 U.S. 241 (1942)]]
*[[Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc. (full text)]]
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
**[[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
**[[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=[[INTRODUCTION]]=
This is a summary. Click on the title for the full chapter: [[INTRODUCTION]]

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[NONOBVIOUSNESS]]=
This is a summary. Click on the title for the full chapter: [[NONOBVIOUSNESS]]

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[INFRINGEMENT]]=
This is a summary. Click on the title for the full chapter: [[INFRINGEMENT]]

=[[THE PATENT DOCUMENT]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT DOCUMENT]]

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
This is a summary. Click on the title for the full chapter: [[NOVELTY]]

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

Outline:
*Literal Infringement
*The Doctrine of Equivalents

=[[UTILITY]]=
This is a summary. Click on the title for the full chapter: [[UTILITY]]

=[[PATENTABLE SUBJECT MATTER]]=
This is a summary. Click on the title for the full chapter: [[PATENTABLE SUBJECT MATTER]]

Can computer programs, algorithms, laws of nature, life forms, plants, ''etc.'' be patented. In particular, are the following patentable:

* Plants
* Algorithms and Computer Programs
* Scientific Facts?

In a recent case
* State Street (1998)
the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

=[[FOREIGN AND DOMESTIC PRIORITY]]=
This is a summary. Click on the title for the full chapter: [[FOREIGN AND DOMESTIC PRIORITY]]

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT APPLICATION]]

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=[[INVENTOR ELIGIBILITY]]=
This is a summary. Click on the title for the full chapter: [[INVENTOR ELIGIBILITY]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=[[ANTICIPATION]]=
This is a summary. Click on the title for the full chapter: [[ANTICIPATION]]

=[[PRIOR ART]]=
This is a summary. Click on the title for the full chapter: [[PRIOR ART]]

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

Justice clipart, copyright [http://etc.usf.edu/clipart/ FCIT.]

Talk:Quanta Computers Inc v. LG Electronics (full text)

2010-03-30T03:13:52Z

Maura: Created page with ' == Maura == LGE licensed a patent portfolio, including the LGE Patents, to Intel Corporation (Intel). The cross-licensing agreement (License Agreement) permits Intel to manufac…'

== Maura ==

LGE licensed a patent portfolio, including the LGE Patents, to Intel Corporation (Intel). The cross-licensing agreement (License Agreement) permits Intel to manufacture and sell microprocessors and chipsets that use the LGE Patents (the Intel Products). The License Agreement authorizes Intel to " 'make, use, sell (directly or indirectly), offer to sell, import or otherwise dispose of' " its own products practicing the LGE Patents.

The longstanding doctrine of patent exhaustion provides that the initial authorized sale of a patented item terminates all patent rights to that item. This Court first applied the doctrine in 19th-century cases addressing patent extensions on the Woodworth planing machine. Purchasers of licenses to sell and use the machine for the duration of the original patent term sought to continue using the licenses through the extended term. The Court held that the extension of the patent term did not affect the rights already secured by purchasers who bought the item for use "in the ordinary pursuits of life."

Accordingly, it reiterated the rule that "the right to vend is exhausted by a single, unconditional sale, the article sold being thereby carried outside the monopoly of the patent law and rendered free of every restriction which the vendor may attempt to put upon it." Id., at 516.

In sum, the Court concluded that the traditional bar on patent restrictions following the sale of an item applies when the item sufficiently embodies the patent--even if it does not completely practice the patent-- such that its only and intended use is to be finished under the terms of the patent.

Nothing in this Court's approach to patent exhaustion supports LGE's argument that method patents cannot be exhausted. It is true that a patented method may not be sold in the same way as an article or device, but methods nonetheless may be "embodied" in a product, the sale of which exhausts patent rights. Our precedents do not differentiate transactions involving embodiments of patented methods or processes from those involving patented apparatuses or materials. To the contrary, this Court has repeatedly held that method patents were exhausted by the sale of an item that embodied the method.

Eliminating exhaustion for method patents would seriously undermine the exhaustion doctrine. Patentees seeking to avoid patent exhaustion could simply draft their patent claims to describe a method rather than an apparatus.5 Apparatus and method claims "may approach each other so nearly that it will be difficult to distinguish the process from the function of the apparatus." United States ex rel. Steinmetz v. Allen, 192 U. S. 543, 559 (1904). By characterizing their claims as method instead of apparatus claims, or including a method claim for the machine's patented method of performing its task, a patent drafter could shield practically any patented item from exhaustion.

The sale of a device that practices patent A does not, by virtue of practicing patent A, exhaust patent B. But if the device practices patent A while substantially embodying patent B, its relationship to patent A does not prevent exhaustion of patent B.

The authorized sale of an article that substantially embodies a patent exhausts the patent holder's rights and prevents the patent holder from invoking patent law to control postsale use of the article.

Quanta Computers Inc v. LG Electronics (full text)

2010-03-30T03:11:26Z

Maura:

QUANTA COMPUTER, INC., et al. v. LG ELECTRONICS, INC.

certiorari to the united states court of appeals for the federal circuit

No. 06-937. Argued January 16, 2008--Decided June 9, 2008

The longstanding doctrine of patent exhaustion limits the patent rights that survive the initial authorized sale of a patented item. Respondent (LGE) purchased, inter alia, the computer technology patents at issue (LGE Patents): One discloses a system for ensuring that most current data are retrieved from main memory, one relates to the coordination of requests to read from and write to main memory, and one addresses the problem of managing data traffic on a set of wires, or "bus," connecting two computer components. LGE licensed the patents to Intel Corporation (Intel), in an agreement (License Agreement) that authorizes Intel to manufacture and sell microprocessors and chipsets using the LGE Patents (Intel Products) and that does not purport to alter patent exhaustion rules. A separate agreement (Master Agreement) required Intel to give its customers written notice that the license does not extend to a product made by combining an Intel Product with a non-Intel product, and provided that a breach of the agreement would not affect the License Agreement. Petitioner computer manufacturers (Quanta) purchased microprocessors and chipsets from Intel. Quanta then manufactured computers using Intel parts in combination with non-Intel parts, but did not modify the Intel components. LGE sued, asserting that this combination infringed the LGE Patents. The District Court granted Quanta summary judgment, but on reconsideration, denied summary judgment as to the LGE Patents because they contained method claims. The Federal Circuit affirmed in part and reversed in part, agreeing with the District Court that the patent exhaustion doctrine does not apply to method patents, which describe operations to make or use a product; and concluding, in the alternative, that exhaustion did not apply because LGE did not license Intel to sell the Intel Products to Quanta to combine with non-Intel products.

Held: Because the doctrine of patent exhaustion applies to method patents, and because the License Agreement authorizes the sale of components that substantially embody the patents in suit, the exhaustion doctrine prevents LGE from further asserting its patent rights with respect to the patents substantially embodied by those products. Pp. 5-19.

(a) The patent exhaustion doctrine provides that a patented item's initial authorized sale terminates all patent rights to that item. See, e.g., Bloomer v. McQuewan, 14 How. 539. In the Court's most recent discussion of the doctrine, United States v. Univis Lens Co., 316 U. S. 241, patents for finished eyeglass lenses, held by the respondent (Univis), did not survive the sale of lens blanks by the licensed manufacturer to wholesalers and finishing retailers who ground the blanks into patented finished lenses. The Court assumed that Univis' patents were practiced in part by the wholesalers and finishing retailers, concluding that the traditional bar on patent restrictions following an item's sale applies when the item sufficiently embodies the patent--even if it does not completely practice the patent--such that its only and intended use is to be finished under the patent's terms. The parties' arguments here are addressed with this patent exhaustion history in mind. Pp. 5-8.

(b) Nothing in this Court's approach to patent exhaustion supports LGE's argument that method claims, as a category, are never exhaustible. A patented method may not be sold in the same way as an article or device, but methods nonetheless may be "embodied" in a product, the sale of which exhausts patent rights. The Court has repeatedly found method patents exhausted by the sale of an item embodying the method. See Ethyl Gasoline Corp. v. United States, 309 U. S. 436, 446, 457; Univis, supra, at 248-251. These cases rest on solid footing. Eliminating exhaustion for method patents would seriously undermine the exhaustion doctrine, since patentees seeking to avoid exhaustion could simply draft their claims to describe a method rather than an apparatus. On LGE's theory here, for example, although Intel is authorized to sell a completed computer system that practices the LGE Patents, downstream purchasers could be liable for patent infringement, which would violate the longstanding principle that, when a patented item is "once lawfully made and sold, there is no restriction on [its] use to be implied for the [patentee's] benefit," Adams v. Burke, 17 Wall. 453, 457. Pp. 9-11.

(c) The Intel Products embodied the patents here. Univis governs this case. There, exhaustion was triggered by the sale of the lens blanks because their only reasonable and intended use was to practice the patent and because they "embodie[d] essential features of [the] patented invention," 316 U. S., at 249-251. Each of those attributes is shared by the microprocessors and chipsets Intel sold to Quanta under the License Agreement. First, LGE has suggested no reasonable use for the Intel Products other than incorporating them into computer systems that practice the LGE Patents: A microprocessor or chipset cannot function until it is connected to buses and memory. And as in Univis, the only apparent object of Intel's sales was to permit Quanta to incorporate the Intel Products into computers that would practice the patents. Second, like the Univis lens blanks, the Intel Products constitute a material part of the patented invention and all but completely practice the patent. The only step necessary to practice the patent is the application of common processes or the addition of standard parts. Everything inventive about each patent is embodied in the Intel Products. LGE's attempts to distinguish Univis are unavailing. Pp. 11-16.

(d) Intel's sale to Quanta exhausted LGE's patent rights. Exhaustion is triggered only by a sale authorized by the patent holder. Univis, supra, at 249. LGE argues that this sale was not authorized because the License Agreement does not permit Intel to sell its products for use in combination with non-Intel products to practice the LGE Patents. But the License Agreement does not restrict Intel's right to sell its products to purchasers who intend to combine them with non-Intel parts. Intel was required to give its customers notice that LGE had not licensed those customers to practice its patents, but neither party contends that Intel breached that agreement. In any event, the notice provision is in the Master Agreement, and LGE does not suggest that a breach of that agreement would constitute a License Agreement breach. Contrary to LGE's position, the question whether third parties may have received implied licenses is irrelevant, because Quanta asserts its right to practice the patents based not on implied license but on exhaustion, and exhaustion turns only on Intel's own license to sell products practicing the LGE Patents. LGE's alternative argument, invoking the principle that patent exhaustion does not apply to postsale restrictions on "making" an article, is simply a rephrasing of its argument that combining the Intel Products with other components adds more than standard finishing to complete a patented article. Pp. 16-18.

453 F. 3d 1364, reversed.

Thomas, J., delivered the opinion for a unanimous Court.

QUANTA COMPUTER, INC., et al., PETITIONERS v.
LG ELECTRONICS, INC.

on writ of certiorari to the united states court of appeals for the federal circuit

[June 9, 2008]

Justice Thomas delivered the opinion of the Court.

For over 150 years this Court has applied the doctrine of patent exhaustion to limit the patent rights that survive the initial authorized sale of a patented item. In this case, we decide whether patent exhaustion applies to the sale of components of a patented system that must be combined with additional components in order to practice the patented methods. The Court of Appeals for the Federal Circuit held that the doctrine does not apply to method patents at all and, in the alternative, that it does not apply here because the sales were not authorized by the license agreement. We disagree on both scores. Because the exhaustion doctrine applies to method patents, and because the license authorizes the sale of components that substantially embody the patents in suit, the sale exhausted the patents.

I

Respondent LG Electronics, Inc. (LGE), purchased a portfolio of computer technology patents in 1999, including the three patents at issue here: U. S. Patent Nos. 4,939,641 ('641); 5,379,379 ('379); and 5,077,733 ('733) (collectively LGE Patents). The main functions of a computer system are carried out on a microprocessor, or central processing unit, which interprets program instructions, processes data, and controls other devices in the system. A set of wires, or bus, connects the microprocessor to a chipset, which transfers data between the microprocessor and other devices, including the keyboard, mouse, monitor, hard drive, memory, and disk drives.

The data processed by the computer are stored principally in random access memory, also called main memory. Webster's New World Dictionary of Computer Terms 334, 451 (8th ed. 2000). Frequently accessed data are generally stored in cache memory, which permits faster access than main memory and is often located on the microprocessor itself. Id., at 84. When copies of data are stored in both the cache and main memory, problems may arise when one copy is changed but the other still contains the original "stale" version of the data. J. Handy, Cache Memory Book 124 (2d ed. 1993). The '641 patent addresses this problem. It discloses a system for ensuring that the most current data are retrieved from main memory by monitoring data requests and updating main memory from the cache when stale data are requested. LG Electronics, Inc. v. Bizcom Electronics, Inc., 453 F. 3d 1364, 1377 (CA Fed. 2006).

The '379 patent relates to the coordination of requests to read from, and write to, main memory. Id., at 1378. Processing these requests in chronological order can slow down a system because read requests are faster to execute than write requests. Processing all read requests first ensures speedy access, but may result in the retrieval of outdated data if a read request for a certain piece of data is processed before an outstanding write request for the same data. The '379 patent discloses an efficient method of organizing read and write requests while maintaining accuracy by allowing the computer to execute only read requests until it needs data for which there is an outstanding write request. LG Electronics, Inc. v. Asustek Computer, Inc., No. C 01-02187 CW et al., Order Construing Disputed Terms and Phrases, p. 42 (ND Cal., Aug. 20, 2002). Upon receiving such a read request, the computer executes pending write requests first and only then returns to the read requests so that the most up-to-date data are retrieved. Ibid.

The '733 patent addresses the problem of managing the data traffic on a bus connecting two computer components, so that no one device monopolizes the bus. It allows multiple devices to share the bus, giving heavy users greater access. This patent describes methods that establish a rotating priority system under which each device alternately has priority access to the bus for a preset number of cycles and heavier users can maintain priority for more cycles without "hogging" the device indefinitely. Id., at 37-38.

LGE licensed a patent portfolio, including the LGE Patents, to Intel Corporation (Intel). The cross-licensing agreement (License Agreement) permits Intel to manufacture and sell microprocessors and chipsets that use the LGE Patents (the Intel Products). The License Agreement authorizes Intel to " 'make, use, sell (directly or indirectly), offer to sell, import or otherwise dispose of' " its own products practicing the LGE Patents. Brief for Petitioners 8 (quoting App. 154).1 Notwithstanding this broad language, the License Agreement contains some limitations. Relevant here, it stipulates that no license

" 'is granted by either party hereto ... to any third party for the combination by a third party of Licensed Products of either party with items, components, or the like acquired ... from sources other than a party hereto, or for the use, import, offer for sale or sale of such combination.' " Brief for Petitioners 8 (quoting App. 164).

The License Agreement purports not to alter the usual rules of patent exhaustion, however, providing that, " '[n]otwithstanding anything to the contrary contained in this Agreement, the parties agree that nothing herein shall in any way limit or alter the effect of patent exhaustion that would otherwise apply when a party hereto sells any of its Licensed Products.' " Brief for Petitioners 8 (quoting App. 164).

In a separate agreement (Master Agreement), Intel agreed to give written notice to its own customers informing them that, while it had obtained a broad license " 'ensur[ing] that any Intel product that you purchase is licensed by LGE and thus does not infringe any patent held by LGE,' " the license " 'does not extend, expressly or by implication, to any product that you make by combining an Intel product with any non-Intel product.' " Brief for Respondent 9 (emphasis deleted) (quoting App. 198). The Master Agreement also provides that " 'a breach of this Agreement shall have no effect on and shall not be grounds for termination of the Patent License.' " Brief for Petitioners 9 (quoting App. 176).

Petitioners, including Quanta Computer (collectively Quanta), are a group of computer manufacturers. Quanta purchased microprocessors and chipsets from Intel and received the notice required by the Master Agreement. Nonetheless, Quanta manufactured computers using Intel parts in combination with non-Intel memory and buses in ways that practice the LGE Patents. Quanta does not modify the Intel components and follows Intel's specifications to incorporate the parts into its own systems.

LGE filed a complaint against Quanta, asserting that the combination of the Intel Products with non-Intel memory and buses infringed the LGE Patents. The District Court granted summary judgment to Quanta, holding that, for purposes of the patent exhaustion doctrine, the license LGE granted to Intel resulted in forfeiture of any potential infringement actions against legitimate purchasers of the Intel Products. LG Electronics, Inc. v. Asustek Computer, Inc., 65 USPQ 2d 1589, 1593, 1600 (ND Cal. 2002). The court found that, although the Intel Products do not fully practice any of the patents at issue, they have no reasonable noninfringing use and therefore their authorized sale exhausted patent rights in the completed computers under United States v. Univis Lens Co., 316 U. S. 241 (1942). Asustek, supra, at 1598-1600. In a subsequent order limiting its summary judgment ruling, the court held that patent exhaustion applies only to apparatus or composition-of-matter claims that describe a physical object, and does not apply to process, or method, claims that describe operations to make or use a product. LG Electronics, Inc. v. Asustek Computer, Inc., 248 F. Supp. 2d 912, 918 (ND Cal. 2003). Because each of the LGE Patents includes method claims, exhaustion did not apply.

The Court of Appeals for the Federal Circuit affirmed in part and reversed in part. It agreed that the doctrine of patent exhaustion does not apply to method claims. In the alternative, it concluded that exhaustion did not apply because LGE did not license Intel to sell the Intel Products to Quanta for use in combination with non-Intel products. 453 F. 3d, at 1370.

We granted certiorari, 551 U. S. ___ (2007).

II

The longstanding doctrine of patent exhaustion provides that the initial authorized sale of a patented item terminates all patent rights to that item. This Court first applied the doctrine in 19th-century cases addressing patent extensions on the Woodworth planing machine. Purchasers of licenses to sell and use the machine for the duration of the original patent term sought to continue using the licenses through the extended term. The Court held that the extension of the patent term did not affect the rights already secured by purchasers who bought the item for use "in the ordinary pursuits of life." Bloomer v. McQuewan, 14 How. 539, 549 (1853); see also ibid. ("[W]hen the machine passes to the hands of the purchaser, it is no longer within the limits of the monopoly"); Bloomer v. Millinger, 1 Wall. 340, 351 (1864). In Adams v. Burke, 17 Wall. 453 (1873), the Court affirmed the dismissal of a patent holder's suit alleging that a licensee had violated postsale restrictions on where patented coffin-lids could be used. "[W]here a person ha[s] purchased a patented machine of the patentee or his assignee," the Court held, "this purchase carrie[s] with it the right to the use of that machine so long as it [is] capable of use." Id., at 455.

Although the Court permitted postsale restrictions on the use of a patented article in Henry v. A. B. Dick Co., 224 U. S. 1 (1912),2 that decision was short lived. In 1913, the Court refused to apply A. B. Dick to uphold price-fixing provisions in a patent license. See Bauer & Cie v. O'Donnell, 229 U. S. 1, 14-17 (1913). Shortly thereafter, in Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U. S. 502, 518 (1917), the Court explicitly overruled A. B. Dick. In that case, a patent holder attempted to limit purchasers' use of its film projectors to show only film made under a patent held by the same company. The Court noted the "increasing frequency" with which patent holders were using A. B. Dick-style licenses to limit the use of their products and thereby using the patents to secure market control of related, unpatented items. 243 U. S., at 509, 516-517. Observing that "the primary purpose of our patent laws is not the creation of private fortunes for the owners of patents but is 'to promote the progress of science and useful arts,' " id., at 511 (quoting U. S. Const., Art. I, §8, cl. 8), the Court held that "the scope of the grant which may be made to an inventor in a patent, pursuant to the [patent] statute, must be limited to the invention described in the claims of his patent." 243 U. S., at 511. Accordingly, it reiterated the rule that "the right to vend is exhausted by a single, unconditional sale, the article sold being thereby carried outside the monopoly of the patent law and rendered free of every restriction which the vendor may attempt to put upon it." Id., at 516.

This Court most recently discussed patent exhaustion in Univis, 316 U. S. 241, on which the District Court relied. Univis Lens Company, the holder of patents on eyeglass lenses, licensed a purchaser to manufacture lens blanks3 by fusing together different lens segments to create bi- and tri-focal lenses and to sell them to other Univis licensees at agreed-upon rates. Wholesalers were licensed to grind the blanks into the patented finished lenses, which they would then sell to Univis-licensed prescription retailers for resale at a fixed rate. Finishing retailers, after grinding the blanks into patented lenses, would sell the finished lenses to consumers at the same fixed rate. The United States sued Univis under the Sherman Act, 15 U. S. C. §§1, 3, 15, alleging unlawful restraints on trade. Univis asserted its patent monopoly rights as a defense to the antitrust suit. The Court granted certiorari to determine whether Univis' patent monopoly survived the sale of the lens blanks by the licensed manufacturer and therefore shielded Univis' pricing scheme from the Sherman Act.

The Court assumed that the Univis patents containing claims for finished lenses were practiced in part by the wholesalers and finishing retailers who ground the blanks into lenses, and held that the sale of the lens blanks exhausted the patents on the finished lenses. Univis, 316 U. S., at 248-249. The Court explained that the lens blanks "embodi[ed] essential features of the patented device and [were] without utility until ... ground and polished as the finished lens of the patent." Id., at 249. The Court noted that:

"where one has sold an uncompleted article which, because it embodies essential features of his patented invention, is within the protection of his patent, and has destined the article to be finished by the purchaser in conformity to the patent, he has sold his invention so far as it is or may be embodied in that particular article." Id., at 250-251.

In sum, the Court concluded that the traditional bar on patent restrictions following the sale of an item applies when the item sufficiently embodies the patent--even if it does not completely practice the patent--such that its only and intended use is to be finished under the terms of the patent.

With this history of the patent exhaustion doctrine in mind, we turn to the parties' arguments.

III

A

LGE argues that the exhaustion doctrine is inapplicable here because it does not apply to method claims, which are contained in each of the LGE Patents. LGE reasons that, because method patents are linked not to a tangible article but to a process, they can never be exhausted through a sale. Rather, practicing the patent--which occurs upon each use of an article embodying a method patent--is permissible only to the extent rights are transferred in an assignment contract. Quanta, in turn, argues that there is no reason to preclude exhaustion of method claims, and points out that both this Court and the Federal Circuit have applied exhaustion to method claims. It argues that any other rule would allow patent holders to avoid exhaustion entirely by inserting method claims in their patent specifications.

Quanta has the better of this argument. Nothing in this Court's approach to patent exhaustion supports LGE's argument that method patents cannot be exhausted. It is true that a patented method may not be sold in the same way as an article or device, but methods nonetheless may be "embodied" in a product, the sale of which exhausts patent rights. Our precedents do not differentiate transactions involving embodiments of patented methods or processes from those involving patented apparatuses or materials. To the contrary, this Court has repeatedly held that method patents were exhausted by the sale of an item that embodied the method. In Ethyl Gasoline Corp. v. United States, 309 U. S. 436, 446, 457 (1940), for example, the Court held that the sale of a motor fuel produced under one patent also exhausted the patent for a method of using the fuel in combustion motors.4 Similarly, as previously described, Univis held that the sale of optical lens blanks that partially practiced a patent exhausted the method patents that were not completely practiced until the blanks were ground into lenses. 316 U. S., at 248-251.

These cases rest on solid footing. Eliminating exhaustion for method patents would seriously undermine the exhaustion doctrine. Patentees seeking to avoid patent exhaustion could simply draft their patent claims to describe a method rather than an apparatus.5 Apparatus and method claims "may approach each other so nearly that it will be difficult to distinguish the process from the function of the apparatus." United States ex rel. Steinmetz v. Allen, 192 U. S. 543, 559 (1904). By characterizing their claims as method instead of apparatus claims, or including a method claim for the machine's patented method of performing its task, a patent drafter could shield practically any patented item from exhaustion.

This case illustrates the danger of allowing such an end-run around exhaustion. On LGE's theory, although Intel is authorized to sell a completed computer system that practices the LGE Patents, any downstream purchasers of the system could nonetheless be liable for patent infringement. Such a result would violate the longstanding principle that, when a patented item is "once lawfully made and sold, there is no restriction on [its] use to be implied for the benefit of the patentee." Adams, 17 Wall., at 457. We therefore reject LGE's argument that method claims, as a category, are never exhaustible.

B

We next consider the extent to which a product must embody a patent in order to trigger exhaustion. Quanta argues that, although sales of an incomplete article do not necessarily exhaust the patent in that article, the sale of the microprocessors and chipsets exhausted LGE's patents in the same way the sale of the lens blanks exhausted the patents in Univis. Just as the lens blanks in Univis did not fully practice the patents at issue because they had not been ground into finished lenses, Quanta observes, the Intel Products cannot practice the LGE Patents--or indeed, function at all--until they are combined with memory and buses in a computer system. If, as in Univis, patent rights are exhausted by the sale of the incomplete item, then LGE has no postsale right to require that the patents be practiced using only Intel parts. Quanta also argues that exhaustion doctrine will be a dead letter unless it is triggered by the sale of components that essentially, even if not completely, embody an invention. Otherwise, patent holders could authorize the sale of computers that are complete with the exception of one minor step--say, inserting the microprocessor into a socket--and extend their rights through each downstream purchaser all the way to the end user.

LGE, for its part, argues that Univis is inapplicable here for three reasons. First, it maintains that Univis should be limited to products that contain all the physical aspects needed to practice the patent. On that theory, the Intel Products cannot embody the patents because additional physical components are required before the patents can be practiced. Second, LGE asserts that in Univis there was no "patentable distinction" between the lens blanks and the patented finished lenses since they were both subject to the same patent. Brief for Respondent 14 (citing Univis, supra, at 248-252). In contrast, it describes the Intel Products as "independent and distinct products" from the systems using the LGE Patents and subject to "independent patents." Brief for Respondent 13. Finally, LGE argues that Univis does not apply because the Intel Products are analogous to individual elements of a combination patent, and allowing sale of those components to exhaust the patent would impermissibly "ascrib[e] to one element of the patented combination the status of the patented invention in itself." Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U. S. 336, 344-345 (1961).

We agree with Quanta that Univis governs this case. As the Court there explained, exhaustion was triggered by the sale of the lens blanks because their only reasonable and intended use was to practice the patent and because they "embodie[d] essential features of [the] patented invention." 316 U. S., at 249-251. Each of those attributes is shared by the microprocessors and chipsets Intel sold to Quanta under the License Agreement.

First, Univis held that "the authorized sale of an article which is capable of use only in practicing the patent is a relinquishment of the patent monopoly with respect to the article sold." Id., at 249. The lens blanks in Univis met this standard because they were "without utility until [they were] ground and polished as the finished lens of the patent." Ibid. Accordingly, "the only object of the sale [was] to enable the [finishing retailer] to grind and polish it for use as a lens by the prospective wearer." Ibid. Here, LGE has suggested no reasonable use for the Intel Products other than incorporating them into computer systems that practice the LGE Patents.6 Nor can we can discern one: A microprocessor or chipset cannot function until it is connected to buses and memory. And here, as in Univis, the only apparent object of Intel's sales to Quanta was to permit Quanta to incorporate the Intel Products into computers that would practice the patents.

Second, the lens blanks in Univis "embodie[d] essential features of [the] patented invention." Id., at 250-251. The essential, or inventive, feature of the Univis lens patents was the fusing together of different lens segments to create bi- and tri-focal lenses. The finishing process performed by the finishing and prescription retailers after the fusing was not unique. As the United States explained:

"The finishing licensees finish Univis lens blanks in precisely the same manner as they finish all other bifocal lens blanks. Indeed, appellees have never contended that their licensing system is supported by patents covering methods or processes relating to the finishing of lens blanks. Consequently, it appears that appellees perform all of the operations which contribute any claimed element of novelty to Univis lenses." Brief for United States in United States v. Univis Lens Co., O. T. 1941, No. 855 et al., p. 10 (footnote and citations omitted).

While the Court assumed that the finishing process was covered by the patents, Univis, supra, at 248-249, and the District Court found that it was necessary to make a working lens, United States v. Univis Lens Co., 41 F. Supp. 258, 262-263 (SDNY 1941), the grinding process was not central to the patents. That standard process was not included in detail in any of the patents and was not referred to at all in two of the patents. Those that did mention the finishing process treated it as incidental to the invention, noting, for example, that "[t]he blank is then ground in the usual manner," U. S. Patent No. 1,876,497, p. 2, or simply that the blank is "then ground and polished," U. S. Patent No. 1,632,208, p. 1, Tr. of Record in United States v. Univis Lens Co., O. T. 1941, No. 855 et al., pp. 516, 498.

Like the Univis lens blanks, the Intel Products constitute a material part of the patented invention and all but completely practice the patent. Here, as in Univis, the incomplete article substantially embodies the patent because the only step necessary to practice the patent is the application of common processes or the addition of standard parts. Everything inventive about each patent is embodied in the Intel Products. They control access to main and cache memory, practicing the '641 and '379 patents by checking cache memory against main memory and comparing read and write requests. They also control priority of bus access by various other computer components under the '733 patent. Naturally, the Intel Products cannot carry out these functions unless they are attached to memory and buses, but those additions are standard components in the system, providing the material that enables the microprocessors and chipsets to function. The Intel Products were specifically designed to function only when memory or buses are attached; Quanta was not required to make any creative or inventive decision when it added those parts. Indeed, Quanta had no alternative but to follow Intel's specifications in incorporating the Intel Products into its computers because it did not know their internal structure, which Intel guards as a trade secret. Brief for Petitioners 3. Intel all but practiced the patent itself by designing its products to practice the patents, lacking only the addition of standard parts.

We are unpersuaded by LGE's attempts to distinguish Univis. First, there is no reason to distinguish the two cases on the ground that the articles in Univis required the removal of material to practice the patent while the Intel Products require the addition of components to practice the patent. LGE characterizes the lens blanks and lenses as sharing a "basic nature" by virtue of their physical similarity, while the Intel Products embody only some of the "patentably distinct elements and steps" involved in the LGE Patents. Brief for Respondent 26-27. But we think that the nature of the final step, rather than whether it consists of adding or deleting material, is the relevant characteristic. In each case, the final step to practice the patent is common and noninventive: grinding a lens to the customer's prescription, or connecting a microprocessor or chipset to buses or memory. The Intel Products embody the essential features of the LGE Patents because they carry out all the inventive processes when combined, according to their design, with standard components.

With regard to LGE's argument that exhaustion does not apply across patents, we agree on the general principle: The sale of a device that practices patent A does not, by virtue of practicing patent A, exhaust patent B. But if the device practices patent A while substantially embodying patent B, its relationship to patent A does not prevent exhaustion of patent B. For example, if the Univis lens blanks had been composed of shatter-resistant glass under patent A, the blanks would nonetheless have substantially embodied, and therefore exhausted, patent B for the finished lenses. This case is no different. While each Intel microprocessor and chipset practices thousands of individual patents, including some LGE patents not at issue in this case, the exhaustion analysis is not altered by the fact that more than one patent is practiced by the same product. The relevant consideration is whether the Intel Products that partially practice a patent--by, for example, embodying its essential features--exhaust that patent.

Finally, LGE's reliance on Aro is misplaced because that case dealt only with the question whether replacement of one part of a patented combination infringes the patent. First, the replacement question is not at issue here. Second, and more importantly, Aro is not squarely applicable to the exhaustion of patents like the LGE Patents that do not disclose a new combination of existing parts. Aro described combination patents as "cover[ing] only the totality of the elements in the claim [so] that no element, separately viewed, is within the grant." 365 U. S., at 344; see also Mercoid Corp. v. Mid-Continent Investment Co., 320 U. S. 661, 667-668 (1944) (noting that, in a combination patent, "the combination is the invention and it is distinct from any" of its elements). Aro's warning that no element can be viewed as central to or equivalent to the invention is specific to the context in which the combination itself is the only inventive aspect of the patent. In this case, the inventive part of the patent is not the fact that memory and buses are combined with a microprocessor or chipset; rather, it is included in the design of the Intel Products themselves and the way these products access the memory or bus.

C

Having concluded that the Intel Products embodied the patents, we next consider whether their sale to Quanta exhausted LGE's patent rights. Exhaustion is triggered only by a sale authorized by the patent holder. Univis, 316 U. S., at 249.

LGE argues that there was no authorized sale here because the License Agreement does not permit Intel to sell its products for use in combination with non-Intel products to practice the LGE Patents. It cites General Talking Pictures Corp. v. Western Elec. Co., 304 U. S. 175 (1938), and General Talking Pictures Corp. v. Western Elec. Co., 305 U. S. 124 (1938), in which the manufacturer sold patented amplifiers for commercial use, thereby breaching a license that limited the buyer to selling the amplifiers for private and home use. The Court held that exhaustion did not apply because the manufacturer had no authority to sell the amplifiers for commercial use, and the manufacturer "could not convey to petitioner what both knew it was not authorized to sell." General Talking Pictures, supra, at 181. LGE argues that the same principle applies here: Intel could not convey to Quanta what both knew it was not authorized to sell, i.e., the right to practice the patents with non-Intel parts.

LGE overlooks important aspects of the structure of the Intel-LGE transaction. Nothing in the License Agreement restricts Intel's right to sell its microprocessors and chipsets to purchasers who intend to combine them with non-Intel parts. It broadly permits Intel to " 'make, use, [or] sell' " products free of LGE's patent claims. Brief for Petitioners 8 (quoting App. 154). To be sure, LGE did require Intel to give notice to its customers, including Quanta, that LGE had not licensed those customers to practice its patents. But neither party contends that Intel breached the agreement in that respect. Brief for Petitioners 9; Brief for Respondent 9. In any event, the provision requiring notice to Quanta appeared only in the Master Agreement, and LGE does not suggest that a breach of that agreement would constitute a breach of the License Agreement. Hence, Intel's authority to sell its products embodying the LGE Patents was not conditioned on the notice or on Quanta's decision to abide by LGE's directions in that notice.

LGE points out that the License Agreement specifically disclaimed any license to third parties to practice the patents by combining licensed products with other components. Brief for Petitioners 8. But the question whether third parties received implied licenses is irrelevant because Quanta asserts its right to practice the patents based not on implied license but on exhaustion. And exhaustion turns only on Intel's own license to sell products practicing the LGE Patents.

Alternatively, LGE invokes the principle that patent exhaustion does not apply to postsale restrictions on "making" an article. Brief for Respondent 43. But this is simply a rephrasing of its argument that combining the Intel Products with other components adds more than standard finishing to complete a patented article. As explained above, making a product that substantially embodies a patent is, for exhaustion purposes, no different from making the patented article itself. In other words, no further "making" results from the addition of standard parts--here, the buses and memory--to a product that already substantially embodies the patent.

The License Agreement authorized Intel to sell products that practiced the LGE Patents. No conditions limited Intel's authority to sell products substantially embodying the patents. Because Intel was authorized to sell its products to Quanta, the doctrine of patent exhaustion prevents LGE from further asserting its patent rights with respect to the patents substantially embodied by those products.7

IV

The authorized sale of an article that substantially embodies a patent exhausts the patent holder's rights and prevents the patent holder from invoking patent law to control postsale use of the article. Here, LGE licensed Intel to practice any of its patents and to sell products practicing those patents. Intel's microprocessors and chipsets substantially embodied the LGE Patents because they had no reasonable noninfringing use and included all the inventive aspects of the patented methods. Nothing in the License Agreement limited Intel's ability to sell its products practicing the LGE Patents. Intel's authorized sale to Quanta thus took its products outside the scope of the patent monopoly, and as a result, LGE can no longer assert its patent rights against Quanta. Accordingly, the judgment of the Court of Appeals is reversed.

It is so ordered.

FOOTNOTES

Footnote 1
App. 145-198 is sealed; where material contained therein also appears in the parties' unsealed briefs, citations are to the latter.

Footnote 2
The A. B. Dick Company sold mimeograph machines with an attached license stipulating that the machine could be used only with ink, paper, and other supplies made by the A. B. Dick Company. The Court rejected the notion that a patent holder "can only keep the article within the control of the patent by retaining the title," A. B. Dick, 224 U. S., at 18, and held that "any ... reasonable stipulation, not inherently violative of some substantive law" was "valid and enforceable," id., at 31. The only requirement, the Court held, was that "the purchaser must have notice that he buys with only a qualified right of use," so that a sale made without conditions resulted in "an unconditional title to the machine, with no limitations upon the use." Id., at 26.

Footnote 3
Lens blanks are "rough opaque pieces of glass of suitable size, design and composition for use, when ground and polished, as multifocal lenses in eyeglasses." Univis, 316 U. S., at 244.

Footnote 4
The patentee held patents for (1) a fluid additive increasing gasoline efficiency, (2) motor fuel produced by mixing gasoline with the patented fluid, and (3) a method of using fuel containing the patented fluid in combustion motors. Ethyl Gasoline Corp., 309 U. S., at 446. The patentee sold only the fluid, but attempted to control sales of the treated fuel. Id., at 459. The Court held that the sale of the fluid to refiners relinquished the patentee's exclusive rights to sell the treated fuel. Id., at 457.

Footnote 5
One commentator recommends this strategy as a way to draft patent claims that "will survive numerous transactions regarding the patented good, allowing the force of the patent to intrude deeply into the stream of commerce." Thomas, Of Text, Technique, and the Tangible: Drafting Patent Claims Around Patent Rules, 17 J. Marshall J. Computer & Info. L. 219, 252 (1998); see also id., at 225-226 (advocating the conversion of apparatus claims into method claims and noting that "[e]ven the most novice claims drafter would encounter scant difficulty in converting a patent claim from artifact to technique and back again").

Footnote 6
LGE suggests that the Intel Products would not infringe its patents if they were sold overseas, used as replacement parts, or engineered so that use with non-Intel Products would disable their patented features. Brief for Respondent 21-22, n. 10. But Univis teaches that the question is whether the product is "capable of use only in practicing the patent," not whether those uses are infringing. 316 U. S., at 249 (emphasis added). Whether outside the country or functioning as replacement parts, the Intel Products would still be practicing the patent, even if not infringing it. And since the features partially practicing the patent are what must have an alternative use, suggesting that they be disabled is no solution. The disabled features would have no real use.

Footnote 7
We note that the authorized nature of the sale to Quanta does not necessarily limit LGE's other contract rights. LGE's complaint does not include a breach-of-contract claim, and we express no opinion on whether contract damages might be available even though exhaustion operates to eliminate patent damages. See Keeler v. Standard Folding Bed Co., 157 U. S. 659, 666 (1895) ("Whether a patentee may protect himself and his assignees by special contracts brought home to the purchasers is not a question before us, and upon which we express no opinion. It is, however, obvious that such a question would arise as a question of contract, and not as one under the inherent meaning and effect of the patent laws").

Quanta Computers Inc v. LG Electronics (full text)

2010-03-30T03:07:58Z

Maura: Created page with 'QUANTA COMPUTER, INC., et al. v. LG ELECTRONICS, INC. certiorari to the united states court of appeals for the federal circuit No. 06-937. Argued January 16, 2008--Decided Ju…'

Main Page

2010-03-30T03:06:48Z

Maura: /* ALPHABETICAL LISTING OF CASES */

<big>'''Intellectual Property for Engineers: ESTEEM Reading Course, Spring 2010'''</big>

=ALPHABETICAL LISTING OF CASES=

*[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]
*[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)]]
*[[Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)]]
*[[Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)]]
*[[Bonito Boats. v. Thunder Craft, 489 U.S. 141 (1989)]]
*[[Chester v. Miller, 906 F.2d 1574 (1990)]]
*[[Diamond v. Diehr, 450 U.S. 175 (1981)]]
*[[Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)]]
*[[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
*[[Gould v. Hellwarth, 472 F2d 1383 (1973)]]
*[[Graham v. John Deere, 383 U.S. 1 (1966)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]
*[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850) ]]
*[[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]
*[[In Re Rouffet]]
*[[In Re Bilski]]
**[[In Re Bilski, Dky concurring opinion]]
**[[In Re Bilski, Newman dissenting opinion]]
**[[In Re Bilski, Mayer dissenting opinion]]
**[[In Re Bilski, Rader dissenting opinion]]
*[[In re Brana, 51 F.3d 1560 (1995)]]
*[[In re Hall (full text)]]
*[[J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)]]
*[[Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)]]
*[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]
*[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
*[[Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)]]
*[[Microsoft Corp v. At&T Corp.]]
*[[Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)]]
*[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]
*[[Pfaff v. Wells Electronics: full text]]
*[[Pfaff vs. Wells Electronics]]
*[[Philips Electric Co. v. Thermal Industries, Inc. (full text)]]
*[[Quanta Computers Inc v. LG Electronics (full text)]]
*[[Reiner v. I. Leon Co. (full text)]]
*[[South Corp. v. US]]
*[[South Corp. v. US (full text)]]
*[[South Corp. v. US 690 F.2d 1368 (1982)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]
*[[Traffix Devices, Inc. vs. Marketing Displays, Inc.]]
*[[US v. Adams, 383 U.S. 39 (1966)]]
*[[US v. Adams (full text)]]
*[[U.S. v. Univis Lens Co., 316 U.S. 241 (1942)]]
*[[Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc. (full text)]]
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
**[[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
**[[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=[[INTRODUCTION]]=
This is a summary. Click on the title for the full chapter: [[INTRODUCTION]]

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[NONOBVIOUSNESS]]=
This is a summary. Click on the title for the full chapter: [[NONOBVIOUSNESS]]

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[INFRINGEMENT]]=
This is a summary. Click on the title for the full chapter: [[INFRINGEMENT]]

=[[THE PATENT DOCUMENT]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT DOCUMENT]]

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
This is a summary. Click on the title for the full chapter: [[NOVELTY]]

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

Outline:
*Literal Infringement
*The Doctrine of Equivalents

=[[UTILITY]]=
This is a summary. Click on the title for the full chapter: [[UTILITY]]

=[[PATENTABLE SUBJECT MATTER]]=
This is a summary. Click on the title for the full chapter: [[PATENTABLE SUBJECT MATTER]]

Can computer programs, algorithms, laws of nature, life forms, plants, ''etc.'' be patented. In particular, are the following patentable:

* Plants
* Algorithms and Computer Programs
* Scientific Facts?

In a recent case
* State Street (1998)
the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

=[[FOREIGN AND DOMESTIC PRIORITY]]=
This is a summary. Click on the title for the full chapter: [[FOREIGN AND DOMESTIC PRIORITY]]

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT APPLICATION]]

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=[[INVENTOR ELIGIBILITY]]=
This is a summary. Click on the title for the full chapter: [[INVENTOR ELIGIBILITY]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=[[ANTICIPATION]]=
This is a summary. Click on the title for the full chapter: [[ANTICIPATION]]

=[[PRIOR ART]]=
This is a summary. Click on the title for the full chapter: [[PRIOR ART]]

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

Justice clipart, copyright [http://etc.usf.edu/clipart/ FCIT.]

Talk:U.S. v. Univis Lens Co., 316 U.S. 241 (1942)

2010-03-22T18:42:47Z

Maura: Created page with ' == Maura == The court thought that without the granted license the final step in finishing the lens would infringe the patent and concluded that for this reason the Corporation…'

== Maura ==

The court thought that without the granted license the final step in finishing the lens would infringe the patent and concluded that for this reason the Corporation could condition its licenses upon the maintenance by the licensee of the prescribed retail price. See United States v. General Electric Co., 272 U.S. 476, 47 S.Ct. 192, 71 L.Ed. 362. But it held that the prescription retailer licenses are unlawful because their restrictions upon the resale of the finished product are not within the patent monopoly and are proscribed by the Sherman Act.

The court accordingly limited the relief which it granted to an injunction restraining respondents from carrying out or enforcing the restrictive provisions of the prescription retailer licenses and the fair trade agreements, and from using its licensing system—as has been done in one instance—as the means of preventing a particular competitor from manufacturing and distributing multifocal lens blank similar in appearance to those produced by the Lens Company.

An incident to the purchase of any article, whether patented or unpatented, is the right to use and sell it, and upon familiar principles the authorized sale of an article which is capable of use only in practicing the patent is a relinquishment of the patent monopoly with respect to the article sold. Leitch Mfg. Co. v. Barber Co., 302 U.S. 458, 460, 461, 58 S.Ct. 288, 289, 82 L.Ed. 371; B. B. Chemical Co. v. Ellis, 314 U.S. 495, 62 S.Ct. 406, 86 L.Ed. —-. Sale of a lens blank by the patentee or by his licensee is thus in itself both a complete transfer of ownership of the blank, which is within the protection of the patent law, and a license to practice the final stage of the patent procedure. In the present case the entire consideration and compensation for both is the purchase price paid by the finishing licensee to the Lens Company. We have no question here of what other stipulations, for royalties or otherwise, might have been exacted as a part of the entire transaction, which do not seek to control the disposition of the patented article after the sale. The question is whether the patentee or his licensee, no longer aided by the patent, may lawfully exercise such control.

The declared purpose of the patent law is to promote the progress of science and the useful arts by granting to the inventor a limited monopoly, the exercise of which will enable him to secure the financial rewards for his invention. Constitution of the United States, Art. I, § 8, Cl. 8; 35 U.S.C. §§ 31, 40, 35 U.S.C.A. §§ 31, 40. The full extent of the monopoly is the patentee's 'exclusive right to make use, and vend the invention or discovery'. The patentee may surrender his monopoly in whole by the sale of his patent or in part by the sale of an artile embodying the invention. His monopoly remains so long as he retains the ownership of the patented article. But sale of it exhausts the monopoly in that article and the patentee may not thereafter, by virtue of his patent, control the use or disposition of the article. Bloomer v. McQuewan, 14 How. 539, 549, 550, 14 L.Ed. 532; Adams v. Burke, 17 Wall. 453, 21 L.Ed. 700; Hobbie v. Jennison, 149 U.S. 355, 13 S.Ct. 879, 37 L.Ed. 766. Hence the patentee cannot control the resale price of patented articles which he has sold, either by resort to an infringement suit, or, consistently with the Sherman Act (unless the Miller-Tydings Act applies), by stipulating for price maintenance by his vendees.

We think that all the considerations which support these results lead to the conclusion that where one has sold an uncompleted article which, because it embodies essential features of his patented invention, is within the protection of his patent, and has destined the article to be finished by the purchaser in conformity to the patent, he has sold his invention so far as it is or may be embodied in that particular article. The reward he was demanded and received is for the article and the invention which it embodies and which his vendee is to practice upon it. He has thus parted with his right to assert the patent monopoly with respect to it and is no longer free to control the price at which it may be sold either in its unfinished or finished form.

The first vending of any article manufactured under a patent puts the article beyond the reach of the monopoly which that patent confers. Whether the licensee sells the patented article in its completed form or sells it before completion for the purpose of enabling the buyer to finish and sell it, he has equally parted with the article, and made it the vehicle for transferring to the buyer ownership of the invention with respect to that article. To that extent he has parted with his patent monopoly in either case, and has received in the purchase price every benefit of that monopoly which the patent law secures to him. If he were permitted to control the price at which it could be sold by others he would extend his monopoly quite as much in the one case as in the other, and he would extend it beyond the fair meaning of the patent statutes and the construction which has hitherto been given to them.

The Miller-Tydings Act provides that nothing in the Sherman Act 'shall render illegal, contracts or agreements prescribing minimum prices for the resale of a commodity which bears, or the label or container of which bears, the trade mark, brand, or name of the producer or distributor of such commodity and which is in free and open competition with commodities of the same general class produced or distributed by others * * *.' whenever such agreements are lawful where the resale is made.

Affirmed in part, and reversed in part and remanded with directions.

Talk:Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)

2010-03-22T18:25:41Z

Maura: Created page with ' == Maura == It is well settled in this court that a party seeking a preliminary injunction must establish a right thereto in light of four factors: 1) a reasonable likelihood o…'

== Maura ==

It is well settled in this court that a party seeking a preliminary injunction
must establish a right thereto in light of four factors: 1) a reasonable likelihood of success on the merits; 2) irreparable harm; 3) the balance of hardships tipping in favor of the requesting party; and 4) that the issuance of an injunction is in the public interest.

It is important to keep in mind that the issue before us is not who should ultimately be held to have title to the patent, but whether, in view of the state of the title, it can be said that FilmTec has a reasonable likelihood of success on the merits of that issue, sufficient to warrant the grant of the preliminary injunction.

Since property rights in an invention itself could not, under any conventional meaning of the term, be considered real property,3 they are by definition personal property.4 While early cases have pointed to the myriad ways in which patent rights--that is, property in patents--are closer in analogy to real than to personal property,5 the statutes establish as a matter of law that patents today have the attributes of personal property.6 And 35 U.S.C. Sec.261 makes clear that an application for patent as well as the patent itself may be assigned.7 Further, it is settled law that between the time of an invention and the issuance of a patent, rights in an invention may be assigned and legal title to the ensuing patent will pass to the assignee upon grant of the patent.

Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee (subject to the rights of a subsequent purchaser under Sec. 261), and the assignor-inventor would have nothing remaining to assign. In this case, if Cadotte granted MRI rights in inventions made during his employ, and if the subject matter of the '344 patent was invented by Cadotte during his employ with MRI, then Cadotte had nothing to give to FilmTec and his purported assignment to FilmTec is a nullity. Thus, FilmTec would lack both title to the '344 patent and standing to bring the present action. See 28 U.S.C. Sec. 1498 (1988).

Because of the district court's view of the title issue, no specific findings were made on either of these questions. As a result, we do not know who held legal title to the invention and to the patent application and therefore we do not know if FilmTec could make a sufficient legal showing to establish the likelihood of success necessary to support a preliminary injunction.

C.

It is well established that when a legal title holder of a patent transfers his or her title to a third party purchaser for value without notice of an outstanding equitable claim or title, the purchaser takes the entire ownership of the patent, free of any prior equitable encumbrance. Hendrie v. Sayles, 98 U.S. 546, 549, 25 L.Ed. 176 (1879). This is an application of the common law bona fide purchaser for value rule.
Section 261 of Title 35 goes a step further. It adopts the principle of the real property recording acts, and provides that the bona fide purchaser for value cuts off the rights of a prior assignee who has failed to record the prior assignment in the Patent and Trademark Office by the dates specified in the statute. Although the statute does not expressly so say, it is clear that the statute is intended to cut off prior legal interests, which the common law rule did not.

In our view of the title issue, it cannot be said on this record that FilmTec has established a reasonable likelihood of success on the merits. It is thus unnecessary for us to consider the other issues raised on appeal concerning the propriety of the injunction. The grant of the preliminary injunction is vacated and the case remanded to the district court to reconsider the propriety of the preliminary injunction in light of the four Chrysler factors and for further proceedings consistent with this opinion.

Talk:Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)

2010-03-22T18:07:09Z

Maura: Created page with ' == Maura == It is contended that this power to control further sales is given by statute to the owner of such a copyright in conferring the sole right to ‘vend’ a copyright…'

== Maura ==

It is contended that this power to control further sales is given by statute to the owner of such a copyright in conferring the sole right to ‘vend’ a copyrighted book.

‘There are such wide differences between the right of multiplying and vending copies of a production protected by the copyright statute and the rights secured to an inventor under the patent statutes, that the cases which relate to the one subject are not altogether controlling as to the other.’

The learned counsel for the appellant in this case, in the argument at bar, disclaims relief because of any contract, and relies solely upon the copyright statutes, and rights therein conferred. The copyright statutes ought to be reasonably construed, with a view to effecting the purposes intended by Congress. They ought not to be unduly extended by judicial construction to include privileges not intended to be conferred, nor so narrowly construed as to deprive those entitled to their benefit of the rights Congress intended to grant.

In order to secure this right it was provided in that statute, as it has been in subsequent ones, that the authors of books, their executors, administrators, or assigns, shall have the ‘sole right and liberty of printing, reprinting, publishing, and vending’ such book for a term of years, upon complying with the statutory conditions set forth in the act as essential to the acquiring of a valid copyright. Each and all of these statutory rights should be given such protection as the act of Congress requires, in order to secure the rights conferred upon authors and others entitled to the benefit of the act. Let us see more specifically what are the statutory rights, in this behalf, secured to one who has complied with the provisions of the law and become the owner of a copyright. They may be found in §§ 4952, 4965, and 4970 of the Revised Statutes of the United States, and are as follows:

‘Sec. 4952. Any citizen of the United States or resident therein, who shall be the author, inventor, designer, or proprietor of any book, map, chart, dramatic or musical composition, engraving, cut, print, or photograph or negative thereof, or of a painting, drawing, chromo, statute, statuary, and of models or designs intended to be perfected as works of the fine arts, and the executors, administrators, or assigns of any such person, shall, upon complying with the provisions of this chapter, have the sole liberty of printing, reprinting, publishing, completing, copying, executing, finishing, and vending the same.’ U. S. Comp. Stat. 1901, p. 3406.

‘Sec. 4965. If any person, after the recording of the title of any map, chart, musical composition, print, cut, engraving, or photograph, or chromo, or of the description of any painting, drawing, statue, statuary, or model or design intended to be perfected and executed as a work of the fine arts, as provided by this chapter, shall, within the term limited, and without the consent of the proprietor of the copyright first obtained in writing, signed in presence of two or more witnesses, engrave, etch, work, copy, print, publish, or import, either in whole or in part, or by varying the main design with intent to evade the law, or, knowing the same to be so printed, published, or imported, shall sell or expose to sale any copy of such map or other article, as aforesaid, he shall forfeit to the proprietor all the plates on which the same shall be copied, and every sheet thereof, either copied or printed, and shall further forfeit one dollar for every sheet of the same found in his possession, either printing, printed, copied, published, imported, or exposed for sale; and in case of a painting, statute, or statuary, he shall forfeit ten dollars for every copy of the same in his possession, or by him sold or exposed for sale, one half thereof to the proprietor and the other half to the use of the United States.’ U. S. Comp. Stat. 1901, p. 3414.

The purchaser of a book, once sold by authority of the owner of the copyright, may sell it again, although he could not publish a new edition of it.

In our view the copyright statutes, while protecting the owner of the copyright in his right to multiply and sell his production, do not create the right to impose, by notice, such as is disclosed in this case, a limitation at which the book shall be sold at retail by future purchasers, with whom there is no privity of contract.

To add to the right of exclusive sale the authority to control all future retail sales, by a notice that such sales must be made at a fixed sum, would give a right not included in the terms of the statute, and, in our view, extend its operation, by construction, beyond its meaning, when interpreted with a view to ascertaining the legislative intent in its enactment.

Talk:Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)

2010-03-22T14:28:54Z

Maura: Created page with ' == Maura == The Plant Variety Protection Act of 1970, 7 U.S.C. § 2321 et seq., protects owners of novel seed varieties against unauthorized sales of their seed for replanting …'

== Maura ==

The Plant Variety Protection Act of 1970, 7 U.S.C. § 2321 et seq., protects owners of novel seed varieties against unauthorized sales of their seed for replanting purposes. An exemption, however, allows farmers to make some sales of protected variety seed to other farmers. This case raises the question of whether there is a limit to the quantity of protected seed that a farmer can sell under this exemption.

The developer of a novel variety obtains PVPA coverage by acquiring a certificate of protection from the Plant Variety Protection Office. See 7 U.S.C. §§ 2421, 2422, 2481-2483. This confers on the owner the exclusive right for 18 years to "exclude others from selling the variety, or offering it for sale, or reproducing it, or importing it, or exporting it, or using it in producing (as distinguished from developing) a hybrid or different variety therefrom." § 2483.

7 U.S.C. § 2543. That section, entitled "Right to save seed; crop exemption," reads in relevant part as follows:
"Except to the extent that such action may constitute an infringement under subsections (3) and (4) of section 2541 of this title, it shall not infringe any right hereunder for a person to save seed produced by him from seed obtained, or descended from seed obtained, by authority of the owner of the variety for seeding purposes and use such saved seed in the production of a crop for use on his farm, or for sale as provided in this section: Provided, That without regard to the provisions of section 2541(3) of this title it shall not infringe any right hereunder for a person, whose primary farming occupation is the growing of crops for sale for other than reproductive purposes, to sell such saved seed to other persons so engaged, for reproductive purposes, provided such sale is in compliance with such State laws governing the sale of seed as may be applicable. A bona fide sale for other than reproductive purposes, made in channels usual for such other purposes, of seed produced on a farm either from seed obtained by authority of the owner for seeding purposes or from seed produced by descent on such farm from seed obtained by authority of the owner for seeding purposes shall not constitute an
infringement. . . ."2

Rather, as the Court of Appeals read the statute, § 2543 permits a farmer to sell up to half of every crop he produces from PVPA-protected seed to another farmer for use as seed, so long as he sells the other 50 percent of the crop grown from that specific variety for nonreproductive purposes, e.g., for food or feed.

Thus, a farmer does not qualify for the exemption from infringement liability if he has
"(3) sexually multipl[ied] the novel variety as a step in marketing (for growing purposes) the variety; or (4) use[d] the novel variety in producing (as distinguished from developing) a hybrid or different variety therefrom." 7 U.S.C. §§ 2541(3)-(4).

he central question in this case, then, is whether the Winterboers' planting and harvesting were conducted "as a step in marketing" Asgrow's protected seed varieties for growing purposes. If they were, the Winterboers were not eligible for the § 2543 exemption, and the District Court was right to grant summary judgment to Asgrow.
The PVPA does not define "marketing." When terms used in a statute are undefined, we give them their ordinary meaning. FDIC v. Meyer, 510 U.S. ----, ----, 114 S.Ct. 996, 1001-1002, 127 L.Ed.2d 308 (1994). The Federal Circuit believed that the word "marketing" requires "extensive or coordinated selling activities, such as advertising, using an intervening sales representative, or similar extended merchandising or retail activities." 982 F.2d, at 492. We disagree. Marketing ordinarily refers to the act of holding forth property for sale, together with the activities preparatory thereto (in the present case, cleaning, drying, bagging and pricing the seeds). The word does not require that the promotional or merchandising activities connected with the selling be extensive. One can market apples by simply displaying them on a cart with a price tag; or market a stock by simply listing it on a stock exchange; or market a house (we would normally say "place it on the market") by simply setting a "for sale" sign on the front lawn. Indeed, some dictionaries give as one meaning of "market" simply "to sell." See, e.g., Oxford Universal Dictionary 1208 (3d ed. 1955); Webster's New International Dictionary 1504 (2d ed. 1950).

We think that when the statute refers to sexually multiplying a variety "as a step in marketing," it means growing seed of the variety for the purpose of putting the crop
up for sale.3 Under the exception set out in the first clause of § 2543, then, a farmer is not eligible for the § 2543 exemption if he plants and saves seeds for the purpose of selling the seeds that they produce for replanting.
Section 2543 next provides that, so long as a person is not violating either §§ 2541(3) or (4),
"it shall not infringe any right hereunder for a person to save seed produced by him from seed obtained, or descended from seed obtained, by authority of the owner of the variety for seeding purposes and use such saved seed in the production of a crop for use on his farm, or for sale as provided in this section. . . ." (Emphasis added.)

To summarize: By reason of its proviso the first sentence of § 2543 allows seed that has been preserved for reproductive purposes ("saved seed") to be sold for such purposes. The structure of the sentence is such, however, that this authorization does not extend to saved seed that was grown for the very purpose of sale ("marketing") for replanting—because in that case, § 2541(3) would be violated, and the above-discussed exception to the exemption would apply. As a practical matter, since § 2541(1) prohibits all unauthorized transfer of title to or possession of the protected variety, this means that the
only seed that can be sold under the proviso is seed that has been saved by the farmer to replant his own acreage.5

Justice STEVENS, dissenting.

Moreover, as used in this statute, "marketing" must be narrower, not broader, than selling. The majority is correct that one dictionary meaning of "marketing" is the act of selling and all acts preparatory thereto. See ante, at __," prohibiting sexual multiplication "as a step in marketing" can be no broader than prohibiting sexual multiplication "as a step in selling," because all steps in marketing are, ultimately, steps in selling. If "marketing" can be no broader than "selling," and if Congress did not intend the two terms to be coextensive, then "marketing" must encompass something less than all "selling."

I think Congress wanted to allow any ordinary brown-bag sale from one farmer to another; but, as the Court of Appeals concluded, it did not want to permit farmers to compete with seed manufacturers on their own ground, through "extensive or coordinated selling activities, such as advertising, using an intervening sales representative, or similar extended merchandising or retail activities." 982 F.2d 486, 492 (CA Fed.1992).

The seed at issue is part of a crop planted and harvested by a farmer on his own property. Generally the owner of personal property even a patented or copyrighted article—is free to dispose of that property as he sees fit. See, e.g., United States v. Univis Lens Co., 316 U.S. 241, 250-252, 62 S.Ct. 1088, 1093-1094, 86 L.Ed. 1408 (1942); Bobbs-Merrill Co. v. Straus, 210 U.S. 339, 350-351, 28 S.Ct. 722, 726, 52 L.Ed. 1086 (1908).

Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)

2010-03-22T14:11:52Z

Maura: Created page with '513 US 179 Asgrow Seed Company v. Winterboer 513 U.S. 179 115 S.Ct. 788 130 L.Ed.2d 682 ASGROW SEED COMPANY, Petitioner v. Denny WINTERBOER and Becky Winterboer, dba Deebees. No.…'

513 US 179 Asgrow Seed Company v. Winterboer
513 U.S. 179 115 S.Ct. 788
130 L.Ed.2d 682
ASGROW SEED COMPANY, Petitioner v.
Denny WINTERBOER and Becky Winterboer, dba Deebees.
No. 92-2038.
Supreme Court of the United States
Argued Nov. 7, 1994. Decided Jan. 18, 1995.

Syllabus
*

Petitioner Asgrow Seed Company has protected two varieties of soybean seed under the Plant Variety Protection Act of 1970 (PVPA), which extends patent-like protection to novel varieties of sexually reproduced plants (plants grown from seed). After respondent farmers planted 265 acres of Asgrow's seed and sold the entire saleable crop—enough to plant 10,000 acres —to other farmers for use as seed, Asgrow filed suit, alleging infringement under, inter alia, 7 U.S.C. § 2541(1), for selling or offering to sell the seed, and § 2541(3), for "sexually multiply[ing] the novel varieties as a step in marketing [them] (for growing purposes)." Respondents contended that they were entitled to a statutory exemption from liability under § 2543, which provides in relevant part that "[e]xcept to the extent that such action may constitute an infringement under [§ 2541(3) ]," a farmer may "save seed . . . and use such saved seed in the production of a crop for use on his farm, or for sale as provided in this section: Provided, That" such saved seed can be sold for reproductive purposes where both buyer and seller are farmers "whose primary farming occupation is the growing of crops for sale for other than reproductive purposes." In granting Asgrow summary judgment, the District Court found that the exemption allows a farmer to save and resell to other farmers only the amount of seed the seller would need to replant his own fields. The Court of Appeals reversed, holding that § 2543 permits a farmer to sell up to half of every crop he produces from PVPA-protected seed, so long as he sells the other half for food or feed.

Held: A farmer who meets the requirements set forth in § 2543's proviso may sell for reproductive purposes only such seed as he has saved for the purpose of replanting his own acreage. Pp. __.

(a) Respondents were not eligible for the § 2543 exception if their planting and harvesting were conducted "as a step in marketing" under § 2541(3), for the parties do not dispute that these actions constituted "sexual multiplication" of novel varieties. Since the PVPA does not define "marketing," the term should be given its ordinary meaning. Marketing ordinarily refers to the act of holding forth property for sale, together with the activities preparatory thereto, but does not require that there be extensive promotional or merchandising activities connected with the selling. Pp. __.

(b) By reason of the proviso, the first sentence of § 2543 allows seed that has been preserved for reproductive purposes (saved seed) to be sold for such purposes. However, the structure of the sentence is such that this authorization does not extend to saved seed that was grown for the purpose of sale (marketing) for replanting, because that would violate § 2541(3). As a practical matter, this means that only seed that has been saved by the farmer to replant his own acreage can be sold. Thus, a farmer who saves seeds to replant his acreage, but changes his plans, may sell the seeds for replanting under the proviso's terms. The statute's language stands in the way of the limitation the Court of Appeals found in the amount of seed that can be sold. Pp. __.

982 F.2d 486 (CA Fed.1992) reversed.

SCALIA, J., delivered the opinion of the Court, in which REHNQUIST, C.J., and O'CONNOR, KENNEDY, SOUTER, THOMAS, GINSBURG, and BREYER, JJ., joined. STEVENS, J., filed a dissenting opinion.

Richard L. Stanley, Houston, TX, for petitioner.

Richard H. Seamon, Washington, DC, for U.S. as amicus curiae by special leave of the Court.

William H. Bode, Washington, DC, for respondents.

Justice SCALIA delivered the opinion of the Court.

The Plant Variety Protection Act of 1970, 7 U.S.C. § 2321 et seq., protects owners of novel seed varieties against unauthorized sales of their seed for replanting purposes. An exemption, however, allows farmers to make some sales of protected variety seed to other farmers. This case raises the question of whether there is a limit to the quantity of protected seed that a farmer can sell under this exemption.

2
* In 1970, Congress passed the Plant Variety Protection Act (PVPA) 84 Stat. 1542, 7 U.S.C. § 2321 et seq., in order to provide developers of novel plant varieties with "adequate encouragement for research, and for marketing when appropriate, to yield for the public the benefits of new varieties," § 2581. The PVPA extends patent-like protection to novel varieties of sexually reproduced plants (that is, plants grown from seed) which parallels the protection afforded asexually reproduced plant varieties (that is, varieties reproduced by propagation or grafting) under Chapter 15 of the Patent Act. See 35 U.S.C. §§ 161-164.

3
The developer of a novel variety obtains PVPA coverage by acquiring a certificate of protection from the Plant Variety Protection Office. See 7 U.S.C. §§ 2421, 2422, 2481-2483. This confers on the owner the exclusive right for 18 years to "exclude others from selling the variety, or offering it for sale, or reproducing it, or importing it, or exporting it, or using it in producing (as distinguished from developing) a hybrid or different variety therefrom." § 2483.

4
Petitioner, Asgrow Seed Company is the holder of PVPA certificates protecting two novel varieties of soybean seed, which it calls A1937 and A2234. Respondents, Dennis and Becky Winterboer, are Iowa farmers whose farm spans 800 acres of Clay County, in the northwest corner of the state. The Winterboers have incorporated under the name "D-Double-U Corporation" and do business under the name "DeeBee's Feed and Seed." In addition to growing crops for sale as food and livestock feed, since 1987 the Winterboers have derived a sizable portion of their income from "brown-bag" sales of their crops to other farmers to use as seed. A brown-bag sale occurs when a farmer purchases seed from a seed company, such as Asgrow, plants the seed in his own fields, harvests the crop, cleans it, and then sells the reproduced seed to other farmers (usually in nondescript brown bags) for them to plant as crop-seed on their own farms. During 1990, the Winterboers planted 265 acres of A1937 and A2234, and sold the entire saleable crop, 10,529 bushels, to others for use as seed enough to plant 10,000 acres. The average sale price was $8.70 per bushel, compared with a then-current price of $16.20 to $16.80 per bushel to obtain varieties A1937 and A2234 directly from Asgrow.

5
Concerned that the Winterboers were making a business out of selling its protected seed, Asgrow sent a local farmer, Robert Ness, to the Winterboer farm to make a purchase. Mr. Winterboer informed Ness that he could sell him soybean seed that was "just like" Asgrow varieties A1937 and A2234. Ness purchased 20 bags of each; a plant biologist for Asgrow tested the seeds and determined that they were indeed A1937 and A2234.

6
Asgrow brought suit against the Winterboers in Federal District Court for the Northern District of Iowa, seeking damages and a permanent injunction against sale of seed harvested from crops grown from A1937 and A2234. The complaint alleged infringement under 7 U.S.C. § 2541(1), for selling or offering to sell Asgrow's protected soybean varieties; under § 2541(3), for sexually multiplying Asgrow's novel varieties as a step in marketing those varieties for growing purposes; and under § 2541(6), for dispensing the novel varieties to others in a form that could be propagated without providing notice that the seeds were of a protected variety.1

7
The Winterboers did not deny that Asgrow held valid certificates of protection covering A1937 and A2243, and that they had sold seed produced from those varieties for others to use as seed. Their defense, at least to the §§ 2541(1) and (3) charges, rested upon the contention that their sales fell within the statutory exemption from infringement liability found in 7 U.S.C. § 2543. That section, entitled "Right to save seed; crop exemption," reads in relevant part as follows:

8
"Except to the extent that such action may constitute an infringement under subsections (3) and (4) of section 2541 of this title, it shall not infringe any right hereunder for a person to save seed produced by him from seed obtained, or descended from seed obtained, by authority of the owner of the variety for seeding purposes and use such saved seed in the production of a crop for use on his farm, or for sale as provided in this section: Provided, That without regard to the provisions of section 2541(3) of this title it shall not infringe any right hereunder for a person, whose primary farming occupation is the growing of crops for sale for other than reproductive purposes, to sell such saved seed to other persons so engaged, for reproductive purposes, provided such sale is in compliance with such State laws governing the sale of seed as may be applicable. A bona fide sale for other than reproductive purposes, made in channels usual for such other purposes, of seed produced on a farm either from seed obtained by authority of the owner for seeding purposes or from seed produced by descent on such farm from seed obtained by authority of the owner for seeding purposes shall not constitute an infringement. . . ."2

9
The Winterboers argued that this language gave them the right to sell an unlimited amount of seed produced from a protected variety, subject only to the conditions that both buyer and seller be farmers "whose primary farming occupation is the growing of crops for sale for other than reproductive purposes," and that all sales comply with state law. Asgrow maintained that the exemption allows a farmer to save and resell to other farmers only the amount of seed the seller would need to replant his own fields—a limitation that the Winterboers' sales greatly exceeded. The District Court agreed with Asgrow and granted summary judgment in its favor. 795 F.Supp. 915 (1991).

10
The United States Court of Appeals for the Federal Circuit reversed. 982 F.2d 486 (1992). Although "recogniz[ing] that, without meaningful limitations, the crop exemption [of § 2543] could undercut much of the PVPA's incentives," id., at 491, the Court of Appeals saw nothing in § 2543 that would limit the sale of protected seed (for reproductive purposes) to the amount necessary to plant the seller's own acreage. Rather, as the Court of Appeals read the statute, § 2543 permits a farmer to sell up to half of every crop he produces from PVPA-protected seed to another farmer for use as seed, so long as he sells the other 50 percent of the crop grown from that specific variety for nonreproductive purposes, e.g., for food or feed. The Federal Circuit denied Asgrow's petition for rehearing and suggestion for rehearing en banc by a vote of six judges to five. 989 F.2d 478 (1993). We granted certiorari. 511 U.S. ----, 114 S.Ct. 1535, --- L.Ed.2d ---- (1994).

II

11
It may be well to acknowledge at the outset that it is quite impossible to make complete sense of the provision at issue here. One need go no further than the very first words of its title to establish that. Section 2543 does not, as that title claims and the ensuing text says, reserve any "[r]ight to save seed"—since nothing elsewhere in the Act remotely prohibits the saving of seed. Nor, under any possible analysis, is the proviso in the first sentence of § 2543 ("Provided, That") really a proviso.

12
With this advance warning that not all mysteries will be solved, we enter the verbal maze of § 2543. The entrance, we discover, is actually an exit, since the provision begins by excepting certain activities from its operation: "Except to the extent that such action may constitute an infringement under subsections (3) and (4) of section 2541 of this title, it shall not infringe any right hereunder for a person to save seed produced by him . . . and use such saved seed in the production of a crop for use on his farm, or for sale as provided in this section. . . ." (emphasis added). Thus, a farmer does not qualify for the exemption from infringement liability if he has

13
"(3) sexually multipl[ied] the novel variety as a step in marketing (for growing purposes) the variety; or (4) use[d] the novel variety in producing (as distinguished from developing) a hybrid or different variety therefrom." 7 U.S.C. §§ 2541(3)-(4).

14
In 1990, the Winterboers planted 265 bushels of Asgrow protected variety seed and collected a harvest of 12,037 bushels of soybeans. The parties do not dispute that this act of planting and harvesting constituted "sexual multiplication" of the novel varieties. See 7 U.S.C. § 2401(f) (defining "sexually reproduced" seed to include "any production of a variety by seed"). The Winterboers sold almost all of these beans for use as seed (i.e., "for growing purposes"), without Asgrow's consent. The central question in this case, then, is whether the Winterboers' planting and harvesting were conducted "as a step in marketing" Asgrow's protected seed varieties for growing purposes. If they were, the Winterboers were not eligible for the § 2543 exemption, and the District Court was right to grant summary judgment to Asgrow.

15
The PVPA does not define "marketing." When terms used in a statute are undefined, we give them their ordinary meaning. FDIC v. Meyer, 510 U.S. ----, ----, 114 S.Ct. 996, 1001-1002, 127 L.Ed.2d 308 (1994). The Federal Circuit believed that the word "marketing" requires "extensive or coordinated selling activities, such as advertising, using an intervening sales representative, or similar extended merchandising or retail activities." 982 F.2d, at 492. We disagree. Marketing ordinarily refers to the act of holding forth property for sale, together with the activities preparatory thereto (in the present case, cleaning, drying, bagging and pricing the seeds). The word does not require that the promotional or merchandising activities connected with the selling be extensive. One can market apples by simply displaying them on a cart with a price tag; or market a stock by simply listing it on a stock exchange; or market a house (we would normally say "place it on the market") by simply setting a "for sale" sign on the front lawn. Indeed, some dictionaries give as one meaning of "market" simply "to sell." See, e.g., Oxford Universal Dictionary 1208 (3d ed. 1955); Webster's New International Dictionary 1504 (2d ed. 1950). Of course effective selling often involves extensive promotional activities, and when they occur they are all part of the "marketing." But even when the holding forth for sale relies upon no more than word-of-mouth advertising, a marketing of goods is in process. Moreover, even if the word "marketing" could, in one of its meanings, demand extensive promotion, we see no reason why the law at issue here would intend that meaning. That would have the effect of preserving PVPA protection for less valuable plant varieties, but eliminating it for varieties so desirable that they can be marketed by word of mouth; as well as the effect of requiring courts to ponder the difficult question of how much promotion is necessary to constitute marketing. We think that when the statute refers to sexually multiplying a variety "as a step in marketing," it means growing seed of the variety for the purpose of putting the crop up for sale.3 Under the exception set out in the first clause of § 2543, then, a farmer is not eligible for the § 2543 exemption if he plants and saves seeds for the purpose of selling the seeds that they produce for replanting.

16
Section 2543 next provides that, so long as a person is not violating either §§ 2541(3) or (4),

17
"it shall not infringe any right hereunder for a person to save seed produced by him from seed obtained, or descended from seed obtained, by authority of the owner of the variety for seeding purposes and use such saved seed in the production of a crop for use on his farm, or for sale as provided in this section. . . ." (Emphasis added.)

18
Farmers generally grow crops to sell. A harvested soybean crop is typically removed from the farmer's premises in short order and taken to a grain elevator or processor. Sometimes, however, in the case of a plant such as the soybean, in which the crop is the seed, the farmer will have a portion of his crop cleaned and stored as seed for replanting his fields next season. We think it clear that this seed saved for replanting is what the provision under discussion means by "saved seed"—not merely regular uncleaned crop that is stored for later market sale or use as fodder.

19
There are two ways to read the provision, depending upon which words the phrase "for sale as provided in this section" is taken to modify. It can be read "production of a crop . . . for sale as provided in this section"; or alternatively "use such saved seed . . . for sale as provided in this section." The parallelism created by the phrase "for use on his farm" followed immediately by "or for sale as provided in this section," suggests the former reading. But the placement of the comma, separating "use [of] such saved seed in the production of a crop for use on his farm," from "or for sale" favors the latter reading. So does the fact that the alternative reading requires the reader to skip the lengthy "Provided, That" clause in order to find out what sales are "provided [for] in this section"—despite the parallelism between "provided" and "Provided," and despite the presence of a colon, which ordinarily indicates specification of what has preceded. It is surely easier to think that at least some of the sales "provided for" are those that are "Provided" after the colon. (It is of course not unusual, however deplorable it may be, for "Provided, That" to be used as prologue to an addition rather than an exception. See Springer v. Philippine Islands, 277 U.S. 189, 206, 48 S.Ct. 480, 483-484, 72 L.Ed. 845 (1928); 1A N. Singer, Sutherland on Statutory Construction § 20.22 (5th ed. 1992).)

20
We think the latter reading is also to be preferred because it lends greater meaning to all the provisions. Under the former reading, ("production of a crop . . . for sale as provided in this section") the only later text that could be referred to is the provision for "bona fide sale[s] for other than reproductive purposes" set out in the second sentence of § 2543—the so-called "crop exemption". (The proviso could not be referred to, since it does not provide for sale of crops grown from saved seed, but only for sale of saved seed itself.) But if the "or for sale" provision has such a limited referent, the opening clause's ("Except to the extent that . . .") reservation of § 2541(3) infringement liability (i.e., liability for growing as a step in marketing for reproductive purposes) would be devoid of content, since the provision to which it is attached would permit no sales for reproductive purposes. Under the latter reading, by contrast, the farmer may not "use [his] saved seed . . . for sale" as the proviso allows if the seed was intentionally grown for the purpose of such sale—i.e., "sexually multipl[ied] . . . as a step in marketing (for growing purposes) the variety."4 A second respect in which our favored reading gives greater meaning to the provision is this: The other reading ("crop . . . for sale as provided in this section") causes the "permission" given in the opening sentence to extend only to sales for nonreproductive purposes of the crops grown from saved seed, as opposed to sales of the saved seed itself. But no separate permission would have been required for this, since it is already contained within the crop exemption itself; it serves only as a reminder that crop from saved seed can be sold under that exemption—a peculiarly incomplete reminder, since the saved seed itself can also be sold under that exemption.

21
To summarize: By reason of its proviso the first sentence of § 2543 allows seed that has been preserved for reproductive purposes ("saved seed") to be sold for such purposes. The structure of the sentence is such, however, that this authorization does not extend to saved seed that was grown for the very purpose of sale ("marketing") for replanting—because in that case, § 2541(3) would be violated, and the above-discussed exception to the exemption would apply. As a practical matter, since § 2541(1) prohibits all unauthorized transfer of title to or possession of the protected variety, this means that the only seed that can be sold under the proviso is seed that has been saved by the farmer to replant his own acreage.5 (We think that limitation is also apparent from the text of the crop exemption, which permits a farm crop from saved seeds to be sold—for nonreproductive purposes—only if those saved seeds were "produced by descent on such farm" (emphasis added). It is in our view the proviso in § 2543, and not the crop exemption, which authorizes the permitted buyers of saved seeds to sell the crops they produce.) Thus, if a farmer saves seeds to replant his acreage, but for some reason changes his plans, he may instead sell those seeds for replanting under the terms set forth in the proviso (or of course sell them for nonreproductive purposes under the crop exemption).

22
It remains to discuss one final feature of the proviso authorizing limited sales for reproductive purposes. The proviso allows sales of saved seed for replanting purposes only between persons "whose primary farming occupation is the growing of crops for sale for other than reproductive purposes." The Federal Circuit, which rejected the proposition that the only seed sellable under the exemption is seed saved for the farmer's own replanting, sought to achieve some limitation upon the quantity of seed that can be sold for reproductive purposes by adopting a "crop-by-crop" approach to the "primary farming occupation" requirement of the proviso. "[B]uyers or sellers of brown bag seed qualify for the crop exemption," it concluded, "only if they produce a larger crop from a protected seed for consumption (or other nonreproductive purposes) than for sale as seed." 982 F.2d, at 490. That is to say, the brown-bag seller can sell no more than half of his protected crop for seed. The words of the statute, however, stand in the way of this creative (if somewhat insubstantial) limitation. To ask what is a farmer's "primary farming occupation" is to ask what constitutes the bulk of his total farming business. Selling crops for other than reproductive purposes must constitute the preponderance of the farmer's business, not just the preponderance of his business in the protected seed. There is simply no way to derive from this text the narrower focus that the Federal Circuit applied. Thus, if the quantity of seed that can be sold is not limited as we have described—by reference to the original purpose for which the seed is saved—then it is barely limited at all (i.e., limited only by the volume or worth of the selling farmer's total crop sales for other than reproductive purposes). This seems to us a most unlikely result.

23
* * *

24
We hold that a farmer who meets the requirements set forth in the proviso to § 2543 may sell for reproductive purposes only such seed as he has saved for the purpose of replanting his own acreage. While the meaning of the text is by no means clear, this is in our view the only reading that comports with the statutory purpose of affording "adequate encouragement for research, and for marketing when appropriate, to yield for the public the benefits of new varieties." 7 U.S.C. § 2581. Because we find the sales here were unlawful, we do not reach the second question on which we granted certiorari—whether sales authorized under § 2543 remain subject to the notice requirement of § 2541(6).

25
The judgment of the Court of Appeals for the Federal Circuit is

26
Reversed.

27
Justice STEVENS, dissenting.

28
The key to this statutory puzzle is the meaning of the phrase, "as a step in marketing," as used in 7 U.S.C. § 2541(a)(3). If it is synonymous with "for the purpose of selling," as the Court holds, see ante, at __, then the majority's comprehensive exposition of the statute is correct. I record my dissent only because that phrase conveys a different message to me.

29
There must be a reason why Congress used the word "marketing" rather than the more common term "selling." Indeed, in § 2541(a)(1), contained in the same subsection of the statute as the crucial language, Congress made it an act of infringement to "sell the novel variety." Yet, in § 2541(a)(3), a mere two clauses later, Congress eschewed the word "sell" in favor of "marketing." Because Congress obviously could have prohibited sexual multiplication "as a step in selling," I presume that when it elected to prohibit sexual multiplication only "as a step in marketing (for growing purposes) the variety," Congress meant something different.

30
Moreover, as used in this statute, "marketing" must be narrower, not broader, than selling. The majority is correct that one dictionary meaning of "marketing" is the act of selling and all acts preparatory thereto. See ante, at __," prohibiting sexual multiplication "as a step in marketing" can be no broader than prohibiting sexual multiplication "as a step in selling," because all steps in marketing are, ultimately, steps in selling. If "marketing" can be no broader than "selling," and if Congress did not intend the two terms to be coextensive, then "marketing" must encompass something less than all "selling."

31
The statute as a whole—and as interpreted by the Court of Appeals—indicates that Congress intended to preserve the farmer's right to engage in so-called "brown-bag sales" of seed to neighboring farmers. Congress limited that right by the express requirement that such sales may not constitute the "primary farming occupation" of either the buyer or the seller. Moreover, § 2541(a)(3) makes it abundantly clear that the unauthorized participation in "marketing" of protected varieties is taboo. If one interprets "marketing" to refer to a subcategory of selling activities, namely merchandising through farm cooperatives, wholesalers, retailers, or other commercial distributors, the entire statute seems to make sense. I think Congress wanted to allow any ordinary brown-bag sale from one farmer to another; but, as the Court of Appeals concluded, it did not want to permit farmers to compete with seed manufacturers on their own ground, through "extensive or coordinated selling activities, such as advertising, using an intervening sales representative, or similar extended merchandising or retail activities." 982 F.2d 486, 492 (CA Fed.1992).

32
This reading of the statute is consistent with our time-honored practice of viewing restraints on the alienation of property with disfavor. See, e.g., Sexton v. Wheaton, 8 Wheat. 229, 242, 5 L.Ed. 603 (1823) (opinion of Marshall, C.J.).* The seed at issue is part of a crop planted and harvested by a farmer on his own property. Generally the owner of personal property even a patented or copyrighted article—is free to dispose of that property as he sees fit. See, e.g., United States v. Univis Lens Co., 316 U.S. 241, 250-252, 62 S.Ct. 1088, 1093-1094, 86 L.Ed. 1408 (1942); Bobbs-Merrill Co. v. Straus, 210 U.S. 339, 350-351, 28 S.Ct. 722, 726, 52 L.Ed. 1086 (1908). A statutory restraint on this basic freedom should be expressed clearly and unambiguously. Cf. Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 530-531, 92 S.Ct. 1700, 1708, 32 L.Ed.2d 273 (1972). As the majority recognizes, the meaning of this statute is "by no means clear." Ante, at __, both because I am persuaded that the Court of Appeals correctly interpreted the intent of Congress, and because doubts should be resolved against purported restraints on freedom, I would affirm the judgment below.

*
The syllabus constitutes no part of the opinion of the Court but has been prepared by the Reporter of Decisions for the convenience of the reader. See United States v. Detroit Lumber Co., 200 U.S. 321, 337, 26 S.Ct. 282, 287, 50 L.Ed. 499.

1
At the time the infringement action was filed, § 2541 provided in full:

"Except as otherwise provided in this subchapter, it shall be an infringement of the rights of the owner of a novel variety to perform without authority, any of the following acts in the United States, or in commerce which can be regulated by Congress or affecting such commerce, prior to expiration of the right to plant variety protection but after either the issue of the certificate or the distribution of a novel plant variety with the notice under section 2567 of this title:

"(1) sell the novel variety, or offer it or expose it for sale, deliver it, ship it, consign it, exchange it, or solicit an offer to buy it, or any other transfer of title or possession of it;

"(2) import the novel variety into, or export it from, the United States;

"(3) sexually multiply the novel variety as a step in marketing (for growing purposes) the variety; or

"(4) use the novel variety in producing (as distinguished from developing) a hybrid or different variety therefrom; or

"(5) use seed which had been marked "Unauthorized Propagation Prohibited" or "Unauthorized Seed Multiplication Prohibited" or progeny thereof to propagate the novel variety; or

"(6) dispense the novel variety to another, in a form which can be propagated, without notice as to being a protected variety under which it was received; or

"(7) perform any of the foregoing acts even in instances in which the novel variety is multiplied other than sexually, except in pursuance of a valid United States plant patent; or

"(8) instigate or actively induce performance of any of the foregoing acts."

In October, 1992, Congress amended § 2541, designating the prior text as subsection (a) and adding a subsection (b), the provisions of which are not relevant here. Curiously, however, the references in § 2543 to the infringement provisions of § 2541 were not amended to reflect this change. For clarity's sake, therefore, we will continue to refer to the infringement provisions under their prior designations, e.g., §§ 2541(1)-(8), rather than their current designations, e.g., §§ 2541(a)(1)-(8).

2
Congress has recently amended this section by striking from the first sentence the words " 'section: Provided, That' and all that follows through the period and inserting 'section.' " Plant Variety Protection Act Amendments of 1994, Pub.L. 103-349, 108 Stat. 3136, 3142. That amendment has the effect of eliminating the exemption from infringement liability for farmers who sell PVPA-protected seed to other farmers for reproductive purposes. That action, however, has no bearing on the resolution of the present case, since the amendments affect only those certificates issued after April 4, 1995, that were not pending on or before that date. See id., §§ 14(a), 15, 108 Stat. 3144, 3145.

3
The dissent asserts that the Federal Circuit's more demanding interpretation of "marketing" is supported by the ancient doctrine disfavoring restraints on alienation of property, see post, at __. The wellspring of that doctrine, of course, is concern for property rights, and in the context of the PVPA it is the dissent's interpretation, rather than ours, which belittles that concern. The whole purpose of the statute is to create a valuable property in the product of botanical research by giving the developer the right to "exclude others from selling the variety, or offering it for sale, or reproducing it, or importing it, or exporting it," etc. 7 U.S.C. § 2483. Applying the rule disfavoring restraints on alienation to interpretation of the PVPA is rather like applying the rule disfavoring restraints upon freedom of contract to interpretation of the Sherman Act.

4
This reading also gives meaning to the proviso's statement that "without regard to the provisions of section 2541(3) . . . it shall not infringe any right hereunder" for a person to engage in certain sales of saved seed for reproductive purposes (emphasis added). This serves to eliminate the technical argument that a production of seed which was originally in compliance with § 2541(3) (because it was not done as a step in marketing for reproductive purposes) could retroactively be rendered unlawful by the later sale permitted in the proviso, because such sale causes the earlier production to have been "a step in the marketing" for reproductive purposes.

5
For crops such as soybeans, in which the seed and the harvest are one and the same, this will mean enough seeds for one year's crop on that acreage. Since the germination rate of a batch of seed declines over time, the soybean farmer will get the year-after-next's seeds from next year's harvest. That is not so for some vegetable crops, in which the seed is not the harvest, and a portion of the crop must be permitted to overripen ("go to seed") in order to obtain seeds. One of the amici in the Court of Appeals asserted (and the parties before us did not dispute) that it is the practice of vegetable farmers to "grow" seeds only every four or five years, and to "brown bag" enough seed for four or five future crops. A vegetable farmer who sets aside protected seed with subsequent replantings in mind, but who later abandons his plan (because he has sold his farm, for example), would under our analysis be able to sell all his saved seed, even though it would plant (in a single year) four or five times his current acreage.

*
"It would seem to be a consequence of that absolute power which a man possesses over his own property, that he may make any disposition of it which does not interfere with the existing rights of others, and such disposition, if it be fair and real, will be valid. The limitations on this power are those only which are prescribed by law." Sexton v. Wheaton, 8 Wheat. 229, 242, 5 L.Ed. 603 (1823).

Main Page

2010-03-22T14:09:33Z

Maura: /* ALPHABETICAL LISTING OF CASES */

<big>'''Intellectual Property for Engineers: ESTEEM Reading Course, Spring 2010'''</big>

=ALPHABETICAL LISTING OF CASES=

*[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]
*[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)]]
*[[Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)]]
*[[Bonito Boats. v. Thunder Craft, 489 U.S. 141 (1989)]]
*[[Chester v. Miller, 906 F.2d 1574 (1990)]]
*[[Diamond v. Diehr, 450 U.S. 175 (1981)]]
*[[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
*[[Gould v. Hellwarth, 472 F2d 1383 (1973)]]
*[[Graham v. John Deere, 383 U.S. 1 (1966)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]
*[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850) ]]
*[[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]
*[[In Re Rouffet]]
*[[In Re Bilski]]
**[[In Re Bilski, Dky concurring opinion]]
**[[In Re Bilski, Newman dissenting opinion]]
**[[In Re Bilski, Mayer dissenting opinion]]
**[[In Re Bilski, Rader dissenting opinion]]
*[[In re Brana, 51 F.3d 1560 (1995)]]
*[[In re Hall (full text)]]
*[[J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)]]
*[[Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)]]
*[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]
*[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
*[[Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)]]
*[[Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)]]
*[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]
*[[Pfaff v. Wells Electronics: full text]]
*[[Pfaff vs. Wells Electronics]]
*[[Philips Electric Co. v. Thermal Industries, Inc. (full text)]]
*[[Reiner v. I. Leon Co. (full text)]]
*[[South Corp. v. US]]
*[[South Corp. v. US (full text)]]
*[[South Corp. v. US 690 F.2d 1368 (1982)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]
*[[Traffix Devices, Inc. vs. Marketing Displays, Inc.]]
*[[US v. Adams, 383 U.S. 39 (1966)]]
*[[US v. Adams (full text)]]
*[[Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc. (full text)]]
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
*[[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
*[[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=[[INTRODUCTION]]=
This is a summary. Click on the title for the full chapter: [[INTRODUCTION]]

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[NONOBVIOUSNESS]]=
This is a summary. Click on the title for the full chapter: [[NONOBVIOUSNESS]]

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[INFRINGEMENT]]=
This is a summary. Click on the title for the full chapter: [[INFRINGEMENT]]

=[[THE PATENT DOCUMENT]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT DOCUMENT]]

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
This is a summary. Click on the title for the full chapter: [[NOVELTY]]

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

Outline:
*Literal Infringement
*The Doctrine of Equivalents

=[[UTILITY]]=
This is a summary. Click on the title for the full chapter: [[UTILITY]]

=[[PATENTABLE SUBJECT MATTER]]=
This is a summary. Click on the title for the full chapter: [[PATENTABLE SUBJECT MATTER]]

Can computer programs, algorithms, laws of nature, life forms, plants, ''etc.'' be patented. In particular, are the following patentable:

* Plants
* Algorithms and Computer Programs
* Scientific Facts?

In a recent case
* State Street (1998)
the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

=[[FOREIGN AND DOMESTIC PRIORITY]]=
This is a summary. Click on the title for the full chapter: [[FOREIGN AND DOMESTIC PRIORITY]]

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT APPLICATION]]

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=[[INVENTOR ELIGIBILITY]]=
This is a summary. Click on the title for the full chapter: [[INVENTOR ELIGIBILITY]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=[[ANTICIPATION]]=
This is a summary. Click on the title for the full chapter: [[ANTICIPATION]]

=[[PRIOR ART]]=
This is a summary. Click on the title for the full chapter: [[PRIOR ART]]

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

Justice clipart, copyright [http://etc.usf.edu/clipart/ FCIT.]

Talk:In Re Bilski, Rader dissenting opinion

2010-03-19T00:29:36Z

Maura: Created page with ' == Maura == Thus, the Patent Act from its inception focused patentability on the specific characteristics of the claimed invention-its novelty and utility-not on its particular…'

== Maura ==

Thus, the Patent Act from its inception focused patentability on the specific characteristics of the claimed invention-its novelty and utility-not on its particular subject matter category.

Diehr, 450 U.S. at 182, 101 S.Ct. 1048 (citations omitted). Indeed section 101's term “process” contains no hint of an exclusion for certain types of methods. This court today nonetheless holds that a process is eligible only if it falls within certain subsets of “process.” Ironically the Patent Act itself specifically defines “process” without any of these judicial innovations. 35 U.S.C. § 100(b). Therefore, as Diehr commands, this court should refrain from creating new circuitous judge-made tests.

The language of section 101 conveys no implication that the Act extends patent protection to some subcategories of processes but not others. It does not mean “some” or even “most,” but all.

The abstractness and natural law preclusions not only make sense, they explain the purpose of the expansive language of section 101. Natural laws and phenomena can never qualify for patent protection because they cannot be invented at all. After all, God or Allah or Jahveh or Vishnu or the Great Spirit provided these laws and phenomena as humanity's common heritage. Furthermore, abstract ideas can never qualify for patent protection because the Act intends, as section 101 explains, to provide “useful” technology. An abstract idea must be applied to (transformed into) a practical use before it qualifies for protection. The fine print of Supreme Court opinions conveys nothing more than these basic principles. Yet this court expands (transforms? ) some Supreme Court language into rules that defy the Supreme Court's own rule.

In sum, this court today invents several circuitous and unnecessary tests. It should have merely noted that Bilski attempts to patent an abstract idea. Nothing more was needed. Instead this opinion propagates unanswerable questions: What form or amount of “transformation” suffices? When is a “representative” of a physical object sufficiently linked to that object to satisfy the transformation test? (e.g., Does only vital sign data taken directly from a patient qualify, or can population data derived in part from statistics and extrapolation be used?) What link to a machine is sufficient to invoke the “or machine” prong? Are the “specific” machines of Benson required, or can a general purpose computer qualify? What constitutes “extra- solution activity?” If a process may meet eligibility muster as a “machine,” why does the Act “require” a machine link for a “process” to show eligibility? Does the rule against redundancy itself suggest an inadequacy in this complex spider web of tests supposedly “required” by the language of section 101?

Innovation has moved beyond the brick and mortar world. Even this court's test, with its caveats and winding explanations seems to recognize this. Today's software transforms our lives without physical anchors. This court's test not only risks hobbling these advances, but precluding patent protection for tomorrow's technologies. “We still do not know one thousandth of one percent of what nature has revealed to us.” Attributed to Albert Einstein. If this court has its way, the Patent Act may not incentivize, but complicate, our search for the vast secrets of nature. When all else fails, consult the statute.

Talk:In Re Bilski, Newman dissenting opinion

2010-03-18T23:46:16Z

Maura: Created page with ' == Maura == The court achieves this result by redefining the word “process” in the patent statute, to exclude all processes that do not transform physical matter or that ar…'

== Maura ==

The court achieves this result by redefining the word “process” in the patent statute, to exclude all processes that do not transform physical matter or that are not performed by machines. The court thus excludes many of the kinds of inventions that apply today's electronic and photonic technologies, as well as other processes that handle data and information in novel ways. Such processes have long been patent eligible, and contribute to the vigor and variety of today's Information Age. This exclusion of process inventions is contrary to statute, contrary to precedent, and a negation of the constitutional mandate. Its impact on the future, as well as on the thousands of patents already granted, is unknown.

This exclusion is imposed at the threshold, before it is determined whether the excluded process is new, non- obvious, enabled, described, particularly claimed, etc.; that is, before the new process is examined for patentability. For example, we do not know whether the Bilski process would be found patentable under the statutory criteria, for they were never applied.

This court's redefinition of “process” as limiting access to the patent system to those processes that use specific machinery or that transform matter, is contrary to two centuries of statutory definition.

Instead, the Court made clear that it was not barring patents on computer programs, and rejected the “argu[ment] that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a ‘different state or thing’ ” in order to satisfy Section 101. Id. Although my colleagues now describe these statements as “equivocal,” maj. op. at 956, there is nothing equivocal about “We do not so hold.” Benson, 409 U.S. at 71, 93 S.Ct. 253. Nonetheless, this court now so holds.

A rule that unanticipated inventions are without protection would conflict with the core concept of the patent law that anticipation undermines patentability. Mr. Justice Douglas reminded that the *981 inventions most benefiting mankind are those that push back the frontiers of chemistry, physics, and the like. Congress employed broad general language in drafting § 101 precisely because such inventions are often unforeseeable.

However, the Court did not propose the “machine-or-transformation” test that this court now insists was “enunciated” in Diehr as a specific limit to Section 101. Maj. op. at 953-54. In Diehr there was no issue of machine or transformation, for the Diehr process both employed a machine and produced a chemical transformation: the process was conducted in “an openable rubber molding press,” and it cured the rubber. In discussing the known mathematical formula used by Diehr to calculate the relation between temperature and the rate of a chemical reaction, the Court recited the traditional exceptions of “laws of nature, natural phenomena, and abstract ideas,” 450 U.S. at 185, 101 S.Ct. 1048, and explained that the entirety of the process *982 must be considered, not an individual mathematical step.

Although the Court in Benson and in Flook took care to state that these early decisions do not require the restrictions that the Court was rejecting, this court now places heavy reliance on these early decisions, which this court describes as “consistent with the machine-or-transformation test later articulated in Benson and reaffirmed in Diehr.” Maj. op. at 955. As I have discussed, no such test was “articulated in Benson ” and “reaffirmed in Diehr.”

However, these early cases do show, contrary to the majority opinion, that a “process” has always been a distinct category of patentable invention, and not tied to either apparatus or transformation, as this court now holds. For example, in Tilghman v. Proctor the Court considered a patent on a process for separating fats and oils, and held that the process was not restricted to any particular apparatus.

However, the claims that were directed to the communication system that was described by Morse were held patentable, although no machine, transformation, or manufacture was required. See Morse's Claim 5 (“The system of signs, consisting of dots and spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.”). I cannot discern how the Court's rejection of Morse's Claim 8 on what would now be Section 112 grounds, or the allowance of his other claims, supports this court's ruling today. Indeed, Morse's claim 5, to a system of signs, is no more “tangible” than the systems held patentable in Alappat and State Street Bank, discussed post and now cast into doubt, or the Bilski system here held ineligible for access to patenting.

This court now rejects its own CCPA and Federal Circuit precedent The majority opinion holds that there is a Supreme Court restriction on process patents, “enunciated” in Benson, Flook, and Diehr; and that this restriction was improperly ignored by the Federal Circuit and the Court of Customs and Patent Appeals, leading us into error which we must now correct. Thus this court announces that our prior decisions may no longer be relied upon.

In In re Alappat, 33 F.3d 1526 (Fed.Cir.1994) ( en banc ) the question was the eligibility for patent of a rasterizer that mathematically transforms data to eliminate aliasing in a digital oscilloscope. The court held that a computer-implemented system that produces a “useful, concrete, and tangible result” is Section 101 subject matter. Id. at 1544. This court now rules that “a ‘useful, concrete and tangible result’ analysis should no longer be relied on.” Maj. op. at 960 n. 19.

A close analysis of Diehr, Flook, and Benson reveals that the Supreme Court never intended to create an overly broad, fourth category of [mathematical] subject matter excluded from § 101. Rather, at the core of the Court's analysis in each of these cases lies an attempt by the Court to explain a rather straightforward concept, namely, that certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application, and thus that subject matter is not, in and of itself, entitled to patent protection.

The PTO reports that in Class 705, the examination classification associated with “business methods” and most likely to receive inventions that may not use machinery or transform physical matter, there were almost 10,000 patent applications filed in FY 2006 alone, and over 40,000 applications filed since FY 98 when State Street Bank was decided.

See Benjamin N. Cardozo, The Nature of the Judicial Process 149 (1921) (“[T]he labor of judges would be increased almost to the breaking point if every past decision could be reopened in every case, and one could not lay one's own course of bricks on the secure foundation of the courses laid by others who had gone before him.”).

Instead, the court states the “true issue before us” is “whether Applicants are seeking to claim a fundamental principle (such as an abstract idea) or mental process,” maj. op. at 952, and answers “yes.” With respect, that is the wrong question, and the wrong answer. Bilski's patent application describes his process of analyzing the effects of supply and demand on commodity prices and the use of a coupled transaction strategy to hedge against these risks; this is not a fundamental principle or an abstract idea; it is not a mental process or a law of nature. It is a “process,” set out in successive steps, for obtaining and analyzing information and carrying out a series of commercial transactions for the purpose of “managing the consumption risk costs of a commodity *996 sold by a commodity provider at a fixed price.”

Patents provide an incentive to invest in and work in new directions. In United States v. Line Material Co., 333 U.S. 287, 332, 68 S.Ct. 550, 92 L.Ed. 701 (1948), Justice Burton, joined by Chief Justice *998 Vinson and Justice Frankfurter, remarked that “the frontiers of science have expanded until civilization now depends largely upon discoveries on those frontiers to meet the infinite needs of the future. The United States, thus far, has taken a leading part in making those discoveries and in putting them to use.” This remains true today. It is antithetical to this incentive to restrict eligibility for patenting to what has been done in the past, and to foreclose what might be done in the future.

Talk:In Re Bilski, Mayer dissenting opinion

2010-03-18T17:48:57Z

Maura: Created page with ' == Maura == The patent system is intended to protect and promote advances in science and technology, not ideas about how to structure commercial transactions. Claim 1 of the ap…'

== Maura ==

The patent system is intended to protect and promote advances in science and technology, not ideas about how to structure commercial transactions. Claim 1 of the application of Bernard L. Bilski and Rand A. Warsaw (“Bilski”) is not eligible for patent protection because it is directed to a method of conducting business. Affording patent protection to business methods lacks constitutional and statutory support, serves to hinder rather than promote innovation and usurps that which rightfully belongs in the public domain. State Street and AT & T should be overruled.

When drafting the Constitution, the framers were well aware of the abuses that led to the English Statute of Monopolies and therefore “consciously acted to bar Congress from granting letters patent in particular types of business.”

By 1952, when Congress enacted the current Patent Act, it was widely acknowledged that methods of doing business were ineligible for patent protection. See, e.g., Loew's Drive-In Theatres, Inc. v. Park-In Theatres, Inc., 174 F.2d 547, 552 (1st Cir.1949) (“[A] system for the transaction of business ... however novel, useful, or commercially successful is not patentable apart from the means for making the system practically useful, or carrying it out.”); In re Patton, 29 C.C.P.A. 982, 127 F.2d 324 (1942) (noting that “a system of transacting business, apart from the means for carrying out such system” is not patentable); Hotel Sec. Checking Co. v. Lorraine Co., 160 F. 467, 469 (2d Cir.1908) (“A system of transacting business disconnected from the means for carrying out the system is not, within the most liberal interpretation of the term, an art.”); In re Moeser, 27 App. D.C. 307, 310 (1906) (holding that a system for burial insurance contracts was not patentable because “contracts or proposals for contracts, devised or adopted as a method of transacting a particular class of ... business, [are] not patentable as an art”); see also 145 Cong. Rec. H6,947 (Aug. 3, 1999) (statement of Rep. Manzullo) (“Before the State Street Bank and Trust case ... it was universally thought that methods of doing or conducting business were not patentable items.”).

State Street's decision to jettison the prohibition against patenting methods of doing business contravenes congressional intent. Because (1) “the framers consciously acted to bar Congress from granting letters patent in particular types of business,” Comiskey, 499 F.3d at 1375, and (2) Congress evidenced no intent to modify the long-established rule against business method patents when it enacted the 1952 Patent Act, it is hard to fathom how the issuance of patents on business methods can be supported.

To the contrary, the language supports the opposite view: a person may have “invented” anything under the sun, but it is “not necessarily patentable” unless the statutory requirements for patentability have been satisfied. Thus, the legislative history oft-cited to support business method patents undercuts, rather than supports, the notion that Congress intended to extend the scope of section 101 to encompass such methods.

Business method patents do not promote the “useful arts” because they are not directed to any technological or scientific innovation. Although business method applications may use technology-such as computers-to accomplish desired results, the innovative aspect of the claimed method is an entrepreneurial rather than a technological one. Thus, although Bilski's claimed hedging method could theoretically be implemented on a computer, that alone does not render it patentable.

Methods of doing business do not apply “the law of nature to a new and useful end.” Because the innovative aspect of such methods is an entrepreneurial rather than a technological one, they should be deemed ineligible for patent protection.

There are a host of difficulties associated with allowing patents to issue on methods of conducting business. Not only do such patents tend to impede rather than promote innovation, they are frequently of poor quality. Most fundamentally, they raise significant First Amendment concerns by imposing broad restrictions on speech and the free flow of ideas.

Business method patents, unlike those granted for pharmaceuticals and other products, offer rewards that are grossly disproportionate to the costs of innovation. In contrast to technological endeavors, business innovations frequently involve little or no investment in research and development. Bilski, for example, likely spent only nominal sums to develop his hedging method. The reward he could reap if his application were allowed- exclusive rights over methods of managing risks in a wide array of commodity transactions-vastly exceeds any costs he might have incurred in devising his “invention.”

Instead of providing incentives to competitors to develop improved business techniques, business method patents remove building blocks of commercial innovation from the public domain. Dreyfuss, supra at 275-77. Because they restrict competitors from using and improving upon patented business methods, such patents stifle innovation.

One reason for the poor quality of business method patents is the lack of readily accessible prior art references. Because business methods were not patentable prior to State Street, “there is very little patent-related prior art readily at hand to the examiner corps.” Dreyfuss, supra at 269.

Like many business method applications, Bilski's application is very broadly drafted. It covers a wide range of means for “hedging” in commodity transactions. If his application were allowed, anyone who discussed ways to balance market risks in any sort of commodity could face potential infringement liability. By adopting overly expansive standards for patentability, the government enables private parties to impose broad and unwarranted burdens on speech and the free flow of ideas.

Indeed, although this court has struggled for years to set out what constitutes sufficient physical transformation to render a process patentable, we have yet to provide a consistent or satisfactory resolution of this issue.

The majority, however, fails to enlighten three of the thorniest issues in the patentability thicket: (1) the continued viability of business method patents, (2) what constitutes sufficient physical transformation or machine-implementation to render a process patentable, and (3) the extent to which computer software and computer-implemented processes constitute statutory subject matter.

Talk:In Re Bilski, Dky concurring opinion

2010-03-18T15:32:20Z

Maura: Created page with ' == Maura == In fact, the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded in the statute since the time of …'

== Maura ==

In fact, the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded in the statute since the time of the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793). It is our dissenting colleagues who would legislate by expanding patentable subject matter far beyond what is allowed by the statute.

The English practice in 1793, imported into the American statutes, explicitly recognized a limit on patentable subject matter. As the Supreme Court recounted in Graham v. John Deere, the English concern about limiting the allowable scope of patents arose from an aversion to the odious Crown practice of granting patents on particular types of businesses to court favorites.

The question remains as to what processes were considered to be patentable in England at the time of the 1793 Act. Examination of the relevant sources leads to the conclusion that the method Bilski seeks to claim would not have been considered patentable subject matter as a process under the English statute.

There is no suggestion in any of this early consideration of process patents that processes for organizing human activity were or ever had been patentable. Rather, the uniform assumption was that the only processes that were patentable were processes for using or creating manufactures, machines, and compositions of matter.

To be sure, Congress intended the courts to have some latitude in interpreting § 101 to cover emerging technologies, Chakrabarty, 447 U.S. at 316, 100 S.Ct. 2204, and the categorical terms chosen are sufficiently broad to encompass a wide range of new technologies. But there is no evidence that Congress intended to confer upon the courts latitude to extend the categories of patentable subject matter in a significant way. To the contrary, the Supreme Court made clear that “Congress has performed its constitutional role in defining patentable subject matter in § 101; we perform ours in construing the language Congress has employed. In so doing, our obligation is to take statutes as we find them, guided, if ambiguity appears, by the legislative history and statutory purpose.”

It refers to things “made by man,” not to methods of organizing human activity. In this respect, the language is reminiscent of the 1799 use of the phrase “something made by the hands of man” by Chief Justice Lord Kenyon as a limitation on patentable subject matter under the Statute of Monopolies. The idea that an invention must be “made by man” was used to distinguish “a philosophical principle only, neither organized or capable of being organized” from a patentable manufacture.

In short, the history of § 101 fully supports the majority's holding that Bilski's claim does not recite patentable subject matter. Our decision does not reflect “legislative” work, but rather careful and respectful adherence to the Congressional purpose.

Talk:In Re Bilski

2010-03-15T06:13:41Z

Maura: /* Maura */

==Courtney==
Patent applicants challenged denial of patent application for method of hedging risk in field of commodities trading based on lack of patent-eligible subject matter. The Patent and Trademark Office, Board of Patent Appeals and Interferences, 2006 WL 5738364, sustained rejection of all claims in application. Applicants appealed.

The examiner ultimately rejected claims 1-11 under 35 U.S.C. § 101, stating: “[r]egarding ... claims 1-11, the invention is not implemented on a specific apparatus and merely manipulates [an] abstract idea and solves a purely mathematical problem without any limitation to a practical application, therefore, the invention is not directed to the technological arts.” See Board Decision, slip op. at 3. The examiner noted that Applicants had admitted their claims are not limited to operation on a computer, and he concluded that they were not limited by any specific apparatus. See id. at 4.

The true issue before us then is whether Applicants are seeking to claim a fundamental principle (such as an abstract idea) or a mental process. And the underlying legal question thus presented is what test or set of criteria governs the determination by the Patent and Trademark Office (“PTO”) or courts as to whether a claim to a process is patentable under § 101 or, conversely, is drawn to unpatentable subject matter because it claims only a fundamental principle.

The question before us then is whether Applicants' claim recites a fundamental principle and, if so, whether it would pre-empt substantially all uses of that fundamental principle if allowed. Unfortunately, this inquiry is hardly straightforward. How does one determine whether a given claim would pre-empt all uses of a fundamental principle? Analogizing to the facts of Diehr or Benson is of limited usefulness because the more challenging process claims of the twenty-first century are seldom so clearly limited in scope as the highly specific, plainly corporeal industrial manufacturing process of Diehr; nor are they typically as broadly claimed or purely abstract and mathematical as the algorithm of Benson.

[5] Headnote Citing References[6] Headnote Citing References The Supreme Court, however, has enunciated a definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. See Benson, 409 U.S. at 70, 93 S.Ct. 253 (“Transformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.”); Diehr, 450 U.S. at 192, 101 S.Ct. 1048 (holding that use of mathematical formula in process “transforming or reducing an article to a different state or thing” constitutes patent-eligible subject matter); see also Flook, 437 U.S. at 589 n. 9, 98 S.Ct. 2522 (“An argument can be made [that the Supreme] Court has only recognized a process as within the statutory definition when it either was tied to a particular apparatus or operated to change materials to a ‘different state or thing’ ”); Cochrane v. Deener, 94 U.S. 780, 788, 24 L.Ed. 139 (1876) (“A process is ... an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.”).FN7 A claimed process involving a fundamental principle that uses a particular machine or apparatus would not pre-empt uses of the principle that do not also use the specified machine or apparatus in the manner claimed. And a claimed process that transforms a particular article to a specified different state or thing by applying a fundamental principle would not pre-empt the use of the principle to transform any other article, to transform the same article but in a manner not covered by the claim, or to do anything other than transform the specified article.

CONCLUSION Because the applicable test to determine whether a claim is drawn to a patent-eligible process under § 101 is the machine-or-transformation test set forth by the Supreme Court and clarified herein, and Applicants' claim here plainly fails that test, the decision of the Board is

AFFIRMED.

== Maura ==

Importantly, however, the claim is not limited to transactions involving actual commodities, and the application discloses that the recited transactions may simply involve options, i.e., rights to purchase or sell the commodity at a particular price within a particular timeframe. See J.A. at 86-87.

The examiner ultimately rejected claims 1-11 under 35 U.S.C. § 101, stating: “[r]egarding ... claims 1-11, the invention is not implemented on a specific apparatus and merely manipulates [an] abstract idea and solves a purely mathematical problem without any limitation to a practical application, therefore, the invention is not directed to the technological arts.”

Further, the Board held that the requirement of a specific apparatus was also erroneous because a claim that does not recite a specific apparatus may still be directed to patent-eligible subject matter “if there is a transformation of physical subject matter from one state to another.”

But the Board concluded that Applicants' claims do not involve any patent-eligible transformation, holding that transformation of “non-physical financial risks and legal liabilities of the commodity provider, the consumer, and the market participants” is not patent-eligible subject matter.

Finally, the Board held that Applicants' process as claimed did not produce a “useful, concrete and tangible result,” and for this reason as well was not drawn to patent-eligible subject matter. Id. at 49-50.

Thus, the issue before us involves what the term “process” in § 101 means, and how to determine whether a given claim-and Applicants' claim 1 in particular-is a “new and useful process.” FN3

In 1952, at the time Congress amended § 101 to include “process,” FN4 the ordinary meaning of *952 the term was: “[a] procedure ... [a] series of actions, motions, or operations definitely conducing to an end, whether voluntary or involuntary.” Webster's New International Dictionary of the English Language 1972 (2d ed.1952). There can be no dispute that Applicants' claim would meet this definition of “process.” But the Supreme Court has held that the meaning of “process” as used in § 101 is narrower than its ordinary meaning. See Flook, 437 U.S. at 588-89, 98 S.Ct. 2522 (“The holding [in Benson ] forecloses a purely literal reading of § 101.”). Specifically, the Court has held that a claim is not a patent-eligible “process” if it claims “laws of nature, natural phenomena, [or] abstract ideas.”

The true issue before us then is whether Applicants are seeking to claim a fundamental principle (such as an abstract idea) or a mental process. And the underlying legal question thus presented is what test or set of criteria governs the determination by the Patent and Trademark Office (“PTO”) or courts as to whether a claim to a process is patentable under § 101 or, conversely, is drawn to unpatentable subject matter because it claims only a fundamental principle.

The Court declared that while a claim drawn to a fundamental principle is unpatentable, “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”

The question before us then is whether Applicants' claim recites a fundamental principle and, if so, whether it would pre-empt substantially all uses of that fundamental principle if allowed. Unfortunately, this inquiry is hardly straightforward. How does one determine whether a given claim would pre-empt all uses of a fundamental principle?

The Supreme Court, however, has enunciated a definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.

At present, however, and certainly for the present case, we see no need for such a departure and reaffirm that the machine-or-transformation test, properly applied, is the governing test for determining patent eligibility of a process under § 101.FN12

Pre-emption of all uses of a fundamental principle in all fields and pre-emption of all uses of the principle in only one field both indicate that the claim is not limited to a particular application of the principle. See Diehr, 450 U.S. at 193 n. 14, 101 S.Ct. 1048 (“A mathematical formula in the abstract is nonstatutory subject matter regardless of whether the patent is intended to cover all uses of the formula or only limited uses.”) (emphasis added). In contrast, a claim that is tied to a particular machine or brings about a particular transformation of a particular article does not pre-empt all uses of a fundamental principle in any field but rather is limited to a particular use, a specific application. Therefore, it is not drawn to the principle in the abstract.

The first of these is known as the Freeman-Walter-Abele test after the three decisions*959 of our predecessor court that formulated and then refined the test: In re Freeman, 573 F.2d 1237 (CCPA 1978); In re Walter, 618 F.2d 758 (CCPA 1980); and In re Abele, 684 F.2d 902 (CCPA 1982). This test, in its final form, had two steps: (1) determining whether the claim recites an “algorithm” within the meaning of Benson, then (2) determining whether that algorithm is “applied in any manner to physical elements or process steps.” Abele, 684 F.2d at 905-07.

To be sure, a process tied to a particular machine, or transforming or reducing a particular article into a different state or thing, will generally produce a “concrete” and “tangible” result as those terms were used in our prior decisions. But while looking for “a useful, concrete and tangible result” may in many instances provide useful indications of whether a claim is drawn to a fundamental principle or a practical application of such a principle, that inquiry is insufficient to determine whether a claim is patent-eligible under § 101. And it was certainly never intended to supplant the Supreme Court's test. Therefore, we also conclude that the “useful, concrete and tangible result” inquiry*960 is inadequate and reaffirm that the machine-or-transformation test outlined by the Supreme Court is the proper test to apply.

Thus, the proper inquiry under § 101 is not whether the process claim recites sufficient “physical steps,” but rather whether the claim meets the machine-or-transformation test.FN25 As a result, even a claim that recites “physical steps” but neither recites a particular machine or apparatus, nor transforms any article into a different state or thing, is not drawn to patent-eligible subject matter. Conversely, a claim that purportedly lacks any “physical steps” but is still tied to a machine or achieves an eligible transformation passes muster under § 101.

Because the applicable test to determine whether a claim is drawn to a patent-eligible process under § 101 is the machine-or-transformation test set forth by the Supreme Court and clarified herein, and Applicants' claim here plainly fails that test, the decision of the Board is
AFFIRMED.

Talk:In Re Bilski

2010-03-15T06:13:29Z

Maura: /* Maura */ new section

Talk:Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)

2010-03-02T20:58:14Z

Maura: /* Maura */

== Goodwine ==

The facts of this case do not matter too much. This case contains a good discussion of the legal basis for and economic rationale for the US patent system.

Students in the course should add sections from the case that talk about the relevant point of interest. Of course it depends heavily on the case, but generally these quotes should be between about a paragraph and 3 pages in length.

== Maura ==

(d) The Patent and Copyright Clauses of the Federal Constitution do not by their own force, or by negative implication, deprive the States of the power to adopt rules to promote intellectual creation within their own jurisdictions where Congress has left the field free of federal regulation. Goldstein v. California, 412 U. S. 546. Even as to design and utilitarian conceptions within the subject matter of the patent laws, the States may place limited regulations on the exploitation of unpatented ideas to prevent consumer confusion as to source or the tortious appropriation of trade secrets. Both the law of unfair competition and state trade secret law have coexisted harmoniously with federal patent protection
Page 489 U. S. 143
for almost 200 years, and Congress has demonstrated its full awareness of the operation of state law in these areas without any indication of disapproval. Silkwood v. Kerr-McGee Corp., 464 U. S. 238.

The Patent Clause itself reflects a balance between the need to encourage innovation and the avoidance of monopolies which stifle competition without any concomitant advance in the "Progress of Science and useful Arts." As we have noted in the past, the Clause contains both a grant of power and certain limitations upon the exercise of that power. Congress may not create patent monopolies of unlimited duration, nor may it
"authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
Graham v. John Deere Co. of Kansas City, 383 U. S. 1, 383 U. S. 6 (1966).
From their inception, the federal patent laws have embodied a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself, and the very lifeblood of a competitive economy. Soon after the adoption of the Constitution, the First Congress enacted the Patent Act of 1790, which allowed the grant of a limited monopoly of 14 years to any applicant that
"hath . . . invented or discovered
Page 489 U. S. 147
any useful art, manufacture, . . . or device, or any improvement therein not before known or used."
1 Stat. 109, 110. In addition to novelty, the 1790 Act required that the invention be "sufficiently useful and important" to merit the 14-year right of exclusion. Ibid. Section 2 of the Act required that the patentee deposit with the Secretary of State a specification and, if possible, a model of the new invention,
"which specification shall be so particular, and said models so exact, as not only to distinguish the invention or discovery from other things before known and used, but also to enable a workman or other person skilled in the art or manufacture . . . to make, construct, or use the same, to the end that the public may have the full benefit thereof, after the expiration of the patent term."
Ibid.

Id. at 322. Thus, from the outset, federal patent law has been about the difficult business
"of drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."
13 Writings of Thomas Jefferson, supra, at 335.
Today's patent statute is remarkably similar to the law as known to Jefferson in 1793. Protection is offered to
"[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."
5 U.S.C. § 101. Since 1842, Congress has also made protection available for "any new, original and ornamental design for an article of manufacture." 35 U.S.C. § 171. To qualify for protection, a design must present an aesthetically pleasing appearance that is not dictated by function alone, and must satisfy the other criteria of patentability. The novelty requirement of patentability is presently expressed in 35 U.S.C. §§ 102(a) and (b), which provide:
"A person shall be entitled to a patent unless -- "
"(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or"
"(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the date of application for patent in the United States. . . ."
Sections 102(a) and (b) operate in tandem to exclude from consideration for patent protection knowledge that is already available to the public. They express a congressional determination that the creation of a monopoly in such information would not only serve no socially useful purpose, but would in fact injure the public by removing existing knowledge from public use. From the Patent Act of 1790 to the present day,
Page 489 U. S. 149
the public sale of an unpatented article has acted as a complete bar to federal protection of the idea embodied in the article thus placed in public commerce.

In addition to the requirements of novelty and utility, the federal patent law has long required that an innovation not be
Page 489 U. S. 150
anticipated by the prior art in the field. Even if a particular combination of elements is "novel" in the literal sense of the term, it will not qualify for federal patent protection if its contours are so traced by the existing technology in the field that the "improvement is the work of the skillful mechanic, not that of the inventor." @ 52 U. S. 267 (1851). In 1952, Congress codified this judicially developed requirement in 35 U.S.C. § 103, which refuses protection to new developments where
"the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person of ordinary skill in the art to which said subject matter pertains."
The nonobviousness requirement extends the field of unpatentable material beyond that which is known to the public under § 102, to include that which could readily be deduced from publicly available material by a person of ordinary skill in the pertinent field of endeavor. See Graham, 383 U.S. at 383 U. S. 15. Taken together, the novelty and nonobviousness requirements express a congressional determination that the purposes behind the Patent Clause are best served by free competition and exploitation of that which is either already available to the public, or that which may be readily discerned from publicly available material. See Aronson v. Quick Point Pencil Co., 440 U. S. 257, 440 U. S. 262 (1979) ("[T]he stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the use of the public").
The applicant whose invention satisfies the requirements of novelty, nonobviousness, and utility, and who is willing to reveal to the public the substance of his discovery and "the best mode . . . of carrying out his invention," 35 U.S.C. § 112, is granted "the right to exclude others from making, using, or selling the invention throughout the United States," for a period of 17 years. 35 U.S.C. § 154. The federal patent system thus embodies a carefully crafted bargain for encouraging
Page 489 U. S. 151
the creation and disclosure of new, useful, and nonobvious advances in technology and design in return for the exclusive right to practice the invention for a period of years.
"[The inventor] may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent benefit to the community, the patent is granted. An exclusive enjoyment is guaranteed him for seventeen years, but, upon expiration of that period, the knowledge of the invention inures to the people, who are thus enabled without restriction to practice it and profit by its use."
United States v. Dubilier Condenser Corp., 289 U. S. 178, 289 U. S. 186-187 (1933).
The attractiveness of such a bargain, and its effectiveness in inducing creative effort and disclosure of the results of that effort, depend almost entirely on a backdrop of free competition in the exploitation of unpatented designs and innovations. The novelty and nonobviousness requirements of patentability embody a congressional understanding, implicit in the Patent Clause itself, that free exploitation of ideas will be the rule, to which the protection of a federal patent is the exception. Moreover, the ultimate goal of the patent system is to bring new designs and technologies into the public domain through disclosure. State law protection for techniques and designs whose disclosure has already been induced by market rewards may conflict with the very purpose of the patent laws by decreasing the range of ideas available as the building blocks of further innovation. The offer of federal protection from competitive exploitation of intellectual property would be rendered meaningless in a world where substantially similar state law protections were readily available. To a limited extent, the federal patent laws must determine not only what is protected, but also what is free for all to use. Cf. Arkansas Electric Cooperative Corp. v. Arkansas Public Service Comm'n, 461 U. S. 375, 461 U. S. 384 (1983) ("[A] federal decision to forgo regulation in a given area may imply an authoritative federal determination that the area is best left unregulated,
Page 489 U. S. 152
and, in that event, would have as much preemptive force as a decision to regulate") (emphasis in original).

The prospect of all 50 States' establishing similar protections for preferred industries without the rigorous requirements of patentability prescribed by Congress could pose a substantial threat to the patent system's ability to accomplish its mission of promoting progress in the useful arts.
Finally, allowing the States to create patent-like rights in various products in public circulation would lead to administrative problems of no small dimension. The federal patent scheme provides a basis for the public to ascertain the status of the intellectual property embodied in any article in general circulation.

One of the fundamental purposes behind the Patent and Copyright Clauses of the Constitution was to promote national uniformity in the realm of intellectual property. See The Federalist No. 43, p. 309 (B. Wright ed.1961). Since the Patent Act of 1800, Congress has lodged exclusive jurisdiction of actions "arising under" the patent laws in the federal courts, thus allowing for the development of a uniform body of law in resolving the constant tension between private right and public access. See 28 U.S.C. § 1338; see also Chisum, The Allocation of Jurisdiction Between State and Federal Courts in Patent Litigation, 46 Wash.L.Rev. 633, 636 (1971). Recently, Congress conferred exclusive jurisdiction of all patent appeals on the Court of Appeals for the Federal Circuit, in order to "provide nationwide uniformity in patent law." H.R.Rep. No. 97-312, p. 20 (1981).

"It is difficult to conceive of a more effective method of creating substantial property rights in an intellectual creation than to eliminate the most efficient method for its exploitation."

For almost 100 years, it has been well established that, in the case of an expired patent, the federal patent laws do create a federal right to "copy and to use."

== Kevin ==

The federal patent system thus embodies a carefully crafted bargain for encouraging the creation and disclosure of new, useful, and nonobvious advances in technology and design in return for the exclusive right to practice the invention for a period of years. "[The inventor] may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent benefit to the community, the patent is granted. An exclusive enjoyment is guaranteed him for seventeen years, but, upon expiration of that period, the knowledge of the invention inures to the people, who are thus enabled without restriction to practice it and profit by its use."
The attractiveness of such a bargain, and its effectiveness in inducing creative effort and disclosure of the results of that effort, depend almost entirely on a backdrop of free competition in the exploitation of unpatented designs and innovations. The novelty and nonobviousness requirements of patentability embody a congressional understanding, implicit in the Patent Clause itself, that free exploitation of ideas will be the rule, to which the protection of a federal patent is the exception. Moreover, the ultimate goal of the patent system is to bring new designs and technologies into the public domain through disclosure. State law protection for techniques and designs whose disclosure has already been induced by market rewards may conflict with the very purpose of the patent laws by decreasing the range of ideas available as the building blocks of further innovation. The offer of federal protection from competitive exploitation of intellectual property would be rendered meaningless in a world where substantially similar state law protections were readily available.
To a limited extent, the federal patent laws must determine not only what is protected, but also what is free for all to use. Cf. Arkansas Electric Cooperative Corp. v. Arkansas Public Service Comm'n, 461 U. S. 375, 461 U. S. 384 (1983) ("[A] federal decision to forgo regulation in a given area may imply an authoritative federal determination that the area is best left unregulated, and, in that event, would have as much preemptive force as a decision to regulate") (emphasis in original). Thus our past decisions have made clear that state regulation of intellectual property must yield to the extent that it clashes with the balance struck by Congress in our patent laws. The tension between the desire to freely exploit the full potential of our inventive resources and the need to create an incentive to deploy those resources is constant. Where it is clear how the patent laws strike that balance in a particular circumstance, that is not a judgment the States may second-guess.
The prospect of all 50 States' establishing similar protections for preferred industries without the rigorous requirements of patentability prescribed by Congress could pose a substantial threat to the patent system's ability to accomplish its mission of promoting progress in the useful arts.
Finally, allowing the States to create patent-like rights in various products in public circulation would lead to administrative problems of no small dimension. The federal patent scheme provides a basis for the public to ascertain the status of the intellectual property embodied in any article in general circulation.
Through the application process, detailed information concerning the claims of the patent holder is compiled in a central location. See 35 U.S.C. §§ 111-114. The availability of damages in an infringement action is made contingent upon affixing a notice of patent to the protected article. 35 U.S.C. § 287. The notice requirement is designed "for the information of the public," Wine Railway Appliance Co. v. Enterprise Railway Equipment Co., 297 U. S. 387, 297 U. S. 397 (1936), and provides a ready means of discerning the status of the intellectual property embodied in an article of manufacture or design. The public may rely upon the lack of notice in exploiting shapes and designs accessible to all.

== Courtney ==

The Court stated in Mackay Co. v. Radio Corp., 306 U.S. 86, 94 , that "[w]hile a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be." That statement followed the longstanding rule that "[a]n idea of itself is not patentable." Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507. "A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right." Le Roy v. Tatham, 14 How. 156, 175. Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. As we stated in Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 , "He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end." We dealt there with a "product" claim, while the [409 U.S. 63, 68] present case deals with a "process" claim. But we think the same principle applies.

Transformation and reduction of an article "to a different state or thing" is the clue to the patentability of a process claim that does not include particular machines. So it is that a patent in the process of "manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure" was sustained in Tilghman v. Proctor, 102 U.S. 707, 721 . The Court said, "The chemical principle or scientific fact upon which it is founded is, that the elements of neutral fat require to be severally united with an atomic equivalent of water in order to separate from each other and become free. This chemical fact was not discovered by Tilghman. He only claims to have invented a particular mode of bringing about the desired chemical union between the fatty elements and water." Id., at 729.

It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a "different state or thing." We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. It is said that we have before us a program for a digital computer but extend our holding to programs for analog computers. We have, however, made clear from the start that we deal with a program only for digital computers. It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology. Such is not our purpose. What we come down to in a nutshell is the following.

It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which [409 U.S. 63, 72] means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.

Talk:Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)

2010-03-02T20:57:38Z

Maura: /* Maura */

==Courtney==

The district court held that the method and apparatus claims of the Simson patent are directed to a mathematical algorithm, and thus do not define statutory subject matter.

A mathematical formula may describe a law of nature, a scientific truth, or an abstract idea. As courts have recognized, mathematics may also be used to describe steps of a statutory method or elements of a statutory apparatus. The exceptions to patentable subject matter derive from a lengthy jurisprudence, but their meaning was probed anew with the advent of computer-related inventions.

It is of course true that a modern digital computer manipulates data, usually in binary form, by performing mathematical operations, such as addition, subtraction, multiplication, division, or bit shifting, on the data. But this is only how the computer does what it does. Of importance is the significance of the data and their manipulation in the real world, i.e., what the computer is doing. [Emphases in original]

Thus computers came to be generally recognized as devices capable of performing or implementing process steps, or serving as components of an apparatus, without negating patentability of the process or the apparatus.

The law crystallized about the principle that claims directed solely to an abstract mathematical formula or equation, including the mathematical expression of scientific truth or a law of nature, whether directly or indirectly stated, are nonstatutory under section 101; whereas claims to a specific process or apparatus that is implemented in accordance with a mathematical algorithm will generally satisfy section 101.

In applying this principle to an invention whose process steps or apparatus elements are described at least in part in terms of mathematical procedures, the mathematical procedures are considered in the context of the claimed invention as a whole.

This analysis has been designated the Freeman-Walter-Abele test for statutory subject matter. It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps. Such claims are nonstatutory. However, when the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, the requirements of section 101 are met. The court explained in Abele, 684 F.2d at 907, 214 USPQ at 686:

Although mathematical calculations are involved in carrying out the claimed process, Arrhythmia Research argues that the claims are directed to a method of detection of a certain heart condition by a novel method of analyzing a portion of the electrocardiographically measured heart cycle. This is accomplished by procedures conducted by means of electronic equipment programmed to perform mathematical computation.

The '459 Patent The '459 patent discloses an apparatus and a method for analyzing electrocardiograph signals to detect heart attack risks. The apparatus is a machine and is covered by the Iwahashi rule. The method converts an analog signal to a digital signal which passes, in reverse time order, through the mathematical equivalent of a filter. The filtered signal's amplitude is then measured and compared with a predetermined value.

The '459 invention manipulates electrocardiogram readings to render a useful result. While many steps in the '459 process involve the mathematical manipulation of data, the claims do not describe a law of nature or a natural phenomenon. Furthermore, the claims do not disclose mere abstract ideas, but a practical and potentially life-saving process. Regardless of whether performed by a computer, these steps comprise a “process” within the meaning of section 101.

This conclusion is erroneous for several reasons. First, even if mathematical algorithms are barred from patentability,[7] the '459 patent as a whole does not present a mathematical algorithm. The '459 patent is a method for detecting the risk of a heart attack, not the presentation and proposed solution of a mathematical problem. In Diehr, the Supreme Court viewed the claims as “an industrial process for molding of rubber products,” not a mathematical algorithm. 450 U.S. at 192-93, 101 S.Ct. at 1060. The '459 patent's claims as a whole disclose a patentable process.

Second, the '459 patent does not claim a natural law, abstract idea, or natural phenomenon. Diehr limited the Benson rule to these three categories, none of which encompass the '459 patent.

The claims of the '459 patent define an apparatus and a process. Both are patentable subject matter within the language of section 101. To me, the Supreme Court's most recent message is clear: when all else fails (and the algorithm rule clearly has), consult the statute. On this basis, I, too, would reverse and remand.

== Maura ==

The Patent and Trademark Office had granted the patent without questioning that its claims were directed to statutory subject matter under § 101.
35 U.S.C. § 101
Whether a claim is directed to statutory subject matter is a question of law. Although determination of this question may require findings of underlying facts specific to the particular subject matter and its mode of claiming, in this case there were no disputed facts material to the issue. Thus we give plenary review to the question, with appropriate recognition of the burdens on the challenger of a duly issued United States patent. See 35 U.S.C. § 282 (duly issued patent is presumed valid); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1139, 227 USPQ 543, 548, (Fed.Cir.1985) (statutory presumption of validity is based in part on recognition of the expertise of patent examiners).

The law crystallized about the principle that claims directed solely to an abstract mathematical formula or equation, including the mathematical expression of scientific truth or a law of nature, whether directly or indirectly stated, are nonstatutory under section 101; whereas claims to a specific process or apparatus that is implemented in accordance with a mathematical algorithm will generally satisfy section 101.

In applying this principle to an invention whose process steps or apparatus elements are described at least in part in terms of mathematical procedures, the mathematical procedures are considered in the context of the claimed invention as a whole.

This analysis has been designated the Freeman-Walter- Abele test for statutory subject matter. It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps. Such claims are nonstatutory. However, when the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, the requirements of section 101 are met.

The Simson claims are analogous to those upheld in Diehr, wherein the Court remarked that the applicants "do not seek to patent a mathematical formula.... they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process". 450 U.S. at 187, 101 S.Ct. at 1057, 209 USPQ at 8. Simson's claimed method is similarly limited. The process claims comprise statutory subject matter.

The judgment of invalidity on the ground that the claimed method and apparatus do not define statutory subject matter is reversed. The cause is remanded for resolution of remaining issues.

RADER, Circuit Judge, concurring.

Section 101 states:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

According to this language, "any" invention or discovery within the four broad categories of "process, machine, manufacture, or composition of matter" is eligible for patent protection. "Any" is an expansive modifier which broadens the sweep of the categories. See Diamond v. Chakrabarty, 447 U.S. 303, 308-09, 100 S.Ct. 2204, 2207, 65 L.Ed.2d 144 (1980). The language of section 101 conveys no implication that the Act extends patent protection to some subcategories of machines or processes and not to others.

By mixing the terms "formula" and "algorithm," 437 U.S. at 585-86, 98 S.Ct. at 2523, however, Flook further confused the meaning of "mathematical algorithm." As used by Benson, that term meant "a procedure for solving a given type of mathematical problem." 409 U.S. at 65, 93 S.Ct. at 254. Thus, an "algorithm" required both a mathematical problem and a solution procedure. A "formula" does not present or solve a mathematical problem, but merely expresses a relationship in mathematical terms. A "formula," even under Benson's definition, is not an algorithm.

The district court granted summary judgment in favor of Corazonix because "the claims of the '459 patent are drawn to a nonstatutory mathematical algorithm and, as such, are unpatentable pursuant to the provisions of 35 U.S.C. § 101." This erroneous conclusion illustrates the confusion caused by Benson and its progeny.

When determining whether claims disclosing computer art or any other art describe patentable subject matter, this court must follow the terms of the statute. The Supreme Court has focused this court's inquiry on the statute, not on special rules for computer art or mathematical art or any other art.

The claims of the '459 patent define an apparatus and a process. Both are patentable subject matter within the language of section 101. To me, the Supreme Court's most recent message is clear: when all else fails (and the algorithm rule clearly has), consult the statute. On this basis, I, too, would reverse and remand.

Talk:Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)

2010-03-02T20:57:26Z

Maura: /* Maura */ new section

Talk:State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)

2010-03-02T20:54:55Z

Maura: /* Maura */ new section

==Courtney==

The “Mathematical Algorithm” Exception

The Supreme Court has identified three categories of subject matter that are unpatentable, namely “laws of nature, natural phenomena, and abstract ideas.” Diehr, 450 U.S. at 185, 101 S.Ct. 1048. Of particular relevance to this case, the Court has held that mathematical algorithms are not patentable subject matter to the extent that they are merely abstract ideas. See Diehr, 450 U.S. 175, 101 S.Ct. 1048, passim; Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972). In Diehr, the Court explained that certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application, i.e., “a useful, concrete and tangible result.” Alappat, 33 F.3d at 1544, 31 USPQ2d at 1557.[4]

Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not “useful.” From a practical standpoint, this means that to be patentable an algorithm must be applied in a “useful” way. In Alappat, we held that data, transformed by a machine through a series of mathematical calculations to produce a smooth waveform display on a rasterizer monitor, constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it produced “a useful, concrete and tangible result”-the smooth waveform.

Similarly, in Arrhythmia Research Technology Inc. v. Corazonix Corp., 958 F.2d 1053, 22 USPQ2d 1033 (Fed.Cir.1992), we held that the transformation of electrocardiograph signals from a patient's heartbeat by a machine through a series of mathematical calculations constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it corresponded to a useful, concrete or tangible thing-the condition of a patient's heart.

Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces “a useful, concrete and tangible result”-a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.

If Signature's invention were patentable, any financial institution desirous of implementing a multi-tiered funding complex modelled (sic) on a Hub and Spoke configuration would be required to seek Signature's permission before embarking on such a project. This is so because the '056 Patent is claimed [sic] sufficiently broadly to foreclose virtually any computer-implemented accounting method necessary to manage this type of financial structure.

== Maura ==

Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces "a useful, concrete and tangible result"--a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.

The district court erred by applying the Freeman-Walter-Abele test to determine whether the claimed subject matter was an unpatentable abstract idea. The Freeman-Walter-Abele test was designed by the Court of Customs and Patent Appeals, and subsequently adopted by this court, to extract and identify unpatentable mathematical algorithms in the aftermath of Benson and Flook. See In re Freeman, 573 F.2d 1237, 197 USPQ 464 (CCPA 1978) as modified by In re Walter, 618 F.2d 758, 205 USPQ 397 (CCPA 1980). The test has been thus articulated:
First, the claim is analyzed to determine whether a mathematical algorithm is directly or indirectly recited. Next, if a mathematical algorithm is found, the claim as a whole is further analyzed to determine whether the algorithm is "applied in any manner to physical elements or process steps," and, if it is, it "passes muster under § 101."

The test determines the presence of, for example, an algorithm. Under Benson, this may have been a sufficient indicium of nonstatutory subject matter. However, after Diehr and Alappat, the mere fact that a claimed invention involves inputting numbers, calculating numbers, outputting numbers, and storing numbers, in and of itself, would not render it nonstatutory subject matter, unless, of course, its operation does not produce a "useful, concrete and tangible result." Alappat, 33 F.3d at 1544, 31 USPQ2d at 1557.7 After all, as we have repeatedly stated, every step-by-step process, be it electronic or chemical or mechanical, involves an algorithm in the broad sense of the term. Since § 101 expressly includes processes as a category of inventions which may be patented and § 100(b) further defines the word "process" as meaning "process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material," it follows that it is no ground for holding a claim is directed to nonstatutory subject matter to say it includes or is directed to an algorithm. This is why the proscription against patenting has been limited to mathematical algorithms....

If Signature's invention were patentable, any financial institution desirous of implementing a multi-tiered funding complex modelled (sic) on a Hub and Spoke configuration would be required to seek Signature's permission before embarking on such a project. This is so because the '056 Patent is claimed [sic] sufficiently broadly to foreclose virtually any computer-implemented accounting method necessary to manage this type of financial structure.

MPEP § 706.03(a) (1994). This acknowledgment is buttressed by the U.S. Patent and Trademark 1996 Examination Guidelines for Computer Related Inventions which now read:
Office personnel have had difficulty in properly treating claims directed to methods of doing business. Claims should not be categorized as methods of doing business. Instead such claims should be treated like any other process claims.

FOOTNOTE 10
As Judge Newman has previously stated,
[The business method exception] is ... an unwarranted encumbrance to the definition of statutory subject matter in section 101, that [should] be discarded as error-prone, redundant, and obsolete. It merits retirement from the glossary of section 101.... All of the "doing business" cases could have been decided using the clearer concepts of Title 35. Patentability does not turn on whether the claimed method does "business" instead of something else, but on whether the method, viewed as a whole, meets the requirements of patentability as set forth in Sections 102, 103, and 112 of the Patent Act.
In re Schrader, 22 F.3d 290, 298, 30 USPQ2d 1455, 1462 (Fed.Cir.1994) (Newman, J., dissenting).

Talk:Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)

2010-02-26T14:42:04Z

Maura: /* Maura */

== Maura ==

(c) The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. The Court is concerned that the doctrine, as it has come to be broadly applied since Graver Tank, conflicts with the Court's numerous holdings that a patent may not be enlarged beyond the scope of its claims. The way to reconcile the two lines of authority is to apply the doctrine to each of the individual elements of a claim, rather than to the accused product or process as a whole. Doing so will preserve some meaning for each of a claim's elements, all of which are deemed material to defining the invention's scope. So long as the doctrine does not encroach beyond these limits, or beyond related limits discussed in the Court's opinion, infra, at 1049-1051, 1053-1054, n. 8, and 1054, it will not vitiate the central functions of patent claims to define the invention and to notify the public of the patent's scope. Pp. 1048-1049.

Nearly 50 years ago, this Court in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950), set out the modern contours of what is known in patent law as the “doctrine of equivalents.” Under this doctrine, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is “equivalence” between the elements of the accused product or process and the claimed elements of the patented invention.

“What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor 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.” Id., at 609, 70 S.Ct., at 856-857.

Petitioner's primary argument in this Court is that the doctrine of equivalents, as set out in Graver Tank in 1950, did not survive the 1952 revision of the Patent Act, 35 U.S.C. § 100 et seq., because it is inconsistent with several aspects of that Act. In particular, petitioner argues: (1) The doctrine of equivalents is inconsistent with the statutory requirement that a patentee specifically “claim” the invention covered by a patent, § 112; (2) the doctrine circumvents the patent reissue process-designed to correct mistakes in drafting or the like-and avoids the express limitations on that process, §§ 251-252; (3) the doctrine is inconsistent with the primacy of the Patent and Trademark Office (PTO) in setting the scope of a patent through the patent prosecution process; and (4) the doctrine was implicitly rejected as a general matter by Congress' specific and limited inclusion of the doctrine in one section regarding “means” claiming, § 112, ¶ 6.

Absent something more compelling than the dubious negative inference offered by petitioner, the lengthy history of the doctrine of equivalents strongly supports adherence to our refusal in Graver Tank to find that the Patent Act conflicts with that doctrine. Congress can legislate the doctrine of equivalents out of existence any time it chooses. The various policy arguments now made by both sides are thus best addressed to Congress, not this Court.

B
We do, however, share the concern of the dissenters below that the doctrine of equivalents, as it has come to be applied since Graver Tank, has taken on a life of its own, unbounded by the patent claims. There can be no denying that the doctrine of equivalents, when applied broadly, conflicts with the definitional and public- notice functions of the statutory claiming requirement.

Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety. So long as the doctrine of equivalents does not encroach beyond the limits just described, or beyond related limits to be discussed infra, this page and 1050-1051, 1053, n. 8, and 1054, we are confident that the doctrine will not vitiate the central functions of the patent claims themselves.

In our view, holding that certain reasons for a claim amendment may avoid the application of prosecution history estoppel is not tantamount to holding that the absence of a reason for an amendment may similarly avoid such an estoppel. Mindful that claims do indeed serve both a definitional and a notice function, we think the better rule is to place the burden on the patent holder to establish the reason for an amendment required during patent prosecution. The court then would decide whether that reason is sufficient to overcome prosecution history estoppel as a bar to application of the doctrine of equivalents to the element added by that amendment. Where no explanation is established, however, the court should presume that the patent applicant had a substantial reason related to patentability for including the limiting element added by amendment. In those circumstances, prosecution history estoppel would bar the application of the doctrine of equivalents as to that element. The presumption we have described, one subject to rebuttal if an appropriate reason for a required amendment is established, gives proper deference to the role of claims in defining an invention and providing public notice, and to the primacy of the PTO in ensuring that the claims allowed cover only subject matter that is properly patentable in a proffered patent application. Applied in this fashion, prosecution history estoppel places reasonable limits on the doctrine of equivalents, and further insulates the doctrine from any feared conflict with the Patent Act.

Winans v. Denmead, 15 How. 330, 343, 14 L.Ed. 717 (1854), we described the doctrine of equivalents as growing out of a legally implied term in each patent claim that “the claim extends to the thing patented, however its form or proportions may be varied.” Under that view, application of the doctrine of equivalents involves determining whether a particular accused product or process infringes upon the patent claim, where the claim takes the form-half express, half implied-of “X and its equivalents.”

“[T]he substantial equivalent of a thing, in the sense of the patent law, is the same as the thing itself; so 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.”
If the essential predicate of the doctrine of equivalents is the notion of identity between a patented invention and its equivalent, there is no basis for treating an infringing equivalent any differently from a device that infringes the express terms of the patent. Application of the doctrine of equivalents, therefore, is akin to determining literal infringement, and neither requires proof of intent.

The Federal Circuit explained this factor by suggesting that an alleged infringer's behavior, be it copying, designing around a patent, or independent experimentation, indirectly reflects the substantiality of the differences between the patented invention and the accused device or process. According to the Federal Circuit, a person aiming to copy or aiming to avoid a patent is imagined to be at least marginally skilled at copying or avoidance, and thus intentional copying raises an inference-rebuttable by proof of independent development-of having only insubstantial differences, and intentionally designing around a patent claim raises an inference of substantial differences. This explanation leaves much to be desired. At a minimum, one wonders how ever to distinguish between the intentional copyist making minor changes to lower the risk of legal action and the incremental innovator designing around the claims, yet seeking to capture as much as is permissible of the patented advance.

The known interchangeability of substitutes for an element of a patent is one of the express objective factors noted by Graver Tank as bearing upon whether the accused device is substantially the same as the patented invention. Independent experimentation by the alleged infringer would not always reflect upon the objective question whether a person skilled in the art would have known of the interchangeability between two elements, but in many cases it would likely be probative of such knowledge.

See, e.g., Union Paper-Bag Machine Co. v. Murphy, 97 U.S., at 125 (“[I]n determining the question of infringement, the court or jury, as the case may be, ... are to look at the machines or their several devices or elements in the light of what they do, or what office or function they perform, and how they perform it, and to find that one thing is substantially the same as another, if it performs substantially the same function in substantially the same way to obtain the same result”); Winans v. Denmead, 15 How., at 344 (“[It] is a question for the jury” whether the accused device was “the same in kind, and effected by the employment of [the patentee's] mode of operation in substance”).

An analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute element plays a role substantially different from the claimed element.

==Courtney==

(c) The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. The Court is concerned that the doctrine, as it has come to be broadly applied since Graver Tank, conflicts with the Court's numerous holdings that a patent may not be enlarged beyond the scope of its claims. The way to reconcile the two lines of authority is to apply the doctrine to each of the individual elements of a claim, rather than to the accused product or process as a whole. Doing so will preserve some meaning for each of a claim's elements, all of which are deemed material to defining the invention's scope. So long as the doctrine does not encroach beyond these limits, or beyond related limits discussed in the Court's opinion, infra, at 1049-1051, 1053-1054, n. 8, and 1054, it will not vitiate the central functions of patent claims to define the invention and to notify the public of the patent's scope. Pp. 1048-1049.

(f) The Court also rejects petitioner's proposal that in order to minimize conflict with the notice function of patent claims, the doctrine of equivalents should be limited to equivalents that are disclosed within the patent itself. Insofar as the question under the doctrine is whether an accused element is equivalent to a claimed element, the proper time for evaluating equivalency-and knowledge of interchangeability between elements-is at the time of infringement, not at the time the patent was issued. Pp. 1052-1053.

(h) In the Court's view, the particular linguistic framework used to determine “equivalence,” whether the so-called “triple identity” test or the “insubstantial differences” test, is less important than whether the test is probative of the essential inquiry: Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention? Different linguistic frameworks may be more suitable to different cases, depending on their particular facts. The Court leaves it to the Federal Circuit's sound judgment in this area of its special expertise to refine the formulation of the test for equivalence in the orderly course of case-by-case determinations. P. 1054.
The jury found that the '746 patent was not invalid and that Warner-Jenkinson infringed upon the patent under the doctrine of equivalents. The jury also found, however, that Warner-Jenkinson had not intentionally infringed, and therefore awarded only 20% of the damages sought by Hilton Davis. The District Court denied Warner-Jenkinson's post-trial motions, and entered a permanent injunction prohibiting Warner-Jenkinson from practicing ultrafiltration below 500 p.s.i.g. and below 9.01 pH. A fractured en banc Court of Appeals for the Federal Circuit affirmed. 62 F.3d 1512 (1995).

The majority below held that the doctrine of equivalents continues to exist and that its touchstone is whether substantial differences exist between the accused process and the patented process. Id., at 1521-1522. The court also held that the question of equivalence is for the jury to decide and that the jury in this case had substantial evidence from which it could conclude that the Warner-Jenkinson process was not substantially different from the ultrafiltration process disclosed in the '746 patent. Id., at 1525.
In determining equivalents, things equal to the same thing may not be equal to each other and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor 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.” Id., at 609, 70 S.Ct., at 856-857.

Considering those factors, the Court viewed the difference between the chemical element claimed in the patent and the substitute element to be “colorable only,” and concluded that the trial court's judgment of infringement under the doctrine of equivalents was proper. Id., at 612, 70 S.Ct., at 858.

If the essential predicate of the doctrine of equivalents is the notion of identity between a patented invention and its equivalent, there is no basis for treating an infringing equivalent any differently from a device that infringes the express terms of the patent. Application of the doctrine of equivalents, therefore, is akin to determining literal infringement, and neither requires proof of intent.

According to the Federal Circuit, a person aiming to copy or aiming to avoid a patent is imagined to be at least marginally skilled at copying or avoidance, and thus intentional copying raises an inference-rebuttable by proof of independent development-of having only insubstantial differences, and intentionally designing around a patent claim raises an inference of substantial differences. This explanation leaves much to be desired. At a minimum, one wonders how ever to distinguish between the intentional copyist making minor changes to lower the risk of legal action and the incremental innovator designing around the claims, yet seeking to capture as much as is permissible of the patented advance.

Insofar as the question under the doctrine of equivalents is whether an accused element is equivalent to a claimed element, the proper time for evaluating equivalency-and thus knowledge of interchangeability between elements-is at the time of infringement, not at the time the patent was issued. And rejecting the milder version of petitioner's argument necessarily rejects the more severe proposition that equivalents must not only be known, but must also be actually disclosed in the patent in order for such equivalents to infringe upon the patent.

Today we adhere to the doctrine of equivalents. The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. Prosecution history estoppel continues to be available as a defense to infringement, but if the patent holder demonstrates that an amendment required during prosecution had a purpose unrelated to patentability, a court must consider that purpose in order to decide whether an estoppel is precluded. Where the patent holder is unable to establish such a purpose, a court should presume that the purpose behind the required amendment is such that prosecution history estoppel would apply. Because the Court of Appeals for the Federal Circuit did not consider all of the requirements as described by us today, particularly as related to prosecution history estoppel and the preservation of some meaning for each element in a claim, we reverse its judgment and remand the case for further proceedings consistent with this opinion.

== Kevin ==

The Supreme Court, Justice Thomas, held that: (1) doctrine of equivalents is not inconsistent with Patent Act; (2) doctrine of equivalents must be applied to individual elements of patent claim, not to invention as a whole; (3) prosecution history estoppel does not apply whenever patent claim has been amended during application process, regardless of reasons for change; (4) patentee's addition of lower pH limit during application process did necessarily preclude application of doctrine of equivalents as to that element; (5) remand was required to determine whether reason for amending patent claim to add lower pH limit was sufficient to avoid prosecution history estoppel; (6) doctrine of equivalents does not require proof of intent; (7) doctrine of equivalents is not limited to equivalents disclosed within patent itself.

1. The Court adheres to the doctrine of equivalents. Pp. 1046-1049.
(a) In Graver Tank, supra, at 609, 70 S.Ct., at 856-857, the Court, inter alia, described some of the considerations that go into applying the doctrine, such as the patent's context, the prior art, and the particular circumstances of the case, including the purpose for which an ingredient is used in the patent, the qualities it has when combined with the other ingredients, the function it is intended to perform, and 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. Pp. 1046-1047.

(c) The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. The Court is concerned that the doctrine, as it has come to be broadly applied since Graver Tank, conflicts with the Court's numerous holdings that a patent may not be enlarged beyond the scope of its claims. The way to reconcile the two lines of authority is to apply the doctrine to each of the individual elements of a claim, rather than to the accused product or process as a whole. Doing so will preserve some meaning for each of a claim's elements, all of which are deemed material to defining the invention's scope. So long as the doctrine does not encroach beyond these limits, or beyond related limits discussed in the Court's opinion, infra, at 1049-1051, 1053-1054, n. 8, and 1054, it will not vitiate the central functions of patent claims to define the invention and to notify the public of the patent's scope. Pp. 1048-1049.

There are a variety of reasons why the PTO may request a change in claim language, and if the patent holder demonstrates that an amendment had a purpose unrelated to patentability, a court must consider that purpose in order to decide whether an estoppel is precluded. Where the patent holder is unable to establish such a purpose, the court should presume that the purpose behind the required amendment is such that prosecution history estoppel would apply. Here, it is undisputed that the upper limit of 9.0 pH was added to the '746 patent in order to distinguish the Booth patent, but the record before this Court does not reveal the reason for adding the lower 6.0 pH limit. It is therefore impossible to tell whether the latter reason could properly avoid an estoppel. Pp. 1049-1051.

The majority below held that the doctrine of equivalents continues to exist and that its touchstone is whether substantial differences exist between the accused process and the patented process. Id., at 1521-1522. The court also held that the question of equivalence is for the jury to decide and that the jury in this case had substantial evidence from which it could conclude that the Warner-Jenkinson process was not substantially different from the ultrafiltration process disclosed in the '746 patent. Id., at 1525.

It is telling that in each case this Court probed the reasoning behind the Patent Office's insistence upon a change in the claims. In each instance, a change was demanded because the claim as otherwise written was viewed as not describing a patentable invention at all-typically because what it described was encompassed within the prior art. But, as the United States informs us, there are a variety of other reasons why the PTO may request a change in claim language. Brief for United States as Amicus Curiae 22-23 counsel for the PTO also appearing on the brief). And if the PTO has been requesting changes in claim language without the intent to limit equivalents or, indeed, with the expectation that language it required would in many cases allow for a range of equivalents, we should be extremely reluctant to upset the basic assumptions of the PTO without substantial reason for doing so. Our prior cases have consistently applied prosecution history estoppel only where claims have been amended for a limited set of reasons, and we see no substantial cause for requiring a more rigid rule invoking an estoppel regardless of the reasons for a change.[7]

“[T]he substantial equivalent of a thing, in the sense of the patent law, is the same as the thing itself; so 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.”
If the essential predicate of the doctrine of equivalents is the notion of identity between a patented invention and its equivalent, there is no basis for treating an infringing equivalent any differently from a device that infringes the express terms of the patent. Application of the doctrine of equivalents, therefore, is akin to determining literal infringement, and neither requires proof of intent.

Today we adhere to the doctrine of equivalents. The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. Prosecution history estoppel continues to be available as a defense to infringement, but if the patent holder demonstrates that an amendment required during prosecution had a purpose unrelated to patentability, a court must consider that purpose in order to decide whether an estoppel is precluded. Where the patent holder is unable to establish such a purpose, a court should presume that the purpose behind the required amendment is such that prosecution history estoppel would apply. Because the Court of Appeals for the Federal Circuit did not consider all of the requirements as described by us today, particularly as related to prosecution history estoppel and the preservation of some meaning for each element in a claim, we reverse its judgment and remand the case for further proceedings consistent with this opinion.

Talk:Warner-Jenkinson v. Hilton Davis Respondent Brief

2010-02-26T00:39:44Z

Maura: /* Maura */ new section

==Courtney==

Petitioner's deliberate use of the patented process to sell enormous quantities of dyes made by the infringing process continued even after learning of Respondent's patent and being warned of infringement. Petitioner made no attempt to design around Respondent's patent until a permanent injunction was entered, after which it immediately modified its process in an attempt to avoid infringement. See Exhibit A to Brief of Appellee in the court below; C.A. Jt. App. 895-900, 912-13.

Petitioner, by challenging the doctrine of equivalents itself, seeks to destroy one of the most important bulwarks underlying our country's patented technology. To affirm the decision below assures the continuance of this necessary rule of law. To change the law returns our patent system to the dark ages where anyone can “practice a fraud on a patent” simply by making “unimportant and insubstantial changes”-an anathema to this Court's wisdom of Graver Tank.

I. THE DOCTRINE OF EQUIVALENTS WAS NOT ABOLISHED BY AND IS FULLY CONSISTENT WITH THE 1952 PATENT ACT

The principal purpose of the 1952 Patent Act was “the codification of title 35, United States Code, and involves simplification and clarification of language and arrangement.” 1952 U.S.C.C.A.N. at 2397. Notably, the Act and its legislative history make no express change in the then-existing law of the doctrine of equivalents.

II. THE DOCTRINE OF EQUIVALENTS SHOULD BE BROADLY APPLIED AND AVAILABLE TO PATENTEES IN EVERY PATENT INFRINGEMENT ACTION

== Maura ==

The judgment finding Petitioner liable for patent infringement under the doctrine of equivalents should be affirmed. The Federal Circuit, exclusively charged by Congress to unify the patent law, after spirited debate, with benefit of the enlightened wisdom of its full en banc membership, and with the assistance of numerous amici curiae, faithfully restated the principle of the doctrine of equivalents defined in Graver Tank & Manufacturing Co. v. Linde Air Products Co. and its predecessors as wise and pragmatic law, fully consistent with the Patent Act of 1952 and Article I § 8, cl. 8 of the Constitution. Petitioner, by challenging the doctrine of equivalents itself, seeks to destroy one of the most important bulwarks underlying our country's patented technology. To affirm the decision below assures the continuance of this necessary rule of law. To change the law returns our patent system to the dark ages where anyone can “practice a fraud on a patent” simply by making “unimportant and insubstantial changes”-an anathema to this Court's wisdom of Graver Tank.

In the instant case, as in Square D, Congress has engaged in a careful and continual reexamination of patent law where the doctrine of equivalents has been a significant part of “settled law” for over a century (and certainly since 1950) and has given no indication, by statutory wording, legislative history or otherwise, that a change to this settled doctrine was intended. This resounding silence can only be read as manifesting Congressional imprimatur on the doctrine of equivalents.

While Petitioner seeks complete abolition of the doctrine of equivalents,[23] this Court has confirmed its continued viability: “[the patent claim] functions to forbid not only exact copies of an invention, but products that go to 'the heart of the invention but avoid the literal language of the claim by making a noncritical change.'
” Markman, slip op. at 2.[24] The doctrine as restated by the court below adheres to the fundamental purpose of its creation (fairness to the patentee), while lending itself to adaption to everchanging future innovation. '

In addition to historical evidence, functional considerations support juries as the arbiter of equivalents in patent infringement actions. See Markman, slip op. at 18. The inquiries underlying equivalency: function/way/result, interchangeability, designing around, and copying, are intensely fact-dependent, reflecting scientific facts that exist in the real world. Machonkin at 199. There is no evidence that judges, to the exclusion of juries, regularly resolve issues analogous to the doctrine of equivalents, or have any special expertise to do so.

On such a trial [for infringement], two questions arise. The first is, what is the thing patented; the second, has the thing been constructed, used or sold by the defendants. The first is a question of law, to be determined by the court, construing the letters patent, and the description of the invention and specification of claim annexed to them. The second is a question of fact, to be submitted to a jury.'

Moreover, the holdings of the Federal Circuit should be set aside only if they are contrary to the authority entrusted to that court by Congress or are inconsistent with the Constitutional patent grant itself. As demonstrated above, the judgment of the court below is consistent with the 1952 Patent Act and subsequent legislation. Further, continuation of the right to jury trial in cases where the doctrine of equivalents is at issue does not exceed the authority granted the Federal Circuit. “Within the limits of the constitutional grant, the Congress may, of course, implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim.”

Talk:Warner-Jenkinson v. Hilton Davis Petitioner Brief

2010-02-25T23:14:31Z

Maura: /* Maura */

==Courtney==

The question in this case is how the scope of the “invention” is to be determined. Our position is that the invention protected by the federal patent monopoly cannot go beyond what the patentee has told the PTO (and hence the public) its invention is. Whether limited to the claim portion of the patent (fairly read in full context), or permitted to point to the whole patent and its documented history for clearly disclosed equivalents of claim elements, the patentee may not in an infringement suit invoke as its invention something not asserted as the invention before the PTO.

If there be failure of disclosure in the original patent of matter claimed in the reissue, it will not aid the patentee that the new matter covered by the reissue was within his knowledge when he applied for his original patent. And it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification. It must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.

4. Policy. The basic policy issue in this case is whether it is possible to institutionalize the sort of flexibility as to patent scope adopted by the Federal Circuit to deal with individual instances of inadequate claim drafting-a “substantial differences” standard applied in litigation-without systemic undermining of the statutory recognition of the public's need for clear notice of patent boundaries, supplied through agency-approved, patentee-drafted disclosures. Hilton Davis has not remotely shown how to accomplish such a feat, much less how to do so consistent with the intrinsic need to ensure that patent protection does not stifle innovation.[12] Any such showing is all the less likely under the disclosure standard we have set forth, which looks beyond the language of claims themselves to see whether the patentee has clearly asserted equivalents of the claimed invention in the more expansive and less constraining sections of the patent. Ultimately, the systemic statutory commitment to known patent boundaries simply cannot survive any standard that would allow a ph of 5 to be found part of a patent that was deliberately limited throughout to ph levels of approximately 6.0 or more (for reasons that could not be determined without independent experimentation).

The judgment of the court of appeals should be reversed. U.S.Reply.Brief,1996. Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical 1996 WL 325332 (U.S.) (Appellate Brief)
Footnotes

== Maura ==

The Patent Act's cause of action for infringement protects against unauthorized use of the patentee's “invention.” 35 U.S.C. § 271(a). The question in this case is how the scope of the “invention” is to be determined. Our position is that the invention protected by the federal patent monopoly cannot go beyond what the patentee has told the PTO (and hence the public) its invention is. Whether limited to the claim portion of the patent (fairly read in full context), or permitted to point to the whole patent and its documented history for clearly disclosed equivalents of claim elements, the patentee may not in an infringement suit invoke as its invention something not asserted as the invention before the PTO.

In short, the “invention” awarded to Hilton Davis in this suit-with infringement found without questioning Warner-Jenkinson's independent development of its process-was concededly one not asserted as the invention anywhere in the patent, and, indeed, one deliberately dropped during the application process in
order to obtain the patent.[5]

The statute enacted by the 1952 Congress textually and structurally implies a commitment to agency-approved claims as the outer limits of the protected invention; pertinent legislative history reflects no endorsement of Graver but suggests a deliberately narrow use of “equivalents,” in a context of interpreting certain “functional” claim language (35 U.S.C. § 112 (paragraph 6)); and Graver was well understood to be anomalous in light of a long line of this Court's decisions on claims as the limit of protection.

4. Policy. The basic policy issue in this case is whether it is possible to institutionalize the sort of flexibility as to patent scope adopted by the Federal Circuit to deal with individual instances of inadequate claim drafting-a “substantial differences” standard applied in litigation-without systemic undermining of the statutory recognition of the public's need for clear notice of patent boundaries, supplied through agency-approved, patentee-drafted disclosures.

Talk:Warner-Jenkinson v. Hilton Davis Petitioner Brief

2010-02-25T23:14:15Z

Maura: /* Maura */ new section

Talk:Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)

2010-02-25T01:53:28Z

Maura: Created page with ' == Maura == Patentee brought infringement action against competitor, alleging that competitor's ultrafiltration method for purifying dye infringed patented method under doctrin…'

== Maura ==

Patentee brought infringement action against competitor, alleging that competitor's ultrafiltration method for purifying dye infringed patented method under doctrine of equivalents.

The Supreme Court, Justice Thomas, held that: (1) doctrine of equivalents is not inconsistent with Patent Act; (2) doctrine of equivalents must be applied to individual elements of patent claim, not to invention as a whole; (3) prosecution history estoppel does not apply whenever patent claim has been amended during application process, regardless of reasons for change; (4) patentee's addition of lower pH limit during application process did necessarily preclude application of doctrine of equivalents as to that element; (5) remand was required to determine whether reason for amending patent claim to add lower pH limit was sufficient to avoid prosecution history estoppel; (6) doctrine of equivalents does not require proof of intent; (7) doctrine of equivalents is not limited to equivalents disclosed within patent itself.
Reversed and remanded.

(c) The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. The Court is concerned that the doctrine, as it has come to be broadly applied since Graver Tank, conflicts with the Court's numerous holdings that a patent may not be enlarged beyond the scope of its claims. The way to reconcile the two lines of authority is to apply the doctrine to each of the individual elements of a claim, rather than to the accused product or process as a whole. Doing so will preserve some meaning for each of a claim's elements, all of which are deemed material to defining the invention's scope. So long as the doctrine does not encroach beyond these limits, or beyond related limits discussed in the Court's opinion, infra, at 1049-1051, 1053-1054, n. 8, and 1054, it will not vitiate the central functions of patent claims to define the invention and to notify the public of the patent's scope. Pp. 1048-1049.

Nearly 50 years ago, this Court in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950), set out the modern contours of what is known in patent law as the “doctrine of equivalents.” Under this doctrine, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is “equivalence” between the elements of the accused product or process and the claimed elements of the patented invention.

“What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor 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.” Id., at 609, 70 S.Ct., at 856-857.

Petitioner's primary argument in this Court is that the doctrine of equivalents, as set out in Graver Tank in 1950, did not survive the 1952 revision of the Patent Act, 35 U.S.C. § 100 et seq., because it is inconsistent with several aspects of that Act. In particular, petitioner argues: (1) The doctrine of equivalents is inconsistent with the statutory requirement that a patentee specifically “claim” the invention covered by a patent, § 112; (2) the doctrine circumvents the patent reissue process-designed to correct mistakes in drafting or the like-and avoids the express limitations on that process, §§ 251-252; (3) the doctrine is inconsistent with the primacy of the Patent and Trademark Office (PTO) in setting the scope of a patent through the patent prosecution process; and (4) the doctrine was implicitly rejected as a general matter by Congress' specific and limited inclusion of the doctrine in one section regarding “means” claiming, § 112, ¶ 6.

Absent something more compelling than the dubious negative inference offered by petitioner, the lengthy history of the doctrine of equivalents strongly supports adherence to our refusal in Graver Tank to find that the Patent Act conflicts with that doctrine. Congress can legislate the doctrine of equivalents out of existence any time it chooses. The various policy arguments now made by both sides are thus best addressed to Congress, not this Court.

B
We do, however, share the concern of the dissenters below that the doctrine of equivalents, as it has come to be applied since Graver Tank, has taken on a life of its own, unbounded by the patent claims. There can be no denying that the doctrine of equivalents, when applied broadly, conflicts with the definitional and public- notice functions of the statutory claiming requirement.

Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety. So long as the doctrine of equivalents does not encroach beyond the limits just described, or beyond related limits to be discussed infra, this page and 1050-1051, 1053, n. 8, and 1054, we are confident that the doctrine will not vitiate the central functions of the patent claims themselves.

In our view, holding that certain reasons for a claim amendment may avoid the application of prosecution history estoppel is not tantamount to holding that the absence of a reason for an amendment may similarly avoid such an estoppel. Mindful that claims do indeed serve both a definitional and a notice function, we think the better rule is to place the burden on the patent holder to establish the reason for an amendment required during patent prosecution. The court then would decide whether that reason is sufficient to overcome prosecution history estoppel as a bar to application of the doctrine of equivalents to the element added by that amendment. Where no explanation is established, however, the court should presume that the patent applicant had a substantial reason related to patentability for including the limiting element added by amendment. In those circumstances, prosecution history estoppel would bar the application of the doctrine of equivalents as to that element. The presumption we have described, one subject to rebuttal if an appropriate reason for a required amendment is established, gives proper deference to the role of claims in defining an invention and providing public notice, and to the primacy of the PTO in ensuring that the claims allowed cover only subject matter that is properly patentable in a proffered patent application. Applied in this fashion, prosecution history estoppel places reasonable limits on the doctrine of equivalents, and further insulates the doctrine from any feared conflict with the Patent Act.

Winans v. Denmead, 15 How. 330, 343, 14 L.Ed. 717 (1854), we described the doctrine of equivalents as growing out of a legally implied term in each patent claim that “the claim extends to the thing patented, however its form or proportions may be varied.” Under that view, application of the doctrine of equivalents involves determining whether a particular accused product or process infringes upon the patent claim, where the claim takes the form-half express, half implied-of “X and its equivalents.”

“[T]he substantial equivalent of a thing, in the sense of the patent law, is the same as the thing itself; so 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.”
If the essential predicate of the doctrine of equivalents is the notion of identity between a patented invention and its equivalent, there is no basis for treating an infringing equivalent any differently from a device that infringes the express terms of the patent. Application of the doctrine of equivalents, therefore, is akin to determining literal infringement, and neither requires proof of intent.

The Federal Circuit explained this factor by suggesting that an alleged infringer's behavior, be it copying, designing around a patent, or independent experimentation, indirectly reflects the substantiality of the differences between the patented invention and the accused device or process. According to the Federal Circuit, a person aiming to copy or aiming to avoid a patent is imagined to be at least marginally skilled at copying or avoidance, and thus intentional copying raises an inference-rebuttable by proof of independent development-of having only insubstantial differences, and intentionally designing around a patent claim raises an inference of substantial differences. This explanation leaves much to be desired. At a minimum, one wonders how ever to distinguish between the intentional copyist making minor changes to lower the risk of legal action and the incremental innovator designing around the claims, yet seeking to capture as much as is permissible of the patented advance.

The known interchangeability of substitutes for an element of a patent is one of the express objective factors noted by Graver Tank as bearing upon whether the accused device is substantially the same as the patented invention. Independent experimentation by the alleged infringer would not always reflect upon the objective question whether a person skilled in the art would have known of the interchangeability between two elements, but in many cases it would likely be probative of such knowledge.

See, e.g., Union Paper-Bag Machine Co. v. Murphy, 97 U.S., at 125 (“[I]n determining the question of infringement, the court or jury, as the case may be, ... are to look at the machines or their several devices or elements in the light of what they do, or what office or function they perform, and how they perform it, and to find that one thing is substantially the same as another, if it performs substantially the same function in substantially the same way to obtain the same result”); Winans v. Denmead, 15 How., at 344 (“[It] is a question for the jury” whether the accused device was “the same in kind, and effected by the employment of [the patentee's] mode of operation in substance”).

An analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute element plays a role substantially different from the claimed element.

Perkin-Elmer Corporation v. Computervision Corporation, 732 F2d 888 (1984)

2010-02-22T15:29:48Z

Maura:

732 F2d 888 Perkin-Elmer Corporation v. Computervision Corporation

732 F.2d 888 221 U.S.P.Q. 669 The PERKIN-ELMER CORPORATION, a corporation of New York, Appellee, v. COMPUTERVISION CORPORATION, a corporation of Delaware, Appellant.

Appeal No. 83-1195.

United States Court of Appeals, Federal Circuit.

April 6, 1984.

Richard J. Birch, Boston, Mass., argued for appellant. With him on brief was James H. Mitchell, Boston, Mass. Robert M. Taylor, Jr., Los Angeles, Cal., argued for appellee. With him on brief were David B. Murphy, Thomas F. Smegal, Jr., and Robert J. Bennett, Los Angeles, Cal.
Before MARKEY, Chief Judge, and DAVIS, BALDWIN, KASHIWA and BENNETT, Circuit Judges. MARKEY, Chief Judge.

Appeal from a judgment of the District Court for the Northern District of California holding valid and infringed claims 1 through 5, 7 and 8 of U.S. Patent No. 3,748,015 ('015 patent), issued to Abe Offner, and claims 1 through 8 of U.S. Patent No. 3,821,763 ('763 patent), issued to Robert M. Scott. Both patents were assigned to The Perkin-Elmer Corporation (Perkin-Elmer). We affirm.

BACKGROUND

Perkin-Elmer's "Micralign" was the first commercially successful projection printer for use in manufacturing semiconductor integrated circuits. A projection printer uses optics to trace a circuit design onto a silicon wafer. Because a high degree of accuracy is demanded, the central component of a projection printer is its optical system. The optical structure in Perkin-Elmer's "Micralign" is disclosed in the '015 and '763 patents. Computervision Corporation (Computervision) sells a projection printer known as the "Cobilt CA-3000" (CA-3000), which is similar to the Micralign.

A PROCEDURAL MORASS

In late 1977, Perkin-Elmer sued Computervision for infringement of the patents. Computervision counterclaimed for a declaratory judgment that the patents were invalid and not infringed.

Over Computervision's objection, Perkin-Elmer's demand for a jury trial was honored. The jury trial lasted nine days with each party introducing extensive testimony of numerous experts. Fourteen witnesses appeared before the jury and twelve depositions were read into the record. One hundred and forty documents and physical exhibits were introduced in evidence.

After receiving unchallenged instructions on the issues it was to decide, the jury deliberated and returned a general verdict that claims 1-8 of each patent were valid, not obtained by fraud, and not infringed. No special verdicts under Rule 49(a) and no interrogatories under Rule 49(b) had been sought. Computervision had not objected to the form of verdict submitted to the jury. The district court denied Perkin-Elmer's motions for a judgment of infringement notwithstanding the verdict ("JNOV") and for a new trial and entered a judgment of noninfringement. Perkin-Elmer's request for entry of judgment on the validity verdict was denied and, according to counsel for Computervision, Computervision accepted that denial. The refusal to enter judgment on the jury's validity verdict, the reasons for which are not known, served as a foundation of a procedural morass.

Perkin-Elmer appealed the non-infringement judgment, and the district court's refusal to enter a judgment of patent validity, to the Court of Appeals for the Ninth Circuit (Ninth Circuit). Though the judgment was entered only on the noninfringement verdict, and was viewed by the Ninth Circuit as not final, that court elected to entertain the appeal because "[t]he district court here obviously was not trying to avoid adjudication on the issue of patent validity". Perkin-Elmer Corp. v. Computervision Corp., 680 F.2d 669, 216 USPQ 760 (1982).

The Ninth Circuit held that Perkin-Elmer's motion for JNOV should have been granted, said nothing on the merits of the refusal to enter judgment on validity, and reversed and remanded the case for further proceedings. The Court denied a petition for rehearing and declined a suggestion for rehearing in banc.<ref> The Ninth Circuit filed a two-page opinion, the portions relevant here consisting in their entirety of these four paragraphs:
Computervision's CA-3000 functions in a strikingly similar way [to the Micralign]. The Micralign and the CA-3000 are the only projection printers on the market in which the optics consist entirely of mirrors. Both axially space a small convex mirror behind a larger concave one. Both use a plate with an annular slit to restrict the light passing through the optical system and both have an identical light path from the circuit design to the wafer. The only difference is that the CA-3000 uses a less convex mirror and places the mirrors farther apart.

The differences between the Micralign and the CA-3000 are miniscule. The CA-3000 merely uses a less convex mirror and places it further from the concave mirror than the Micralign does. Otherwise, the two optical systems are identical. Both rely on mirrors for their optics and employ one mirror placed behind another to reflect a circuit design onto a silicon wafer. A minor adjustment of the curvature and placement of one mirror does not place it beyond the reach of the patented procedure. Many variations are possible within the range of any patented procedure. Here, the degree of difference between the two systems created by the Cobilt's [CA-3000's] variation is minimal.
Therefore the CA-3000 does infringe Patent '015 and Patent '763 and Perkin-Elmer's motion for judgment notwithstanding the verdict should have been granted by the district court.</ref>

At a hearing on remand, Perkin-Elmer informed the district court of Sarkisian v. Winn-Proof Corp., 688 F.2d 647 (9th Cir.1982), cert. den., Carsonite International Corp. v. Carson Manufacturing Co., --- U.S. ----, 103 S.Ct. 1499, 75 L.Ed.2d 930 (1983), which had been decided a week before and which had articulated special guidelines for use in jury trials of patent suits. The district court deferred entering judgment pending consideration of Sarkisian, ordered briefs, and set for oral argument the matter of entering a judgment on the jury's verdict that the patents were valid.

At argument, the court stated that the findings of the jury supported a conclusion of non-obviousness, that there was considerable evidence supporting those findings, and that non-obviousness was clear as a matter of law. The court also noted that a patent is presumed valid, that the burden of persuasion remains with the party asserting invalidity, and that Computervision did not satisfy that burden. In accordance with the Ninth Circuit's mandate and in full compliance with Sarkisian, the district court determined that the patents were valid and infringed and granted Perkin-Elmer's motion for entry of judgment so stating.

The district court denied these Computervision motions: for JNOV on validity; for a new trial, based on an alleged denial of jury trial on a fact issue underlying the determination of nonobviousness; and to vacate the judgment, grant a new trial, and reopen discovery, all based on alleged fraudulent conduct of Perkin-Elmer during trial and appeal to the Ninth Circuit.

Computervision appeals the judgment, asserting error in denial of all its motions except that to reopen discovery. Further, Computervision seeks review and reversal of the Ninth Circuit's decision, accompanied by reinstatement of the original jury verdict of noninfringement.

ISSUES

(1) Whether the district court erred in denying Computervision's motion for JNOV on validity.

(2) Whether the district court abused its discretion in denying Computervision's motion for new trial based on absence of a jury trial of a fact issue underlying the determination of nonobviousness.

(3) Whether the decision of the Ninth Circuit should be reviewed.

(4) Whether the district court abused its discretion in denying Computervision's motions for new trial and to vacate the judgment based on allegations of fraudulent conduct.

OPINION

A. Denial of the Motion for JNOV on Validity

1. Standard of Review

When a party moves for JNOV, the trial court must consider all the evidence in a light most favorable to the non-mover, must draw reasonable inferences favorable to the non-mover, must not determine credibility of witnesses, and must not substitute its choice for that of the jury between conflicting elements in the evidence. Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1512, 220 USPQ 929, 936 (Fed.Cir.1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546, 220 USPQ 193, 197 (Fed.Cir.1983). Following those guidelines, the court determines whether the evidence so viewed constitutes "substantial evidence" in support of the jury's findings and, if so, whether those findings can support the legal conclusions necessarily drawn by the jury in accord with its instructions enroute to its verdict. Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 936. "Substantial" evidence is such relevant evidence from the record taken as a whole as might be accepted by a reasonable mind as adequate to support the finding under review. Loyce E. Hayes v. Department of the Navy, 727 F.2d 1535 at 1537 (Fed.Cir.1984); SSIH Equipment S.A. v. USITC, 718 F.2d 365, 371 n. 10, 218 USPQ 678, 684 n. 10 (Fed.Cir.1983). In sum, only when the court is convinced upon the record before the jury that reasonable persons could not have reached a verdict for the non-mover, should it grant the motion for JNOV. Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 936.

In its review, the district court must not lose sight of the presumption of validity. Id., 727 F.2d at 1512-13, 220 USPQ at 934-35. Where, as here, there is a verdict of validity, the question is not whether the patentee had introduced sufficiently substantial evidence to support the verdict, but whether the challenger's evidence so met the burden imposed by 35 U.S.C. Sec. 282 (" [t]he burden of establishing invalidity of a patent or any claim shall rest on the party asserting such invalidity") that reasonable jurors could not have concluded that the challenger failed to overcome that burden. Id.

To facilitate review on a motion for JNOV and on appeal, it is preferred that a jury be provided with special interrogatories designed to reveal more clearly the findings it made. Absent such interrogatories, the law presumes the existence of findings necessary to support the verdict the jury reached. Id., 727 F.2d at 1516, 220 USPQ at 939. Accord, Velo-Bind, Inc. v. Minn. Mining & Mfg. Co., 647 F.2d 965, 971, 211 USPQ 926, 932 (9th Cir.1981); Control Components, Inc. v. Valtek, Inc., 609 F.2d 763, 767, 204 USPQ 785, 788-89 (5th Cir.), cert. den. 449 U.S. 1022, 101 S.Ct. 589, 66 L.Ed.2d 484 (1980); Tights, Inc. v. Acme-McCrary Corp., 541 F.2d 1047, 1061, 191 USPQ 305, 314 (4th Cir.), cert. den. 429 U.S. 980, 97 S.Ct. 493, 50 L.Ed.2d 589 (1976); White v. Mar-Bel, Inc., 509 F.2d 287, 290, 185 USPQ 129, 131 (5th Cir.1975); Panther Pumps & Equipment Co., Inc. v. Hydrocraft, Inc., 468 F.2d 225, 228, 175 USPQ 577, 579 (7th Cir.1972), cert. den. 411 U.S. 965, 93 S.Ct. 2143, 36 L.Ed.2d 685 (1973). The particular findings the jury must make before it can reach a verdict are controlled by the court's instructions to the jury. Railroad Dynamics, Inc., supra, 727 F.2d at 1516, 220 USPQ at 939.

On appeal from denial of a motion for JNOV, appellant must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied from the jury's verdict cannot in law be supported by those findings. Id., 727 F.2d at 1517, 220 USPQ at 935-36.

Computervision refers repeatedly to the trial judge's statement of a personal view, made in the course of commenting on the Ninth Circuit's decision, that the claims at issue could not be both valid and infringed. We review judgments, however, not passing statements. Id., 727 F.2d at 1512, 220 USPQ at 934; Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540, 218 USPQ 871, 880 (Fed.Cir.1983); In re Hyatt, 708 F.2d 712, 715, 218 USPQ 195, 198 (Fed.Cir.1983). The district court made no finding that the claims were not infringed, or if they were, that they could not be valid. The appealed judgment states that the claims are valid and infringed. The trial judge had ample opportunity to grant Computervision's motion for JNOV, but did not. On the contrary, reflecting proper respect for the jury's function and the conclusion of the Ninth Circuit, the trial judge concluded that Computervision did not satisfy the JNOV requirements properly imposed by the law on one seeking to set aside a jury verdict.

2. Anticipation

The jury was instructed under 35 U.S.C. Sec. 102<ref> Section 102 provides that a person is entitled to a patent unless one of a series of circumstances, described in subparagraphs (a)-(g) of that section, apply. Section 102(a) precludes a patent if "the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent"</ref> that there is no anticipation "unless all of the same elements are found in exactly the same situation and united in the same way ... in a single prior art reference". See e.g., Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed.Cir.1983). From that instruction and the jury's verdict, the law presumes that the jury found no anticipation under Sec. 102 because of differences (discussed infra ) between the claimed inventions and the prior art. Having shown no basis for determining that the record is devoid of substantial evidence to support that finding, Computervision has not met its burden on appeal, i.e., to establish that a reasonable juror could not have found that Computervision failed to overcome the presumption of novelty included within the presumption of validity mandated by 35 U.S.C. Sec. 282.

3. Obviousness

Determining obviousness/nonobviousness under 35 U.S.C. Sec. 103<ref>Section 103 provides in relevant part:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.</ref> involves factual inquiries into: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness, e.g., long felt need, commercial success, failure of others, copying, unexpected results. See, e.g., Environmental Designs, Ltd. v. Union Oil Co. of Calif., 713 F.2d 693, 695, 218 USPQ 865, 867 (Fed.Cir.1983); Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1379-82, 217 USPQ 1281, 1283-85 (Fed.Cir.1983). The critical question, as Sec. 103 makes plain, is whether the invention as a whole would have been obvious to one of ordinary skill in the art at the time it was made.

Included within the presumption of validity mandated by 35 U.S.C. Sec. 282 is a presumption of nonobviousness which the patent challenger must overcome by proving facts with clear and convincing evidence. American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358-59, 220 USPQ 763, 769-70 (Fed.Cir.1984); Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983). The presumption remains intact even upon proof of prior art not cited by the Patent and Trademark Office (PTO), Raytheon, supra, 724 F.2d at 960, 220 USPQ at 599, though such art, if more relevant than that cited, may enable the challenger to sustain its burden. Id.

The obviousness/nonobviousness issue is a legal issue and may be submitted to the jury with proper instructions. Railroad Dynamics, Inc., supra, 727 F.2d at 1517, 220 USPQ at 937; White v. Jeffrey Mining Co., 723 F.2d 1553, 1558, 220 USPQ 703, 705 (Fed.Cir.1983); Connell, supra, 722 F.2d at 1547, 220 USPQ at 197.

The normal sequence of events following the jury's delivery of its verdict is: (1) automatic entry of judgment on the verdict promptly by the clerk in the
absence of contrary instructions from the court, Rule 58, Fed.R.Civ.P.;<ref>The record does not indicate whether such instructions were issued. The trial court's denial of Perkin-Elmer's request for entry of judgment on the jury's validity verdict may have been interpreted by the clerk as the equivalent of such instructions. Perkin-Elmer apparently did not seek a writ of mandamus but included the denial of its request as an element of its appeal</ref> (2) within 10 days, the losing party, whose earlier motion for directed verdict had been denied, may file a motion for judgment notwithstanding the verdict. Rule 50(b), Fed.R.Civ.P.

In considering on remand Perkin-Elmer's motion for entry of judgment on the verdict of validity, the trial court had the then applicable language of the opinion in Sarkisian v. Winn-Proof Corp., supra, called to its attention. The court did not, however, appear to interpret the indication in that opinion that it should determine nonobviousness "independently" of the jury's verdict as requiring it to totally ignore the rules applicable to jury trials in non-patent cases, or to proceed as though the jury had never been impanelled, had never been instructed on the issue, had never considered the issue, and had never rendered a verdict based on its conclusion. On the contrary, in concluding, as did the jury, that the inventions would have been nonobvious, the court proceeded in a manner similar to that involved in deciding a motion JNOV and used the jury's presumed findings supported by substantial evidence. The court's use of the jury's findings in this case indicates that it was in fact answering the appropriate question: can the jury's presumed findings support conclusion of nonobviousness encompassed in the jury's verdict of validity?<ref>The view suggested in Sarkisian, that a jury verdict on nonobviousness is at best advisory, would make charades of motions for directed verdict or JNOV under Fed.R.Civ.P. 50 in patent cases. Those motions apply only to binding jury verdicts. See 9 Wright and Miller, Federal Practice and Procedure Sec. 2523 (1982) Moreover, use of an advisory jury is limited to actions not triable of right by a jury, Rule 39(c), Fed.R.Civ.P., and Rule 52(a), Fed.R.Civ.P., requires the court to enter its own set of findings and conclusions just as it must do when sitting without a jury. That requirement, and the reluctance to take days or weeks of jurypersons' lives for service as mere advisors, appear to account for the virtually universal non-use of advisory juries. Moreover, the notion that patent cases are somehow outside the mainstream of the law, and that special, judge-designed rules not applicable to other types of jury trials must be applied when a "patent case" is tried before a jury, finds no support in the statute, in the Federal Rules of Civil Procedure, or in the Seventh Amendment to the Constitution.</ref> The trial court effectively answered the same question in then denying Computervision's motion for JNOV.

The record contains strong objective evidence--which Computervision does not contest--in support of the nonobviousness conclusion. It was stipulated that the Micralign projection printer, having as its critical element the optical system of the '015 and '763 patents, was an outstanding commercial success and was the first commercially successful projection printer for use in the manufacture of semiconductor integrated circuits. Testimony unchallenged on appeal established that the Micralign had numerous advantages over previous printers, became the industry standard, revolutionized the industry, and satisfied a long felt need; unchallenged testimony also showed surprise at the exceptional results achieved by the invention claimed in the '015 patent, and the radical departure from traditional approaches to lens design represented by the invention claimed in the '763 patent.

Such objective evidence can constitute "highly probative, objective criteria fully capable of serving as a foundation for the legal conclusion of unobviousness". Raytheon Co. v. Roper Corp., supra, 724 F.2d at 961, 220 USPQ at 600. That objective evidence, and the inadequacies of the prior art summarized below, constitute a formidable obstacle to Computervision's burden of establishing on appeal that reasonable jurors could not have concluded that it failed to meet its statutory burden under Sec. 282. Computervision did not overcome that obstacle.

The ensuing discussion of the prior art illustrates the presence of substantial evidence supporting the facts presumably found by the jury.

(a) Differences Between the Invention Claimed in the '015 Patent and the Prior Art

(1) The '015 Patent

The invention claimed in the '015 patent is illustrated in Figure 2:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Two concentric spherical mirrors, one concave (21) and the other convex (20), have their centers of curvature at point P on reference axis SA. There are three reflections in the system: the light from the object plane (O) is reflected off mirror 21 to mirror 20, off mirror 20 to a second portion of mirror 21, and off that mirror portion to the image plane (I). Mirror 20 has a radius of curvature (Rcx) greater than one half that of mirror 21 (Rcc) by a slight amount, referred to by Perkin-Elmer as . The system creates a stigmatic image, defined in testimony as pointlike imagery, where all the rays from a point on an object come to a point on an image without aberrations. The '015 patent describes the invention as a system in which "the image is formed in accurate micro detail with high resolution".

Claim 1 is illustrative:

1. A unity magnification catoptric [i.e., using only mirrors] image-forming system comprising at least one concave mirror and at least one convex mirror, said mirrors being supported with their centers of curvature substantially coincident, and means to define a location for an object the image of which after at least three reflections including at least one reflection at each of said mirrors is a real image at a second location, the sum of the powers of said convex mirrors multiplied by the numbers of reflections thereat respectively being sufficiently less than the sum of the powers of said concave mirrors multiplied by the numbers of reflections thereat respectively to produce at said second location a stigmatic image of an object in said first location.

The system of claim 1 is one of unity magnification and is image forming. Those limitations appear in the preamble, but are necessary to give meaning to the claim and properly define the invention. See In re Bulloch, 604 F.2d 1362, 1365, 203 USPQ 171, 174 (CCPA 1979); Kropa v. Robie, 187 F.2d 150, 151-52, 38 CCPA 858, 861, 88 USPQ 478, 480-81 (CCPA 1951). The "sum of the powers" language of claim 1, also present in claims 2-4, is equivalent to the language in claims 5 and 7-8 that Rcx = Rcc/2 + . Because the claims have generally been argued together, the validity of all the claims stands or falls with claim 1. See, e.g., Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983).

(2) Differences From the Prior Art

The Reed patent (3,190,171), considered by the PTO, discloses a viewing system simulating the appearance of an aircraft carrier as the pilot approaches for a landing. The system employs concentric convex and concave mirrors with a radii ratio of 2:1. The image system of the carrier is not of unity magnification and is a viewing, not an image forming, system; the carrier image is a virtual, relatively poor image, whereas claim 1 requires formation of a real, stigmatic image; it involves a 2:1 mirror system, whereas claim 1 involves a non 2:1 system.<ref>There are other differences in the other claims. For example, claim 7 requires that the "means to define a location for an object" include "an arcuate slit of radius substantially equal to the distance of said object location from said center of curvature"</ref> Though Reed said he modified his system to achieve a non-concentric 2:1 system, the modified system does not correspond to the concentric non-2:1 system of the '015 patent.

Computervision urges that the Reed disclosure be viewed backwards, i.e., as a system for forming an image of the pilot's eye. There is no evidence that those of ordinary skill in the art would so view it, and such distortion of a reference in light of a patentee's disclosure is pure hindsight.

Cited in Computervision's brief (though not in its closing argument to the jury) is the Schmidt telescope, used principally since 1930 in astronomy. Unlike the claimed invention, the Schmidt system is not a catoptric, i.e., all mirror, system, has chromatic aberration, does not produce a stigmatic image, and has no convex mirror.

There was testimony about modifying the Schmidt telescope by replacing a photographic plate therein with a convex mirror. Assuming, arguendo, the propriety of such testimony, the modification is not catoptric (all mirrors), does not produce unity magnification, lacks "means for defining the location of an object", and does not produce the stigmatic image of the claimed invention.

(b) Differences Between the Invention Claimed in the '763 Patent and the Prior Art

(1) The '763 Patent

The '763 invention is illustrated in Figs. 1 and 2:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Figure 1 depicts two groups, 10 and 11, of lens elements together forming a lens 16 having optical center C. The invention is not limited to "lens only" (dioptric) systems; the image forming elements can be catoptric (all mirrors) or catadioptric (lenses and mirrors). The lens elements are rotationally symmetric about a common optical axis OA. The system also includes a mask 21 having a slit 22 positioned adjacent a conjugate focal plane of the lens 16 for the object field being magnified, and an image receiving surface, such as film 18, disposed behind the slit in a focal plane of the lens 16 for the object field of interest. The elements of the system are fixed with respect to each other, except that film 18 may be advanced in its own plane relative to the mask as the system is moved with respect to the object field. The system is intended to image a distant object field at infinity on the left.<ref>Annular field systems need not work only at infinity. They can work at finite conjugates, in which case the mask having a slit therein may be placed near the object or near the image, or one may be disposed near each</ref> The slit 22 is of such curvature and radial extent, and is so spaced from the axis OA, as to lie adjacent a part of an annular zone 20 of the second principal focal plane of lens 16 in which case the lens will focus bundles of collimated light from the left and will have a selected range of values for the angle of inclination FA of those bundles to the system axis.

Claims 1-8 of the '763 patent include six structural and two method claims. Claims 1 and 7 are illustrative:

1. Image-forming apparatus comprising image-forming optical elements arranged in an imaging system that is rotationally symmetric about an axis, said system being optically corrected to produce stigmatic imagery in an annular zone centered on said axis with all points in said zone possessing field angles other than zero, at least one imaging surface conforming substantially to at least part of said zone, aperture limiting means defining at a conjugate focal surface of said system an area whose points possess field angles corresponding to the field angles of points in said zone, said aperture limiting means being positioned to define an object field area imaged on said imaging surface, and means to scan said object field area with respect to said system.

7. The method of recording an image of an extended object which comprises the steps of

a. providing an image-forming system that is rotationally symmetric about an axis and optically corrected to produce stigmatic imagery in an annular zone centered on said axis with all points in said zone possessing field angles other than zero,

b. scanning an object field past said system, and

c. recording through time that portion of the image of said object field that produced by said system at a segment of said annular zone. Because the claims have generally been argued together, the validity of all the claims stands or falls with claims 1 and 7.

(2) Differences From the Prior Art

Computervision summarily asserts in its brief, without explanation, that the Reed and Schmidt disclosures are applicable. That bare assertion cannot possibly satisfy Computervision's appellate burden of showing that no reasonable juror could have concluded that it had failed to prove facts rendering the '763 patent claims invalid.

The Sonne and Goddard patents are put forward. Sonne, described in the '763 patent, discloses a stereoscopic camera for aerial photography. Goddard discloses essentially the same aerial camera system, except that Goddard's film has layers photosensitive to different colors. Computervision has not demonstrated that no reasonable juror could have found that Sonne or Goddard fail to disclose, for example, these limitations of claims 1 and 7: that the system be "optically corrected to produce stigmatic imagery"; and that such imagery be "in an annular zone centered on said axis, with all points in said zone possessing field angles other than zero".

Citing the sparse testimony of a Perkin-Elmer expert describing a Cook-Triplet lens as "any lens combination which has two positive lenses, separated with a negative lens between them", Computervision's brief contains no articulation and no citation to the record to indicate what was presented to the jury concerning the claim elements and whatever the Cook-Triplet lens is alleged to have taught. The Appendix contains no description or drawing of a Cook-Triplet lens. In sum, Computervision's burden of showing error by the trial court in denying its motion for JNOV is not assisted by its reference to testimony about the Cook-Triplet lens.

CONCLUSION ON VALIDITY

Nothing in the prior art anticipates or, considered singularly or as a whole, would have suggested, the inventions claimed in the '015 and '763 patents. The objective evidence is strong in support of the judge's ruling upholding the jury's verdict on validity. Thus, the district court did not err in denying Computervision's motion for JNOV.

B. Loss Of Right To Jury Trial

Though it had opposed Perkin-Elmer's demand for a jury trial, Computervision argued it was deprived of a jury determination of the differences between the claimed inventions and the prior art and, based on that argument, moved for a new trial.<ref>Because we dispose of the issue on other grounds, we need not decide whether Computervision's opposition to jury trial amounted to a waiver under Federal Rule 38. See e.g., Reid Bros. Logging Co. v. Ketchikan Pulp Co., 699 F.2d 1292 (9th Cir.1983)</ref> In reviewing a denial of a motion for new trial, the abuse of discretion standard applies. See e.g., Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 937. No such abuse occurred here.

Computervision says this is the first case in which a jury verdict of noninfringement was reversed without consideration of a validity verdict, resulting in unfairness. Perkin-Elmer cites numerous non-jury cases in which a court of appeals has reversed a court finding of noninfringement and remanded for entry of judgment without reconsideration of validity. It is unnecessary, however, to decide such questions. There has been a judgment of validity and infringement and it is that judgment that has been appealed to this court.

The plight alleged by Computervision results from the procedural morass described above. Had judgment been initially entered on validity and infringement, the Ninth Circuit could have considered both issues, rendering this appeal unnecessary. Yet, Computervision did not object to the district court's action, but "accepted" its refusal to enter judgment on validity.

The district court's refusal to enter judgment on validity may have been ill advised; it cannot now serve as reversible error on this appeal. The thrust of Computervision's argument here is that the Ninth Circuit's interpretation of the claims necessarily differed from that of the jury. Hence, says Computervision, the jury never determined the differences between the prior art and the claims as interpreted by the Ninth Circuit. The argument depends critically on facts merely presumed and not established, i.e., that the Ninth Circuit interpreted the claims and that its interpretation differed from that reached by the jury in following the trial judge's unchallenged instructions.

The Ninth Circuit looked at the devices and concluded that the "miniscule" difference between the Micralign and CA-3000 printers was insufficient to constitute substantial evidence in support of the jury's non-infringement verdict. 680 F.2d at 671, 216 USPQ at 761-62. That conclusion did not necessarily depend on a claim interpretation different from that in accord with which the jury was instructed. It, as the language of the Ninth Circuit opinion makes plain, rested on a different assessment of the CA-3000 printer and its equivalency to the claimed inventions:Both rely on mirrors for their optics and employ one mirror placed behind another to reflect a circuit design onto a silicon wafer. A minor adjustment of the curvature and placement of one mirror does not place it beyond the reach of the patented procedure. Many variations are possible within the range of any patented procedure. Here, the degree of difference between the two systems created by the Cobilt's variation is minimal [CA-3000].

Id.

Though the Ninth Circuit's opinion did not use the word "equivalence", that court was presumably aware that the jury had been instructed on the doctrine and its opinion spoke the language of equivalency ("functions in a strikingly similar way"; "the only difference"; "differences ... are miniscule"; "Otherwise ... identical"; "A minor adjustment ... not ... beyond the reach"; "variations ... within the range" ). Assessing equivalency involves a determination of whether the claimed invention and alleged infringing device, which are different (there would otherwise be literal infringement), perform substantially the same function in substantially the same way to give the same or substantially the same result. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950). If equivalence appears, infringement will be found unless (1) arguments or amendments made by applicant during prosecution (prosecution history estoppel) estop the patentee from asserting a range of equivalence broad enough to encompass the accused product or process; or (2) the equivalent device is within the public domain, i.e., found in the prior art, Carmen Industries, Inc. v. Wahl, 724 F.2d 932, 942, 220 USPQ 481, 489 (Fed.Cir.1983); Thomas & Betts Corp. v. Litton Systems, Inc., 720 F.2d 1572, 1579-80, 220 USPQ 1, 6-7 (Fed.Cir.1983). Determining the existence of either condition (1) or condition (2) does not require reassessment of validity. See e.g., Carmen Industries, supra, 724 F.2d at 936 n. 2, 937 n. 5, 220 USPQ at 484 n. 2, 485 n. 5. Nor does determination of the existence of either condition necessitate a re-interpretation of the claims as written. Computervision's assumptions concerning a Ninth Circuit interpretation of the claims are unsupported in the record.

C. The Ninth Circuit Decision

The decision of the Ninth Circuit is entitled to great deference under the law of the case doctrine. See Central Soya Co. v. Geo. A. Hormel & Co., 723 F.2d 1573, 1580, 220 USPQ 490, 495 (Fed.Cir.1983). That doctrine ensures judicial efficiency and prevents endless litigation. Id. Its elementary logic is matched by elementary fairness--a litigant given one good bite at the apple should not have a second.

Here, Computervision has had an eminently fair chance to litigate the infringement issue. The issue was presented to the jury, to the trial judge on Perkin-Elmer's motion, and to the Ninth Circuit on direct appeal, on petition for rehearing, and in a suggestion for rehearing in banc. Computervision prevailed in the first two instances and lost in the last three. In those circumstances, there is no basis to relitigate infringement.

We recognize that a court that established the law of a case could elect to review its earlier decision and change it if one of three "exceptional circumstances" exist: (1) the evidence on subsequent trial was substantially different; (2) controlling authority has intervened; or (3) the earlier decision was clearly erroneous and would work a manifest injustice. Central Soya, supra, 723 F.2d at 1580, 220 USPQ at 495. Revisions in the law of the case occur "very infrequently" when an appellate court is asked to review the decision of a coordinate court. 1B Moore's Federal Practice p 0.404 [4.-5 at 138].

Arguing the "clearly erroneous/manifest injustice" exception, described by our predecessor court as "stringent", and as requiring a "strong showing of clear error", Short v. United States, 661 F.2d 150, 154, 228 Ct.Cl. 535 (1981), Computervision would have us review the Ninth Circuit decision on its merits. The decision to review is a threshold consideration, for only on full review can a court determine whether the decision reviewed was clearly erroneous and produced a manifest injustice. To obtain review, an appellant must make at least a prima facie showing of error sufficient to indicate the advisability of review. A mere suspicion of error will not suffice; we must be "convinced to a certainty" that error warranting review exists. Id. Computervision has made no such convincing showing.

Computervision says the Ninth Circuit did not consider the claim language and the prior art. However, the Ninth Circuit had before it the claims, the prior art, and the parties' briefs and arguments. That the court did not specifically mention the claims and prior art in its opinion forms no basis for an assumption that it did not consider those elements in determining that the CA-3000 printer was an equivalent. That a court "do[es] not discuss certain propositions do[es] not make the decision inadequate or suggest the ... court failed to understand them". Schilling v. Schwitzer-Cummins Co., 142 F.2d 82, 84, 61 USPQ 73, 75 (D.C.Cir.1944). Moreover, "[w]e should never assume that a court of concurrent jurisdiction neglected to perform its duty". Skil Corp. v. Millers Falls Co., 541 F.2d 554, 557, 191 USPQ 548, 550 (6th Cir.), cert. den. 429 U.S. 1029, 97 S.Ct. 653, 50 L.Ed.2d 631 (1976).

In an effort to show that the Ninth Circuit did not understand the technology, Computervision says one of the two differences the court found (wider placement of the convex and concave mirrors) does not exist because the mirrors are spaced the same in both systems. That error, however, would, if anything, have favored Computervision because it would have increased the court's perceived differences from one to two. Computervision has not made a prima facie showing that the finding of an allegedly non-existent difference constituted clear error producing manifest injustice.

D. Alleged Fraudulent Conduct

The motion for a new trial or to vacate the judgment under Rule 60(b) alleged fraudulent conduct. On review of a denial of a motion to vacate under Rule 60(b), the standard, like that on review of a denial of a motion for new trial, is whether an abuse of discretion occurred. See e.g., CTS Corp. v. Piher Int'l Corp., 727 F.2d 1550 at 1555 (Fed.Cir.1984). None did.

The allegation of fraudulent conduct rests on a statement made after trial in this action by counsel for a defendant (Canon) in a separate case filed by Perkin-Elmer. At a combined hearing in connection with this action and that case, counsel for Canon said that before trial in this action Perkin-Elmer changed its Micralign printer from the concentric non-2:1 system of the '015 patent claims to the nonconcentric 2:1 system of the CA-3000 printer to get an improved result. Computervision says Perkin-Elmer witnesses "fraudulently" testified that the printer claimed in the '015 patent and the CA-3000 printer achieve "substantially the same" result and thereby rendered the patents in suit unenforceable. We disagree.

Assuming that a statement of counsel for a defendant in another case can be viewed as testimony or as evidence, exact identity of results is not required in establishing equivalency. Though Graver Tank, supra, alternatively speaks of the "same" and "substantially the same" result, 339 U.S. at 608, 70 S.Ct. at 856, the doctrine is clearly based on substantial, not exact, identity:

Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect.

Id. at 609, 70 S.Ct. at 856. Similarly, though the doctrine was initially articulated in Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1361, 219 USPQ 473, 480 (Fed.Cir.1983) as appearing to involve the "same" result, when the court applied the doctrine it referred to "substantially the same" result. 717 F.2d at 1366, 219 USPQ at 484. Moreover, our predecessor court has recognized that the results achieved may be "substantially" the same. See e.g., Lockheed Aircraft Corp. v. United States, 553 F.2d 69, 79, 193 USPQ 449, 461, 213 Ct.Cl. 395, 414 (1977); Pratt & Whitney Co. v. United States, 345 F.2d 838, 841, 145 USPQ 429, 431, 170 Ct.Cl. 829, 833 (1965).<ref>
9 Though some opinions of this court contain references to the "same" result, the court was not required to make a "same"--"substantially the same" distinction in the cases before it. See e.g., Carmen Industries, Inc. v. Wahl, supra; Thomas & Betts Corp. v. Litton Systems, Inc., supra</ref>

Thus, if Perkin-Elmer changed its commercial device to get an improved result by making it the same as the CA-3000, it would not be inconsistent-- much less fraudulent--for Perkin-Elmer witnesses to testify that the claimed and accused devices are nevertheless equivalent. A patentee need produce no commercial device. Infringement is determined by comparison with the patentee's claimed invention, not with its marketed product. CTS Corp. v. Piher Int'l Corp., 527 F.2d 95, 100, 188 USPQ 419, 423 (7th Cir.1975), cert. den. 424 U.S. 978, 96 S.Ct. 1485, 47 L.Ed.2d 748 (1976).

Presumably, as above indicated, the Ninth Circuit so determined equivalence, and, though it did not in its opinion employ the words of Graver Tank, supra, its words do indicate that it found "substantially the same" result. Perkin-Elmer's witnesses testified that the results are substantially the same, not identical. The instructions to the jury defined equivalency in terms of "substantially the same" result. Computervision's own expert testified that the CA-3000 optical system performs the same work in substantially the same way as the '015 patent system, and accomplished a similar result. For all of those reasons, Computervision's assertion of fraudulent conduct is unpersuasive.

The district court committed no abuse of discretion in denying Computervision's alternative motions for new trial or to vacate the judgment under Rule 60(b).

Decision

The denial of Computervision's motion for JNOV having been correct, the denial of its motions for new trial and to vacate the judgment having represented no abuse of discretion, the decision of the Ninth Circuit having established the law of the case, and no legal error having been shown, the judgment of validity and infringement of claims 1-5, 7 and 8 of the '015 patent and claims 1-8 of the '763 patent must be affirmed.

AFFIRMED

DAVIS, Circuit Judge, dissenting.

I am concerned that the District Court denied the appellant's motion for new trial on validity simply because the judge felt compelled to do so by the Ninth Circuit's ruling on infringement, despite the District Court's strongly expressed views (in argument) that (a) the Ninth Circuit's interpretation of the patent (in the infringement appeal), without any necessary jury findings supporting that position, was "absurd", "not according to me", "not according to the jury", a position "with which I strongly take issue",<ref>The District Court somewhat earlier said: "I am rather concerned as to whether or not in the light of that most unusual act of [the Ninth Circuit], where [they] really made a finding of fact there, whether the defendant doesn't deserve a new trial on the issue that's brought back here."
The Ninth Circuit's interpretation was that the appellant's system and the appellee's claims were practically identical, with "miniscule" differences.</ref> (b) that the patents could not both be valid and infringed, but (c) that the District Court felt bound to uphold validity by the Ninth Circuit's infringement decision because that appellate court interpreted the patents broadly as a "conclusion of law", though the District Court clearly considered that that interpretation, if proper, would necessarily depend on findings of fact to be made by the jury but not actually made in this case.

Because the District Court indisputably believed that the original jury had not interpreted the patent, on the basis of the court's instructions, in the way the Ninth Circuit had done, and because, if one accepts the Ninth Circuit's interpretation, appellant was entitled to a new trial so that the "obviousness" findings required by Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), should be made by a jury with respect to the Ninth Circuit's interpretation of the claims, a new trial should have been granted. It was not granted solely because the District Court erroneously felt bound with respect to validity by the Ninth Circuit's infringement decision. <ref> It is undisputed that the Ninth Circuit did not consider validity at all</ref> That was an abuse of discretion, calling for reversal of the refusal to grant the new trial requested by appellant and a remand for a new trial on validity only.<ref>I agree with the majority that this court should not reconsider the Ninth Circuit's determination of infringement</ref> "Rule 59 [New Trials] gives the trial judge ample power to prevent what he considers to be a miscarriage of justice. It is his right, and indeed his duty, to order a new trial if he deems it in the interest of justice to do so." (emphasis added) 11 Wright & Miller, Federal Practice and Procedure, Civil Sec. 2803, pp. 31-2 (1973). When, as here, the trial judge refuses to grant a motion for a new trial which he plainly should have granted, an abuse of discretion has occurred. Ruiz v. Hamburg-American Line, 478 F.2d 29, 34 (9th Cir .1973).

===FOOTNOTES===
<references/>

Perkin-Elmer Corporation v. Computervision Corporation, 732 F2d 888 (1984)

2010-02-22T15:25:27Z

Maura:

732 F2d 888 Perkin-Elmer Corporation v. Computervision Corporation

732 F.2d 888 221 U.S.P.Q. 669 The PERKIN-ELMER CORPORATION, a corporation of New York, Appellee, v. COMPUTERVISION CORPORATION, a corporation of Delaware, Appellant.

Appeal No. 83-1195.

United States Court of Appeals, Federal Circuit.

April 6, 1984.

Richard J. Birch, Boston, Mass., argued for appellant. With him on brief was James H. Mitchell, Boston, Mass. Robert M. Taylor, Jr., Los Angeles, Cal., argued for appellee. With him on brief were David B. Murphy, Thomas F. Smegal, Jr., and Robert J. Bennett, Los Angeles, Cal.
Before MARKEY, Chief Judge, and DAVIS, BALDWIN, KASHIWA and BENNETT, Circuit Judges. MARKEY, Chief Judge.

Appeal from a judgment of the District Court for the Northern District of California holding valid and infringed claims 1 through 5, 7 and 8 of U.S. Patent No. 3,748,015 ('015 patent), issued to Abe Offner, and claims 1 through 8 of U.S. Patent No. 3,821,763 ('763 patent), issued to Robert M. Scott. Both patents were assigned to The Perkin-Elmer Corporation (Perkin-Elmer). We affirm.

BACKGROUND

Perkin-Elmer's "Micralign" was the first commercially successful projection printer for use in manufacturing semiconductor integrated circuits. A projection printer uses optics to trace a circuit design onto a silicon wafer. Because a high degree of accuracy is demanded, the central component of a projection printer is its optical system. The optical structure in Perkin-Elmer's "Micralign" is disclosed in the '015 and '763 patents. Computervision Corporation (Computervision) sells a projection printer known as the "Cobilt CA-3000" (CA-3000), which is similar to the Micralign.

A PROCEDURAL MORASS

In late 1977, Perkin-Elmer sued Computervision for infringement of the patents. Computervision counterclaimed for a declaratory judgment that the patents were invalid and not infringed.

Over Computervision's objection, Perkin-Elmer's demand for a jury trial was honored. The jury trial lasted nine days with each party introducing extensive testimony of numerous experts. Fourteen witnesses appeared before the jury and twelve depositions were read into the record. One hundred and forty documents and physical exhibits were introduced in evidence.

After receiving unchallenged instructions on the issues it was to decide, the jury deliberated and returned a general verdict that claims 1-8 of each patent were valid, not obtained by fraud, and not infringed. No special verdicts under Rule 49(a) and no interrogatories under Rule 49(b) had been sought. Computervision had not objected to the form of verdict submitted to the jury. The district court denied Perkin-Elmer's motions for a judgment of infringement notwithstanding the verdict ("JNOV") and for a new trial and entered a judgment of noninfringement. Perkin-Elmer's request for entry of judgment on the validity verdict was denied and, according to counsel for Computervision, Computervision accepted that denial. The refusal to enter judgment on the jury's validity verdict, the reasons for which are not known, served as a foundation of a procedural morass.

Perkin-Elmer appealed the non-infringement judgment, and the district court's refusal to enter a judgment of patent validity, to the Court of Appeals for the Ninth Circuit (Ninth Circuit). Though the judgment was entered only on the noninfringement verdict, and was viewed by the Ninth Circuit as not final, that court elected to entertain the appeal because "[t]he district court here obviously was not trying to avoid adjudication on the issue of patent validity". Perkin-Elmer Corp. v. Computervision Corp., 680 F.2d 669, 216 USPQ 760 (1982).

The Ninth Circuit held that Perkin-Elmer's motion for JNOV should have been granted, said nothing on the merits of the refusal to enter judgment on validity, and reversed and remanded the case for further proceedings. The Court denied a petition for rehearing and declined a suggestion for rehearing in banc.<ref> The Ninth Circuit filed a two-page opinion, the portions relevant here consisting in their entirety of these four paragraphs:
Computervision's CA-3000 functions in a strikingly similar way [to the Micralign]. The Micralign and the CA-3000 are the only projection printers on the market in which the optics consist entirely of mirrors. Both axially space a small convex mirror behind a larger concave one. Both use a plate with an annular slit to restrict the light passing through the optical system and both have an identical light path from the circuit design to the wafer. The only difference is that the CA-3000 uses a less convex mirror and places the mirrors farther apart.
***
The differences between the Micralign and the CA-3000 are miniscule. The CA-3000 merely uses a less convex mirror and places it further from the concave mirror than the Micralign does. Otherwise, the two optical systems are identical. Both rely on mirrors for their optics and employ one mirror placed behind another to reflect a circuit design onto a silicon wafer. A minor adjustment of the curvature and placement of one mirror does not place it beyond the reach of the patented procedure. Many variations are possible within the range of any patented procedure. Here, the degree of difference between the two systems created by the Cobilt's [CA-3000's] variation is minimal.
Therefore the CA-3000 does infringe Patent '015 and Patent '763 and Perkin-Elmer's motion for judgment notwithstanding the verdict should have been granted by the district court.</ref>

At a hearing on remand, Perkin-Elmer informed the district court of Sarkisian v. Winn-Proof Corp., 688 F.2d 647 (9th Cir.1982), cert. den., Carsonite International Corp. v. Carson Manufacturing Co., --- U.S. ----, 103 S.Ct. 1499, 75 L.Ed.2d 930 (1983), which had been decided a week before and which had articulated special guidelines for use in jury trials of patent suits. The district court deferred entering judgment pending consideration of Sarkisian, ordered briefs, and set for oral argument the matter of entering a judgment on the jury's verdict that the patents were valid.

At argument, the court stated that the findings of the jury supported a conclusion of non-obviousness, that there was considerable evidence supporting those findings, and that non-obviousness was clear as a matter of law. The court also noted that a patent is presumed valid, that the burden of persuasion remains with the party asserting invalidity, and that Computervision did not satisfy that burden. In accordance with the Ninth Circuit's mandate and in full compliance with Sarkisian, the district court determined that the patents were valid and infringed and granted Perkin-Elmer's motion for entry of judgment so stating.

The district court denied these Computervision motions: for JNOV on validity; for a new trial, based on an alleged denial of jury trial on a fact issue underlying the determination of nonobviousness; and to vacate the judgment, grant a new trial, and reopen discovery, all based on alleged fraudulent conduct of Perkin-Elmer during trial and appeal to the Ninth Circuit.

Computervision appeals the judgment, asserting error in denial of all its motions except that to reopen discovery. Further, Computervision seeks review and reversal of the Ninth Circuit's decision, accompanied by reinstatement of the original jury verdict of noninfringement.

ISSUES

(1) Whether the district court erred in denying Computervision's motion for JNOV on validity.

(2) Whether the district court abused its discretion in denying Computervision's motion for new trial based on absence of a jury trial of a fact issue underlying the determination of nonobviousness.

(3) Whether the decision of the Ninth Circuit should be reviewed.

(4) Whether the district court abused its discretion in denying Computervision's motions for new trial and to vacate the judgment based on allegations of fraudulent conduct.

OPINION

A. Denial of the Motion for JNOV on Validity

1. Standard of Review

When a party moves for JNOV, the trial court must consider all the evidence in a light most favorable to the non-mover, must draw reasonable inferences favorable to the non-mover, must not determine credibility of witnesses, and must not substitute its choice for that of the jury between conflicting elements in the evidence. Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1512, 220 USPQ 929, 936 (Fed.Cir.1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546, 220 USPQ 193, 197 (Fed.Cir.1983). Following those guidelines, the court determines whether the evidence so viewed constitutes "substantial evidence" in support of the jury's findings and, if so, whether those findings can support the legal conclusions necessarily drawn by the jury in accord with its instructions enroute to its verdict. Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 936. "Substantial" evidence is such relevant evidence from the record taken as a whole as might be accepted by a reasonable mind as adequate to support the finding under review. Loyce E. Hayes v. Department of the Navy, 727 F.2d 1535 at 1537 (Fed.Cir.1984); SSIH Equipment S.A. v. USITC, 718 F.2d 365, 371 n. 10, 218 USPQ 678, 684 n. 10 (Fed.Cir.1983). In sum, only when the court is convinced upon the record before the jury that reasonable persons could not have reached a verdict for the non-mover, should it grant the motion for JNOV. Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 936.

In its review, the district court must not lose sight of the presumption of validity. Id., 727 F.2d at 1512-13, 220 USPQ at 934-35. Where, as here, there is a verdict of validity, the question is not whether the patentee had introduced sufficiently substantial evidence to support the verdict, but whether the challenger's evidence so met the burden imposed by 35 U.S.C. Sec. 282 (" [t]he burden of establishing invalidity of a patent or any claim shall rest on the party asserting such invalidity") that reasonable jurors could not have concluded that the challenger failed to overcome that burden. Id.

To facilitate review on a motion for JNOV and on appeal, it is preferred that a jury be provided with special interrogatories designed to reveal more clearly the findings it made. Absent such interrogatories, the law presumes the existence of findings necessary to support the verdict the jury reached. Id., 727 F.2d at 1516, 220 USPQ at 939. Accord, Velo-Bind, Inc. v. Minn. Mining & Mfg. Co., 647 F.2d 965, 971, 211 USPQ 926, 932 (9th Cir.1981); Control Components, Inc. v. Valtek, Inc., 609 F.2d 763, 767, 204 USPQ 785, 788-89 (5th Cir.), cert. den. 449 U.S. 1022, 101 S.Ct. 589, 66 L.Ed.2d 484 (1980); Tights, Inc. v. Acme-McCrary Corp., 541 F.2d 1047, 1061, 191 USPQ 305, 314 (4th Cir.), cert. den. 429 U.S. 980, 97 S.Ct. 493, 50 L.Ed.2d 589 (1976); White v. Mar-Bel, Inc., 509 F.2d 287, 290, 185 USPQ 129, 131 (5th Cir.1975); Panther Pumps & Equipment Co., Inc. v. Hydrocraft, Inc., 468 F.2d 225, 228, 175 USPQ 577, 579 (7th Cir.1972), cert. den. 411 U.S. 965, 93 S.Ct. 2143, 36 L.Ed.2d 685 (1973). The particular findings the jury must make before it can reach a verdict are controlled by the court's instructions to the jury. Railroad Dynamics, Inc., supra, 727 F.2d at 1516, 220 USPQ at 939.

On appeal from denial of a motion for JNOV, appellant must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied from the jury's verdict cannot in law be supported by those findings. Id., 727 F.2d at 1517, 220 USPQ at 935-36.

Computervision refers repeatedly to the trial judge's statement of a personal view, made in the course of commenting on the Ninth Circuit's decision, that the claims at issue could not be both valid and infringed. We review judgments, however, not passing statements. Id., 727 F.2d at 1512, 220 USPQ at 934; Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540, 218 USPQ 871, 880 (Fed.Cir.1983); In re Hyatt, 708 F.2d 712, 715, 218 USPQ 195, 198 (Fed.Cir.1983). The district court made no finding that the claims were not infringed, or if they were, that they could not be valid. The appealed judgment states that the claims are valid and infringed. The trial judge had ample opportunity to grant Computervision's motion for JNOV, but did not. On the contrary, reflecting proper respect for the jury's function and the conclusion of the Ninth Circuit, the trial judge concluded that Computervision did not satisfy the JNOV requirements properly imposed by the law on one seeking to set aside a jury verdict.

2. Anticipation

The jury was instructed under 35 U.S.C. Sec. 102<ref> Section 102 provides that a person is entitled to a patent unless one of a series of circumstances, described in subparagraphs (a)-(g) of that section, apply. Section 102(a) precludes a patent if "the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent"</ref> that there is no anticipation "unless all of the same elements are found in exactly the same situation and united in the same way ... in a single prior art reference". See e.g., Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed.Cir.1983). From that instruction and the jury's verdict, the law presumes that the jury found no anticipation under Sec. 102 because of differences (discussed infra ) between the claimed inventions and the prior art. Having shown no basis for determining that the record is devoid of substantial evidence to support that finding, Computervision has not met its burden on appeal, i.e., to establish that a reasonable juror could not have found that Computervision failed to overcome the presumption of novelty included within the presumption of validity mandated by 35 U.S.C. Sec. 282.

3. Obviousness

Determining obviousness/nonobviousness under 35 U.S.C. Sec. 103<ref>Section 103 provides in relevant part:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.</ref> involves factual inquiries into: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness, e.g., long felt need, commercial success, failure of others, copying, unexpected results. See, e.g., Environmental Designs, Ltd. v. Union Oil Co. of Calif., 713 F.2d 693, 695, 218 USPQ 865, 867 (Fed.Cir.1983); Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1379-82, 217 USPQ 1281, 1283-85 (Fed.Cir.1983). The critical question, as Sec. 103 makes plain, is whether the invention as a whole would have been obvious to one of ordinary skill in the art at the time it was made.

Included within the presumption of validity mandated by 35 U.S.C. Sec. 282 is a presumption of nonobviousness which the patent challenger must overcome by proving facts with clear and convincing evidence. American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358-59, 220 USPQ 763, 769-70 (Fed.Cir.1984); Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983). The presumption remains intact even upon proof of prior art not cited by the Patent and Trademark Office (PTO), Raytheon, supra, 724 F.2d at 960, 220 USPQ at 599, though such art, if more relevant than that cited, may enable the challenger to sustain its burden. Id.

The obviousness/nonobviousness issue is a legal issue and may be submitted to the jury with proper instructions. Railroad Dynamics, Inc., supra, 727 F.2d at 1517, 220 USPQ at 937; White v. Jeffrey Mining Co., 723 F.2d 1553, 1558, 220 USPQ 703, 705 (Fed.Cir.1983); Connell, supra, 722 F.2d at 1547, 220 USPQ at 197.

The normal sequence of events following the jury's delivery of its verdict is: (1) automatic entry of judgment on the verdict promptly by the clerk in the
absence of contrary instructions from the court, Rule 58, Fed.R.Civ.P.;<ref>The record does not indicate whether such instructions were issued. The trial court's denial of Perkin-Elmer's request for entry of judgment on the jury's validity verdict may have been interpreted by the clerk as the equivalent of such instructions. Perkin-Elmer apparently did not seek a writ of mandamus but included the denial of its request as an element of its appeal</ref> (2) within 10 days, the losing party, whose earlier motion for directed verdict had been denied, may file a motion for judgment notwithstanding the verdict. Rule 50(b), Fed.R.Civ.P.

In considering on remand Perkin-Elmer's motion for entry of judgment on the verdict of validity, the trial court had the then applicable language of the opinion in Sarkisian v. Winn-Proof Corp., supra, called to its attention. The court did not, however, appear to interpret the indication in that opinion that it should determine nonobviousness "independently" of the jury's verdict as requiring it to totally ignore the rules applicable to jury trials in non-patent cases, or to proceed as though the jury had never been impanelled, had never been instructed on the issue, had never considered the issue, and had never rendered a verdict based on its conclusion. On the contrary, in concluding, as did the jury, that the inventions would have been nonobvious, the court proceeded in a manner similar to that involved in deciding a motion JNOV and used the jury's presumed findings supported by substantial evidence. The court's use of the jury's findings in this case indicates that it was in fact answering the appropriate question: can the jury's presumed findings support conclusion of nonobviousness encompassed in the jury's verdict of validity?<ref>The view suggested in Sarkisian, that a jury verdict on nonobviousness is at best advisory, would make charades of motions for directed verdict or JNOV under Fed.R.Civ.P. 50 in patent cases. Those motions apply only to binding jury verdicts. See 9 Wright and Miller, Federal Practice and Procedure Sec. 2523 (1982) Moreover, use of an advisory jury is limited to actions not triable of right by a jury, Rule 39(c), Fed.R.Civ.P., and Rule 52(a), Fed.R.Civ.P., requires the court to enter its own set of findings and conclusions just as it must do when sitting without a jury. That requirement, and the reluctance to take days or weeks of jurypersons' lives for service as mere advisors, appear to account for the virtually universal non-use of advisory juries. Moreover, the notion that patent cases are somehow outside the mainstream of the law, and that special, judge-designed rules not applicable to other types of jury trials must be applied when a "patent case" is tried before a jury, finds no support in the statute, in the Federal Rules of Civil Procedure, or in the Seventh Amendment to the Constitution.</ref> The trial court effectively answered the same question in then denying Computervision's motion for JNOV.

The record contains strong objective evidence--which Computervision does not contest--in support of the nonobviousness conclusion. It was stipulated that the Micralign projection printer, having as its critical element the optical system of the '015 and '763 patents, was an outstanding commercial success and was the first commercially successful projection printer for use in the manufacture of semiconductor integrated circuits. Testimony unchallenged on appeal established that the Micralign had numerous advantages over previous printers, became the industry standard, revolutionized the industry, and satisfied a long felt need; unchallenged testimony also showed surprise at the exceptional results achieved by the invention claimed in the '015 patent, and the radical departure from traditional approaches to lens design represented by the invention claimed in the '763 patent.

Such objective evidence can constitute "highly probative, objective criteria fully capable of serving as a foundation for the legal conclusion of unobviousness". Raytheon Co. v. Roper Corp., supra, 724 F.2d at 961, 220 USPQ at 600. That objective evidence, and the inadequacies of the prior art summarized below, constitute a formidable obstacle to Computervision's burden of establishing on appeal that reasonable jurors could not have concluded that it failed to meet its statutory burden under Sec. 282. Computervision did not overcome that obstacle.

The ensuing discussion of the prior art illustrates the presence of substantial evidence supporting the facts presumably found by the jury.

(a) Differences Between the Invention Claimed in the '015 Patent and the Prior Art

(1) The '015 Patent

The invention claimed in the '015 patent is illustrated in Figure 2:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Two concentric spherical mirrors, one concave (21) and the other convex (20), have their centers of curvature at point P on reference axis SA. There are three reflections in the system: the light from the object plane (O) is reflected off mirror 21 to mirror 20, off mirror 20 to a second portion of mirror 21, and off that mirror portion to the image plane (I). Mirror 20 has a radius of curvature (Rcx) greater than one half that of mirror 21 (Rcc) by a slight amount, referred to by Perkin-Elmer as . The system creates a stigmatic image, defined in testimony as pointlike imagery, where all the rays from a point on an object come to a point on an image without aberrations. The '015 patent describes the invention as a system in which "the image is formed in accurate micro detail with high resolution".

Claim 1 is illustrative:

1. A unity magnification catoptric [i.e., using only mirrors] image-forming system comprising at least one concave mirror and at least one convex mirror, said mirrors being supported with their centers of curvature substantially coincident, and means to define a location for an object the image of which after at least three reflections including at least one reflection at each of said mirrors is a real image at a second location, the sum of the powers of said convex mirrors multiplied by the numbers of reflections thereat respectively being sufficiently less than the sum of the powers of said concave mirrors multiplied by the numbers of reflections thereat respectively to produce at said second location a stigmatic image of an object in said first location.

The system of claim 1 is one of unity magnification and is image forming. Those limitations appear in the preamble, but are necessary to give meaning to the claim and properly define the invention. See In re Bulloch, 604 F.2d 1362, 1365, 203 USPQ 171, 174 (CCPA 1979); Kropa v. Robie, 187 F.2d 150, 151-52, 38 CCPA 858, 861, 88 USPQ 478, 480-81 (CCPA 1951). The "sum of the powers" language of claim 1, also present in claims 2-4, is equivalent to the language in claims 5 and 7-8 that Rcx = Rcc/2 + . Because the claims have generally been argued together, the validity of all the claims stands or falls with claim 1. See, e.g., Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983).

(2) Differences From the Prior Art

The Reed patent (3,190,171), considered by the PTO, discloses a viewing system simulating the appearance of an aircraft carrier as the pilot approaches for a landing. The system employs concentric convex and concave mirrors with a radii ratio of 2:1. The image system of the carrier is not of unity magnification and is a viewing, not an image forming, system; the carrier image is a virtual, relatively poor image, whereas claim 1 requires formation of a real, stigmatic image; it involves a 2:1 mirror system, whereas claim 1 involves a non 2:1 system.<ref>There are other differences in the other claims. For example, claim 7 requires that the "means to define a location for an object" include "an arcuate slit of radius substantially equal to the distance of said object location from said center of curvature"</ref> Though Reed said he modified his system to achieve a non-concentric 2:1 system, the modified system does not correspond to the concentric non-2:1 system of the '015 patent.

Computervision urges that the Reed disclosure be viewed backwards, i.e., as a system for forming an image of the pilot's eye. There is no evidence that those of ordinary skill in the art would so view it, and such distortion of a reference in light of a patentee's disclosure is pure hindsight.

Cited in Computervision's brief (though not in its closing argument to the jury) is the Schmidt telescope, used principally since 1930 in astronomy. Unlike the claimed invention, the Schmidt system is not a catoptric, i.e., all mirror, system, has chromatic aberration, does not produce a stigmatic image, and has no convex mirror.

There was testimony about modifying the Schmidt telescope by replacing a photographic plate therein with a convex mirror. Assuming, arguendo, the propriety of such testimony, the modification is not catoptric (all mirrors), does not produce unity magnification, lacks "means for defining the location of an object", and does not produce the stigmatic image of the claimed invention.

(b) Differences Between the Invention Claimed in the '763 Patent and the Prior Art

(1) The '763 Patent

The '763 invention is illustrated in Figs. 1 and 2:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Figure 1 depicts two groups, 10 and 11, of lens elements together forming a lens 16 having optical center C. The invention is not limited to "lens only" (dioptric) systems; the image forming elements can be catoptric (all mirrors) or catadioptric (lenses and mirrors). The lens elements are rotationally symmetric about a common optical axis OA. The system also includes a mask 21 having a slit 22 positioned adjacent a conjugate focal plane of the lens 16 for the object field being magnified, and an image receiving surface, such as film 18, disposed behind the slit in a focal plane of the lens 16 for the object field of interest. The elements of the system are fixed with respect to each other, except that film 18 may be advanced in its own plane relative to the mask as the system is moved with respect to the object field. The system is intended to image a distant object field at infinity on the left.<ref>Annular field systems need not work only at infinity. They can work at finite conjugates, in which case the mask having a slit therein may be placed near the object or near the image, or one may be disposed near each</ref> The slit 22 is of such curvature and radial extent, and is so spaced from the axis OA, as to lie adjacent a part of an annular zone 20 of the second principal focal plane of lens 16 in which case the lens will focus bundles of collimated light from the left and will have a selected range of values for the angle of inclination FA of those bundles to the system axis.

Claims 1-8 of the '763 patent include six structural and two method claims. Claims 1 and 7 are illustrative:

1. Image-forming apparatus comprising image-forming optical elements arranged in an imaging system that is rotationally symmetric about an axis, said system being optically corrected to produce stigmatic imagery in an annular zone centered on said axis with all points in said zone possessing field angles other than zero, at least one imaging surface conforming substantially to at least part of said zone, aperture limiting means defining at a conjugate focal surface of said system an area whose points possess field angles corresponding to the field angles of points in said zone, said aperture limiting means being positioned to define an object field area imaged on said imaging surface, and means to scan said object field area with respect to said system.

7. The method of recording an image of an extended object which comprises the steps of

a. providing an image-forming system that is rotationally symmetric about an axis and optically corrected to produce stigmatic imagery in an annular zone centered on said axis with all points in said zone possessing field angles other than zero,

b. scanning an object field past said system, and

c. recording through time that portion of the image of said object field that produced by said system at a segment of said annular zone. Because the claims have generally been argued together, the validity of all the claims stands or falls with claims 1 and 7.

(2) Differences From the Prior Art

Computervision summarily asserts in its brief, without explanation, that the Reed and Schmidt disclosures are applicable. That bare assertion cannot possibly satisfy Computervision's appellate burden of showing that no reasonable juror could have concluded that it had failed to prove facts rendering the '763 patent claims invalid.

The Sonne and Goddard patents are put forward. Sonne, described in the '763 patent, discloses a stereoscopic camera for aerial photography. Goddard discloses essentially the same aerial camera system, except that Goddard's film has layers photosensitive to different colors. Computervision has not demonstrated that no reasonable juror could have found that Sonne or Goddard fail to disclose, for example, these limitations of claims 1 and 7: that the system be "optically corrected to produce stigmatic imagery"; and that such imagery be "in an annular zone centered on said axis, with all points in said zone possessing field angles other than zero".

Citing the sparse testimony of a Perkin-Elmer expert describing a Cook-Triplet lens as "any lens combination which has two positive lenses, separated with a negative lens between them", Computervision's brief contains no articulation and no citation to the record to indicate what was presented to the jury concerning the claim elements and whatever the Cook-Triplet lens is alleged to have taught. The Appendix contains no description or drawing of a Cook-Triplet lens. In sum, Computervision's burden of showing error by the trial court in denying its motion for JNOV is not assisted by its reference to testimony about the Cook-Triplet lens.

CONCLUSION ON VALIDITY

Nothing in the prior art anticipates or, considered singularly or as a whole, would have suggested, the inventions claimed in the '015 and '763 patents. The objective evidence is strong in support of the judge's ruling upholding the jury's verdict on validity. Thus, the district court did not err in denying Computervision's motion for JNOV.

B. Loss Of Right To Jury Trial

Though it had opposed Perkin-Elmer's demand for a jury trial, Computervision argued it was deprived of a jury determination of the differences between the claimed inventions and the prior art and, based on that argument, moved for a new trial.<ref>Because we dispose of the issue on other grounds, we need not decide whether Computervision's opposition to jury trial amounted to a waiver under Federal Rule 38. See e.g., Reid Bros. Logging Co. v. Ketchikan Pulp Co., 699 F.2d 1292 (9th Cir.1983)</ref> In reviewing a denial of a motion for new trial, the abuse of discretion standard applies. See e.g., Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 937. No such abuse occurred here.

Computervision says this is the first case in which a jury verdict of noninfringement was reversed without consideration of a validity verdict, resulting in unfairness. Perkin-Elmer cites numerous non-jury cases in which a court of appeals has reversed a court finding of noninfringement and remanded for entry of judgment without reconsideration of validity. It is unnecessary, however, to decide such questions. There has been a judgment of validity and infringement and it is that judgment that has been appealed to this court.

The plight alleged by Computervision results from the procedural morass described above. Had judgment been initially entered on validity and infringement, the Ninth Circuit could have considered both issues, rendering this appeal unnecessary. Yet, Computervision did not object to the district court's action, but "accepted" its refusal to enter judgment on validity.

The district court's refusal to enter judgment on validity may have been ill advised; it cannot now serve as reversible error on this appeal. The thrust of Computervision's argument here is that the Ninth Circuit's interpretation of the claims necessarily differed from that of the jury. Hence, says Computervision, the jury never determined the differences between the prior art and the claims as interpreted by the Ninth Circuit. The argument depends critically on facts merely presumed and not established, i.e., that the Ninth Circuit interpreted the claims and that its interpretation differed from that reached by the jury in following the trial judge's unchallenged instructions.

The Ninth Circuit looked at the devices and concluded that the "miniscule" difference between the Micralign and CA-3000 printers was insufficient to constitute substantial evidence in support of the jury's non-infringement verdict. 680 F.2d at 671, 216 USPQ at 761-62. That conclusion did not necessarily depend on a claim interpretation different from that in accord with which the jury was instructed. It, as the language of the Ninth Circuit opinion makes plain, rested on a different assessment of the CA-3000 printer and its equivalency to the claimed inventions:Both rely on mirrors for their optics and employ one mirror placed behind another to reflect a circuit design onto a silicon wafer. A minor adjustment of the curvature and placement of one mirror does not place it beyond the reach of the patented procedure. Many variations are possible within the range of any patented procedure. Here, the degree of difference between the two systems created by the Cobilt's variation is minimal [CA-3000].

Id.

Though the Ninth Circuit's opinion did not use the word "equivalence", that court was presumably aware that the jury had been instructed on the doctrine and its opinion spoke the language of equivalency ("functions in a strikingly similar way"; "the only difference"; "differences ... are miniscule"; "Otherwise ... identical"; "A minor adjustment ... not ... beyond the reach"; "variations ... within the range" ). Assessing equivalency involves a determination of whether the claimed invention and alleged infringing device, which are different (there would otherwise be literal infringement), perform substantially the same function in substantially the same way to give the same or substantially the same result. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950). If equivalence appears, infringement will be found unless (1) arguments or amendments made by applicant during prosecution (prosecution history estoppel) estop the patentee from asserting a range of equivalence broad enough to encompass the accused product or process; or (2) the equivalent device is within the public domain, i.e., found in the prior art, Carmen Industries, Inc. v. Wahl, 724 F.2d 932, 942, 220 USPQ 481, 489 (Fed.Cir.1983); Thomas & Betts Corp. v. Litton Systems, Inc., 720 F.2d 1572, 1579-80, 220 USPQ 1, 6-7 (Fed.Cir.1983). Determining the existence of either condition (1) or condition (2) does not require reassessment of validity. See e.g., Carmen Industries, supra, 724 F.2d at 936 n. 2, 937 n. 5, 220 USPQ at 484 n. 2, 485 n. 5. Nor does determination of the existence of either condition necessitate a re-interpretation of the claims as written. Computervision's assumptions concerning a Ninth Circuit interpretation of the claims are unsupported in the record.

C. The Ninth Circuit Decision

The decision of the Ninth Circuit is entitled to great deference under the law of the case doctrine. See Central Soya Co. v. Geo. A. Hormel & Co., 723 F.2d 1573, 1580, 220 USPQ 490, 495 (Fed.Cir.1983). That doctrine ensures judicial efficiency and prevents endless litigation. Id. Its elementary logic is matched by elementary fairness--a litigant given one good bite at the apple should not have a second.

Here, Computervision has had an eminently fair chance to litigate the infringement issue. The issue was presented to the jury, to the trial judge on Perkin-Elmer's motion, and to the Ninth Circuit on direct appeal, on petition for rehearing, and in a suggestion for rehearing in banc. Computervision prevailed in the first two instances and lost in the last three. In those circumstances, there is no basis to relitigate infringement.

We recognize that a court that established the law of a case could elect to review its earlier decision and change it if one of three "exceptional circumstances" exist: (1) the evidence on subsequent trial was substantially different; (2) controlling authority has intervened; or (3) the earlier decision was clearly erroneous and would work a manifest injustice. Central Soya, supra, 723 F.2d at 1580, 220 USPQ at 495. Revisions in the law of the case occur "very infrequently" when an appellate court is asked to review the decision of a coordinate court. 1B Moore's Federal Practice p 0.404 [4.-5 at 138].

Arguing the "clearly erroneous/manifest injustice" exception, described by our predecessor court as "stringent", and as requiring a "strong showing of clear error", Short v. United States, 661 F.2d 150, 154, 228 Ct.Cl. 535 (1981), Computervision would have us review the Ninth Circuit decision on its merits. The decision to review is a threshold consideration, for only on full review can a court determine whether the decision reviewed was clearly erroneous and produced a manifest injustice. To obtain review, an appellant must make at least a prima facie showing of error sufficient to indicate the advisability of review. A mere suspicion of error will not suffice; we must be "convinced to a certainty" that error warranting review exists. Id. Computervision has made no such convincing showing.

Computervision says the Ninth Circuit did not consider the claim language and the prior art. However, the Ninth Circuit had before it the claims, the prior art, and the parties' briefs and arguments. That the court did not specifically mention the claims and prior art in its opinion forms no basis for an assumption that it did not consider those elements in determining that the CA-3000 printer was an equivalent. That a court "do[es] not discuss certain propositions do[es] not make the decision inadequate or suggest the ... court failed to understand them". Schilling v. Schwitzer-Cummins Co., 142 F.2d 82, 84, 61 USPQ 73, 75 (D.C.Cir.1944). Moreover, "[w]e should never assume that a court of concurrent jurisdiction neglected to perform its duty". Skil Corp. v. Millers Falls Co., 541 F.2d 554, 557, 191 USPQ 548, 550 (6th Cir.), cert. den. 429 U.S. 1029, 97 S.Ct. 653, 50 L.Ed.2d 631 (1976).

In an effort to show that the Ninth Circuit did not understand the technology, Computervision says one of the two differences the court found (wider placement of the convex and concave mirrors) does not exist because the mirrors are spaced the same in both systems. That error, however, would, if anything, have favored Computervision because it would have increased the court's perceived differences from one to two. Computervision has not made a prima facie showing that the finding of an allegedly non-existent difference constituted clear error producing manifest injustice.

D. Alleged Fraudulent Conduct

The motion for a new trial or to vacate the judgment under Rule 60(b) alleged fraudulent conduct. On review of a denial of a motion to vacate under Rule 60(b), the standard, like that on review of a denial of a motion for new trial, is whether an abuse of discretion occurred. See e.g., CTS Corp. v. Piher Int'l Corp., 727 F.2d 1550 at 1555 (Fed.Cir.1984). None did.

The allegation of fraudulent conduct rests on a statement made after trial in this action by counsel for a defendant (Canon) in a separate case filed by Perkin-Elmer. At a combined hearing in connection with this action and that case, counsel for Canon said that before trial in this action Perkin-Elmer changed its Micralign printer from the concentric non-2:1 system of the '015 patent claims to the nonconcentric 2:1 system of the CA-3000 printer to get an improved result. Computervision says Perkin-Elmer witnesses "fraudulently" testified that the printer claimed in the '015 patent and the CA-3000 printer achieve "substantially the same" result and thereby rendered the patents in suit unenforceable. We disagree.

Assuming that a statement of counsel for a defendant in another case can be viewed as testimony or as evidence, exact identity of results is not required in establishing equivalency. Though Graver Tank, supra, alternatively speaks of the "same" and "substantially the same" result, 339 U.S. at 608, 70 S.Ct. at 856, the doctrine is clearly based on substantial, not exact, identity:

Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect.

Id. at 609, 70 S.Ct. at 856. Similarly, though the doctrine was initially articulated in Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1361, 219 USPQ 473, 480 (Fed.Cir.1983) as appearing to involve the "same" result, when the court applied the doctrine it referred to "substantially the same" result. 717 F.2d at 1366, 219 USPQ at 484. Moreover, our predecessor court has recognized that the results achieved may be "substantially" the same. See e.g., Lockheed Aircraft Corp. v. United States, 553 F.2d 69, 79, 193 USPQ 449, 461, 213 Ct.Cl. 395, 414 (1977); Pratt & Whitney Co. v. United States, 345 F.2d 838, 841, 145 USPQ 429, 431, 170 Ct.Cl. 829, 833 (1965).<ref>
9 Though some opinions of this court contain references to the "same" result, the court was not required to make a "same"--"substantially the same" distinction in the cases before it. See e.g., Carmen Industries, Inc. v. Wahl, supra; Thomas & Betts Corp. v. Litton Systems, Inc., supra</ref>

Thus, if Perkin-Elmer changed its commercial device to get an improved result by making it the same as the CA-3000, it would not be inconsistent-- much less fraudulent--for Perkin-Elmer witnesses to testify that the claimed and accused devices are nevertheless equivalent. A patentee need produce no commercial device. Infringement is determined by comparison with the patentee's claimed invention, not with its marketed product. CTS Corp. v. Piher Int'l Corp., 527 F.2d 95, 100, 188 USPQ 419, 423 (7th Cir.1975), cert. den. 424 U.S. 978, 96 S.Ct. 1485, 47 L.Ed.2d 748 (1976).

Presumably, as above indicated, the Ninth Circuit so determined equivalence, and, though it did not in its opinion employ the words of Graver Tank, supra, its words do indicate that it found "substantially the same" result. Perkin-Elmer's witnesses testified that the results are substantially the same, not identical. The instructions to the jury defined equivalency in terms of "substantially the same" result. Computervision's own expert testified that the CA-3000 optical system performs the same work in substantially the same way as the '015 patent system, and accomplished a similar result. For all of those reasons, Computervision's assertion of fraudulent conduct is unpersuasive.

The district court committed no abuse of discretion in denying Computervision's alternative motions for new trial or to vacate the judgment under Rule 60(b).

Decision

The denial of Computervision's motion for JNOV having been correct, the denial of its motions for new trial and to vacate the judgment having represented no abuse of discretion, the decision of the Ninth Circuit having established the law of the case, and no legal error having been shown, the judgment of validity and infringement of claims 1-5, 7 and 8 of the '015 patent and claims 1-8 of the '763 patent must be affirmed.

AFFIRMED

DAVIS, Circuit Judge, dissenting.

I am concerned that the District Court denied the appellant's motion for new trial on validity simply because the judge felt compelled to do so by the Ninth Circuit's ruling on infringement, despite the District Court's strongly expressed views (in argument) that (a) the Ninth Circuit's interpretation of the patent (in the infringement appeal), without any necessary jury findings supporting that position, was "absurd", "not according to me", "not according to the jury", a position "with which I strongly take issue",<ref>The District Court somewhat earlier said: "I am rather concerned as to whether or not in the light of that most unusual act of [the Ninth Circuit], where [they] really made a finding of fact there, whether the defendant doesn't deserve a new trial on the issue that's brought back here."
The Ninth Circuit's interpretation was that the appellant's system and the appellee's claims were practically identical, with "miniscule" differences.</ref> (b) that the patents could not both be valid and infringed, but (c) that the District Court felt bound to uphold validity by the Ninth Circuit's infringement decision because that appellate court interpreted the patents broadly as a "conclusion of law", though the District Court clearly considered that that interpretation, if proper, would necessarily depend on findings of fact to be made by the jury but not actually made in this case.

Because the District Court indisputably believed that the original jury had not interpreted the patent, on the basis of the court's instructions, in the way the Ninth Circuit had done, and because, if one accepts the Ninth Circuit's interpretation, appellant was entitled to a new trial so that the "obviousness" findings required by Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), should be made by a jury with respect to the Ninth Circuit's interpretation of the claims, a new trial should have been granted. It was not granted solely because the District Court erroneously felt bound with respect to validity by the Ninth Circuit's infringement decision. <ref> It is undisputed that the Ninth Circuit did not consider validity at all</ref> That was an abuse of discretion, calling for reversal of the refusal to grant the new trial requested by appellant and a remand for a new trial on validity only.<ref>I agree with the majority that this court should not reconsider the Ninth Circuit's determination of infringement</ref> "Rule 59 [New Trials] gives the trial judge ample power to prevent what he considers to be a miscarriage of justice. It is his right, and indeed his duty, to order a new trial if he deems it in the interest of justice to do so." (emphasis added) 11 Wright & Miller, Federal Practice and Procedure, Civil Sec. 2803, pp. 31-2 (1973). When, as here, the trial judge refuses to grant a motion for a new trial which he plainly should have granted, an abuse of discretion has occurred. Ruiz v. Hamburg-American Line, 478 F.2d 29, 34 (9th Cir .1973).

===FOOTNOTES===
<references/>

Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc., 546 F.2d 530 (1976)

2010-02-22T04:16:27Z

Maura:

546 F2d 530 Universal Athletic Sales Co v. American Gym Recreational & Athletic Equipment Corporation Inc
546 F.2d 530
192 U.S.P.Q. 193
UNIVERSAL ATHLETIC SALES CO., a corporation, Appellant,
v.
AMERICAN GYM, RECREATIONAL & ATHLETIC EQUIPMENT CORPORATION,
INC., et al.
No. 76-1023.
United States Court of Appeals,
Third Circuit.
Argued Sept. 9, 1976.
Decided Nov. 19, 1976.
As Amended Dec. 30, 1976.
Robert D. Yeager, Robert DeMajistre, Pittsburgh, Pa., Lewis M. Dalgarn, Los Angeles, Cal., for appellant; Nilsson, Robbins, Dalgarn & Berliner, Los Angeles, Cal., of counsel.

Thomas H. Murray, Pittsburgh, Pa., Hymen Diamond, Monroeville, Pa., for appellees.

Floyd B. Carothers, Pittsburgh, Pa., for appellee, Donald E. Pinchock.

Before ADAMS, ROSENN and GARTH, Circuit Judges.

OPINION OF THE COURT

ADAMS, Circuit Judge.

1
At issue in this case is the validity of a United States patent<ref>United States Letters Patent No. 2,932,509 for "Body Exercising Apparatus," issued on April 12, 1960</ref> that pertains to a weight-lifting apparatus. Originally granted to Harold Zinkin, the patent was owned by Universal Athletic Sales Co. at the time of suit. The patent consists of eight claims, and the district court struck down two of them on grounds of anticipation and obviousness.<ref>The original opinion of the district court is reported at 397 F.Supp. 1063 (W.D.Pa.1975). That opinion subsequently was amended, and the amended judgment is set forth at 397 F.Supp. at 1074</ref> We must decide whether these rulings were warranted.

2
Two issues underlie the basic question of patent validity now before the Court. The first concerns the controlling weight accorded by the trial judge to the testimony of defendants' principal expert witness, an associate in the law firm representing two of the defendants. Assuming that such testimony deserved little or no weight, as plaintiff maintains, we must then decide the second issue, whether there was nonetheless evidence sufficient to support the decision of the district court.

I.

3
Modern technology has, of course, pervaded almost every province of human endeavor. The Zinkin patent demonstrates the verity of this postulate, for its deals with a somewhat unusual activity weight-lifting. Specifically, the patent relates to the chest-press exercise, one of the cornerstones of the bodily arts. As athletes and physical fitness enthusiasts well know, the chest press enables the zealous practitioner to develop the musculature of his upper torso. Like many modern advances, the Zinkin patent attempts to retain the advantages of old methods, while conferring added benefits with the new.

4
In the traditional chest press, the exerciser lies on a bench and raises a free barbell from his chest to a position in which his arms are fully extended. He raises and lowers the barbell for as long as he desires or is able. The exercise requires the continuing assistance of another person, the "spotter." Not only must the spotter hand the barbell to the exerciser at the inception of the routine, but he must also attempt to retrieve the bar should it begin to totter. Occasionally, the spotter is unable to catch the barbell so that it falls upon the exerciser, causing injury that can be quite serious.

5
The patent in this appeal discloses an apparatus which permits an exerciser to simulate, safely and effectively, the chest press exercise.<ref>The claims of the Zinkin patent that are contested by the defendants contain the following descriptions:

"3. A body exercising apparatus comprising an elongated substantially horizontal table having a predetermined head end and a foot end, an elongated bar extended from the head end of the table in substantial alignment therewith and having an end adjacent to the table and an opposite end, means pivotally mounting the extended end of the bar for pivotal movement about a substantially horizontal axis transversely of the table and in spaced relation to the head end thereof whereby elevational movement of the bar causes the end thereof adjacent to the table to describe an arc with its concave side disposed toward the table, a pair of handles aligned transversely of the table, means rigidly mounting the handles on the bar for integral pivotal movement therewith, stop means engageable with the bar limiting downward travel of the handles to positions in upwardly spaced relation to the table, and means connected to the bar resistive to upward pivotal movement thereof."

"4. A body exercising apparatus comprising an elongated substantially horizontal table adapted to support a person in supine position thereon having a predetermined head end and foot end, a framework adjacent to the head end of the table, an elongated bar pivotally mounted in the framework in substantial alignment with the table for movement about a substantially horizontal axis transversely of the table in spaced relation to the head end thereof and said bar being extended toward the table, a pair of handles rigidly mounted on the bar and disposed on opposite sides of the head end of the table, said bar terminating short of the table and leaving the area above the head end thereof free from obstruction, adjustable weight means borne by the bar, and a stop mounted in the framework engageable with the bar limiting downward pivotal movement thereof to a position with the handles disposed at an elevation above the table."
</ref> To use the patented apparatus, the exerciser lies upon a table in a supine position and pushes against handles in an upward movement. These handles shift in an arcuate fashion, analogous to the movement of the bar in the chest press exercise. They extend from a box-like structure which supports and contains the lifting mechanism. The design of the apparatus is such that the handles, the attached bar and the weights cannot strike the exerciser even should he falter. In addition, the Zinkin machine may be utilized without the assistance of a spotter. The patented apparatus thus eliminates the safety hazards posed by the conventional chest press and obviates its manpower requirements as well.<ref>The problems inherent in the simple chest press exercise had spurred several previous attempts at improvement. See Brief of Appellants, at 10-14. The "cradle" device, for example, utilized a rack which held the barbell at the beginning and end of the exercise. This primitive apparatus, however, did not eliminate the need for a spotter during the course of the exercise. Moreover, the cradle device was unstable and often flipped over, injuring the exerciser, his spotter or others. Subsequent improvements included the "power rack" and the "verti-slide." While these advances remedied the dangers posed by the chest press, their protective features often proved disruptive to the exercise routine. Consequently, prior to the Zinkin patent, many devotees of the chest press continued to use the free barbell in spite of its perils, inconvenience and added expense. The district court did not consider these primitive improvements as "prior art" with respect to the Zinkin apparatus, nor do any of the defendants</ref>

6
This action was initiated by Universal against the defendants as part of a complex litigation involving, inter alia, questions of patent infringement, unfair competition, copyright infringement and antitrust violations. When Universal alleged patent infringement in its complaint, the defendants pleaded invalidity of the patent itself. The district court severed the patent infringement and unfair competition issues for trial,<ref>For a report on the related proceedings, see the original district court opinion, 397 F.Supp. at 1065 and n.1 </ref> and the patent issue, alone, is before us on appeal. After a nonjury trial, the district court initially adjudged the Zinkin patent entirely invalid. However, an amended order vacated the earlier judgment, leaving as invalid patent claims numbered 3 and 4.

7
Defendants had developed a body-exercising apparatus very similar to that covered by the Zinkin patent. Indeed, the district court found that "the defendants' chest press apparatus would infringe the Zinkin patent if the Zinkin patent were not . . ." invalid.<ref>397 F.Supp. at 1070-71</ref> In their briefs, defendants list several differences between their own device and that of Zinkin. Nevertheless, the defendants do not vigorously contest the determination of infringement by the trial judge. Instead, they rely solely upon his ruling of invalidity, and attempt to buttress his analysis in this respect. At trial, as in the appeal now before us, the primary focus was on whether the Zinkin patent was "anticipated" or made "obvious" by the prior art.

8
Two references were relied upon by the district court in holding the Zinkin claims invalid: a patent issued to C. A. Simmons in 1871<ref>Patent No. 117,339, dated July 25, 1871, for a "Lifting Machine."</ref> and a magazine photograph, dated 1950, of a lifting machine designed by Sam Loprinzi.<ref>The photograph appeared in Strength and Health Magazine, May-June 1950, at 50</ref> Disclosing a lifting machine for "developing the muscular system," the Simmons device consists of weighted levers which the exerciser apparently lifts and lowers as part of the exercise. The Loprinzi machine is described in the photograph caption as a "super-duper pressing apparatus," but the magazine caption itself provides no information as to the features of the device or how it was to be used. Defendants' principal expert witness attempted to explain its features based solely on his examination of the photograph.

9
That expert was Firman Lyle, an associate lawyer in the law firm that represented several of the defendants.<ref>See Appendix at 280 (Trial Transcript at 383)</ref> Controlling weight was given by the district court to his testimony as to obviousness and anticipation: "The court chooses to adopt the view of defendant's expert Firman Lyle."<ref>397 F.Supp. at 1070</ref> Relying on the Simmons patent, the Loprinzi photograph, and Mr. Lyle's testimony as to these references, the trial court concluded that the two central claims of the Zinkin patent are void, since they were anticipated and made obvious by prior art.

10
For reasons to be discussed in this opinion, we have decided that the judgment of the district court must be vacated.<ref>This Court has jurisdiction pursuant to 28 U.S.C. § 1292(a)(1), for the district court below, in effect, denied an injunction against further infringement. It may be that we also possess jurisdiction pursuant to 28 U.S.C. § 1292(a)(4), which authorizes an appeal from a district court judgment in a patent infringement action that is final except for an accounting. But see 9 J. Moore's Federal Practice P 110.19(4) (1975). Because we believe that these provisions constitute sufficient grounds for jurisdiction, we did not certify this case for appeal under 28 U.S.C. § 1292(b), as desired by the district court. See 397 F.Supp. at 1074. Absent these sources of jurisdiction, however, we would have issued the requisite § 1292(b) certificate because this case raises substantial issues, the resolution of which should materially enhance resolution of this protracted litigation</ref>II.

11
For the district court to have granted controlling weight to the testimony of Mr. Lyle constituted error for two reasons. First, because Mr. Lyle's qualifications as an expert are questionable, at least insofar as this litigation is concerned, the trial judge erred in according great weight to his opinions. Second, the district court committed error in failing to discount the value of the testimony, given the interest in the litigation of the law firm with which Mr. Lyle was associated.

A.

12
Universal first contends that Mr. Lyle's testimony should have been excluded on the ground that he was not an expert with respect to the patent claims at issue here.

13
This Court previously has delineated the standard which governs the competency of an expert witness in a particular case. As we noted in United States v. 60.14 Acres of Land,12 an expert witness " 'must have such skill, knowledge and experience in (the) field or calling as to make it appear that his opinion or inference will probably aid the trier in his search for truth.' "13 Ordinarily, the determination of competency of an expert witness rests within the discretion of the trial court.14 The Supreme Court has posited that "the trial judge has broad discretion in the matter of the admission or exclusion of expert evidence, and his action is to be sustained unless manifestly erroneous."15 It follows that this Court will not interfere with the decision of the district judge as to an expert, absent an abuse of discretion.

14
In considering whether the trial judge should have recognized Mr. Lyle as an expert in this litigation, we must first determine which art is the pertinent one. Universal asserts that the relevant art is weight-training, whereas the defendants and the district court selected mechanical engineering. We doubt whether any mechanical engineer could provide meaningful opinions regarding the devices at issue here. For an engineer to assist the trial judge in his search for truth would require that he have at least some familiarity with body-building machines. At the same time, a mere weight lifter probably would be of marginal assistance to a court in evaluating the design facets of exercise apparatus. Consequently, the art germane to the present case is the design of body-training devices.

15
Having selected the relevant art, we proceed to consider whether Mr. Lyle possessed the qualifications to be an expert in this case. It is apparent that he had little familiarity with the design of weight-lifting machines prior to the present litigation. The record reveals that Mr. Lyle did not undertake, even in connection with this law suit, any extensive study of technical references with respect to body-exercising apparatus. Rather, his examination was confined to the elements of prior art selected by defendants' counsel, i. e., the Simmons patent and the Loprinzi photograph. As a result, it is doubtful whether he was suited to serve as an expert here.

16
Even assuming that the disciplines designated by the parties were the apposite ones, Mr. Lyle's standing as an expert in this litigation still may be called into question. He had no expertise whatsoever in weight training, as he repeatedly conceded during the course of his testimony.16 It is also questionable whether Mr. Lyle possessed any skill or knowledge in the field of mechanical engineering. A recipient of a bachelor's degree in electrical engineering, he had served for seven years as an examiner in the United States Patent Office and for thirty-five years as a patent attorney for Westinghouse. Although he did handle patent matters relating to turbines, motors and generators, which have mechanical features, his patent work primarily pertained to electrical engineering. Experience may vest one with the qualifications of an expert,17 but Mr. Lyle had only a limited background even in the province of mechanical engineering.

17
However, since Mr. Lyle may possess skill and knowledge greater than the average layman with respect to mechanical apparatus, we cannot find that the district court clearly abused its discretion in recognizing him as an expert. Nevertheless, coupled with the arguable deficiencies in his qualifications as an expert witness, Mr. Lyle's limited experience with the class of devices present in this litigation should have substantially circumscribed the weight accorded his testimony. The trial court thus erred in attaching controlling weight to the opinions of defendants' expert.

B.

18
Universal also challenges the expert testimony of Mr. Lyle, because of the conflict between his association with defense counsel and his role as an expert witness. Over the objection of Universal, the district court permitted Mr. Lyle to testify as an expert.18

19
Ordinarily it is inappropriate for an attorney, or a lawyer in his firm, to testify on behalf of a client. Rules DR 5-101 and 102 of the Code of Professional Responsibility19 provide that a lawyer shall refuse employment or withdraw as counsel if the "lawyer learns or it is obvious that he or a lawyer in his firm ought to be called as a witness on behalf of his client. . . ." Under such circumstances, the attorney, or his firm, must decide whether to serve either as advocate or as a witness in a particular case. Recognizing that "the role of an advocate and of a witness are inconsistent . . . ,"20 the Code would appear to preclude the testimony of Mr. Lyle here. As the disciplinary rules logically apply to expert as well as lay witnesses, the law firm should have withdrawn once it decided that its associate would testify, or else the firm should have found another expert.21

20
Even though the Code inveighs against the participation of a witness in a position comparable to that of Mr. Lyle, it does not necessarily follow that any alleged professional misconduct on his part would in itself render his testimony, once it was adduced, a nullity. This is so because the Code does not delineate rules of evidence but only sets forth strictures on attorney conduct. Moreover, it is well settled that a lawyer is competent to testify on behalf of his client.22 Of course, such testimony may subject the attorney to separate disciplinary action. Thus, while we do not approve of the practice of an attorney testifying as an expert witness for a client of his law firm, certainly in the absence of some necessity for such testimony, we cannot say that the district court committed error solely by not extirpating that testimony. In so concluding, we are in accord with the courts of appeals in several other circuits.23

21
In the case at hand, however, the district court did err when it relied so heavily, on the testimony of Mr. Lyle. In Lau Ah Yew v. Dulles,24 the Ninth Circuit, after criticizing the practice of an attorney testifying as a lay witness for his client, declared the testimony competent. But the court noted that the relationship of such a witness to his client detrimentally affected the weight to be accorded his testimony and therefore "discounted" its value.25 Such an approach, which would appear to be equally applicable to attorneys who serve as experts for their clients, also reflects our view. We believe that, while a district court may in limited circumstances receive the testimony of a lawyer-witness, the value of such testimony must be discounted because of the interest of the lawyer or his firm in the outcome of the litigation.

22
Here, there is little indication that the district judge, as the sole trier of fact, scrutinized the expert testimony of Mr. Lyle with the proper circumspection.26 It is one thing for a trial court to give the testimony of an interested witness some weight in reaching a decision. But it is quite another to permit the presumption of patent validity to be rebutted by primary reliance on the testimony of that witness. Even if, in the context of this case, it was not error to permit Mr. Lyle to testify, we conclude that the district court erred when it placed controlling weight, as to patent validity, on the opinions of a lawyer associated with defense counsel.27

III.

23
Because the district court gave undue weight to the testimony of Mr. Lyle, we must consider whether the remaining evidence in the record is sufficient to sustain the ruling that the patent claims are invalid.

24
It is a fundamental canon governing judicial consideration in this field that a presumption of validity attaches to patents issued by the United States Patent Office.28 Not only has a unanimous Supreme Court noted that "patentees are heavily favored as a class of litigants by the patent statute,"29 but this court has stated on several occasions that the burden of proving patent invalidity is a heavy one.30 Moreover, such invalidity must be demonstrated by "clear and convincing proof."31 In the case at bar, the evidence as to invalidity, once the testimony of Mr. Lyle is discounted, consists of only two items the Simmons patent and the magazine photograph of Loprinzi's "super-duper pressing apparatus." This evidence in itself is not adequate to rebut the presumptive validity of the Zinkin patent, or to sustain the lower court's rulings as to obviousness and anticipation.

A.

25
We now turn to the ruling of the district court on the issue of obviousness. Although the trial judge invoked the proper authorities and standards in his consideration of this question, we believe that he erred in applying them to the Zinkin claims.

26
Inasmuch as this Court has adumbrated the precepts of obviousness on previous occasions,32 we need not do so here. Instead, we enunciate only the analytical framework necessary for this case. Simply stated, a patent may be deemed invalid if it is "obvious." 35 U.S.C. § 103 provides, in part: "A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains."

27
As observed in Trio Process Corporation v. L. Goldstein's Sons, Inc.,33 the most authoritative construction of section 103 appears in Graham v. John Deere Co.34 There the Supreme Court established three mandatory criteria with which to frame judicial determinations as to obviousness: "The scope and content of the prior art . . .; differences between prior art and the claims at issue . . .; and the level of ordinary skill in the pertinent art . . . ."35 The Supreme Court also set forth several permissive, or "secondary," considerations: "commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented."36 This past term the Supreme Court continued to apply these criteria, thereby indicating the enduring vitality of Graham.37 While the district court, in the present case, specifically considered the three mandatory tests, it erred in its evaluations under these requirements, largely because of the dearth of evidence submitted by the defendants.

28
In analyzing the "scope and content" of the prior art, the trial judge indicated that the only relevant references offered by the defendants were the Simmons patent and the Loprinzi photograph. He properly disregarded exercising machines designed subsequent to the Zinkin patent. Although his opinion does not explicitly discuss the scope of the prior art, the fact that there were only two references suggests that the prior art is quite limited.

29
The trial judge did attempt to examine the content of the Simmons patent and the Loprinzi photograph. It is evident that he relied considerably upon the testimony of Mr. Lyle in analyzing the latter. As Mr. Lyle's testimony must be discounted, the district court would be hard pressed to evaluate the photograph. Even with Mr. Lyle's assistance, the trial judge appeared to be troubled about the features of the Loprinzi device. Indeed, his opinion reflects uncertainty concerning that apparatus.38 While the Simmons patent may have been more easily examined, since the defendants did produce detailed patent specifications relating to it, there were unanswered questions regarding its content as well. For example, it is unclear whether the described apparatus could be used for the chest-press exercise. In the absence of expert testimony, other than that of Mr. Lyle, the trial judge could not properly appraise the prior art, narrow in scope as it was. Although there may be instances where a trial court may be able to review prior art references without expert assistance, the devices in this litigation do not lend themselves to such evaluation.39

30
The district court also found that the differences between the prior art and the claims at issue were such that the invention is obvious. Nevertheless, because the defendants did not convincingly demonstrate the content of the prior art, we believe that it would be difficult for any court to evaluate differences between that prior art and the challenged claims. Even if it would be possible to do so, there is little evidence to support the conclusion that any variances between defendants' references and the Zinkin claims are "insignificant."

31
We recognize that there may be some important differences between the prior art and the Zinkin claims. It is questionable, for example, whether either the Simmons patent or the Loprinzi apparatus obviates the spotter requirement of the chest-press exercise, as does the Zinkin device. The caption of the Loprinzi photograph depicts Sam Loprinzi "coaching a pupil in the use of (the) super-duper pressing apparatus." Arguably, Mr. Loprinzi is acting as a spotter as well as a coach in the picture, just as Harold Zinkin performed both roles in his gymnasium before designing his machine. Moreover, it is unclear whether the Simmons and Loprinzi devices circumvent, as does the Zinkin apparatus, the safety hazards posed by the chest press. Technically, there are various differences in design between the prior art and the challenged claims, involving, inter alia, the types of handles, the "stops," the requirement of a single bar and the positioning of numerous elements. While there is some doubt whether the variances between the Zinkin claims and the references are so substantial as to defeat the allegation of obviousness, we conclude that the evidence is insufficient to sustain the conclusion of the trial judge that all differences were such as to render the patented device obvious.

32
With respect to the third mandatory criteria under Graham, that is, the level of ordinary skill in the pertinent art, the district court acknowledged that "The record on this point is somewhat deficient."40 Even so, the trial judge declared that "any competent mechanical engineer . . . could readily create a machine substantially the same as that of plaintiffs."41 As discussed above, we believe that the pertinent art is neither mechanical engineering nor weight-lifting, but rather the design of body-exercising apparatus. Not only did the district court fail to select the proper art, but it is questionable whether the evidence submitted by the defendants speaks to the level of ordinary skill in the design of weight-lifting devices.

33
Assuming that mechanical engineering is the relevant art, we are skeptical whether Mr. Lyle, upon whose testimony the district court substantially relied, could provide meaningful opinions thereon, given his inexperience in mechanical engineering. The trial judge suggested that the record as to the level of ordinary skill in the pertinent art was "deficient." Having so indicated, he should have refused to invalidate the challenged patent claims as obvious.

34
This Court need not consider the permissive, or secondary, criteria mandated in Graham for determinations of obviousness. For we are convinced that the defendants failed to provide adequate evidence to justify invalidation of the Zinkin claims under section 103. Even if the permissive tests were applied, the commercial success of the Zinkin machine42 would reinforce our conclusion, as would the "failure of others" to eliminate the safety hazards and manpower requirements of the traditional chest press exercise.43 Thus, we cannot say that the Zinkin claims are so obvious as to render them invalid.44

B.

35
Besides holding the Zinkin claims void for obviousness, the district court concluded that they were anticipated by prior art. 35 U.S.C. § 102 provides, in pertinent part: "A person shall be entitled to a patent unless (a) the invention was . . . patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent. . . ." The defendants had contended, and the trial judge agreed, that both the Simmons patent and the Loprinzi photograph anticipated the Zinkin claims so as to render them nugatory under the statute. Since there is insufficient evidence to rebut the heavy presumption of patent validity, we do not sustain this conclusion of the district court.

36
In construing section 102, the trial judge apparently viewed the Loprinzi photograph as a "printed publication" which described the Zinkin invention. While neither this Court nor apparently any other tribunal has yet determined whether a photograph in itself constitutes a "printed publication," we believe that a photograph may so qualify for purposes of section 102.45 In so stating, we reaffirm our pragmatic pronouncement in Philips Electronic and Pharmaceutical Industries Corp. v. Thermal and Electronics Industries, Inc.,46 that "to restrict our interpretation of Section 102(a)'s 'printed' publication requirement solely to the traditional printing press would ignore the realities of the scientific and technological period in which we live . . . ."47 With a photograph, one conversant in a pertinent art could make or construct a purported invention without resorting either to the patent or to his own inventive skills. Under certain circumstances, then, a photograph may so anticipate a patent as to render it invalid.

37
The question remains, however, whether the photograph of Loprinzi's device anticipated those claims of the Zinkin patent that the defendants challenge. We hold that it does not. In Philips we specified the circumstances under which a prior publication could anticipate a patent: "For a prior publication to be sufficient to defeat a patent it must exhibit a substantial representation of the invention in such full, clear, and exact terms that one skilled in the art may make, construct and practice the invention without having to depend on either the patent or on his own inventive skills."48

38
In the discussion of obviousness in Part III-A, we commented that it would be difficult, if not impossible, to discern the content of the Loprinzi photograph. That observation is applicable here, for it would not be possible for a trial court to ascertain whether the photograph anticipates the Zinkin invention. The photographic representation of the Loprinzi "super-duper pressing apparatus" hardly is "full, clear, and exact." It is questionable whether one skilled in the design of weight-lifting apparatus could produce the Zinkin device, based on an examination of the Loprinzi photograph. Accordingly, we believe that the magazine photograph is insufficient to render the patent invalid on the ground of anticipation.

39
Nor can we hold that the Simmons patent anticipated the Zinkin weight-lifting machine. It is unclear whether the Simmons invention encompasses all or substantially all of the elements of the apparatus under scrutiny in this case. The evidence submitted does not reveal whether one skilled in the design of body-exercising devices, or even in mechanical engineering, could develop the Zinkin weight-lifting apparatus based on the Simmons patent or on his own skills. We conclude, therefore, that the defendants in the present case have failed to demonstrate invalidity of the challenged claims under section 102.

IV.

40
While the validity of the Zinkin patent is not completely free from doubt, we do not accept the decision reached by the district court. The district court erred in according substantial weight to the testimony of Mr. Lyle. Without such unjustified reliance on that testimony, the trial judge could not properly interpret the prior art. Because the evidence produced by the defendants simply is not sufficient to rebut the presumption of validity accorded patents, we must reverse the rulings of the district court as to obviousness and anticipation, and sustain claims numbered 3 and 4 of the Zinkin patent.

41
The judgment of the district court will be vacated and the cause remanded for proceedings consistent with this opinion.

===FOOTNOTEs===
<references/>

12
362 F.2d 660 (3d Cir. 1966)

13
Id. at 667 quoting Jenkins v. United States, 113 U.S.App.D.C. 300, 307 F.2d 637, 643 (1962), in turn quoting McCormick, Evidence § 13 (1954)

14
See, e. g., Salem v. United States Lines Co., 370 U.S. 31, 35, 82 S.Ct. 1119, 8 L.Ed.2d 313, reh. denied 370 U.S. 965, 82 S.Ct. 1578, 8 L.Ed.2d 834 (1962); United States v. 60.14 Acres of Land, 362 F.2d 660, 663 (3d Cir. 1966); Arnold v. Loose, 352 F.2d 959 (3d Cir. 1965)

15
Salem v. United States Lines Co., 370 U.S. 31, 35, 82 S.Ct. 1119, 1122, 8 L.Ed.2d 313 (1962)

16
See, e. g., Appendix at 327, 394-95 (Trial Transcript at 458, 211, 632)

17
See, e. g., United States v. 60.14 Acres of Land, 362 F.2d 660, 667 (3d Cir. 1966)

18
See Appendix at 273-79 (Trial Transcript at 376-382)

19
The Code of Professional Responsibility was promulgated by the American Bar Association in 1969, and it became effective in 1970. The Pennsylvania Supreme Court explicitly adopted the Code in 1974 for members of the Pennsylvania bar, among whose ranks are Mr. Lyle and defendants' attorneys. See Pennsylvania Rules of Court 1975, at 175-241. However, it is apparent that the Code was applicable in Pennsylvania prior to 1974. See In re Estate of Lohm, 440 Pa. 268, 278-79, 269 A.2d 451, 457 (1970); Rules of Court, 331 Pa. xxxvi (1938). By contrast, neither the District Court for the Western District of Pennsylvania, which tried the present case, nor this Court has expressly adopted the Code

20
EC 5-9

21
The defendants contend that DR 5-101 and 102 do not reach the testimony of Mr. Lyle. An exception to these rules allows a lawyer-witness to continue the representation of his client: "As to any matter, if (withdrawal) would work a substantial hardship on the client because of the distinctive value of the lawyer or his firm as counsel in a particular case." DR 5-101(B)(4). Defense counsel asserted at trial that this exception permitted the firm to continue its representation of the defendants, even if Mr. Lyle testified as an expert. The law firm contended, and the district court agreed, that withdrawal would cause "substantial hardship" for their clients, as the firm had spent great time and resources in preparing for the case

Because the action was tried below without a jury, the trial judge could have adjourned the proceedings, without prejudice to the parties or a waste of court resources, until defendants selected another expert or, if they still desired the testimony of Mr. Lyle, another law firm. There is nothing in the record which indicates that the law firm with which Mr. Lyle was associated has such distinctive value in this litigation as to call DR 5-101(B)(4) into play.

Nevertheless, we do recognize that DR 5-101 and 102 are somewhat ambiguous as to whether these disciplinary rules apply literally to Mr. Lyle and his law firm. DR 5-101 and 102 require the withdrawal of an attorney from the conduct of a trial if he or another lawyer in the firm "ought " to be called as a witness on behalf of his client. Such language suggests that these sections of the Code were concerned only with the lawyer-witness who has crucial information in his possession which must be divulged. Under this test, Mr. Lyle hardly may be characterized as a witness who "ought" to testify on behalf of his firm's client. Defense counsel could have called any number of other experts to the stand. There is no suggestion in the record, nor could there be, that Mr. Lyle alone possessed the expertise necessary to assist the trier of fact. Because the defendants' expert was not an indispensable witness, arguably his testimony at trial did not breach the mandate of the Code.

22
See, e. g., City Bank of Honolulu v. Rivera Davila, 438 F.2d 1367, 1369 (1st Cir. 1971); United States v. Harry Barfield Company, 359 F.2d 120, 124 (5th Cir. 1966); United Parts Mfg. Co. v. Lee Motor Products, Inc., 266 F.2d 20, 24 (6th Cir. 1959); Lau Ah Yew v. Dulles, 257 F.2d 744, 746 (9th Cir. 1958). While three of these cases were decided before the promulgation of the Code of Professional Responsibility, Canon 19 of the predecessor Canons of Ethics was roughly identical to DR 5-101 and 102. Consequently, the principles enunciated in the pre-Code cases would appear to retain vitality

Naturally, the statement in the text does not apply where the client invokes the attorney-client privilege, a long-standing rule of evidence. A client may refuse to disclose, and prevent his lawyer from disclosing, confidential communications between the attorney and his client. See 8 Wigmore on Evidence, §§ 2290-2329. (McNaughton rev. 1961). Generally, invocation of the privilege results in the exclusion of the attorney's testimony. The attorney-client privilege even embraces a lawyer not presently in the employ of the client, so long as he was the client's lawyer at the time of the privileged communication. See Wigmore, supra, § 2323. In the case at bar, the attorney-client privilege obviously was not claimed, and so Mr. Lyle's testimony is not incompetent.

23
See cases cited in note 22 supra

It would be appropriate to consider incorporating within the body of evidentiary rules the current disciplinary norm proscribing the testimony of a lawyer for his client. The recently promulgated Federal Rules of Evidence, however, do not render such testimony incompetent. Nor is there any judicial precedent, insofar as we are aware, to support announcement of such a rule at this time.

24
257 F.2d 744 (9th Cir. 1958)

25
See id. at 746-47

26
When he refused to disqualify Mr. Lyle as an expert witness, the trial judge did state: "We will permit the witness to testify, but as to what effect this has upon his credibility, that will be up to the court . . . ." Appendix at 278-79 (Trial Transcript at 381-82). Nevertheless, there is no subsequent suggestion in the record that the district court evaluated Mr. Lyle's testimony with the requisite special care

27
In so holding, we express doubt that the heavy presumption of patent validity can be overcome by the testimony of an attorney on behalf of his client. For a discussion of the presumption, see Part III infra

28
35 U.S.C. § 282 provides, in pertinent part: "A patent shall be presumed valid. . . . The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting it."

Where the Patent Office specifically has considered references of prior art invoked by a defendant to invalidate a patent, the presumption of validity often is further reinforced. See, e. g., Ellipse Corp. v. Ford Motor Co., 452 F.2d 163, 170 n.6 (7th Cir. 1971), cert. denied, 406 U.S. 948, 92 S.Ct. 2041, 32 L.Ed.2d 337 (1972); Woodstream Corporation v. Herter's, Inc., 446 F.2d 1143, 1156 (8th Cir. 1971); Tapco Products Co. v. Van Mark Products Corp., 446 F.2d 420, 426 (6th Cir.), cert. denied, 404 U.S. 986, 92 S.Ct. 451, 30 L.Ed.2d 370 (1971); cf. Philips Electronic and Pharmaceutical Industries Corp. v. Thermal and Electronics Industries, Inc., 450 F.2d 1164 (3d Cir. 1971). In this case, the Patent Office specifically considered the Simmons patent, as Mr. Lyle noted in his testimony. See Appendix at 368 (Trial Transcript at 564). The defendants' expert also stated that the examiner had made a "good search." The precision exhibited by the Patent Office strengthens the presumption of validity accorded the Zinkin claims.

29
Blonder-Tongue Laboratories v. University of Illinois Foundation, 402 U.S. 313, 335, 91 S.Ct. 1434, 1446, 28 L.Ed.2d 788 (1971)

30
E. g., Trio Process Corporation v. L. Goldstein's Sons, Inc., 461 F.2d 66, 70 (3d Cir.), cert. denied 409 U.S. 997, 93 S.Ct. 319, 34 L.Ed.2d 262 (1972); Eagle Iron Works v. McLanahan Corporation, 429 F.2d 1375, 1382 (3d Cir. 1970); Schmidinger v. Welsh, 383 F.2d 455, 462 n.10 (3d Cir. 1967), cert. denied, 390 U.S. 946, 88 S.Ct. 1031, 19 L.Ed.2d 1134 (1968)

31
Trio Process Corporation v. L. Goldstein's Sons, Inc., 461 F.2d 66, 70 (3d Cir. 1972). Cf. Woodstream Corporation v. Herter's Inc., 446 F.2d 1143, 1149 n.4 (8 Cir. 1971)

32
See, e. g., Trio Process Corporation v. L. Goldstein's Sons, Inc., 461 F.2d 66, 70-73 (3d Cir. 1972); Philips Electronic and Pharmaceutical Industries Corp. v. Thermal and Electronics Industries, Inc., 450 F.2d 1164, 1172-75 (3d Cir. 1971); Eagle Iron Works v. McLanahan Corporation, 429 F.2d 1375, 1377-79 (3d Cir. 1970)

33
461 F.2d at 70

34
383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). See also United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966)

35
383 U.S. at 17, 86 S.Ct. at 694. Subsequently, the Supreme Court, in referring to these tests, "admonished that 'strict observance' of those requirements is necessary." Anderson's Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62, 90 S.Ct. 305, 308, 24 L.Ed.2d 258 (1969)

36
383 U.S. at 17-18, 86 S.Ct. at 694

37
See Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976); Dann v. Johnston, 425 U.S. 219, 96 S.Ct. 1393, 47 L.Ed.2d 692 (1976)

38
See 397 F.Supp. at 1069. The trial judge, in discussing the Loprinzi apparatus, stated: "From looking at the picture, it is not clear in what direction the levers can be moved, but the caption 'super-duper pressing apparatus' would clearly indicate to one familiar with weight-training that the movement is vertical. It also appears that each lever moved independently of the other, but that, too, is not certain from the picture and caption."

39
Ordinarily, the trial judge decides whether he needs expert assistance to understand or evaluate a reference relied on as prior art. Experts are not absolutely required, and a district court may disregard the testimony of experts if that testimony appears unreasonable. See Deller's Walker on Patents § 231 (2d ed. 1965) and cases cited therein. Nevertheless, in cases involving complicated inventions, the better rule is that the judge should rely on expert testimony. In Nyyssonen v. Bendix, 342 F.2d 531 (1st Cir. 1965), for example, the First Circuit stated: "a patent speaks to its art and what it says can be told in complicated cases like this only by one skilled in the art." Id. at 537. Not only are the devices in this litigation somewhat intricate, but the evidence pertaining to them is unclear. We believe that the trial judge should have required the testimony of one skilled in the design of weight-lifting machines before invalidating the Zinkin claims. Even if defendants had produced such an expert, it still is questionable whether the factual proof submitted in this case was sufficient to void the patent

40
397 F.Supp. at 1070

41
Id

42
397 F.Supp. at 1066. While the district court expressly recognized the commercial success of the Zinkin chest press machine, it did not utilize this fact in its analysis of obviousness

43
See note 4 supra

44
Such a holding is not at all inconsistent with Philips Electronic and Pharmaceutical Industries Corp. v. Thermal and Electronics Industries, Inc., 450 F.2d 1164 (1971). There this Court declared that a trial judge's findings as to the Graham criteria are to be evaluated under the "clearly erroneous" standard of Fed.R.Civ.Pro. 52(a). In the case at bar, the requisite findings would appear to be clearly erroneous, as there is insufficient evidence to support them. Thus the district court's conclusion as to invalidity cannot stand

45
Several courts have held that a drawing unaccompanied by verbal description may constitute a printed publication within the meaning of section 102. See, e. g., Des Rosiers v. Ford Motor Co., 143 F.2d 907, 911-12 (1st Cir. 1944); In re Bager, 47 F.2d 951, 953 (C.C.P.A.1931). A photograph may disclose an invention as well as, if not better than a drawing and, consequently, is a "printed publication" for purposes of the statute

46
450 F.2d 1164 (3d Cir. 1971)

47
Id. at 1170

48
Id. at 1169. For similar statements of the "anticipation" standard, see Eames v. Andrews, 122 U.S. 40, 66, 7 S.Ct. 1073, 30 L.Ed. 1064 (1886); Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 555, 20 L.Ed. 33 (1870); Rich Products Corporation v. Mitchell Foods, 357 F.2d 176, 180 (2d Cir.), cert. denied 385 U.S. 821, 87 S.Ct. 46, 17 L.Ed.2d 58 (1966); Application of LeGrice, 301 F.2d 929, 936, 49 CCPA 1124 (1962); Deller's Walker on Patents § 60 (2d ed. 1964)

Talk:Perkin-Elmer Corporation v. Computervision Corporation, 732 F2d 888 (1984)

2010-02-22T04:03:35Z

Maura: Created page with ' == Maura == The district court denied Perkin-Elmer's motions for a judgment of infringement notwithstanding the verdict ("JNOV") ISSUES (1) Whether the district court erred in …'

== Maura ==
The district court denied Perkin-Elmer's motions for a judgment of infringement notwithstanding the verdict ("JNOV")

ISSUES
(1) Whether the district court erred in denying Computervision's motion for JNOV on validity.
(2) Whether the district court abused its discretion in denying Computervision's motion for new trial based on absence of a jury trial of a fact issue underlying the determination of nonobviousness.
(3) Whether the decision of the Ninth Circuit should be reviewed.
(4) Whether the district court abused its discretion in denying Computervision's motions for new trial and to vacate the judgment based on allegations of fraudulent conduct.

When a party moves for JNOV, the trial court must consider all the evidence in a light most favorable to the non-mover, must draw reasonable inferences favorable to the non-mover, must not determine credibility of witnesses, and must not substitute its choice for that of the jury between conflicting elements in the evidence. Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1512, 220 USPQ 929, 936 (Fed.Cir.1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546, 220 USPQ 193, 197 (Fed.Cir.1983). Following those guidelines, the court determines whether the evidence so viewed constitutes "substantial evidence" in support of the jury's findings and, if so, whether those findings can support the legal conclusions necessarily drawn by the jury in accord with its instructions enroute to its verdict.

On appeal from denial of a motion for JNOV, appellant must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied from the jury's verdict cannot in law be supported by those findings. Id., 727 F.2d at 1517, 220 USPQ at 935-36.

The jury was instructed under 35 U.S.C. Sec. 1022 that there is no anticipation "unless all of the same elements are found in exactly the same situation and united in the same way ... in a single prior art reference". See e.g., Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed.Cir.1983). From that instruction and the jury's verdict, the law presumes that the jury found no anticipation under Sec. 102 because of differences (discussed infra ) between the claimed inventions and the prior art. Having shown no basis for determining that the record is devoid of substantial evidence to support that finding, Computervision has not met its burden on appeal, i.e., to establish that a reasonable juror could not have found that Computervision failed to overcome the presumption of novelty included within the presumption of validity mandated by 35 U.S.C. Sec. 282.

3. Obviousness

Determining obviousness/nonobviousness under 35 U.S.C. Sec. 1033 involves factual inquiries into: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness, e.g., long felt need, commercial success, failure of others, copying, unexpected results. See, e.g., Environmental Designs, Ltd. v. Union Oil Co. of Calif., 713 F.2d 693, 695, 218 USPQ 865, 867 (Fed.Cir.1983); Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1379-82, 217 USPQ 1281, 1283-85 (Fed.Cir.1983). The critical question, as Sec. 103 makes plain, is whether the invention as a whole would have been obvious to one of ordinary skill in the art at the time it was made.

Included within the presumption of validity mandated by 35 U.S.C. Sec. 282 is a presumption of nonobviousness which the patent challenger must overcome by proving facts with clear and convincing evidence. American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358-59, 220 USPQ 763, 769-70 (Fed.Cir.1984); Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983). The presumption remains intact even upon proof of prior art not cited by the Patent and Trademark Office (PTO), Raytheon, supra, 724 F.2d at 960, 220 USPQ at 599, though such art, if more relevant than that cited, may enable the challenger to sustain its burden. Id.

Nothing in the prior art anticipates or, considered singularly or as a whole, would have suggested, the inventions claimed in the '015 and '763 patents. The objective evidence is strong in support of the judge's ruling upholding the jury's verdict on validity. Thus, the district court did not err in denying Computervision's motion for JNOV.

Though the Ninth Circuit's opinion did not use the word "equivalence", that court was presumably aware that the jury had been instructed on the doctrine and its opinion spoke the language of equivalency ("functions in a strikingly similar way"; "the only difference"; "differences ... are miniscule"; "Otherwise ... identical"; "A minor adjustment ... not ... beyond the reach"; "variations ... within the range" ). Assessing equivalency involves a determination of whether the claimed invention and alleged infringing device, which are different (there would otherwise be literal infringement), perform substantially the same function in substantially the same way to give the same or substantially the same result. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950). If equivalence appears, infringement will be found unless (1) arguments or amendments made by applicant during prosecution (prosecution history estoppel) estop the patentee from asserting a range of equivalence broad enough to encompass the accused product or process; or (2) the equivalent device is within the public domain, i.e., found in the prior art, Carmen Industries, Inc. v. Wahl, 724 F.2d 932, 942, 220 USPQ 481, 489 (Fed.Cir.1983); Thomas & Betts Corp. v. Litton Systems, Inc., 720 F.2d 1572, 1579-80, 220 USPQ 1, 6-7 (Fed.Cir.1983). Determining the existence of either condition (1) or condition (2) does not require reassessment of validity. See e.g., Carmen Industries, supra, 724 F.2d at 936 n. 2, 937 n. 5, 220 USPQ at 484 n. 2, 485 n. 5. Nor does determination of the existence of either condition necessitate a re-interpretation of the claims as written. Computervision's assumptions concerning a Ninth Circuit interpretation of the claims are unsupported in the record.

We recognize that a court that established the law of a case could elect to review its earlier decision and change it if one of three "exceptional circumstances" exist: (1) the evidence on subsequent trial was substantially different; (2) controlling authority has intervened; or (3) the earlier decision was clearly erroneous and would work a manifest injustice. Central Soya, supra, 723 F.2d at 1580, 220 USPQ at 495. Revisions in the law of the case occur "very infrequently" when an appellate court is asked to review the decision of a coordinate court. 1B Moore's Federal Practice p 0.404 [4.-5 at 138].

Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect.

Perkin-Elmer Corporation v. Computervision Corporation, 732 F2d 888 (1984)

2010-02-22T04:01:10Z

Maura:

732 F2d 888 Perkin-Elmer Corporation v. Computervision Corporation

732 F.2d 888 221 U.S.P.Q. 669 The PERKIN-ELMER CORPORATION, a corporation of New York, Appellee, v. COMPUTERVISION CORPORATION, a corporation of Delaware, Appellant.

Appeal No. 83-1195.

United States Court of Appeals, Federal Circuit.

April 6, 1984.

Richard J. Birch, Boston, Mass., argued for appellant. With him on brief was James H. Mitchell, Boston, Mass. Robert M. Taylor, Jr., Los Angeles, Cal., argued for appellee. With him on brief were David B. Murphy, Thomas F. Smegal, Jr., and Robert J. Bennett, Los Angeles, Cal.
Before MARKEY, Chief Judge, and DAVIS, BALDWIN, KASHIWA and BENNETT, Circuit Judges. MARKEY, Chief Judge.

Appeal from a judgment of the District Court for the Northern District of California holding valid and infringed claims 1 through 5, 7 and 8 of U.S. Patent No. 3,748,015 ('015 patent), issued to Abe Offner, and claims 1 through 8 of U.S. Patent No. 3,821,763 ('763 patent), issued to Robert M. Scott. Both patents were assigned to The Perkin-Elmer Corporation (Perkin-Elmer). We affirm.

BACKGROUND

Perkin-Elmer's "Micralign" was the first commercially successful projection printer for use in manufacturing semiconductor integrated circuits. A projection printer uses optics to trace a circuit design onto a silicon wafer. Because a high degree of accuracy is demanded, the central component of a projection printer is its optical system. The optical structure in Perkin-Elmer's "Micralign" is disclosed in the '015 and '763 patents.
Computervision Corporation (Computervision) sells a projection printer known as the "Cobilt CA-3000" (CA-3000), which is similar to the Micralign.

A PROCEDURAL MORASS

In late 1977, Perkin-Elmer sued Computervision for infringement of the patents. Computervision counterclaimed for a declaratory judgment that the patents were invalid and not infringed.

Over Computervision's objection, Perkin-Elmer's demand for a jury trial was honored. The jury trial lasted nine days with each party introducing extensive testimony of numerous experts. Fourteen witnesses appeared before the jury and twelve depositions were read into the record. One hundred and forty documents and physical exhibits were introduced in evidence.

After receiving unchallenged instructions on the issues it was to decide, the jury deliberated and returned a general verdict that claims 1-8 of each patent were valid, not obtained by fraud, and not infringed. No special verdicts under Rule 49(a) and no interrogatories under Rule 49(b) had been sought. Computervision had not objected to the form of verdict submitted to the jury. The district court denied Perkin-Elmer's motions for a judgment of infringement notwithstanding the verdict ("JNOV") and for a new trial and entered a judgment of noninfringement. Perkin-Elmer's request for entry of judgment on the validity verdict was denied and, according to counsel for Computervision, Computervision accepted that denial. The refusal to enter judgment on the jury's validity verdict, the reasons for which are not known, served as a foundation of a procedural morass.

Perkin-Elmer appealed the non-infringement judgment, and the district court's refusal to enter a judgment of patent validity, to the Court of Appeals for the Ninth Circuit (Ninth Circuit). Though the judgment was entered only on the noninfringement verdict, and was viewed by the Ninth Circuit as not final, that court elected to entertain the appeal because "[t]he district court here obviously was not trying to avoid adjudication on the issue of patent validity". Perkin-Elmer Corp. v. Computervision Corp., 680 F.2d 669, 216 USPQ 760 (1982).

The Ninth Circuit held that Perkin-Elmer's motion for JNOV should have been granted, said nothing on the merits of the refusal to enter judgment on validity, and reversed and remanded the case for further proceedings. The Court denied a petition for rehearing and declined a suggestion for rehearing
in banc.<ref> The Ninth Circuit filed a two-page opinion, the portions relevant here consisting in their entirety of these four paragraphs:
Computervision's CA-3000 functions in a strikingly similar way [to the Micralign]. The Micralign and the CA-3000 are the only projection printers on the market in which the optics consist entirely of mirrors. Both axially space a small convex mirror behind a larger concave one. Both use a plate with an annular slit to restrict the light passing through the optical system and both have an identical light path from the circuit design to the wafer. The only difference is that the CA-3000 uses a less convex mirror and places the mirrors farther apart.
***
The differences between the Micralign and the CA-3000 are miniscule. The CA-3000 merely uses a less convex mirror and places it further from the concave mirror than the Micralign does. Otherwise, the two optical systems are identical. Both rely on mirrors for their optics and employ one mirror placed behind another to reflect a circuit design onto a silicon wafer. A minor adjustment of the curvature and placement of one mirror does not place it beyond the reach of the patented procedure. Many variations are possible within the range of any patented procedure. Here, the degree of difference between the two systems created by the Cobilt's [CA-3000's] variation is minimal.
Therefore the CA-3000 does infringe Patent '015 and Patent '763 and Perkin-Elmer's motion for judgment notwithstanding the verdict should have been granted by the district court.</ref>

At a hearing on remand, Perkin-Elmer informed the district court of Sarkisian v. Winn-Proof Corp., 688 F.2d 647 (9th Cir.1982), cert. den., Carsonite International Corp. v. Carson Manufacturing Co., --- U.S. ----, 103 S.Ct. 1499, 75 L.Ed.2d 930 (1983), which had been decided a week before and which had articulated special guidelines for use in jury trials of patent suits. The district court deferred entering judgment pending consideration of Sarkisian, ordered briefs, and set for oral argument the matter of entering a judgment on the jury's verdict that the patents were valid.

At argument, the court stated that the findings of the jury supported a conclusion of non-obviousness, that there was considerable evidence supporting those findings, and that non-obviousness was clear as a matter of law. The court also noted that a patent is presumed valid, that the burden of persuasion remains with the party asserting invalidity, and that Computervision did not satisfy that burden. In accordance with the Ninth Circuit's mandate and in full compliance with Sarkisian, the district court determined that the patents were valid and infringed and granted Perkin-Elmer's motion for entry of judgment so stating.

The district court denied these Computervision motions: for JNOV on validity; for a new trial, based on an alleged denial of jury trial on a fact issue underlying the determination of nonobviousness; and to vacate the judgment, grant a new trial, and reopen discovery, all based on alleged fraudulent conduct of Perkin-Elmer during trial and appeal to the Ninth Circuit.

Computervision appeals the judgment, asserting error in denial of all its motions except that to reopen discovery. Further, Computervision seeks review and reversal of the Ninth Circuit's decision, accompanied by reinstatement of the original jury verdict of noninfringement.

ISSUES

(1) Whether the district court erred in denying Computervision's motion for JNOV on validity.

(2) Whether the district court abused its discretion in denying Computervision's motion for new trial based on absence of a jury trial of a fact issue underlying the determination of nonobviousness.

(3) Whether the decision of the Ninth Circuit should be reviewed.

(4) Whether the district court abused its discretion in denying Computervision's motions for new trial and to vacate the judgment based on allegations of fraudulent conduct.

OPINION

A. Denial of the Motion for JNOV on Validity

1. Standard of Review

When a party moves for JNOV, the trial court must consider all the evidence in a light most favorable to the non-mover, must draw reasonable inferences favorable to the non-mover, must not determine credibility of witnesses, and must not substitute its choice for that of the jury between conflicting elements in the evidence. Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1512, 220 USPQ 929, 936 (Fed.Cir.1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546, 220 USPQ 193, 197 (Fed.Cir.1983). Following those guidelines, the court determines whether the evidence so viewed constitutes "substantial evidence" in support of the jury's findings and, if so, whether those findings can support the legal conclusions necessarily drawn by the jury in accord with its instructions enroute to its verdict. Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 936. "Substantial" evidence is such relevant evidence from the record taken as a whole as might be accepted by a reasonable mind as adequate to support the finding under review. Loyce E. Hayes v. Department of the Navy, 727 F.2d 1535 at 1537 (Fed.Cir.1984); SSIH Equipment S.A. v. USITC, 718 F.2d 365, 371 n. 10, 218 USPQ 678, 684 n. 10 (Fed.Cir.1983). In sum, only when the court is convinced upon the record before the jury that reasonable persons could not have reached a verdict for the non-mover, should it grant the motion for JNOV. Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 936.

In its review, the district court must not lose sight of the presumption of validity. Id., 727 F.2d at 1512-13, 220 USPQ at 934-35. Where, as here, there is a verdict of validity, the question is not whether the patentee had introduced sufficiently substantial evidence to support the verdict, but whether the challenger's evidence so met the burden imposed by 35 U.S.C. Sec. 282 (" [t]he burden of establishing invalidity of a patent or any claim shall rest on the party asserting such invalidity") that reasonable jurors could not have concluded that the challenger failed to overcome that burden. Id.

To facilitate review on a motion for JNOV and on appeal, it is preferred that a jury be provided with special interrogatories designed to reveal more clearly the findings it made. Absent such interrogatories, the law presumes the existence of findings necessary to support the verdict the jury reached. Id., 727 F.2d at 1516, 220 USPQ at 939. Accord, Velo-Bind, Inc. v. Minn. Mining & Mfg. Co., 647 F.2d 965, 971, 211 USPQ 926, 932 (9th Cir.1981); Control Components, Inc. v. Valtek, Inc., 609 F.2d 763, 767, 204 USPQ 785, 788-89 (5th Cir.), cert. den. 449 U.S. 1022, 101 S.Ct. 589, 66 L.Ed.2d 484 (1980); Tights, Inc. v. Acme-McCrary Corp., 541 F.2d 1047, 1061, 191 USPQ 305, 314 (4th Cir.), cert. den. 429 U.S. 980, 97 S.Ct. 493, 50 L.Ed.2d 589 (1976); White v. Mar-Bel, Inc., 509 F.2d 287, 290, 185 USPQ 129, 131 (5th Cir.1975); Panther Pumps & Equipment Co., Inc. v. Hydrocraft, Inc., 468 F.2d 225, 228, 175 USPQ 577, 579 (7th Cir.1972), cert. den. 411 U.S. 965, 93 S.Ct. 2143, 36 L.Ed.2d 685 (1973). The particular findings the jury must make before it can reach a verdict are controlled by the court's instructions to the jury. Railroad Dynamics, Inc., supra, 727 F.2d at 1516, 220 USPQ at 939.

On appeal from denial of a motion for JNOV, appellant must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied from the jury's verdict cannot in law be supported by those findings. Id., 727 F.2d at 1517, 220 USPQ at 935-36.

Computervision refers repeatedly to the trial judge's statement of a personal view, made in the course of commenting on the Ninth Circuit's decision, that the claims at issue could not be both valid and infringed. We review judgments, however, not passing statements. Id., 727 F.2d at 1512, 220 USPQ at 934; Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540, 218 USPQ 871, 880 (Fed.Cir.1983); In re Hyatt, 708 F.2d 712, 715, 218 USPQ 195, 198 (Fed.Cir.1983). The district court made no finding that the claims were not infringed, or if they were, that they could not be valid. The appealed judgment states that the claims are valid and infringed. The trial judge had ample opportunity to grant Computervision's motion for JNOV, but did not. On the contrary, reflecting proper respect for the jury's function and the conclusion of the Ninth Circuit, the trial judge concluded that Computervision did not satisfy the JNOV requirements properly imposed by the law on one seeking to set aside a jury verdict.

2. Anticipation

The jury was instructed under 35 U.S.C. Sec. 102<ref> Section 102 provides that a person is entitled to a patent unless one of a series of circumstances, described in subparagraphs (a)-(g) of that section, apply. Section 102(a) precludes a patent if "the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent"</ref> that there is no anticipation "unless all of the same elements are found in exactly the same situation and united in the same way ... in a single prior art reference". See e.g., Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed.Cir.1983). From that instruction and the jury's verdict, the law presumes that the jury found no anticipation under Sec. 102 because of differences (discussed infra ) between the claimed inventions and the prior art. Having shown no basis for determining that the record is devoid of substantial evidence to support that finding, Computervision has not met its burden on appeal, i.e., to establish that a reasonable juror could not have found that Computervision failed to overcome the presumption of novelty included within the presumption of validity mandated by 35 U.S.C. Sec. 282.

3. Obviousness

Determining obviousness/nonobviousness under 35 U.S.C. Sec. 103<ref>Section 103 provides in relevant part:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.</ref> involves factual inquiries into: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness, e.g., long felt need, commercial success, failure of others, copying, unexpected results. See, e.g., Environmental Designs, Ltd. v. Union Oil Co. of Calif., 713 F.2d 693, 695, 218 USPQ 865, 867 (Fed.Cir.1983); Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1379-82, 217 USPQ 1281, 1283-85 (Fed.Cir.1983). The critical question, as Sec. 103 makes plain, is whether the invention as a whole would have been obvious to one of ordinary skill in the art at the time it was made.

Included within the presumption of validity mandated by 35 U.S.C. Sec. 282 is a presumption of nonobviousness which the patent challenger must overcome by proving facts with clear and convincing evidence. American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358-59, 220 USPQ 763, 769-70 (Fed.Cir.1984); Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983). The presumption remains intact even upon proof of prior art not cited by the Patent and Trademark Office (PTO), Raytheon, supra, 724 F.2d at 960, 220 USPQ at 599, though such art, if more relevant than that cited, may enable the challenger to sustain its burden. Id.

The obviousness/nonobviousness issue is a legal issue and may be submitted to the jury with proper instructions. Railroad Dynamics, Inc., supra, 727 F.2d at 1517, 220 USPQ at 937; White v. Jeffrey Mining Co., 723 F.2d 1553, 1558, 220 USPQ 703, 705 (Fed.Cir.1983); Connell, supra, 722 F.2d at 1547, 220 USPQ at 197.

The normal sequence of events following the jury's delivery of its verdict is: (1) automatic entry of judgment on the verdict promptly by the clerk in the
absence of contrary instructions from the court, Rule 58, Fed.R.Civ.P.;<ref>The record does not indicate whether such instructions were issued. The trial court's denial of Perkin-Elmer's request for entry of judgment on the jury's validity verdict may have been interpreted by the clerk as the equivalent of such instructions. Perkin-Elmer apparently did not seek a writ of mandamus but included the denial of its request as an element of its appeal</ref> (2) within 10 days, the losing party, whose earlier motion for directed verdict had been denied, may file a motion for judgment notwithstanding the verdict. Rule 50(b), Fed.R.Civ.P.

In considering on remand Perkin-Elmer's motion for entry of judgment on the verdict of validity, the trial court had the then applicable language of the opinion in Sarkisian v. Winn-Proof Corp., supra, called to its attention. The court did not, however, appear to interpret the indication in that opinion that it should determine nonobviousness "independently" of the jury's verdict as requiring it to totally ignore the rules applicable to jury trials in non-patent cases, or to proceed as though the jury had never been impanelled, had never been instructed on the issue, had never considered the issue, and had never rendered a verdict based on its conclusion. On the contrary, in concluding, as did the jury, that the inventions would have been nonobvious, the court proceeded in a manner similar to that involved in deciding a motion JNOV and used the jury's presumed findings supported by substantial evidence. The court's use of the jury's findings in this case indicates that it was in fact answering the appropriate question: can the jury's presumed findings support conclusion of nonobviousness encompassed in the jury's verdict of validity?<ref>The view suggested in Sarkisian, that a jury verdict on nonobviousness is at best advisory, would make charades of motions for directed verdict or JNOV under Fed.R.Civ.P. 50 in patent cases. Those motions apply only to binding jury verdicts. See 9 Wright and Miller, Federal Practice and Procedure Sec. 2523 (1982)
Moreover, use of an advisory jury is limited to actions not triable of right by a jury, Rule 39(c), Fed.R.Civ.P., and Rule 52(a), Fed.R.Civ.P., requires the court to enter its own set of findings and conclusions just as it must do when sitting without a jury. That requirement, and the reluctance to take days or weeks of jurypersons' lives for service as mere advisors, appear to account for the virtually universal non-use of advisory juries. Moreover, the notion that patent cases are somehow outside the mainstream of the law, and that special, judge-designed rules not applicable to other types of jury trials must be applied when a "patent case" is tried before a jury, finds no support in the statute, in the Federal Rules of Civil Procedure, or in the Seventh Amendment to the Constitution.</ref> The trial court effectively answered the same question in then denying Computervision's motion for JNOV.

The record contains strong objective evidence--which Computervision does not contest--in support of the nonobviousness conclusion. It was stipulated that the Micralign projection printer, having as its critical element the optical system of the '015 and '763 patents, was an outstanding commercial success and was the first commercially successful projection printer for use in the manufacture of semiconductor integrated circuits. Testimony unchallenged on appeal established that the Micralign had numerous advantages over previous printers, became the industry standard, revolutionized the industry, and satisfied a long felt need; unchallenged testimony also showed surprise at the exceptional results achieved by the invention claimed in the '015 patent, and the radical departure from traditional approaches to lens design represented by the invention claimed in the '763 patent.

Such objective evidence can constitute "highly probative, objective criteria fully capable of serving as a foundation for the legal conclusion of unobviousness". Raytheon Co. v. Roper Corp., supra, 724 F.2d at 961, 220 USPQ at 600. That objective evidence, and the inadequacies of the prior art summarized below, constitute a formidable obstacle to Computervision's burden of establishing on appeal that reasonable jurors could not have concluded that it failed to meet its statutory burden under Sec. 282. Computervision did not overcome that obstacle.

The ensuing discussion of the prior art illustrates the presence of substantial evidence supporting the facts presumably found by the jury.

(a) Differences Between the Invention Claimed in the '015 Patent and the Prior Art

(1) The '015 Patent

The invention claimed in the '015 patent is illustrated in Figure 2:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Two concentric spherical mirrors, one concave (21) and the other convex (20), have their centers of curvature at point P on reference axis SA. There are three reflections in the system: the light from the object plane (O) is reflected off mirror 21 to mirror 20, off mirror 20 to a second portion of mirror 21, and off that mirror portion to the image plane (I). Mirror 20 has a radius of curvature (Rcx) greater than one half that of mirror 21 (Rcc) by a slight amount, referred to by Perkin-Elmer as . The system creates a stigmatic image, defined in testimony as pointlike imagery, where all the rays from a point on an object come to a point on an image without aberrations. The '015 patent describes the invention as a system in which "the image is formed in accurate micro detail with high resolution".

Claim 1 is illustrative:

1. A unity magnification catoptric [i.e., using only mirrors] image-forming system comprising at least one concave mirror and at least one convex mirror, said mirrors being supported with their centers of curvature substantially coincident, and means to define a location for an object the image of which after at least three reflections including at least one reflection at each of said mirrors is a real image at a second location, the sum of the powers of said convex mirrors multiplied by the numbers of reflections thereat respectively being sufficiently less than the sum of the powers of said concave mirrors multiplied by the numbers of reflections thereat respectively to produce at said second location a stigmatic image of an object in said first location.

The system of claim 1 is one of unity magnification and is image forming. Those limitations appear in the preamble, but are necessary to give meaning to the claim and properly define the invention. See In re Bulloch, 604 F.2d 1362, 1365, 203 USPQ 171, 174 (CCPA 1979); Kropa v. Robie, 187 F.2d 150, 151-52, 38 CCPA 858, 861, 88 USPQ 478, 480-81 (CCPA 1951). The "sum of the powers" language of claim 1, also present in claims 2-4, is equivalent to the language in claims 5 and 7-8 that Rcx = Rcc/2 + . Because the claims have generally been argued together, the validity of all the claims stands or falls with claim 1. See, e.g., Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983).

(2) Differences From the Prior Art

The Reed patent (3,190,171), considered by the PTO, discloses a viewing system simulating the appearance of an aircraft carrier as the pilot approaches for a landing. The system employs concentric convex and concave mirrors with a radii ratio of 2:1. The image system of the carrier is not of unity magnification and is a viewing, not an image forming, system; the carrier image is a virtual, relatively poor image, whereas claim 1 requires formation of a real, stigmatic image; it involves a 2:1 mirror system, whereas claim 1 involves a non 2:1 system.<ref>There are other differences in the other claims. For example, claim 7 requires that the "means to define a location for an object" include "an arcuate slit of radius substantially equal to the distance of said object location from said center of curvature"</ref> Though Reed said he modified his system to achieve a non-concentric 2:1 system, the modified system does not correspond to the concentric non-2:1 system of the '015 patent.

Computervision urges that the Reed disclosure be viewed backwards, i.e., as a system for forming an image of the pilot's eye. There is no evidence that those of ordinary skill in the art would so view it, and such distortion of a reference in light of a patentee's disclosure is pure hindsight.

Cited in Computervision's brief (though not in its closing argument to the jury) is the Schmidt telescope, used principally since 1930 in astronomy. Unlike the claimed invention, the Schmidt system is not a catoptric, i.e., all mirror, system, has chromatic aberration, does not produce a stigmatic image, and has no convex mirror.

There was testimony about modifying the Schmidt telescope by replacing a photographic plate therein with a convex mirror. Assuming, arguendo, the propriety of such testimony, the modification is not catoptric (all mirrors), does not produce unity magnification, lacks "means for defining the location of an object", and does not produce the stigmatic image of the claimed invention.

(b) Differences Between the Invention Claimed in the '763 Patent and the Prior Art

(1) The '763 Patent

The '763 invention is illustrated in Figs. 1 and 2:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Figure 1 depicts two groups, 10 and 11, of lens elements together forming a lens 16 having optical center C. The invention is not limited to "lens only" (dioptric) systems; the image forming elements can be catoptric (all mirrors) or catadioptric (lenses and mirrors). The lens elements are rotationally symmetric about a common optical axis OA. The system also includes a mask 21 having a slit 22 positioned adjacent a conjugate focal plane of the lens 16 for the object field being magnified, and an image receiving surface, such as film 18, disposed behind the slit in a focal plane of the lens 16 for the object field of interest. The elements of the system are fixed with respect to each other, except that film 18 may be advanced in its own plane relative to the mask as the system is moved with respect to the object field. The system is intended to image a distant object field at infinity on the left.<ref>Annular field systems need not work only at infinity. They can work at finite conjugates, in which case the mask having a slit therein may be placed near the object or near the image, or one may be disposed near each</ref> The slit 22 is of such curvature and radial extent, and is so spaced from the axis OA, as to lie adjacent a part of an annular zone 20 of the second principal focal plane of lens 16 in which case the lens will focus bundles of collimated light from the left and will have a selected range of values for the angle of inclination FA of those bundles to the system axis.

Claims 1-8 of the '763 patent include six structural and two method claims. Claims 1 and 7 are illustrative:

1. Image-forming apparatus comprising image-forming optical elements arranged in an imaging system that is rotationally symmetric about an axis, said system being optically corrected to produce stigmatic imagery in an annular zone centered on said axis with all points in said zone possessing field angles other than zero, at least one imaging surface conforming substantially to at least part of said zone, aperture limiting means defining at a conjugate focal surface of said system an area whose points possess field angles corresponding to the field angles of points in said zone, said aperture limiting means being positioned to define an object field area imaged on said imaging surface, and means to scan said object field area with respect to said system.

7. The method of recording an image of an extended object which comprises the steps of

a. providing an image-forming system that is rotationally symmetric about an axis and optically corrected to produce stigmatic imagery in an annular zone centered on said axis with all points in said zone possessing field angles other than zero,

b. scanning an object field past said system, and

c. recording through time that portion of the image of said object field that produced by said system at a segment of said annular zone. Because the claims have generally been argued together, the validity of all the claims stands or falls with claims 1 and 7.

(2) Differences From the Prior Art

Computervision summarily asserts in its brief, without explanation, that the Reed and Schmidt disclosures are applicable. That bare assertion cannot possibly satisfy Computervision's appellate burden of showing that no reasonable juror could have concluded that it had failed to prove facts rendering the '763 patent claims invalid.

The Sonne and Goddard patents are put forward. Sonne, described in the '763 patent, discloses a stereoscopic camera for aerial photography. Goddard discloses essentially the same aerial camera system, except that Goddard's film has layers photosensitive to different colors. Computervision has not demonstrated that no reasonable juror could have found that Sonne or Goddard fail to disclose, for example, these limitations of claims 1 and 7: that the system be "optically corrected to produce stigmatic imagery"; and that such imagery be "in an annular zone centered on said axis, with all points in said zone possessing field angles other than zero".

Citing the sparse testimony of a Perkin-Elmer expert describing a Cook-Triplet lens as "any lens combination which has two positive lenses, separated with a negative lens between them", Computervision's brief contains no articulation and no citation to the record to indicate what was presented to the jury concerning the claim elements and whatever the Cook-Triplet lens is alleged to have taught. The Appendix contains no description or drawing of a Cook-Triplet lens. In sum, Computervision's burden of showing error by the trial court in denying its motion for JNOV is not assisted by its reference to testimony about the Cook-Triplet lens.

CONCLUSION ON VALIDITY

Nothing in the prior art anticipates or, considered singularly or as a whole, would have suggested, the inventions claimed in the '015 and '763 patents. The objective evidence is strong in support of the judge's ruling upholding the jury's verdict on validity. Thus, the district court did not err in denying Computervision's motion for JNOV.

B. Loss Of Right To Jury Trial

Though it had opposed Perkin-Elmer's demand for a jury trial, Computervision argued it was deprived of a jury determination of the differences between the claimed inventions and the prior art and, based on that argument, moved for a new trial.<ref>Because we dispose of the issue on other grounds, we need not decide whether Computervision's opposition to jury trial amounted to a waiver under Federal Rule 38. See e.g., Reid Bros. Logging Co. v. Ketchikan Pulp Co., 699 F.2d 1292 (9th Cir.1983)</ref> In reviewing a denial of a motion for new trial, the abuse of discretion standard applies. See e.g., Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 937. No such abuse occurred here.

Computervision says this is the first case in which a jury verdict of noninfringement was reversed without consideration of a validity verdict, resulting in unfairness. Perkin-Elmer cites numerous non-jury cases in which a court of appeals has reversed a court finding of noninfringement and remanded for entry of judgment without reconsideration of validity. It is unnecessary, however, to decide such questions. There has been a judgment of validity and infringement and it is that judgment that has been appealed to this court.

The plight alleged by Computervision results from the procedural morass described above. Had judgment been initially entered on validity and infringement, the Ninth Circuit could have considered both issues, rendering this appeal unnecessary. Yet, Computervision did not object to the district court's action, but "accepted" its refusal to enter judgment on validity.

The district court's refusal to enter judgment on validity may have been ill advised; it cannot now serve as reversible error on this appeal. The thrust of Computervision's argument here is that the Ninth Circuit's interpretation of the claims necessarily differed from that of the jury. Hence, says Computervision, the jury never determined the differences between the prior art and the claims as interpreted by the Ninth Circuit. The argument depends critically on facts merely presumed and not established, i.e., that the Ninth Circuit interpreted the claims and that its interpretation differed from that reached by the jury in following the trial judge's unchallenged instructions.

The Ninth Circuit looked at the devices and concluded that the "miniscule" difference between the Micralign and CA-3000 printers was insufficient to constitute substantial evidence in support of the jury's non-infringement verdict. 680 F.2d at 671, 216 USPQ at 761-62. That conclusion did not necessarily depend on a claim interpretation different from that in accord with which the jury was instructed. It, as the language of the Ninth Circuit opinion makes plain, rested on a different assessment of the CA-3000 printer and its equivalency to the claimed inventions:Both rely on mirrors for their optics and employ one mirror placed behind another to reflect a circuit design onto a silicon wafer. A minor adjustment of the curvature and placement of one mirror does not place it beyond the reach of the patented procedure. Many variations are possible within the range of any patented procedure. Here, the degree of difference between the two systems created by the Cobilt's variation is minimal [CA-3000].

Id.

Though the Ninth Circuit's opinion did not use the word "equivalence", that court was presumably aware that the jury had been instructed on the doctrine and its opinion spoke the language of equivalency ("functions in a strikingly similar way"; "the only difference"; "differences ... are miniscule"; "Otherwise ... identical"; "A minor adjustment ... not ... beyond the reach"; "variations ... within the range" ). Assessing equivalency involves a determination of whether the claimed invention and alleged infringing device, which are different (there would otherwise be literal infringement), perform substantially the same function in substantially the same way to give the same or substantially the same result. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950). If equivalence appears, infringement will be found unless (1) arguments or amendments made by applicant during prosecution (prosecution history estoppel) estop the patentee from asserting a range of equivalence broad enough to encompass the accused product or process; or (2) the equivalent device is within the public domain, i.e., found in the prior art, Carmen Industries, Inc. v. Wahl, 724 F.2d 932, 942, 220 USPQ 481, 489 (Fed.Cir.1983); Thomas & Betts Corp. v. Litton Systems, Inc., 720 F.2d 1572, 1579-80, 220 USPQ 1, 6-7 (Fed.Cir.1983). Determining the existence of either condition (1) or condition (2) does not require reassessment of validity. See e.g., Carmen Industries, supra, 724 F.2d at 936 n. 2, 937 n. 5, 220 USPQ at 484 n. 2, 485 n. 5. Nor does determination of the existence of either condition necessitate a re-interpretation of the claims as written. Computervision's assumptions concerning a Ninth Circuit interpretation of the claims are unsupported in the record.

C. The Ninth Circuit Decision

The decision of the Ninth Circuit is entitled to great deference under the law of the case doctrine. See Central Soya Co. v. Geo. A. Hormel & Co., 723 F.2d 1573, 1580, 220 USPQ 490, 495 (Fed.Cir.1983). That doctrine ensures judicial efficiency and prevents endless litigation. Id. Its elementary logic is matched by elementary fairness--a litigant given one good bite at the apple should not have a second.

Here, Computervision has had an eminently fair chance to litigate the infringement issue. The issue was presented to the jury, to the trial judge on Perkin-Elmer's motion, and to the Ninth Circuit on direct appeal, on petition for rehearing, and in a suggestion for rehearing in banc. Computervision prevailed in the first two instances and lost in the last three. In those circumstances, there is no basis to relitigate infringement.

We recognize that a court that established the law of a case could elect to review its earlier decision and change it if one of three "exceptional circumstances" exist: (1) the evidence on subsequent trial was substantially different; (2) controlling authority has intervened; or (3) the earlier decision was clearly erroneous and would work a manifest injustice. Central Soya, supra, 723 F.2d at 1580, 220 USPQ at 495. Revisions in the law of the case occur "very infrequently" when an appellate court is asked to review the decision of a coordinate court. 1B Moore's Federal Practice p 0.404 [4.-5 at 138].

Arguing the "clearly erroneous/manifest injustice" exception, described by our predecessor court as "stringent", and as requiring a "strong showing of clear error", Short v. United States, 661 F.2d 150, 154, 228 Ct.Cl. 535 (1981), Computervision would have us review the Ninth Circuit decision on its merits. The decision to review is a threshold consideration, for only on full review can a court determine whether the decision reviewed was clearly erroneous and produced a manifest injustice. To obtain review, an appellant must make at least a prima facie showing of error sufficient to indicate the advisability of review. A mere suspicion of error will not suffice; we must be "convinced to a certainty" that error warranting review exists. Id. Computervision has made no such convincing showing.

Computervision says the Ninth Circuit did not consider the claim language and the prior art. However, the Ninth Circuit had before it the claims, the prior art, and the parties' briefs and arguments. That the court did not specifically mention the claims and prior art in its opinion forms no basis for an assumption that it did not consider those elements in determining that the CA-3000 printer was an equivalent. That a court "do[es] not discuss certain propositions do[es] not make the decision inadequate or suggest the ... court failed to understand them". Schilling v. Schwitzer-Cummins Co., 142 F.2d 82, 84, 61 USPQ 73, 75 (D.C.Cir.1944). Moreover, "[w]e should never assume that a court of concurrent jurisdiction neglected to perform its duty". Skil Corp. v. Millers Falls Co., 541 F.2d 554, 557, 191 USPQ 548, 550 (6th Cir.), cert. den. 429 U.S. 1029, 97 S.Ct. 653, 50 L.Ed.2d 631 (1976).

In an effort to show that the Ninth Circuit did not understand the technology, Computervision says one of the two differences the court found (wider placement of the convex and concave mirrors) does not exist because the mirrors are spaced the same in both systems. That error, however, would, if anything, have favored Computervision because it would have increased the court's perceived differences from one to two. Computervision has not made a prima facie showing that the finding of an allegedly non-existent difference constituted clear error producing manifest injustice.

D. Alleged Fraudulent Conduct

The motion for a new trial or to vacate the judgment under Rule 60(b) alleged fraudulent conduct. On review of a denial of a motion to vacate under Rule 60(b), the standard, like that on review of a denial of a motion for new trial, is whether an abuse of discretion occurred. See e.g., CTS Corp. v. Piher Int'l Corp., 727 F.2d 1550 at 1555 (Fed.Cir.1984). None did.

The allegation of fraudulent conduct rests on a statement made after trial in this action by counsel for a defendant (Canon) in a separate case filed by Perkin-Elmer. At a combined hearing in connection with this action and that case, counsel for Canon said that before trial in this action Perkin-Elmer changed its Micralign printer from the concentric non-2:1 system of the '015 patent claims to the nonconcentric 2:1 system of the CA-3000 printer to get an improved result. Computervision says Perkin-Elmer witnesses "fraudulently" testified that the printer claimed in the '015 patent and the CA-3000 printer achieve "substantially the same" result and thereby rendered the patents in suit unenforceable. We disagree.

Assuming that a statement of counsel for a defendant in another case can be viewed as testimony or as evidence, exact identity of results is not required in establishing equivalency. Though Graver Tank, supra, alternatively speaks of the "same" and "substantially the same" result, 339 U.S. at 608, 70 S.Ct. at 856, the doctrine is clearly based on substantial, not exact, identity:

Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect.

Id. at 609, 70 S.Ct. at 856. Similarly, though the doctrine was initially articulated in Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1361, 219 USPQ 473, 480 (Fed.Cir.1983) as appearing to involve the "same" result, when the court applied the doctrine it referred to "substantially the same" result. 717 F.2d at 1366, 219 USPQ at 484. Moreover, our predecessor court has recognized that the results achieved may be "substantially" the same. See e.g., Lockheed Aircraft Corp. v. United States, 553 F.2d 69, 79, 193 USPQ 449, 461, 213 Ct.Cl. 395, 414 (1977); Pratt & Whitney Co. v. United States, 345 F.2d 838, 841, 145 USPQ 429, 431, 170 Ct.Cl. 829, 833 (1965).<ref>
9 Though some opinions of this court contain references to the "same" result, the court was not required to make a "same"--"substantially the same" distinction in the cases before it. See e.g., Carmen Industries, Inc. v. Wahl, supra; Thomas & Betts Corp. v. Litton Systems, Inc., supra</ref>

Thus, if Perkin-Elmer changed its commercial device to get an improved result by making it the same as the CA-3000, it would not be inconsistent-- much less fraudulent--for Perkin-Elmer witnesses to testify that the claimed and accused devices are nevertheless equivalent. A patentee need produce no commercial device. Infringement is determined by comparison with the patentee's claimed invention, not with its marketed product. CTS Corp. v. Piher Int'l Corp., 527 F.2d 95, 100, 188 USPQ 419, 423 (7th Cir.1975), cert. den. 424 U.S. 978, 96 S.Ct. 1485, 47 L.Ed.2d 748 (1976).

Presumably, as above indicated, the Ninth Circuit so determined equivalence, and, though it did not in its opinion employ the words of Graver Tank, supra, its words do indicate that it found "substantially the same" result. Perkin-Elmer's witnesses testified that the results are substantially the same, not identical. The instructions to the jury defined equivalency in terms of "substantially the same" result. Computervision's own expert testified that the CA-3000 optical system performs the same work in substantially the same way as the '015 patent system, and accomplished a similar result. For all of those reasons, Computervision's assertion of fraudulent conduct is unpersuasive.

The district court committed no abuse of discretion in denying Computervision's alternative motions for new trial or to vacate the judgment under Rule 60(b).

Decision

The denial of Computervision's motion for JNOV having been correct, the denial of its motions for new trial and to vacate the judgment having represented no abuse of discretion, the decision of the Ninth Circuit having established the law of the case, and no legal error having been shown, the judgment of validity and infringement of claims 1-5, 7 and 8 of the '015 patent and claims 1-8 of the '763 patent must be affirmed.

AFFIRMED

DAVIS, Circuit Judge, dissenting.

I am concerned that the District Court denied the appellant's motion for new trial on validity simply because the judge felt compelled to do so by the Ninth Circuit's ruling on infringement, despite the District Court's strongly expressed views (in argument) that (a) the Ninth Circuit's interpretation of the patent (in the infringement appeal), without any necessary jury findings supporting that position, was "absurd", "not according to me", "not according to the jury", a position "with which I strongly take issue",<ref>The District Court somewhat earlier said: "I am rather concerned as to whether or not in the light of that most unusual act of [the Ninth Circuit], where [they] really made a finding of fact there, whether the defendant doesn't deserve a new trial on the issue that's brought back here."
The Ninth Circuit's interpretation was that the appellant's system and the appellee's claims were practically identical, with "miniscule" differences.</ref> (b) that the patents could not both be valid and infringed, but (c) that the District Court felt bound to uphold validity by the Ninth Circuit's infringement decision because that appellate court interpreted the patents broadly as a "conclusion of law", though the District Court clearly considered that that interpretation, if proper, would necessarily depend on findings of fact to be made by the jury but not actually made in this case.

Because the District Court indisputably believed that the original jury had not interpreted the patent, on the basis of the court's instructions, in the way the Ninth Circuit had done, and because, if one accepts the Ninth Circuit's interpretation, appellant was entitled to a new trial so that the "obviousness" findings required by Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), should be made by a jury with respect to the Ninth Circuit's interpretation of the claims, a new trial should have been granted. It was not granted solely because the District Court erroneously felt bound with respect to validity by the Ninth Circuit's infringement decision. <ref> It is undisputed that the Ninth Circuit did not consider validity at all</ref> That was an abuse of discretion, calling for reversal of the refusal to grant the new trial requested by appellant and a remand for a new trial on validity only.<ref>I agree with the majority that this court should not reconsider the Ninth Circuit's determination of infringement</ref> "Rule 59 [New Trials] gives the trial judge ample power to prevent what he considers to be a miscarriage of justice. It is his right, and indeed his duty, to order a new trial if he deems it in the interest of justice to do so." (emphasis added) 11 Wright & Miller, Federal Practice and Procedure, Civil Sec. 2803, pp. 31-2 (1973). When, as here, the trial judge refuses to grant a motion for a new trial which he plainly should have granted, an abuse of discretion has occurred. Ruiz v. Hamburg-American Line, 478 F.2d 29, 34 (9th Cir .1973).

===FOOTNOTES===
<references/>

Perkin-Elmer Corporation v. Computervision Corporation, 732 F2d 888 (1984)

2010-02-22T04:00:01Z

Maura: Created page with '732 F2d 888 Perkin-Elmer Corporation v. Computervision Corporation 732 F.2d 888 221 U.S.P.Q. 669 The PERKIN-ELMER CORPORATION, a corporation of New York, Appellee, v. COMPUTERVI…'

732 F2d 888 Perkin-Elmer Corporation v. Computervision Corporation

732 F.2d 888 221 U.S.P.Q. 669 The PERKIN-ELMER CORPORATION, a corporation of New York, Appellee, v. COMPUTERVISION CORPORATION, a corporation of Delaware, Appellant.

Appeal No. 83-1195.

United States Court of Appeals, Federal Circuit.

April 6, 1984.

Richard J. Birch, Boston, Mass., argued for appellant. With him on brief was James H. Mitchell, Boston, Mass. Robert M. Taylor, Jr., Los Angeles, Cal., argued for appellee. With him on brief were David B. Murphy, Thomas F. Smegal, Jr., and Robert J. Bennett, Los Angeles, Cal.
Before MARKEY, Chief Judge, and DAVIS, BALDWIN, KASHIWA and BENNETT, Circuit Judges. MARKEY, Chief Judge.

Appeal from a judgment of the District Court for the Northern District of California holding valid and infringed claims 1 through 5, 7 and 8 of U.S. Patent No. 3,748,015 ('015 patent), issued to Abe Offner, and claims 1 through 8 of U.S. Patent No. 3,821,763 ('763 patent), issued to Robert M. Scott. Both patents were assigned to The Perkin-Elmer Corporation (Perkin-Elmer). We affirm.

BACKGROUND

Perkin-Elmer's "Micralign" was the first commercially successful projection printer for use in manufacturing semiconductor integrated circuits. A projection printer uses optics to trace a circuit design onto a silicon wafer. Because a high degree of accuracy is demanded, the central component of a projection printer is its optical system. The optical structure in Perkin-Elmer's "Micralign" is disclosed in the '015 and '763 patents.
Computervision Corporation (Computervision) sells a projection printer known as the "Cobilt CA-3000" (CA-3000), which is similar to the Micralign.

A PROCEDURAL MORASS

In late 1977, Perkin-Elmer sued Computervision for infringement of the patents. Computervision counterclaimed for a declaratory judgment that the patents were invalid and not infringed.

Over Computervision's objection, Perkin-Elmer's demand for a jury trial was honored. The jury trial lasted nine days with each party introducing extensive testimony of numerous experts. Fourteen witnesses appeared before the jury and twelve depositions were read into the record. One hundred and forty documents and physical exhibits were introduced in evidence.

After receiving unchallenged instructions on the issues it was to decide, the jury deliberated and returned a general verdict that claims 1-8 of each patent were valid, not obtained by fraud, and not infringed. No special verdicts under Rule 49(a) and no interrogatories under Rule 49(b) had been sought. Computervision had not objected to the form of verdict submitted to the jury. The district court denied Perkin-Elmer's motions for a judgment of infringement notwithstanding the verdict ("JNOV") and for a new trial and entered a judgment of noninfringement. Perkin-Elmer's request for entry of judgment on the validity verdict was denied and, according to counsel for Computervision, Computervision accepted that denial. The refusal to enter judgment on the jury's validity verdict, the reasons for which are not known, served as a foundation of a procedural morass.

Perkin-Elmer appealed the non-infringement judgment, and the district court's refusal to enter a judgment of patent validity, to the Court of Appeals for the Ninth Circuit (Ninth Circuit). Though the judgment was entered only on the noninfringement verdict, and was viewed by the Ninth Circuit as not final, that court elected to entertain the appeal because "[t]he district court here obviously was not trying to avoid adjudication on the issue of patent validity". Perkin-Elmer Corp. v. Computervision Corp., 680 F.2d 669, 216 USPQ 760 (1982).

The Ninth Circuit held that Perkin-Elmer's motion for JNOV should have been granted, said nothing on the merits of the refusal to enter judgment on validity, and reversed and remanded the case for further proceedings. The Court denied a petition for rehearing and declined a suggestion for rehearing
in banc.<ref> The Ninth Circuit filed a two-page opinion, the portions relevant here consisting in their entirety of these four paragraphs:
Computervision's CA-3000 functions in a strikingly similar way [to the Micralign]. The Micralign and the CA-3000 are the only projection printers on the market in which the optics consist entirely of mirrors. Both axially space a small convex mirror behind a larger concave one. Both use a plate with an annular slit to restrict the light passing through the optical system and both have an identical light path from the circuit design to the wafer. The only difference is that the CA-3000 uses a less convex mirror and places the mirrors farther apart.
***
The differences between the Micralign and the CA-3000 are miniscule. The CA-3000 merely uses a less convex mirror and places it further from the concave mirror than the Micralign does. Otherwise, the two optical systems are identical. Both rely on mirrors for their optics and employ one mirror placed behind another to reflect a circuit design onto a silicon wafer. A minor adjustment of the curvature and placement of one mirror does not place it beyond the reach of the patented procedure. Many variations are possible within the range of any patented procedure. Here, the degree of difference between the two systems created by the Cobilt's [CA-3000's] variation is minimal.
Therefore the CA-3000 does infringe Patent '015 and Patent '763 and Perkin-Elmer's motion for judgment notwithstanding the verdict should have been granted by the district court.</ref>

At a hearing on remand, Perkin-Elmer informed the district court of Sarkisian v. Winn-Proof Corp., 688 F.2d 647 (9th Cir.1982), cert. den., Carsonite International Corp. v. Carson Manufacturing Co., --- U.S. ----, 103 S.Ct. 1499, 75 L.Ed.2d 930 (1983), which had been decided a week before and which had articulated special guidelines for use in jury trials of patent suits. The district court deferred entering judgment pending consideration of Sarkisian, ordered briefs, and set for oral argument the matter of entering a judgment on the jury's verdict that the patents were valid.

At argument, the court stated that the findings of the jury supported a conclusion of non-obviousness, that there was considerable evidence supporting those findings, and that non-obviousness was clear as a matter of law. The court also noted that a patent is presumed valid, that the burden of persuasion remains with the party asserting invalidity, and that Computervision did not satisfy that burden. In accordance with the Ninth Circuit's mandate and in full compliance with Sarkisian, the district court determined that the patents were valid and infringed and granted Perkin-Elmer's motion for entry of judgment so stating.

The district court denied these Computervision motions: for JNOV on validity; for a new trial, based on an alleged denial of jury trial on a fact issue underlying the determination of nonobviousness; and to vacate the judgment, grant a new trial, and reopen discovery, all based on alleged fraudulent conduct of Perkin-Elmer during trial and appeal to the Ninth Circuit.

Computervision appeals the judgment, asserting error in denial of all its motions except that to reopen discovery. Further, Computervision seeks review and reversal of the Ninth Circuit's decision, accompanied by reinstatement of the original jury verdict of noninfringement.

ISSUES

(1) Whether the district court erred in denying Computervision's motion for JNOV on validity.

(2) Whether the district court abused its discretion in denying Computervision's motion for new trial based on absence of a jury trial of a fact issue underlying the determination of nonobviousness.

(3) Whether the decision of the Ninth Circuit should be reviewed.

(4) Whether the district court abused its discretion in denying Computervision's motions for new trial and to vacate the judgment based on allegations of fraudulent conduct.

OPINION

A. Denial of the Motion for JNOV on Validity

1. Standard of Review

When a party moves for JNOV, the trial court must consider all the evidence in a light most favorable to the non-mover, must draw reasonable inferences favorable to the non-mover, must not determine credibility of witnesses, and must not substitute its choice for that of the jury between conflicting elements in the evidence. Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1512, 220 USPQ 929, 936 (Fed.Cir.1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546, 220 USPQ 193, 197 (Fed.Cir.1983). Following those guidelines, the court determines whether the evidence so viewed constitutes "substantial evidence" in support of the jury's findings and, if so, whether those findings can support the legal conclusions necessarily drawn by the jury in accord with its instructions enroute to its verdict. Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 936. "Substantial" evidence is such relevant evidence from the record taken as a whole as might be accepted by a reasonable mind as adequate to support the finding under review. Loyce E. Hayes v. Department of the Navy, 727 F.2d 1535 at 1537 (Fed.Cir.1984); SSIH Equipment S.A. v. USITC, 718 F.2d 365, 371 n. 10, 218 USPQ 678, 684 n. 10 (Fed.Cir.1983). In sum, only when the court is convinced upon the record before the jury that reasonable persons could not have reached a verdict for the non-mover, should it grant the motion for JNOV. Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 936.

In its review, the district court must not lose sight of the presumption of validity. Id., 727 F.2d at 1512-13, 220 USPQ at 934-35. Where, as here, there is a verdict of validity, the question is not whether the patentee had introduced sufficiently substantial evidence to support the verdict, but whether the challenger's evidence so met the burden imposed by 35 U.S.C. Sec. 282 (" [t]he burden of establishing invalidity of a patent or any claim shall rest on the party asserting such invalidity") that reasonable jurors could not have concluded that the challenger failed to overcome that burden. Id.

To facilitate review on a motion for JNOV and on appeal, it is preferred that a jury be provided with special interrogatories designed to reveal more clearly the findings it made. Absent such interrogatories, the law presumes the existence of findings necessary to support the verdict the jury reached. Id., 727 F.2d at 1516, 220 USPQ at 939. Accord, Velo-Bind, Inc. v. Minn. Mining & Mfg. Co., 647 F.2d 965, 971, 211 USPQ 926, 932 (9th Cir.1981); Control Components, Inc. v. Valtek, Inc., 609 F.2d 763, 767, 204 USPQ 785, 788-89 (5th Cir.), cert. den. 449 U.S. 1022, 101 S.Ct. 589, 66 L.Ed.2d 484 (1980); Tights, Inc. v. Acme-McCrary Corp., 541 F.2d 1047, 1061, 191 USPQ 305, 314 (4th Cir.), cert. den. 429 U.S. 980, 97 S.Ct. 493, 50 L.Ed.2d 589 (1976); White v. Mar-Bel, Inc., 509 F.2d 287, 290, 185 USPQ 129, 131 (5th Cir.1975); Panther Pumps & Equipment Co., Inc. v. Hydrocraft, Inc., 468 F.2d 225, 228, 175 USPQ 577, 579 (7th Cir.1972), cert. den. 411 U.S. 965, 93 S.Ct. 2143, 36 L.Ed.2d 685 (1973). The particular findings the jury must make before it can reach a verdict are controlled by the court's instructions to the jury. Railroad Dynamics, Inc., supra, 727 F.2d at 1516, 220 USPQ at 939.

On appeal from denial of a motion for JNOV, appellant must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied from the jury's verdict cannot in law be supported by those findings. Id., 727 F.2d at 1517, 220 USPQ at 935-36.

Computervision refers repeatedly to the trial judge's statement of a personal view, made in the course of commenting on the Ninth Circuit's decision, that the claims at issue could not be both valid and infringed. We review judgments, however, not passing statements. Id., 727 F.2d at 1512, 220 USPQ at 934; Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540, 218 USPQ 871, 880 (Fed.Cir.1983); In re Hyatt, 708 F.2d 712, 715, 218 USPQ 195, 198 (Fed.Cir.1983). The district court made no finding that the claims were not infringed, or if they were, that they could not be valid. The appealed judgment states that the claims are valid and infringed. The trial judge had ample opportunity to grant Computervision's motion for JNOV, but did not. On the contrary, reflecting proper respect for the jury's function and the conclusion of the Ninth Circuit, the trial judge concluded that Computervision did not satisfy the JNOV requirements properly imposed by the law on one seeking to set aside a jury verdict.

2. Anticipation

The jury was instructed under 35 U.S.C. Sec. 102<ref> Section 102 provides that a person is entitled to a patent unless one of a series of circumstances, described in subparagraphs (a)-(g) of that section, apply. Section 102(a) precludes a patent if "the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent"</ref> that there is no anticipation "unless all of the same elements are found in exactly the same situation and united in the same way ... in a single prior art reference". See e.g., Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed.Cir.1983). From that instruction and the jury's verdict, the law presumes that the jury found no anticipation under Sec. 102 because of differences (discussed infra ) between the claimed inventions and the prior art. Having shown no basis for determining that the record is devoid of substantial evidence to support that finding, Computervision has not met its burden on appeal, i.e., to establish that a reasonable juror could not have found that Computervision failed to overcome the presumption of novelty included within the presumption of validity mandated by 35 U.S.C. Sec. 282.

3. Obviousness

Determining obviousness/nonobviousness under 35 U.S.C. Sec. 103<ref>Section 103 provides in relevant part:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.</ref> involves factual inquiries into: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness, e.g., long felt need, commercial success, failure of others, copying, unexpected results. See, e.g., Environmental Designs, Ltd. v. Union Oil Co. of Calif., 713 F.2d 693, 695, 218 USPQ 865, 867 (Fed.Cir.1983); Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1379-82, 217 USPQ 1281, 1283-85 (Fed.Cir.1983). The critical question, as Sec. 103 makes plain, is whether the invention as a whole would have been obvious to one of ordinary skill in the art at the time it was made.

Included within the presumption of validity mandated by 35 U.S.C. Sec. 282 is a presumption of nonobviousness which the patent challenger must overcome by proving facts with clear and convincing evidence. American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358-59, 220 USPQ 763, 769-70 (Fed.Cir.1984); Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983). The presumption remains intact even upon proof of prior art not cited by the Patent and Trademark Office (PTO), Raytheon, supra, 724 F.2d at 960, 220 USPQ at 599, though such art, if more relevant than that cited, may enable the challenger to sustain its burden. Id.

The obviousness/nonobviousness issue is a legal issue and may be submitted to the jury with proper instructions. Railroad Dynamics, Inc., supra, 727 F.2d at 1517, 220 USPQ at 937; White v. Jeffrey Mining Co., 723 F.2d 1553, 1558, 220 USPQ 703, 705 (Fed.Cir.1983); Connell, supra, 722 F.2d at 1547, 220 USPQ at 197.

The normal sequence of events following the jury's delivery of its verdict is: (1) automatic entry of judgment on the verdict promptly by the clerk in the
absence of contrary instructions from the court, Rule 58, Fed.R.Civ.P.;<ref>The record does not indicate whether such instructions were issued. The trial court's denial of Perkin-Elmer's request for entry of judgment on the jury's validity verdict may have been interpreted by the clerk as the equivalent of such instructions. Perkin-Elmer apparently did not seek a writ of mandamus but included the denial of its request as an element of its appeal</ref> (2) within 10 days, the losing party, whose earlier motion for directed verdict had been denied, may file a motion for judgment notwithstanding the verdict. Rule 50(b), Fed.R.Civ.P.

In considering on remand Perkin-Elmer's motion for entry of judgment on the verdict of validity, the trial court had the then applicable language of the opinion in Sarkisian v. Winn-Proof Corp., supra, called to its attention. The court did not, however, appear to interpret the indication in that opinion that it should determine nonobviousness "independently" of the jury's verdict as requiring it to totally ignore the rules applicable to jury trials in non-patent cases, or to proceed as though the jury had never been impanelled, had never been instructed on the issue, had never considered the issue, and had never rendered a verdict based on its conclusion. On the contrary, in concluding, as did the jury, that the inventions would have been nonobvious, the court proceeded in a manner similar to that involved in deciding a motion JNOV and used the jury's presumed findings supported by substantial evidence. The court's use of the jury's findings in this case indicates that it was in fact answering the appropriate question: can the jury's presumed findings support conclusion of nonobviousness encompassed in the jury's verdict of validity?<ref>The view suggested in Sarkisian, that a jury verdict on nonobviousness is at best advisory, would make charades of motions for directed verdict or JNOV under Fed.R.Civ.P. 50 in patent cases. Those motions apply only to binding jury verdicts. See 9 Wright and Miller, Federal Practice and Procedure Sec. 2523 (1982)
Moreover, use of an advisory jury is limited to actions not triable of right by a jury, Rule 39(c), Fed.R.Civ.P., and Rule 52(a), Fed.R.Civ.P., requires the court to enter its own set of findings and conclusions just as it must do when sitting without a jury. That requirement, and the reluctance to take days or weeks of jurypersons' lives for service as mere advisors, appear to account for the virtually universal non-use of advisory juries. Moreover, the notion that patent cases are somehow outside the mainstream of the law, and that special, judge-designed rules not applicable to other types of jury trials must be applied when a "patent case" is tried before a jury, finds no support in the statute, in the Federal Rules of Civil Procedure, or in the Seventh Amendment to the Constitution.</ref> The trial court effectively answered the same question in then denying Computervision's motion for JNOV.

The record contains strong objective evidence--which Computervision does not contest--in support of the nonobviousness conclusion. It was stipulated that the Micralign projection printer, having as its critical element the optical system of the '015 and '763 patents, was an outstanding commercial success and was the first commercially successful projection printer for use in the manufacture of semiconductor integrated circuits. Testimony unchallenged on appeal established that the Micralign had numerous advantages over previous printers, became the industry standard, revolutionized the industry, and satisfied a long felt need; unchallenged testimony also showed surprise at the exceptional results achieved by the invention claimed in the '015 patent, and the radical departure from traditional approaches to lens design represented by the invention claimed in the '763 patent.

Such objective evidence can constitute "highly probative, objective criteria fully capable of serving as a foundation for the legal conclusion of unobviousness". Raytheon Co. v. Roper Corp., supra, 724 F.2d at 961, 220 USPQ at 600. That objective evidence, and the inadequacies of the prior art summarized below, constitute a formidable obstacle to Computervision's burden of establishing on appeal that reasonable jurors could not have concluded that it failed to meet its statutory burden under Sec. 282. Computervision did not overcome that obstacle.

The ensuing discussion of the prior art illustrates the presence of substantial evidence supporting the facts presumably found by the jury.

(a) Differences Between the Invention Claimed in the '015 Patent and the Prior Art

(1) The '015 Patent

The invention claimed in the '015 patent is illustrated in Figure 2:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Two concentric spherical mirrors, one concave (21) and the other convex (20), have their centers of curvature at point P on reference axis SA. There are three reflections in the system: the light from the object plane (O) is reflected off mirror 21 to mirror 20, off mirror 20 to a second portion of mirror 21, and off that mirror portion to the image plane (I). Mirror 20 has a radius of curvature (Rcx) greater than one half that of mirror 21 (Rcc) by a slight amount, referred to by Perkin-Elmer as . The system creates a stigmatic image, defined in testimony as pointlike imagery, where all the rays from a point on an object come to a point on an image without aberrations. The '015 patent describes the invention as a system in which "the image is formed in accurate micro detail with high resolution".

Claim 1 is illustrative:

1. A unity magnification catoptric [i.e., using only mirrors] image-forming system comprising at least one concave mirror and at least one convex mirror, said mirrors being supported with their centers of curvature substantially coincident, and means to define a location for an object the image of which after at least three reflections including at least one reflection at each of said mirrors is a real image at a second location, the sum of the powers of said convex mirrors multiplied by the numbers of reflections thereat respectively being sufficiently less than the sum of the powers of said concave mirrors multiplied by the numbers of reflections thereat respectively to produce at said second location a stigmatic image of an object in said first location.

The system of claim 1 is one of unity magnification and is image forming. Those limitations appear in the preamble, but are necessary to give meaning to the claim and properly define the invention. See In re Bulloch, 604 F.2d 1362, 1365, 203 USPQ 171, 174 (CCPA 1979); Kropa v. Robie, 187 F.2d 150, 151-52, 38 CCPA 858, 861, 88 USPQ 478, 480-81 (CCPA 1951). The "sum of the powers" language of claim 1, also present in claims 2-4, is equivalent to the language in claims 5 and 7-8 that Rcx = Rcc/2 + . Because the claims have generally been argued together, the validity of all the claims stands or falls with claim 1. See, e.g., Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983).

(2) Differences From the Prior Art

The Reed patent (3,190,171), considered by the PTO, discloses a viewing system simulating the appearance of an aircraft carrier as the pilot approaches for a landing. The system employs concentric convex and concave mirrors with a radii ratio of 2:1. The image system of the carrier is not of unity magnification and is a viewing, not an image forming, system; the carrier image is a virtual, relatively poor image, whereas claim 1 requires formation of a real, stigmatic image; it involves a 2:1 mirror system, whereas claim 1 involves a non 2:1 system.<ref>There are other differences in the other claims. For example, claim 7 requires that the "means to define a location for an object" include "an arcuate slit of radius substantially equal to the distance of said object location from said center of curvature"</ref> Though Reed said he modified his system to achieve a non-concentric 2:1 system, the modified system does not correspond to the concentric non-2:1 system of the '015 patent.

Computervision urges that the Reed disclosure be viewed backwards, i.e., as a system for forming an image of the pilot's eye. There is no evidence that those of ordinary skill in the art would so view it, and such distortion of a reference in light of a patentee's disclosure is pure hindsight.

Cited in Computervision's brief (though not in its closing argument to the jury) is the Schmidt telescope, used principally since 1930 in astronomy. Unlike the claimed invention, the Schmidt system is not a catoptric, i.e., all mirror, system, has chromatic aberration, does not produce a stigmatic image, and has no convex mirror.

There was testimony about modifying the Schmidt telescope by replacing a photographic plate therein with a convex mirror. Assuming, arguendo, the propriety of such testimony, the modification is not catoptric (all mirrors), does not produce unity magnification, lacks "means for defining the location of an object", and does not produce the stigmatic image of the claimed invention.

(b) Differences Between the Invention Claimed in the '763 Patent and the Prior Art

(1) The '763 Patent

The '763 invention is illustrated in Figs. 1 and 2:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Figure 1 depicts two groups, 10 and 11, of lens elements together forming a lens 16 having optical center C. The invention is not limited to "lens only" (dioptric) systems; the image forming elements can be catoptric (all mirrors) or catadioptric (lenses and mirrors). The lens elements are rotationally symmetric about a common optical axis OA. The system also includes a mask 21 having a slit 22 positioned adjacent a conjugate focal plane of the lens 16 for the object field being magnified, and an image receiving surface, such as film 18, disposed behind the slit in a focal plane of the lens 16 for the object field of interest. The elements of the system are fixed with respect to each other, except that film 18 may be advanced in its own plane relative to the mask as the system is moved with respect to the object field. The system is intended to image a distant object field at infinity on the left.<ref>Annular field systems need not work only at infinity. They can work at finite conjugates, in which case the mask having a slit therein may be placed near the object or near the image, or one may be disposed near each/<ref> The slit 22 is of such curvature and radial extent, and is so spaced from the axis OA, as to lie adjacent a part of an annular zone 20 of the second principal focal plane of lens 16 in which case the lens will focus bundles of collimated light from the left and will have a selected range of values for the angle of inclination FA of those bundles to the system axis.

Claims 1-8 of the '763 patent include six structural and two method claims. Claims 1 and 7 are illustrative:

1. Image-forming apparatus comprising image-forming optical elements arranged in an imaging system that is rotationally symmetric about an axis, said system being optically corrected to produce stigmatic imagery in an annular zone centered on said axis with all points in said zone possessing field angles other than zero, at least one imaging surface conforming substantially to at least part of said zone, aperture limiting means defining at a conjugate focal surface of said system an area whose points possess field angles corresponding to the field angles of points in said zone, said aperture limiting means being positioned to define an object field area imaged on said imaging surface, and means to scan said object field area with respect to said system.

7. The method of recording an image of an extended object which comprises the steps of

a. providing an image-forming system that is rotationally symmetric about an axis and optically corrected to produce stigmatic imagery in an annular zone centered on said axis with all points in said zone possessing field angles other than zero,

b. scanning an object field past said system, and

c. recording through time that portion of the image of said object field that produced by said system at a segment of said annular zone. Because the claims have generally been argued together, the validity of all the claims stands or falls with claims 1 and 7.

(2) Differences From the Prior Art

Computervision summarily asserts in its brief, without explanation, that the Reed and Schmidt disclosures are applicable. That bare assertion cannot possibly satisfy Computervision's appellate burden of showing that no reasonable juror could have concluded that it had failed to prove facts rendering the '763 patent claims invalid.

The Sonne and Goddard patents are put forward. Sonne, described in the '763 patent, discloses a stereoscopic camera for aerial photography. Goddard discloses essentially the same aerial camera system, except that Goddard's film has layers photosensitive to different colors. Computervision has not demonstrated that no reasonable juror could have found that Sonne or Goddard fail to disclose, for example, these limitations of claims 1 and 7: that the system be "optically corrected to produce stigmatic imagery"; and that such imagery be "in an annular zone centered on said axis, with all points in said zone possessing field angles other than zero".

Citing the sparse testimony of a Perkin-Elmer expert describing a Cook-Triplet lens as "any lens combination which has two positive lenses, separated with a negative lens between them", Computervision's brief contains no articulation and no citation to the record to indicate what was presented to the jury concerning the claim elements and whatever the Cook-Triplet lens is alleged to have taught. The Appendix contains no description or drawing of a Cook-Triplet lens. In sum, Computervision's burden of showing error by the trial court in denying its motion for JNOV is not assisted by its reference to testimony about the Cook-Triplet lens.

CONCLUSION ON VALIDITY

Nothing in the prior art anticipates or, considered singularly or as a whole, would have suggested, the inventions claimed in the '015 and '763 patents. The objective evidence is strong in support of the judge's ruling upholding the jury's verdict on validity. Thus, the district court did not err in denying Computervision's motion for JNOV.

B. Loss Of Right To Jury Trial

Though it had opposed Perkin-Elmer's demand for a jury trial, Computervision argued it was deprived of a jury determination of the differences between the claimed inventions and the prior art and, based on that argument, moved for a new trial.<ref>Because we dispose of the issue on other grounds, we need not decide whether Computervision's opposition to jury trial amounted to a waiver under Federal Rule 38. See e.g., Reid Bros. Logging Co. v. Ketchikan Pulp Co., 699 F.2d 1292 (9th Cir.1983)</ref> In reviewing a denial of a motion for new trial, the abuse of discretion standard applies. See e.g., Railroad Dynamics, Inc., supra, 727 F.2d at 1512, 220 USPQ at 937. No such abuse occurred here.

Computervision says this is the first case in which a jury verdict of noninfringement was reversed without consideration of a validity verdict, resulting in unfairness. Perkin-Elmer cites numerous non-jury cases in which a court of appeals has reversed a court finding of noninfringement and remanded for entry of judgment without reconsideration of validity. It is unnecessary, however, to decide such questions. There has been a judgment of validity and infringement and it is that judgment that has been appealed to this court.

The plight alleged by Computervision results from the procedural morass described above. Had judgment been initially entered on validity and infringement, the Ninth Circuit could have considered both issues, rendering this appeal unnecessary. Yet, Computervision did not object to the district court's action, but "accepted" its refusal to enter judgment on validity.

The district court's refusal to enter judgment on validity may have been ill advised; it cannot now serve as reversible error on this appeal. The thrust of Computervision's argument here is that the Ninth Circuit's interpretation of the claims necessarily differed from that of the jury. Hence, says Computervision, the jury never determined the differences between the prior art and the claims as interpreted by the Ninth Circuit. The argument depends critically on facts merely presumed and not established, i.e., that the Ninth Circuit interpreted the claims and that its interpretation differed from that reached by the jury in following the trial judge's unchallenged instructions.

The Ninth Circuit looked at the devices and concluded that the "miniscule" difference between the Micralign and CA-3000 printers was insufficient to constitute substantial evidence in support of the jury's non-infringement verdict. 680 F.2d at 671, 216 USPQ at 761-62. That conclusion did not necessarily depend on a claim interpretation different from that in accord with which the jury was instructed. It, as the language of the Ninth Circuit opinion makes plain, rested on a different assessment of the CA-3000 printer and its equivalency to the claimed inventions:Both rely on mirrors for their optics and employ one mirror placed behind another to reflect a circuit design onto a silicon wafer. A minor adjustment of the curvature and placement of one mirror does not place it beyond the reach of the patented procedure. Many variations are possible within the range of any patented procedure. Here, the degree of difference between the two systems created by the Cobilt's variation is minimal [CA-3000].

Id.

Though the Ninth Circuit's opinion did not use the word "equivalence", that court was presumably aware that the jury had been instructed on the doctrine and its opinion spoke the language of equivalency ("functions in a strikingly similar way"; "the only difference"; "differences ... are miniscule"; "Otherwise ... identical"; "A minor adjustment ... not ... beyond the reach"; "variations ... within the range" ). Assessing equivalency involves a determination of whether the claimed invention and alleged infringing device, which are different (there would otherwise be literal infringement), perform substantially the same function in substantially the same way to give the same or substantially the same result. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950). If equivalence appears, infringement will be found unless (1) arguments or amendments made by applicant during prosecution (prosecution history estoppel) estop the patentee from asserting a range of equivalence broad enough to encompass the accused product or process; or (2) the equivalent device is within the public domain, i.e., found in the prior art, Carmen Industries, Inc. v. Wahl, 724 F.2d 932, 942, 220 USPQ 481, 489 (Fed.Cir.1983); Thomas & Betts Corp. v. Litton Systems, Inc., 720 F.2d 1572, 1579-80, 220 USPQ 1, 6-7 (Fed.Cir.1983). Determining the existence of either condition (1) or condition (2) does not require reassessment of validity. See e.g., Carmen Industries, supra, 724 F.2d at 936 n. 2, 937 n. 5, 220 USPQ at 484 n. 2, 485 n. 5. Nor does determination of the existence of either condition necessitate a re-interpretation of the claims as written. Computervision's assumptions concerning a Ninth Circuit interpretation of the claims are unsupported in the record.

C. The Ninth Circuit Decision

The decision of the Ninth Circuit is entitled to great deference under the law of the case doctrine. See Central Soya Co. v. Geo. A. Hormel & Co., 723 F.2d 1573, 1580, 220 USPQ 490, 495 (Fed.Cir.1983). That doctrine ensures judicial efficiency and prevents endless litigation. Id. Its elementary logic is matched by elementary fairness--a litigant given one good bite at the apple should not have a second.

Here, Computervision has had an eminently fair chance to litigate the infringement issue. The issue was presented to the jury, to the trial judge on Perkin-Elmer's motion, and to the Ninth Circuit on direct appeal, on petition for rehearing, and in a suggestion for rehearing in banc. Computervision prevailed in the first two instances and lost in the last three. In those circumstances, there is no basis to relitigate infringement.

We recognize that a court that established the law of a case could elect to review its earlier decision and change it if one of three "exceptional circumstances" exist: (1) the evidence on subsequent trial was substantially different; (2) controlling authority has intervened; or (3) the earlier decision was clearly erroneous and would work a manifest injustice. Central Soya, supra, 723 F.2d at 1580, 220 USPQ at 495. Revisions in the law of the case occur "very infrequently" when an appellate court is asked to review the decision of a coordinate court. 1B Moore's Federal Practice p 0.404 [4.-5 at 138].

Arguing the "clearly erroneous/manifest injustice" exception, described by our predecessor court as "stringent", and as requiring a "strong showing of clear error", Short v. United States, 661 F.2d 150, 154, 228 Ct.Cl. 535 (1981), Computervision would have us review the Ninth Circuit decision on its merits. The decision to review is a threshold consideration, for only on full review can a court determine whether the decision reviewed was clearly erroneous and produced a manifest injustice. To obtain review, an appellant must make at least a prima facie showing of error sufficient to indicate the advisability of review. A mere suspicion of error will not suffice; we must be "convinced to a certainty" that error warranting review exists. Id. Computervision has made no such convincing showing.

Computervision says the Ninth Circuit did not consider the claim language and the prior art. However, the Ninth Circuit had before it the claims, the prior art, and the parties' briefs and arguments. That the court did not specifically mention the claims and prior art in its opinion forms no basis for an assumption that it did not consider those elements in determining that the CA-3000 printer was an equivalent. That a court "do[es] not discuss certain propositions do[es] not make the decision inadequate or suggest the ... court failed to understand them". Schilling v. Schwitzer-Cummins Co., 142 F.2d 82, 84, 61 USPQ 73, 75 (D.C.Cir.1944). Moreover, "[w]e should never assume that a court of concurrent jurisdiction neglected to perform its duty". Skil Corp. v. Millers Falls Co., 541 F.2d 554, 557, 191 USPQ 548, 550 (6th Cir.), cert. den. 429 U.S. 1029, 97 S.Ct. 653, 50 L.Ed.2d 631 (1976).

In an effort to show that the Ninth Circuit did not understand the technology, Computervision says one of the two differences the court found (wider placement of the convex and concave mirrors) does not exist because the mirrors are spaced the same in both systems. That error, however, would, if anything, have favored Computervision because it would have increased the court's perceived differences from one to two. Computervision has not made a prima facie showing that the finding of an allegedly non-existent difference constituted clear error producing manifest injustice.

D. Alleged Fraudulent Conduct

The motion for a new trial or to vacate the judgment under Rule 60(b) alleged fraudulent conduct. On review of a denial of a motion to vacate under Rule 60(b), the standard, like that on review of a denial of a motion for new trial, is whether an abuse of discretion occurred. See e.g., CTS Corp. v. Piher Int'l Corp., 727 F.2d 1550 at 1555 (Fed.Cir.1984). None did.

The allegation of fraudulent conduct rests on a statement made after trial in this action by counsel for a defendant (Canon) in a separate case filed by Perkin-Elmer. At a combined hearing in connection with this action and that case, counsel for Canon said that before trial in this action Perkin-Elmer changed its Micralign printer from the concentric non-2:1 system of the '015 patent claims to the nonconcentric 2:1 system of the CA-3000 printer to get an improved result. Computervision says Perkin-Elmer witnesses "fraudulently" testified that the printer claimed in the '015 patent and the CA-3000 printer achieve "substantially the same" result and thereby rendered the patents in suit unenforceable. We disagree.

Assuming that a statement of counsel for a defendant in another case can be viewed as testimony or as evidence, exact identity of results is not required in establishing equivalency. Though Graver Tank, supra, alternatively speaks of the "same" and "substantially the same" result, 339 U.S. at 608, 70 S.Ct. at 856, the doctrine is clearly based on substantial, not exact, identity:

Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect.

Id. at 609, 70 S.Ct. at 856. Similarly, though the doctrine was initially articulated in Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1361, 219 USPQ 473, 480 (Fed.Cir.1983) as appearing to involve the "same" result, when the court applied the doctrine it referred to "substantially the same" result. 717 F.2d at 1366, 219 USPQ at 484. Moreover, our predecessor court has recognized that the results achieved may be "substantially" the same. See e.g., Lockheed Aircraft Corp. v. United States, 553 F.2d 69, 79, 193 USPQ 449, 461, 213 Ct.Cl. 395, 414 (1977); Pratt & Whitney Co. v. United States, 345 F.2d 838, 841, 145 USPQ 429, 431, 170 Ct.Cl. 829, 833 (1965).<ref>
9 Though some opinions of this court contain references to the "same" result, the court was not required to make a "same"--"substantially the same" distinction in the cases before it. See e.g., Carmen Industries, Inc. v. Wahl, supra; Thomas & Betts Corp. v. Litton Systems, Inc., supra</ref>

Thus, if Perkin-Elmer changed its commercial device to get an improved result by making it the same as the CA-3000, it would not be inconsistent-- much less fraudulent--for Perkin-Elmer witnesses to testify that the claimed and accused devices are nevertheless equivalent. A patentee need produce no commercial device. Infringement is determined by comparison with the patentee's claimed invention, not with its marketed product. CTS Corp. v. Piher Int'l Corp., 527 F.2d 95, 100, 188 USPQ 419, 423 (7th Cir.1975), cert. den. 424 U.S. 978, 96 S.Ct. 1485, 47 L.Ed.2d 748 (1976).

Presumably, as above indicated, the Ninth Circuit so determined equivalence, and, though it did not in its opinion employ the words of Graver Tank, supra, its words do indicate that it found "substantially the same" result. Perkin-Elmer's witnesses testified that the results are substantially the same, not identical. The instructions to the jury defined equivalency in terms of "substantially the same" result. Computervision's own expert testified that the CA-3000 optical system performs the same work in substantially the same way as the '015 patent system, and accomplished a similar result. For all of those reasons, Computervision's assertion of fraudulent conduct is unpersuasive.

The district court committed no abuse of discretion in denying Computervision's alternative motions for new trial or to vacate the judgment under Rule 60(b).

Decision

The denial of Computervision's motion for JNOV having been correct, the denial of its motions for new trial and to vacate the judgment having represented no abuse of discretion, the decision of the Ninth Circuit having established the law of the case, and no legal error having been shown, the judgment of validity and infringement of claims 1-5, 7 and 8 of the '015 patent and claims 1-8 of the '763 patent must be affirmed.

AFFIRMED

DAVIS, Circuit Judge, dissenting.

I am concerned that the District Court denied the appellant's motion for new trial on validity simply because the judge felt compelled to do so by the Ninth Circuit's ruling on infringement, despite the District Court's strongly expressed views (in argument) that (a) the Ninth Circuit's interpretation of the patent (in the infringement appeal), without any necessary jury findings supporting that position, was "absurd", "not according to me", "not according to the jury", a position "with which I strongly take issue",<ref>The District Court somewhat earlier said: "I am rather concerned as to whether or not in the light of that most unusual act of [the Ninth Circuit], where [they] really made a finding of fact there, whether the defendant doesn't deserve a new trial on the issue that's brought back here."
The Ninth Circuit's interpretation was that the appellant's system and the appellee's claims were practically identical, with "miniscule" differences.</ref> (b) that the patents could not both be valid and infringed, but (c) that the District Court felt bound to uphold validity by the Ninth Circuit's infringement decision because that appellate court interpreted the patents broadly as a "conclusion of law", though the District Court clearly considered that that interpretation, if proper, would necessarily depend on findings of fact to be made by the jury but not actually made in this case.

Because the District Court indisputably believed that the original jury had not interpreted the patent, on the basis of the court's instructions, in the way the Ninth Circuit had done, and because, if one accepts the Ninth Circuit's interpretation, appellant was entitled to a new trial so that the "obviousness" findings required by Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), should be made by a jury with respect to the Ninth Circuit's interpretation of the claims, a new trial should have been granted. It was not granted solely because the District Court erroneously felt bound with respect to validity by the Ninth Circuit's infringement decision. <ref> It is undisputed that the Ninth Circuit did not consider validity at all</ref> That was an abuse of discretion, calling for reversal of the refusal to grant the new trial requested by appellant and a remand for a new trial on validity only.<ref>I agree with the majority that this court should not reconsider the Ninth Circuit's determination of infringement</ref> "Rule 59 [New Trials] gives the trial judge ample power to prevent what he considers to be a miscarriage of justice. It is his right, and indeed his duty, to order a new trial if he deems it in the interest of justice to do so." (emphasis added) 11 Wright & Miller, Federal Practice and Procedure, Civil Sec. 2803, pp. 31-2 (1973). When, as here, the trial judge refuses to grant a motion for a new trial which he plainly should have granted, an abuse of discretion has occurred. Ruiz v. Hamburg-American Line, 478 F.2d 29, 34 (9th Cir .1973).

===FOOTNOTES===
<references/>

Main Page

2010-02-22T03:31:20Z

Maura: /* PRIOR ART */

<big>'''Intellectual Property for Engineers: ESTEEM Reading Course, Spring 2010'''</big>
=[[INTRODUCTION]]=
Click on the title for the full chapter.

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[THE PATENT DOCUMENT]]=
Click on the title for the full chapter.

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
Click on the title for the full chapter.

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

=[[NONOBVIOUSNESS]]=
Click on the title for the full chapter.

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[UTILITY]]=

=[[FOREIGN AND DOMESTIC PRIORITY]]=
Click on the title for the full chapter.

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
Click on the title for the full chapter.

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=INVENTOR ELIGIBILITY=

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=ANTICIPATION=
[[Bendix Corp. v. Balax, Inc. (full text)]]

[[Bendix Corp. v. Balax, Inc.]]

[[Chester v. Miller (full text)]]

[[Chester v. Miller]]

== Statutory Bars ==

=PRIOR ART=

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

=DOCTRINE OF EQUIVALENTS=
[[Graver Tank & Mfg. Co. v. Linde Air Products Co. (full text)]]

[[Graver Tank & Mfg. Co. v. Linde Air Products Co.]]

Justice clipart, copyright [http://etc.usf.edu/clipart/ FCIT.]

Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)

2010-02-21T20:31:15Z

Maura:

GRAVER TANK & MFG. CO. V. LINDE AIR PRODUCTS CO., 339 U. S. 605 (1950) -- US Supreme Court Cases from Justia & Oyez 2/21/10 2:21 AM
United States Supreme Court Cases & Opinions

GRAVER TANK & MFG. CO. V. LINDE AIR PRODUCTS CO., 339 U. S. 605 (1950)

U.S. Supreme Court Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) Graver Tank & Mfg. Co. v. Linde Air Products Co. No. 2 Argued March 30, 1950 Decided May 29, 1950 339

U.S. 605 ON REHEARING Syllabus

1. This Court affirms the finding of the two courts below that, under the doctrine of equivalents, certain flux claims of Jones patent No. 2,043,960, for an electric welding process and for fluxes, or compositions, to be used therewith were infringed. Pp. 339 U. S. 606-612.

2. The essence of the doctrine of equivalents is that one may not practice a fraud on a patent. P. 339 U. S. 608.

3. The doctrine of equivalents is founded on the theory 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. Pp. 339 U. S. 608- 609.

4. In determining equivalents, consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with other ingredients, the functions which it is intended to perform, and 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. P. 339 U. S. 609.

5. A finding of equivalence is a determination of fact to be made by the trial court, and the trial court's decision should not be disturbed unless clearly erroneous. Pp. 339 U. S. 609-610.

6. On the record in this case, involving a claim of a combination of alkaline earth metal silicate and calcium fluoride, the trial court was justified in finding that the substitution in the accused composition of manganese silicate (which is not an alkaline earth metal silicate) for magnesium silicate (which is an alkaline earth metal silicate), where the two compositions were substantially identical in operation and result, was so insubstantial, in view of the technology and the prior art, that the patent was infringed under the doctrine of equivalents. Pp. 339 U. S. 610-612.

The history of the case is summarized in the first paragraph of the opinion. On the aspect of the case involved in the rehearing, the prior decision of this Court is adhered to, p. 339 U. S. 612.

MR. JUSTICE JACKSON delivered the opinion of the Court.

Linde Air Products Co., owner of the Jones patent for an electric welding process and for fluxes to be used therewith, brought an action for infringement against Lincoln and the two Graver companies. The trial court held four flux claims valid and infringed and certain other flux claims and all process claims invalid. 86 F.Supp. 191. The Court of Appeals affirmed findings of validity and infringement as to the four flux claims, but reversed the trial court and held valid the process claims and the remaining contested flux claims. 167 F.2d 531. We granted certiorari, 335 U.S. 810, and reversed the judgment of the Court of Appeals insofar as it reversed that of the trial court, and reinstated the District Court decree. 336 U. S. 271. Rehearing was granted, limited to the question of infringement of the four valid flux claims and to the applicability of the doctrine of equivalents to findings of fact in this case.

At the outset it should be noted that the single issue before us is whether the trial court's holding that the four flux claims have been infringed will be sustained. Any issue as to the validity of these claims was unanimously determined by the previous decision in this Court, and attack on their validity cannot be renewed now by reason of limitation on grant of rehearing. The disclosure, the claims, and the prior art have been adequately described in our former opinion and in the opinions of the courts below.
In determining whether an accused device or composition infringes a valid patent, resort must be had in the first instance to the words of the claim. If accused matter falls clearly within the claim, infringement is made out, and that is the end of it.

But courts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for -- indeed, encourage -- the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law. One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication is a dull and very rare type of infringement. To prohibit no other would place the inventor at the mercy of verbalism, and would be subordinating substance to form. It would deprive him of the benefit of his invention, and would foster concealment, rather than disclosure, of inventions, which is one of the primary purposes of the patent system.

The doctrine of equivalents evolved in response to this experience. The essence of the doctrine is that one may not practice a fraud on a patent. Originating almost a century ago in the case of @ 56 U. S. 42. The theory on which it 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."
Union Paper-Bag Machine Co. v. Murphy, 97 U. S. 120, 97 U. S. 125. The doctrine operates not only in favor of the patentee of a pioneer or primary invention, but also for the patentee of a secondary invention consisting of a combination of old ingredients which produce new and useful results, Imhaeuser v. Buerk, 101 U. S. 647, 101 U. S. 655, although the area of equivalence may vary under the circumstances. See Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 210 U. S. 414-415, and cases cited; 78 U. S. 556; 82 U. S. 192. The wholesome realism of this doctrine is not always applied in favor of a patentee, but is sometimes used against him. Thus, where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee's action for infringement. Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 170 U. S. 568. In its early development, the doctrine was usually applied in cases involving devices where there was equivalence in mechanical components. Subsequently, however, the same principles were also applied to compositions, where there was equivalence between chemical ingredients. Today the doctrine is applied to mechanical or chemical equivalents in compositions or devices. See discussions and cases collected in 3 Walker on Patents (Deller's ed.1937) §§ 489-492; Ellis, Patent Claims (1949) §§ 59-60.

What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula, and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other, and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor 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.

A finding of equivalence is a determination of fact. Proof can be made in any form: through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art. Like any other issue of fact, final determination requires a balancing of credibility, persuasiveness, and weight of evidence. It is to be decided by the trial court, and that court's decision, under general principles of appellate review, should not be disturbed unless clearly erroneous. Particularly is this so in a field where so much depends upon familiarity with specific scientific problems and principles not usually contained in the general storehouse of knowledge and experience.

In the case before us, we have two electric welding compositions or fluxes: the patented composition, Unionmelt Grade 20, and the accused composition, Lincolnweld 660. The patent under which Unionmelt is made claims essentially a combination of alkaline earth metal silicate and calcium fluoride; Unionmelt actually contains, however, silicates of calcium and magnesium, two alkaline earth metal silicates. Lincolnweld's composition is similar to Unionmelt's, except that it substitutes silicates of calcium and manganese -- the latter not an alkaline earth metal -- for silicates of calcium and magnesium. In all other respects, the two compositions are alike. The mechanical methods in which these compositions are employed are similar. They are identical in operation, and produce the same kind and quality of weld.

The question which thus emerges is whether the substitution of the manganese, which is not an alkaline earth metal, for the magnesium, which is, under the circumstances of this case, and in view of the technology and the prior art, is a change of such substance as to make the doctrine of equivalents inapplicable; or, conversely, whether, under the circumstances, the change was so insubstantial that the trial court's invocation of the doctrine of equivalents was justified.

Without attempting to be all-inclusive, we note the following evidence in the record: chemists familiar with the two fluxes testified that manganese and magnesium were similar in many of their reactions (R. 287, 669). There is testimony by a metallurgist that alkaline earth metals are often found in manganese ores in their natural state, and that they serve the same purpose in the fluxes (R. 831-832), and a chemist testified that, "in the sense of the patent," manganese could be included as an alkaline earth metal (R. 297). Much of this testimony was corroborated by reference to recognized texts on inorganic chemistry (R. 332). Particularly important, in addition, were the disclosures of the prior art, also contained in the record. The Miller patent, No. 1,754,566, which preceded the patent in suit, taught the use of manganese silicate in welding fluxes (R. 969, 971). Manganese was similarly disclosed in the Armor patent, No. 1,467,825, which also described a welding composition (R. 1346). And the record contains no evidence of any kind to show that Lincolnweld was developed as the result of independent research or experiments.

It is not for this Court to even essay an independent evaluation of this evidence. This is the function of the trial court. And, as we have heretofore observed,

"To no type of case is this . . . more appropriately applicable than to the one before us, where the evidence is largely the

testimony of experts as to which a trial court may be enlightened by scientific demonstrations. This trial occupied some three testimony of experts as to which a trial court may be enlightened by scientific demonstrations. This trial occupied some three weeks, during which, as the record shows, the trial judge visited laboratories with counsel and experts to observe actual demonstrations of welding as taught by the patent and of the welding accused of infringing it, and of various stages of the prior art. He viewed motion pictures of various welding operations and tests, and heard many experts and other witnesses."

336 U. S. 336 U.S. 271, 336 U. S. 274-275.

The trial judge found on the evidence before him that the Lincolnweld flux and the composition of the patent in suit are substantially identical in operation and in result. He found also that Lincolnweld is in all respects equivalent to Unionmelt for welding purposes. And he concluded that,
"for all practical purposes, manganese silicate can be efficiently and effectively substituted for calcium and magnesium silicates as the major constituent of the welding composition."
These conclusions are adequately supported by the record; certainly they are not clearly erroneous.

<ref> Rule 52(a), Federal Rules of Civil Procedure provides in part:

"Findings of fact shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses."

MR. JUSTICE BLACK, with whom MR. JUSTICE DOUGLAS concurs, dissenting.

I heartily agree with the Court that "fraud" is bad, "piracy" is evil, and "stealing" is reprehensible. But, in this case, where petitioners are not charged with any such malevolence, these lofty principles do not justify the Court's sterilization of Acts of Congress and prior decisions, none of which is even mentioned in today's opinion.

The only patent claims involved here describe respondent's product as a flux "containing a major proportion of alkaline earth metal silicate." The trial court found that petitioners used a flux "composed principally of manganese silicate." Finding also that "manganese is not an alkaline earth metal," the trial court admitted that petitioners' flux did not "literally infringe" respondent's patent. Nevertheless it invoked the judicial "doctrine of equivalents" to broaden the claim for "alkaline earth metals" so as to embrace "manganese." On the ground that "the fact that manganese is a proper substitute . . . is fully disclosed in the specification" of respondent's patent, it concluded that
"no determination need be made whether it is a known chemical fact outside the teachings of the patent that manganese is an equivalent. . . ."

Since today's affirmance unquestioningly follows the findings of the trial court, this Court necessarily relies on what the specifications revealed. In so doing, it violates a direct mandate of Congress without even discussing that mandate.

R.S. § 4888, as amended, 35 U.S.C. § 33, provides that an applicant

"shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery."

We have held in this very case that this statute precludes invoking the specifications to alter a claim free from ambiguous language, since "it is the claim which measures the grant to the patentee." Graver Mfg. Co. v. Linde Co., 336 U. S. 271, 336 U. S. 277. What is not specifically claimed is dedicated to the public. See, e.g., Miller v. Brass Co., 104 U. S. 350, 104 U. S. 352. For the function of claims under R.S. § 4888, as we have frequently reiterated, is to exclude from the patent monopoly field all that is not specifically claimed, whatever may appear in the specifications. See, e.g., Marconi Wireless Co. v. United States, 320 U. S. 1, 320 U. S. 23, and cases there cited. Today, the Court tacitly rejects those cases. It departs from the underlying principle which, as the Court pointed out in White v. Dunbar, 119 U. S. 47, 119 U. S. 51, forbids treating a patent claim

"like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. . . . The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms."

Giving this patentee the benefit of a grant that it did not precisely claim is no less "unjust to the public" and no less an evasion of R.S. § 4888 merely because done in the name of the "doctrine of equivalents."

In seeking to justify its emasculation of R.S. § 4888 by parading potential hardships which literal enforcement might conceivably impose on patentees who had for some reason failed to claim complete protection for their discoveries, the Court fails even to mention the program for alleviation of such hardships which Congress itself has provided. 35 U.S.C. § 64, authorizes reissue of patents where a patent is "wholly or partly inoperative" due to certain errors arising from "inadvertence, accident, or mistake" of the patentee. And while the section does not expressly permit a patentee to expand his claim, this Court has reluctantly interpreted it to justify doing so. Miller v. Brass Co., 104 U. S. 350, 104 U. S. 353-354. That interpretation, however, was accompanied by a warning that "Reissues for the enlargement of claims should be the exception and not the rule." 104 U.S. at 104 U. S. 355. And Congress was careful to hedge the privilege of reissue by exacting conditions. It also entrusted the Patent Office, not the courts, with initial authority to determine whether expansion of a claim was justified, and barred suits for retroactive infringement based on such expansion. Like the Court's opinion, this congressional plan adequately protects patentees from "fraud," "piracy," and "stealing." Unlike the Court's opinion, it also protects businessmen from retroactive infringement suits and judicial expansion of a monopoly sphere beyond that which a patent expressly authorizes. The plan is just, fair, and reasonable. In effect, it is nullified by this decision undercutting what the Court has heretofore recognized as wise safeguards. See Milcor Steel Co. v. Fuller Co., 316 U. S. 143, 316 U. S. 148. One need not be a prophet to suggest that today's rhapsody on the virtue of the "doctrine of equivalents" will, in direct contravention of the Miller case, supra, make enlargement of patent claims the "rule," rather than the "exception."

Whatever the merits of the "doctrine of equivalents" where differences between the claims of a patent and the allegedly infringing product are de minimis, colorable only, and without substance, that doctrine should have no application to the facts of this case. For the differences between respondent's welding substance and petitioner's claimed flux were not nearly so slight. The claims relied upon here did not involve any mechanical structure or process where invention lay in the construction or method, rather than in the materials used. Rather, they were based wholly on using particular materials for a particular purpose. Respondent's in the materials used. Rather, they were based wholly on using particular materials for a particular purpose. Respondent's assignors experimented with several metallic silicates, including that of manganese. According to the specifications (if these are to be considered), they concluded that, while several were "more or less efficacious in our process, we prefer to use silicates of the alkaline earth metals." Several of their claims which this Court found too broad to be valid encompassed manganese silicate; the only claims found valid did not. Yet today the Court disregards that crucial deficiency, holding those claims infringed by a composition of which 88.49% by weight is manganese silicate.
In view of the intense study and experimentation of respondent's assignors with manganese silicate, it would be frivolous to contend that failure specifically to include that substance in a precise claim was unintentional. Nor does respondent attempt to give that or any other explanation for its omission. But the similar use of manganese in prior expired patents, referred to in the Court's opinion, raises far more than a suspicion that its elimination from the valid claims stemmed from fear that its inclusion by name might result in denial or subsequent invalidation of respondent's patent.

Under these circumstances, I think petitioner had a right to act on the belief that this Court would follow the plain mandates of Congress that a patent's precise claims mark its monopoly boundaries, and that expansion of those claims to include manganese could be obtained only in a statutory reissue proceeding. The Court's ruling today sets the stage for more patent "fraud" and "piracy" against business than could be expected from faithful observance of the congressionally enacted plan to protect business against judicial expansion of precise patent claims. Hereafter, a manufacturer cannot rely on what the language of a patent claims. He must be able, at the peril of heavy infringement damages, to forecast how far a court relatively unversed in a particular technological field will expand the claim's language after considering the testimony of technical experts in that field. To burden business enterprise on the assumption that men possess such a prescience bodes ill for the kind of competitive economy that is our professed goal.

The way specific problems are approached naturally has much to do with the decisions reached. A host of prior cases, to some of which I have referred, have treated the 17-year monopoly authorized by valid patents as a narrow exception to our competitive enterprise system. For that reason, they have emphasized the importance of leaving businessmen free to utilize all knowledge not preempted by the precise language of a patent claim. E.g., Sontag Stores Co. v. Nut Co., 310 U. S. 281, and cases there cited. In the Sontag case, Mr. Justice McReynolds, speaking for a unanimous Court, said in part:

"In the case under consideration, the patentee might have included in the application for the original patent claims broad enough to embrace petitioner's accused machine, but did not.

This 'gave the public to understand' that whatever was not claimed 'did not come within his patent and might rightfully be made by anyone.'"
310 U.S. at 310 U. S. 293. The Court's contrary approach today causes it to retreat from this sound principle. The damages retroactively assessed against
petitioner for what was authorized until today are but the initial installment on the cost of that retreat. </ref>

It is difficult to conceive of a case more appropriate for application of the doctrine of equivalents. The disclosures of the prior art made clear that manganese silicate was a useful ingredient in welding compositions. Specialists familiar with the problems of welding compositions understood that manganese was equivalent to, and could be substituted for, magnesium in the composition of the patented flux ,and their observations were confirmed by the literature of chemistry. Without some explanation or indication that Lincolnweld was developed by independent research, the trial court could properly infer that the accused flux is the result of imitation, rather than experimentation or invention. Though infringement was not literal, the changes which avoid literal infringement are colorable only. We conclude that the trial court's judgment of infringement respecting the four flux claims was proper, and we adhere to our prior decision on this aspect of the case.

Affirmed.

MR. JUSTICE MINTON took no part in the consideration or decision of this case.

<ref> L. Hand in Royal Typewriter Co. v. Remington Rand, 168 F.2d 691, 692. </ref>

===FOOTNOTES===
<references/>

[FOOTNOTE 2/1]
For this reason, the tidbits of evidence painstakingly selected from the record by this Court have no significance, since the trial court avowedly did not look beyond the specifications themselves.

[FOOTNOTE 2/2]
This Court's approval of the trial judge's resort to specifications is ironic as well as unfortunate. In its original opinion, this Court rejected respondent's contention that the very language invoked here to support infringement should be applied to validate a claim otherwise too board to be upheld. 336 U. S. 271, 336 U. S. 277.

[FOOTNOTE 2/3]
"This provision was inserted in the law for the purpose of relieving the courts from the duty of ascertaining the exact invention of the patentee by inference and conjecture, derived from a laborious examination of previous inventions, and a comparison thereof with that claimed by him. This duty is now cast upon the Patent Office. There, his claim is, or is supposed to be, examined, scrutinized, limited, and made to conform to what he is entitled to. If the office refuses to allow him all that he asks, he has an appeal. But the courts have no right to enlarge a patent beyond the scope of its claim as allowed by the Patent Office, or the appellate tribunal to which contested applications are referred. When the terms of a claim in a patent are clear and distinct (as they always should be), the patentee, in a suit brought upon the patent, is bound by it. Merrill v. Yeomans, 94 U. S. 568."

Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274, 95 U. S. 278. MR. JUSTICE DOUGLAS, dissenting.

The Court applies the doctrine of equivalents in a way which subverts the constitutional and statutory scheme for the grant and use of patents.

The claims of the patent are limited to a flux "containing a major proportion of alkaline earth metal silicate." Manganese silicate, the flux which is held to infringe, is not an alkaline earth metal silicate. It was disclosed in the application and then excluded from the claims. It therefore became public property. See Mahn v. Harwood, 112 U. S. 354, 112 U. S. 361. It was, to be sure, mentioned in the specifications. But the measure of the grant is to be found in the claims, not in the specifications. Milcor Steel Co. v. Fuller Co., 316 U. S. 143, 316 U. S. 145-146. The specifications can be used to limit, but never to expand, the claim. See McClain v. Ortmayer, 141 U. S. 419, 141 U. S. 424.

The Court now allows the doctrine of equivalents to erase those time-honored rules. Moreover, a doctrine which is said to protect against practicing "a fraud on a patent" is used to extend a patent to a composition which could not be patented. For manganese silicate had been covered by prior patents, now expired. Thus, we end with a strange anomaly: a monopoly is obtained on an unpatented and unpatentable article.

Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)

2010-02-21T20:30:31Z

Maura:

GRAVER TANK & MFG. CO. V. LINDE AIR PRODUCTS CO., 339 U. S. 605 (1950) -- US Supreme Court Cases from Justia & Oyez 2/21/10 2:21 AM
United States Supreme Court Cases & Opinions

GRAVER TANK & MFG. CO. V. LINDE AIR PRODUCTS CO., 339 U. S. 605 (1950)

U.S. Supreme Court Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) Graver Tank & Mfg. Co. v. Linde Air Products Co. No. 2 Argued March 30, 1950 Decided May 29, 1950 339

U.S. 605 ON REHEARING Syllabus

1. This Court affirms the finding of the two courts below that, under the doctrine of equivalents, certain flux claims of Jones patent No. 2,043,960, for an electric welding process and for fluxes, or compositions, to be used therewith were infringed. Pp. 339 U. S. 606-612.

2. The essence of the doctrine of equivalents is that one may not practice a fraud on a patent. P. 339 U. S. 608.

3. The doctrine of equivalents is founded on the theory 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. Pp. 339 U. S. 608- 609.

4. In determining equivalents, consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with other ingredients, the functions which it is intended to perform, and 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. P. 339 U. S. 609.

5. A finding of equivalence is a determination of fact to be made by the trial court, and the trial court's decision should not be disturbed unless clearly erroneous. Pp. 339 U. S. 609-610.

6. On the record in this case, involving a claim of a combination of alkaline earth metal silicate and calcium fluoride, the trial court was justified in finding that the substitution in the accused composition of manganese silicate (which is not an alkaline earth metal silicate) for magnesium silicate (which is an alkaline earth metal silicate), where the two compositions were substantially identical in operation and result, was so insubstantial, in view of the technology and the prior art, that the patent was infringed under the doctrine of equivalents. Pp. 339 U. S. 610-612.

The history of the case is summarized in the first paragraph of the opinion. On the aspect of the case involved in the rehearing, the prior decision of this Court is adhered to, p. 339 U. S. 612.

MR. JUSTICE JACKSON delivered the opinion of the Court.

Linde Air Products Co., owner of the Jones patent for an electric welding process and for fluxes to be used therewith, brought an action for infringement against Lincoln and the two Graver companies. The trial court held four flux claims valid and infringed and certain other flux claims and all process claims invalid. 86 F.Supp. 191. The Court of Appeals affirmed findings of validity and infringement as to the four flux claims, but reversed the trial court and held valid the process claims and the remaining contested flux claims. 167 F.2d 531. We granted certiorari, 335 U.S. 810, and reversed the judgment of the Court of Appeals insofar as it reversed that of the trial court, and reinstated the District Court decree. 336 U. S. 271. Rehearing was granted, limited to the question of infringement of the four valid flux claims and to the applicability of the doctrine of equivalents to findings of fact in this case.

At the outset it should be noted that the single issue before us is whether the trial court's holding that the four flux claims have been infringed will be sustained. Any issue as to the validity of these claims was unanimously determined by the previous decision in this Court, and attack on their validity cannot be renewed now by reason of limitation on grant of rehearing. The disclosure, the claims, and the prior art have been adequately described in our former opinion and in the opinions of the courts below.
In determining whether an accused device or composition infringes a valid patent, resort must be had in the first instance to the words of the claim. If accused matter falls clearly within the claim, infringement is made out, and that is the end of it.

But courts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for -- indeed, encourage -- the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law. One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication is a dull and very rare type of infringement. To prohibit no other would place the inventor at the mercy of verbalism, and would be subordinating substance to form. It would deprive him of the benefit of his invention, and would foster concealment, rather than disclosure, of inventions, which is one of the primary purposes of the patent system.

The doctrine of equivalents evolved in response to this experience. The essence of the doctrine is that one may not practice a fraud on a patent. Originating almost a century ago in the case of @ 56 U. S. 42. The theory on which it 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."
Union Paper-Bag Machine Co. v. Murphy, 97 U. S. 120, 97 U. S. 125. The doctrine operates not only in favor of the patentee of a pioneer or primary invention, but also for the patentee of a secondary invention consisting of a combination of old ingredients which produce new and useful results, Imhaeuser v. Buerk, 101 U. S. 647, 101 U. S. 655, although the area of equivalence may vary under the circumstances. See Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 210 U. S. 414-415, and cases cited; 78 U. S. 556; 82 U. S. 192. The wholesome realism of this doctrine is not always applied in favor of a patentee, but is sometimes used against him. Thus, where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee's action for infringement. Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 170 U. S. 568. In its early development, the doctrine was usually applied in cases involving devices where there was equivalence in mechanical components. Subsequently, however, the same principles were also applied to compositions, where there was equivalence between chemical ingredients. Today the doctrine is applied to mechanical or chemical equivalents in compositions or devices. See discussions and cases collected in 3 Walker on Patents (Deller's ed.1937) §§ 489-492; Ellis, Patent Claims (1949) §§ 59-60.

What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula, and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other, and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor 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.

A finding of equivalence is a determination of fact. Proof can be made in any form: through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art. Like any other issue of fact, final determination requires a balancing of credibility, persuasiveness, and weight of evidence. It is to be decided by the trial court, and that court's decision, under general principles of appellate review, should not be disturbed unless clearly erroneous. Particularly is this so in a field where so much depends upon familiarity with specific scientific problems and principles not usually contained in the general storehouse of knowledge and experience.

In the case before us, we have two electric welding compositions or fluxes: the patented composition, Unionmelt Grade 20, and the accused composition, Lincolnweld 660. The patent under which Unionmelt is made claims essentially a combination of alkaline earth metal silicate and calcium fluoride; Unionmelt actually contains, however, silicates of calcium and magnesium, two alkaline earth metal silicates. Lincolnweld's composition is similar to Unionmelt's, except that it substitutes silicates of calcium and manganese -- the latter not an alkaline earth metal -- for silicates of calcium and magnesium. In all other respects, the two compositions are alike. The mechanical methods in which these compositions are employed are similar. They are identical in operation, and produce the same kind and quality of weld.

The question which thus emerges is whether the substitution of the manganese, which is not an alkaline earth metal, for the magnesium, which is, under the circumstances of this case, and in view of the technology and the prior art, is a change of such substance as to make the doctrine of equivalents inapplicable; or, conversely, whether, under the circumstances, the change was so insubstantial that the trial court's invocation of the doctrine of equivalents was justified.

Without attempting to be all-inclusive, we note the following evidence in the record: chemists familiar with the two fluxes testified that manganese and magnesium were similar in many of their reactions (R. 287, 669). There is testimony by a metallurgist that alkaline earth metals are often found in manganese ores in their natural state, and that they serve the same purpose in the fluxes (R. 831-832), and a chemist testified that, "in the sense of the patent," manganese could be included as an alkaline earth metal (R. 297). Much of this testimony was corroborated by reference to recognized texts on inorganic chemistry (R. 332). Particularly important, in addition, were the disclosures of the prior art, also contained in the record. The Miller patent, No. 1,754,566, which preceded the patent in suit, taught the use of manganese silicate in welding fluxes (R. 969, 971). Manganese was similarly disclosed in the Armor patent, No. 1,467,825, which also described a welding composition (R. 1346). And the record contains no evidence of any kind to show that Lincolnweld was developed as the result of independent research or experiments.

It is not for this Court to even essay an independent evaluation of this evidence. This is the function of the trial court. And, as we have heretofore observed,

"To no type of case is this . . . more appropriately applicable than to the one before us, where the evidence is largely the

testimony of experts as to which a trial court may be enlightened by scientific demonstrations. This trial occupied some three testimony of experts as to which a trial court may be enlightened by scientific demonstrations. This trial occupied some three weeks, during which, as the record shows, the trial judge visited laboratories with counsel and experts to observe actual demonstrations of welding as taught by the patent and of the welding accused of infringing it, and of various stages of the prior art. He viewed motion pictures of various welding operations and tests, and heard many experts and other witnesses."

336 U. S. 336 U.S. 271, 336 U. S. 274-275.

The trial judge found on the evidence before him that the Lincolnweld flux and the composition of the patent in suit are substantially identical in operation and in result. He found also that Lincolnweld is in all respects equivalent to Unionmelt for welding purposes. And he concluded that,
"for all practical purposes, manganese silicate can be efficiently and effectively substituted for calcium and magnesium silicates as the major constituent of the welding composition."
These conclusions are adequately supported by the record; certainly they are not clearly erroneous. <ref> Rule 52(a), Federal Rules of Civil Procedure provides in part:

"Findings of fact shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses."

MR. JUSTICE BLACK, with whom MR. JUSTICE DOUGLAS concurs, dissenting.

I heartily agree with the Court that "fraud" is bad, "piracy" is evil, and "stealing" is reprehensible. But, in this case, where petitioners are not charged with any such malevolence, these lofty principles do not justify the Court's sterilization of Acts of Congress and prior decisions, none of which is even mentioned in today's opinion.

The only patent claims involved here describe respondent's product as a flux "containing a major proportion of alkaline earth metal silicate." The trial court found that petitioners used a flux "composed principally of manganese silicate." Finding also that "manganese is not an alkaline earth metal," the trial court admitted that petitioners' flux did not "literally infringe" respondent's patent. Nevertheless it invoked the judicial "doctrine of equivalents" to broaden the claim for "alkaline earth metals" so as to embrace "manganese." On the ground that "the fact that manganese is a proper substitute . . . is fully disclosed in the specification" of respondent's patent, it concluded that
"no determination need be made whether it is a known chemical fact outside the teachings of the patent that manganese is an equivalent. . . ."

Since today's affirmance unquestioningly follows the findings of the trial court, this Court necessarily relies on what the specifications revealed. In so doing, it violates a direct mandate of Congress without even discussing that mandate.

R.S. § 4888, as amended, 35 U.S.C. § 33, provides that an applicant

"shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery."

We have held in this very case that this statute precludes invoking the specifications to alter a claim free from ambiguous language, since "it is the claim which measures the grant to the patentee." Graver Mfg. Co. v. Linde Co., 336 U. S. 271, 336 U. S. 277. What is not specifically claimed is dedicated to the public. See, e.g., Miller v. Brass Co., 104 U. S. 350, 104 U. S. 352. For the function of claims under R.S. § 4888, as we have frequently reiterated, is to exclude from the patent monopoly field all that is not specifically claimed, whatever may appear in the specifications. See, e.g., Marconi Wireless Co. v. United States, 320 U. S. 1, 320 U. S. 23, and cases there cited. Today, the Court tacitly rejects those cases. It departs from the underlying principle which, as the Court pointed out in White v. Dunbar, 119 U. S. 47, 119 U. S. 51, forbids treating a patent claim

"like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. . . . The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms."

Giving this patentee the benefit of a grant that it did not precisely claim is no less "unjust to the public" and no less an evasion of R.S. § 4888 merely because done in the name of the "doctrine of equivalents."

In seeking to justify its emasculation of R.S. § 4888 by parading potential hardships which literal enforcement might conceivably impose on patentees who had for some reason failed to claim complete protection for their discoveries, the Court fails even to mention the program for alleviation of such hardships which Congress itself has provided. 35 U.S.C. § 64, authorizes reissue of patents where a patent is "wholly or partly inoperative" due to certain errors arising from "inadvertence, accident, or mistake" of the patentee. And while the section does not expressly permit a patentee to expand his claim, this Court has reluctantly interpreted it to justify doing so. Miller v. Brass Co., 104 U. S. 350, 104 U. S. 353-354. That interpretation, however, was accompanied by a warning that "Reissues for the enlargement of claims should be the exception and not the rule." 104 U.S. at 104 U. S. 355. And Congress was careful to hedge the privilege of reissue by exacting conditions. It also entrusted the Patent Office, not the courts, with initial authority to determine whether expansion of a claim was justified, and barred suits for retroactive infringement based on such expansion. Like the Court's opinion, this congressional plan adequately protects patentees from "fraud," "piracy," and "stealing." Unlike the Court's opinion, it also protects businessmen from retroactive infringement suits and judicial expansion of a monopoly sphere beyond that which a patent expressly authorizes. The plan is just, fair, and reasonable. In effect, it is nullified by this decision undercutting what the Court has heretofore recognized as wise safeguards. See Milcor Steel Co. v. Fuller Co., 316 U. S. 143, 316 U. S. 148. One need not be a prophet to suggest that today's rhapsody on the virtue of the "doctrine of equivalents" will, in direct contravention of the Miller case, supra, make enlargement of patent claims the "rule," rather than the "exception."

Whatever the merits of the "doctrine of equivalents" where differences between the claims of a patent and the allegedly infringing product are de minimis, colorable only, and without substance, that doctrine should have no application to the facts of this case. For the differences between respondent's welding substance and petitioner's claimed flux were not nearly so slight. The claims relied upon here did not involve any mechanical structure or process where invention lay in the construction or method, rather than in the materials used. Rather, they were based wholly on using particular materials for a particular purpose. Respondent's in the materials used. Rather, they were based wholly on using particular materials for a particular purpose. Respondent's assignors experimented with several metallic silicates, including that of manganese. According to the specifications (if these are to be considered), they concluded that, while several were "more or less efficacious in our process, we prefer to use silicates of the alkaline earth metals." Several of their claims which this Court found too broad to be valid encompassed manganese silicate; the only claims found valid did not. Yet today the Court disregards that crucial deficiency, holding those claims infringed by a composition of which 88.49% by weight is manganese silicate.
In view of the intense study and experimentation of respondent's assignors with manganese silicate, it would be frivolous to contend that failure specifically to include that substance in a precise claim was unintentional. Nor does respondent attempt to give that or any other explanation for its omission. But the similar use of manganese in prior expired patents, referred to in the Court's opinion, raises far more than a suspicion that its elimination from the valid claims stemmed from fear that its inclusion by name might result in denial or subsequent invalidation of respondent's patent.

Under these circumstances, I think petitioner had a right to act on the belief that this Court would follow the plain mandates of Congress that a patent's precise claims mark its monopoly boundaries, and that expansion of those claims to include manganese could be obtained only in a statutory reissue proceeding. The Court's ruling today sets the stage for more patent "fraud" and "piracy" against business than could be expected from faithful observance of the congressionally enacted plan to protect business against judicial expansion of precise patent claims. Hereafter, a manufacturer cannot rely on what the language of a patent claims. He must be able, at the peril of heavy infringement damages, to forecast how far a court relatively unversed in a particular technological field will expand the claim's language after considering the testimony of technical experts in that field. To burden business enterprise on the assumption that men possess such a prescience bodes ill for the kind of competitive economy that is our professed goal.

The way specific problems are approached naturally has much to do with the decisions reached. A host of prior cases, to some of which I have referred, have treated the 17-year monopoly authorized by valid patents as a narrow exception to our competitive enterprise system. For that reason, they have emphasized the importance of leaving businessmen free to utilize all knowledge not preempted by the precise language of a patent claim. E.g., Sontag Stores Co. v. Nut Co., 310 U. S. 281, and cases there cited. In the Sontag case, Mr. Justice McReynolds, speaking for a unanimous Court, said in part:

"In the case under consideration, the patentee might have included in the application for the original patent claims broad enough to embrace petitioner's accused machine, but did not.

This 'gave the public to understand' that whatever was not claimed 'did not come within his patent and might rightfully be made by anyone.'"
310 U.S. at 310 U. S. 293. The Court's contrary approach today causes it to retreat from this sound principle. The damages retroactively assessed against
petitioner for what was authorized until today are but the initial installment on the cost of that retreat. </ref>

It is difficult to conceive of a case more appropriate for application of the doctrine of equivalents. The disclosures of the prior art made clear that manganese silicate was a useful ingredient in welding compositions. Specialists familiar with the problems of welding compositions understood that manganese was equivalent to, and could be substituted for, magnesium in the composition of the patented flux ,and their observations were confirmed by the literature of chemistry. Without some explanation or indication that Lincolnweld was developed by independent research, the trial court could properly infer that the accused flux is the result of imitation, rather than experimentation or invention. Though infringement was not literal, the changes which avoid literal infringement are colorable only. We conclude that the trial court's judgment of infringement respecting the four flux claims was proper, and we adhere to our prior decision on this aspect of the case.

Affirmed.

MR. JUSTICE MINTON took no part in the consideration or decision of this case.

<ref> L. Hand in Royal Typewriter Co. v. Remington Rand, 168 F.2d 691, 692. </ref>

===FOOTNOTES===
<references/>

[FOOTNOTE 2/1]
For this reason, the tidbits of evidence painstakingly selected from the record by this Court have no significance, since the trial court avowedly did not look beyond the specifications themselves.

[FOOTNOTE 2/2]
This Court's approval of the trial judge's resort to specifications is ironic as well as unfortunate. In its original opinion, this Court rejected respondent's contention that the very language invoked here to support infringement should be applied to validate a claim otherwise too board to be upheld. 336 U. S. 271, 336 U. S. 277.

[FOOTNOTE 2/3]
"This provision was inserted in the law for the purpose of relieving the courts from the duty of ascertaining the exact invention of the patentee by inference and conjecture, derived from a laborious examination of previous inventions, and a comparison thereof with that claimed by him. This duty is now cast upon the Patent Office. There, his claim is, or is supposed to be, examined, scrutinized, limited, and made to conform to what he is entitled to. If the office refuses to allow him all that he asks, he has an appeal. But the courts have no right to enlarge a patent beyond the scope of its claim as allowed by the Patent Office, or the appellate tribunal to which contested applications are referred. When the terms of a claim in a patent are clear and distinct (as they always should be), the patentee, in a suit brought upon the patent, is bound by it. Merrill v. Yeomans, 94 U. S. 568."

Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274, 95 U. S. 278. MR. JUSTICE DOUGLAS, dissenting.

The Court applies the doctrine of equivalents in a way which subverts the constitutional and statutory scheme for the grant and use of patents.

The claims of the patent are limited to a flux "containing a major proportion of alkaline earth metal silicate." Manganese silicate, the flux which is held to infringe, is not an alkaline earth metal silicate. It was disclosed in the application and then excluded from the claims. It therefore became public property. See Mahn v. Harwood, 112 U. S. 354, 112 U. S. 361. It was, to be sure, mentioned in the specifications. But the measure of the grant is to be found in the claims, not in the specifications. Milcor Steel Co. v. Fuller Co., 316 U. S. 143, 316 U. S. 145-146. The specifications can be used to limit, but never to expand, the claim. See McClain v. Ortmayer, 141 U. S. 419, 141 U. S. 424.

The Court now allows the doctrine of equivalents to erase those time-honored rules. Moreover, a doctrine which is said to protect against practicing "a fraud on a patent" is used to extend a patent to a composition which could not be patented. For manganese silicate had been covered by prior patents, now expired. Thus, we end with a strange anomaly: a monopoly is obtained on an unpatented and unpatentable article.

Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)

2010-02-21T20:28:14Z

Maura:

GRAVER TANK & MFG. CO. V. LINDE AIR PRODUCTS CO., 339 U. S. 605 (1950) -- US Supreme Court Cases from Justia & Oyez 2/21/10 2:21 AM
United States Supreme Court Cases & Opinions

GRAVER TANK & MFG. CO. V. LINDE AIR PRODUCTS CO., 339 U. S. 605 (1950)

U.S. Supreme Court Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) Graver Tank & Mfg. Co. v. Linde Air Products Co. No. 2 Argued March 30, 1950 Decided May 29, 1950 339

U.S. 605 ON REHEARING Syllabus

1. This Court affirms the finding of the two courts below that, under the doctrine of equivalents, certain flux claims of Jones patent No. 2,043,960, for an electric welding process and for fluxes, or compositions, to be used therewith were infringed. Pp. 339 U. S. 606-612.

2. The essence of the doctrine of equivalents is that one may not practice a fraud on a patent. P. 339 U. S. 608.

3. The doctrine of equivalents is founded on the theory 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. Pp. 339 U. S. 608- 609.

4. In determining equivalents, consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with other ingredients, the functions which it is intended to perform, and 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. P. 339 U. S. 609.

5. A finding of equivalence is a determination of fact to be made by the trial court, and the trial court's decision should not be disturbed unless clearly erroneous. Pp. 339 U. S. 609-610.

6. On the record in this case, involving a claim of a combination of alkaline earth metal silicate and calcium fluoride, the trial court was justified in finding that the substitution in the accused composition of manganese silicate (which is not an alkaline earth metal silicate) for magnesium silicate (which is an alkaline earth metal silicate), where the two compositions were substantially identical in operation and result, was so insubstantial, in view of the technology and the prior art, that the patent was infringed under the doctrine of equivalents. Pp. 339 U. S. 610-612.

The history of the case is summarized in the first paragraph of the opinion. On the aspect of the case involved in the rehearing, the prior decision of this Court is adhered to, p. 339 U. S. 612.

MR. JUSTICE JACKSON delivered the opinion of the Court.

Linde Air Products Co., owner of the Jones patent for an electric welding process and for fluxes to be used therewith, brought an action for infringement against Lincoln and the two Graver companies. The trial court held four flux claims valid and infringed and certain other flux claims and all process claims invalid. 86 F.Supp. 191. The Court of Appeals affirmed findings of validity and infringement as to the four flux claims, but reversed the trial court and held valid the process claims and the remaining contested flux claims. 167 F.2d 531. We granted certiorari, 335 U.S. 810, and reversed the judgment of the Court of Appeals insofar as it reversed that of the trial court, and reinstated the District Court decree. 336 U. S. 271. Rehearing was granted, limited to the question of infringement of the four valid flux claims and to the applicability of the doctrine of equivalents to findings of fact in this case.

At the outset it should be noted that the single issue before us is whether the trial court's holding that the four flux claims have been infringed will be sustained. Any issue as to the validity of these claims was unanimously determined by the previous decision in this Court, and attack on their validity cannot be renewed now by reason of limitation on grant of rehearing. The disclosure, the claims, and the prior art have been adequately described in our former opinion and in the opinions of the courts below.
In determining whether an accused device or composition infringes a valid patent, resort must be had in the first instance to the words of the claim. If accused matter falls clearly within the claim, infringement is made out, and that is the end of it.

But courts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for -- indeed, encourage -- the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law. One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication is a dull and very rare type of infringement. To prohibit no other would place the inventor at the mercy of verbalism, and would be subordinating substance to form. It would deprive him of the benefit of his invention, and would foster concealment, rather than disclosure, of inventions, which is one of the primary purposes of the patent system.

The doctrine of equivalents evolved in response to this experience. The essence of the doctrine is that one may not practice a fraud on a patent. Originating almost a century ago in the case of @ 56 U. S. 42. The theory on which it 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."
Union Paper-Bag Machine Co. v. Murphy, 97 U. S. 120, 97 U. S. 125. The doctrine operates not only in favor of the patentee of a pioneer or primary invention, but also for the patentee of a secondary invention consisting of a combination of old ingredients which produce new and useful results, Imhaeuser v. Buerk, 101 U. S. 647, 101 U. S. 655, although the area of equivalence may vary under the circumstances. See Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 210 U. S. 414-415, and cases cited; 78 U. S. 556; 82 U. S. 192. The wholesome realism of this doctrine is not always applied in favor of a patentee, but is sometimes used against him. Thus, where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee's action for infringement. Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 170 U. S. 568. In its early development, the doctrine was usually applied in cases involving devices where there was equivalence in mechanical components. Subsequently, however, the same principles were also applied to compositions, where there was equivalence between chemical ingredients. Today the doctrine is applied to mechanical or chemical equivalents in compositions or devices. See discussions and cases collected in 3 Walker on Patents (Deller's ed.1937) §§ 489-492; Ellis, Patent Claims (1949) §§ 59-60.

What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula, and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other, and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor 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.

A finding of equivalence is a determination of fact. Proof can be made in any form: through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art. Like any other issue of fact, final determination requires a balancing of credibility, persuasiveness, and weight of evidence. It is to be decided by the trial court, and that court's decision, under general principles of appellate review, should not be disturbed unless clearly erroneous. Particularly is this so in a field where so much depends upon familiarity with specific scientific problems and principles not usually contained in the general storehouse of knowledge and experience.

In the case before us, we have two electric welding compositions or fluxes: the patented composition, Unionmelt Grade 20, and the accused composition, Lincolnweld 660. The patent under which Unionmelt is made claims essentially a combination of alkaline earth metal silicate and calcium fluoride; Unionmelt actually contains, however, silicates of calcium and magnesium, two alkaline earth metal silicates. Lincolnweld's composition is similar to Unionmelt's, except that it substitutes silicates of calcium and manganese -- the latter not an alkaline earth metal -- for silicates of calcium and magnesium. In all other respects, the two compositions are alike. The mechanical methods in which these compositions are employed are similar. They are identical in operation, and produce the same kind and quality of weld.

The question which thus emerges is whether the substitution of the manganese, which is not an alkaline earth metal, for the magnesium, which is, under the circumstances of this case, and in view of the technology and the prior art, is a change of such substance as to make the doctrine of equivalents inapplicable; or, conversely, whether, under the circumstances, the change was so insubstantial that the trial court's invocation of the doctrine of equivalents was justified.

Without attempting to be all-inclusive, we note the following evidence in the record: chemists familiar with the two fluxes testified that manganese and magnesium were similar in many of their reactions (R. 287, 669). There is testimony by a metallurgist that alkaline earth metals are often found in manganese ores in their natural state, and that they serve the same purpose in the fluxes (R. 831-832), and a chemist testified that, "in the sense of the patent," manganese could be included as an alkaline earth metal (R. 297). Much of this testimony was corroborated by reference to recognized texts on inorganic chemistry (R. 332). Particularly important, in addition, were the disclosures of the prior art, also contained in the record. The Miller patent, No. 1,754,566, which preceded the patent in suit, taught the use of manganese silicate in welding fluxes (R. 969, 971). Manganese was similarly disclosed in the Armor patent, No. 1,467,825, which also described a welding composition (R. 1346). And the record contains no evidence of any kind to show that Lincolnweld was developed as the result of independent research or experiments.

It is not for this Court to even essay an independent evaluation of this evidence. This is the function of the trial court. And, as we have heretofore observed,

"To no type of case is this . . . more appropriately applicable than to the one before us, where the evidence is largely the

testimony of experts as to which a trial court may be enlightened by scientific demonstrations. This trial occupied some three testimony of experts as to which a trial court may be enlightened by scientific demonstrations. This trial occupied some three weeks, during which, as the record shows, the trial judge visited laboratories with counsel and experts to observe actual demonstrations of welding as taught by the patent and of the welding accused of infringing it, and of various stages of the prior art. He viewed motion pictures of various welding operations and tests, and heard many experts and other witnesses."

336 U. S. 336 U.S. 271, 336 U. S. 274-275.

The trial judge found on the evidence before him that the Lincolnweld flux and the composition of the patent in suit are substantially identical in operation and in result. He found also that Lincolnweld is in all respects equivalent to Unionmelt for welding purposes. And he concluded that,
"for all practical purposes, manganese silicate can be efficiently and effectively substituted for calcium and magnesium silicates as the major constituent of the welding composition."
These conclusions are adequately supported by the record; certainly they are not clearly erroneous. <ref> Rule 52(a), Federal Rules of Civil Procedure provides in part:

"Findings of fact shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses."

MR. JUSTICE BLACK, with whom MR. JUSTICE DOUGLAS concurs, dissenting.

I heartily agree with the Court that "fraud" is bad, "piracy" is evil, and "stealing" is reprehensible. But, in this case, where petitioners are not charged with any such malevolence, these lofty principles do not justify the Court's sterilization of Acts of Congress and prior decisions, none of which is even mentioned in today's opinion.

The only patent claims involved here describe respondent's product as a flux "containing a major proportion of alkaline earth metal silicate." The trial court found that petitioners used a flux "composed principally of manganese silicate." Finding also that "manganese is not an alkaline earth metal," the trial court admitted that petitioners' flux did not "literally infringe" respondent's patent. Nevertheless it invoked the judicial "doctrine of equivalents" to broaden the claim for "alkaline earth metals" so as to embrace "manganese." On the ground that "the fact that manganese is a proper substitute . . . is fully disclosed in the specification" of respondent's patent, it concluded that
"no determination need be made whether it is a known chemical fact outside the teachings of the patent that manganese is an equivalent. . . ."

Since today's affirmance unquestioningly follows the findings of the trial court, this Court necessarily relies on what the specifications revealed. In so doing, it violates a direct mandate of Congress without even discussing that mandate.

R.S. § 4888, as amended, 35 U.S.C. § 33, provides that an applicant

"shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery."

We have held in this very case that this statute precludes invoking the specifications to alter a claim free from ambiguous language, since "it is the claim which measures the grant to the patentee." <ref> This Court's approval of the trial judge's resort to specifications is ironic as well as unfortunate. In its original opinion, this Court rejected respondent's contention that the very language invoked here to support infringement should be applied to validate a claim otherwise too board to be upheld. 336 U. S. 271, 336 U. S. 277. </ref> Graver Mfg. Co. v. Linde Co., 336 U. S. 271, 336 U. S. 277. What is not specifically claimed is dedicated to the public. See, e.g., Miller v. Brass Co., 104 U. S. 350, 104 U. S. 352. For the function of claims under R.S. § 4888, as we have frequently reiterated, is to exclude from the patent monopoly field all that is not specifically claimed, whatever may appear in the specifications. See, e.g., Marconi Wireless Co. v. United States, 320 U. S. 1, 320 U. S. 23, and cases there cited. Today, the Court tacitly rejects those cases. It departs from the underlying principle which, as the Court pointed out in White v. Dunbar, 119 U. S. 47, 119 U. S. 51, forbids treating a patent claim

"like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. . . . The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms."

Giving this patentee the benefit of a grant that it did not precisely claim is no less "unjust to the public" and no less an evasion of R.S. § 4888 merely because done in the name of the "doctrine of equivalents."

In seeking to justify its emasculation of R.S. § 4888 by parading potential hardships which literal enforcement might conceivably impose on patentees who had for some reason failed to claim complete protection for their discoveries, the Court fails even to mention the program for alleviation of such hardships which Congress itself has provided. 35 U.S.C. § 64, authorizes reissue of patents where a patent is "wholly or partly inoperative" due to certain errors arising from "inadvertence, accident, or mistake" of the patentee. And while the section does not expressly permit a patentee to expand his claim, this Court has reluctantly interpreted it to justify doing so. Miller v. Brass Co., 104 U. S. 350, 104 U. S. 353-354. That interpretation, however, was accompanied by a warning that "Reissues for the enlargement of claims should be the exception and not the rule." 104 U.S. at 104 U. S. 355. And Congress was careful to hedge the privilege of reissue by exacting conditions. It also entrusted the Patent Office, not the courts, with initial authority to determine whether expansion of a claim was justified, <ref> "This provision was inserted in the law for the purpose of relieving the courts from the duty of ascertaining the exact invention of the patentee by inference and conjecture, derived from a laborious examination of previous inventions, and a comparison thereof with that claimed by him. This duty is now cast upon the Patent Office. There, his claim is, or is supposed to be, examined, scrutinized, limited, and made to conform to what he is entitled to. If the office refuses to allow him all that he asks, he has an appeal. But the courts have no right to enlarge a patent beyond the scope of its claim as allowed by the Patent Office, or the appellate tribunal to which contested applications are referred. When the terms of a claim in a patent are clear and distinct (as they always should be), the patentee, in a suit brought upon the patent, is bound by it. Merrill v. Yeomans, 94 U. S. 568."

Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274, 95 U. S. 278. MR. JUSTICE DOUGLAS, dissenting.

The Court applies the doctrine of equivalents in a way which subverts the constitutional and statutory scheme for the grant and use of patents.

The claims of the patent are limited to a flux "containing a major proportion of alkaline earth metal silicate." Manganese silicate, the flux which is held to infringe, is not an alkaline earth metal silicate. It was disclosed in the application and then excluded from the claims. It therefore became public property. See Mahn v. Harwood, 112 U. S. 354, 112 U. S. 361. It was, to be sure, mentioned in the specifications. But the measure of the grant is to be found in the claims, not in the specifications. Milcor Steel Co. v. Fuller Co., 316 U. S. 143, 316 U. S. 145-146. The specifications can be used to limit, but never to expand, the claim. See McClain v. Ortmayer, 141 U. S. 419, 141 U. S. 424.

The Court now allows the doctrine of equivalents to erase those time-honored rules. Moreover, a doctrine which is said to protect against practicing "a fraud on a patent" is used to extend a patent to a composition which could not be patented. For manganese silicate had been covered by prior patents, now expired. Thus, we end with a strange anomaly: a monopoly is obtained on an unpatented and unpatentable article. </ref> and barred suits for retroactive infringement based on such expansion. Like the Court's opinion, this congressional plan adequately protects patentees from "fraud," "piracy," and "stealing." Unlike the Court's opinion, it also protects businessmen from retroactive infringement suits and judicial expansion of a monopoly sphere beyond that which a patent expressly authorizes. The plan is just, fair, and reasonable. In effect, it is nullified by this decision undercutting what the Court has heretofore recognized as wise safeguards. See Milcor Steel Co. v. Fuller Co., 316 U. S. 143, 316 U. S. 148. One need not be a prophet to suggest that today's rhapsody on the virtue of the "doctrine of equivalents" will, in direct contravention of the Miller case, supra, make enlargement of patent claims the "rule," rather than the "exception."

Whatever the merits of the "doctrine of equivalents" where differences between the claims of a patent and the allegedly infringing product are de minimis, colorable only, and without substance, that doctrine should have no application to the facts of this case. For the differences between respondent's welding substance and petitioner's claimed flux were not nearly so slight. The claims relied upon here did not involve any mechanical structure or process where invention lay in the construction or method, rather than in the materials used. Rather, they were based wholly on using particular materials for a particular purpose. Respondent's in the materials used. Rather, they were based wholly on using particular materials for a particular purpose. Respondent's assignors experimented with several metallic silicates, including that of manganese. According to the specifications (if these are to be considered), they concluded that, while several were "more or less efficacious in our process, we prefer to use silicates of the alkaline earth metals." Several of their claims which this Court found too broad to be valid encompassed manganese silicate; the only claims found valid did not. Yet today the Court disregards that crucial deficiency, holding those claims infringed by a composition of which 88.49% by weight is manganese silicate.
In view of the intense study and experimentation of respondent's assignors with manganese silicate, it would be frivolous to contend that failure specifically to include that substance in a precise claim was unintentional. Nor does respondent attempt to give that or any other explanation for its omission. But the similar use of manganese in prior expired patents, referred to in the Court's opinion, raises far more than a suspicion that its elimination from the valid claims stemmed from fear that its inclusion by name might result in denial or subsequent invalidation of respondent's patent.

Under these circumstances, I think petitioner had a right to act on the belief that this Court would follow the plain mandates of Congress that a patent's precise claims mark its monopoly boundaries, and that expansion of those claims to include manganese could be obtained only in a statutory reissue proceeding. The Court's ruling today sets the stage for more patent "fraud" and "piracy" against business than could be expected from faithful observance of the congressionally enacted plan to protect business against judicial expansion of precise patent claims. Hereafter, a manufacturer cannot rely on what the language of a patent claims. He must be able, at the peril of heavy infringement damages, to forecast how far a court relatively unversed in a particular technological field will expand the claim's language after considering the testimony of technical experts in that field. To burden business enterprise on the assumption that men possess such a prescience bodes ill for the kind of competitive economy that is our professed goal.

The way specific problems are approached naturally has much to do with the decisions reached. A host of prior cases, to some of which I have referred, have treated the 17-year monopoly authorized by valid patents as a narrow exception to our competitive enterprise system. For that reason, they have emphasized the importance of leaving businessmen free to utilize all knowledge not preempted by the precise language of a patent claim. E.g., Sontag Stores Co. v. Nut Co., 310 U. S. 281, and cases there cited. In the Sontag case, Mr. Justice McReynolds, speaking for a unanimous Court, said in part:

"In the case under consideration, the patentee might have included in the application for the original patent claims broad enough to embrace petitioner's accused machine, but did not.

This 'gave the public to understand' that whatever was not claimed 'did not come within his patent and might rightfully be made by anyone.'"
310 U.S. at 310 U. S. 293. The Court's contrary approach today causes it to retreat from this sound principle. The damages retroactively assessed against
petitioner for what was authorized until today are but the initial installment on the cost of that retreat. </ref>

It is difficult to conceive of a case more appropriate for application of the doctrine of equivalents. The disclosures of the prior art made clear that manganese silicate was a useful ingredient in welding compositions. Specialists familiar with the problems of welding compositions understood that manganese was equivalent to, and could be substituted for, magnesium in the composition of the patented flux ,and their observations were confirmed by the literature of chemistry. Without some explanation or indication that Lincolnweld was developed by independent research, the trial court could properly infer that the accused flux is the result of imitation, rather than experimentation or invention. Though infringement was not literal, the changes which avoid literal infringement are colorable only. We conclude that the trial court's judgment of infringement respecting the four flux claims was proper, and we adhere to our prior decision on this aspect of the case.

Affirmed.

MR. JUSTICE MINTON took no part in the consideration or decision of this case.

<ref> L. Hand in Royal Typewriter Co. v. Remington Rand, 168 F.2d 691, 692. </ref>

===FOOTNOTES===
<references/>

[FOOTNOTE 2/1]
<ref> For this reason, the tidbits of evidence painstakingly selected from the record by this Court have no significance, since the trial court avowedly did not look beyond the specifications themselves. </ref>

[FOOTNOTE 2/2]

[FOOTNOTE 2/3]

Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)

2010-02-21T20:13:53Z

Maura:

GRAVER TANK & MFG. CO. V. LINDE AIR PRODUCTS CO., 339 U. S. 605 (1950) -- US Supreme Court Cases from Justia & Oyez 2/21/10 2:21 AM
United States Supreme Court Cases & Opinions

GRAVER TANK & MFG. CO. V. LINDE AIR PRODUCTS CO., 339 U. S. 605 (1950)

U.S. Supreme Court Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) Graver Tank & Mfg. Co. v. Linde Air Products Co. No. 2 Argued March 30, 1950 Decided May 29, 1950 339

U.S. 605 ON REHEARING Syllabus

1. This Court affirms the finding of the two courts below that, under the doctrine of equivalents, certain flux claims of Jones patent No. 2,043,960, for an electric welding process and for fluxes, or compositions, to be used therewith were infringed. Pp. 339 U. S. 606-612.

2. The essence of the doctrine of equivalents is that one may not practice a fraud on a patent. P. 339 U. S. 608.

3. The doctrine of equivalents is founded on the theory 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. Pp. 339 U. S. 608- 609.

4. In determining equivalents, consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with other ingredients, the functions which it is intended to perform, and 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. P. 339 U. S. 609.

5. A finding of equivalence is a determination of fact to be made by the trial court, and the trial court's decision should not be disturbed unless clearly erroneous. Pp. 339 U. S. 609-610.

6. On the record in this case, involving a claim of a combination of alkaline earth metal silicate and calcium fluoride, the trial court was justified in finding that the substitution in the accused composition of manganese silicate (which is not an alkaline earth metal silicate) for magnesium silicate (which is an alkaline earth metal silicate), where the two compositions were substantially identical in operation and result, was so insubstantial, in view of the technology and the prior art, that the patent was infringed under the doctrine of equivalents. Pp. 339 U. S. 610-612.

The history of the case is summarized in the first paragraph of the opinion. On the aspect of the case involved in the rehearing, the prior decision of this Court is adhered to, p. 339 U. S. 612.

MR. JUSTICE JACKSON delivered the opinion of the Court.

Linde Air Products Co., owner of the Jones patent for an electric welding process and for fluxes to be used therewith, brought an action for infringement against Lincoln and the two Graver companies. The trial court held four flux claims valid and infringed and certain other flux claims and all process claims invalid. 86 F.Supp. 191. The Court of Appeals affirmed findings of validity and infringement as to the four flux claims, but reversed the trial court and held valid the process claims and the remaining contested flux claims. 167 F.2d 531. We granted certiorari, 335 U.S. 810, and reversed the judgment of the Court of Appeals insofar as it reversed that of the trial court, and reinstated the District Court decree. 336 U. S. 271. Rehearing was granted, limited to the question of infringement of the four valid flux claims and to the applicability of the doctrine of equivalents to findings of fact in this case.

At the outset it should be noted that the single issue before us is whether the trial court's holding that the four flux claims have been infringed will be sustained. Any issue as to the validity of these claims was unanimously determined by the previous decision in this Court, and attack on their validity cannot be renewed now by reason of limitation on grant of rehearing. The disclosure, the claims, and the prior art have been adequately described in our former opinion and in the opinions of the courts below.
In determining whether an accused device or composition infringes a valid patent, resort must be had in the first instance to the words of the claim. If accused matter falls clearly within the claim, infringement is made out, and that is the end of it.

But courts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for -- indeed, encourage -- the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law. One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication is a dull and very rare type of infringement. To prohibit no other would place the inventor at the mercy of verbalism, and would be subordinating substance to form. It would deprive him of the benefit of his invention, and would foster concealment, rather than disclosure, of inventions, which is one of the primary purposes of the patent system.

The doctrine of equivalents evolved in response to this experience. The essence of the doctrine is that one may not practice a fraud on a patent. Originating almost a century ago in the case of @ 56 U. S. 42. The theory on which it 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."
Union Paper-Bag Machine Co. v. Murphy, 97 U. S. 120, 97 U. S. 125. The doctrine operates not only in favor of the patentee of a pioneer or primary invention, but also for the patentee of a secondary invention consisting of a combination of old ingredients which produce new and useful results, Imhaeuser v. Buerk, 101 U. S. 647, 101 U. S. 655, although the area of equivalence may vary under the circumstances. See Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 210 U. S. 414-415, and cases cited; 78 U. S. 556; 82 U. S. 192. The wholesome realism of this doctrine is not always applied in favor of a patentee, but is sometimes used against him. Thus, where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee's action for infringement. Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 170 U. S. 568. In its early development, the doctrine was usually applied in cases involving devices where there was equivalence in mechanical components. Subsequently, however, the same principles were also applied to compositions, where there was equivalence between chemical ingredients. Today the doctrine is applied to mechanical or chemical equivalents in compositions or devices. See discussions and cases collected in 3 Walker on Patents (Deller's ed.1937) §§ 489-492; Ellis, Patent Claims (1949) §§ 59-60.

What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula, and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other, and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor 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.

A finding of equivalence is a determination of fact. Proof can be made in any form: through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art. Like any other issue of fact, final determination requires a balancing of credibility, persuasiveness, and weight of evidence. It is to be decided by the trial court, and that court's decision, under general principles of appellate review, should not be disturbed unless clearly erroneous. Particularly is this so in a field where so much depends upon familiarity with specific scientific problems and principles not usually contained in the general storehouse of knowledge and experience.

In the case before us, we have two electric welding compositions or fluxes: the patented composition, Unionmelt Grade 20, and the accused composition, Lincolnweld 660. The patent under which Unionmelt is made claims essentially a combination of alkaline earth metal silicate and calcium fluoride; Unionmelt actually contains, however, silicates of calcium and magnesium, two alkaline earth metal silicates. Lincolnweld's composition is similar to Unionmelt's, except that it substitutes silicates of calcium and manganese -- the latter not an alkaline earth metal -- for silicates of calcium and magnesium. In all other respects, the two compositions are alike. The mechanical methods in which these compositions are employed are similar. They are identical in operation, and produce the same kind and quality of weld.

The question which thus emerges is whether the substitution of the manganese, which is not an alkaline earth metal, for the magnesium, which is, under the circumstances of this case, and in view of the technology and the prior art, is a change of such substance as to make the doctrine of equivalents inapplicable; or, conversely, whether, under the circumstances, the change was so insubstantial that the trial court's invocation of the doctrine of equivalents was justified.

Without attempting to be all-inclusive, we note the following evidence in the record: chemists familiar with the two fluxes testified that manganese and magnesium were similar in many of their reactions (R. 287, 669). There is testimony by a metallurgist that alkaline earth metals are often found in manganese ores in their natural state, and that they serve the same purpose in the fluxes (R. 831-832), and a chemist testified that, "in the sense of the patent," manganese could be included as an alkaline earth metal (R. 297). Much of this testimony was corroborated by reference to recognized texts on inorganic chemistry (R. 332). Particularly important, in addition, were the disclosures of the prior art, also contained in the record. The Miller patent, No. 1,754,566, which preceded the patent in suit, taught the use of manganese silicate in welding fluxes (R. 969, 971). Manganese was similarly disclosed in the Armor patent, No. 1,467,825, which also described a welding composition (R. 1346). And the record contains no evidence of any kind to show that Lincolnweld was developed as the result of independent research or experiments.

It is not for this Court to even essay an independent evaluation of this evidence. This is the function of the trial court. And, as we have heretofore observed,

"To no type of case is this . . . more appropriately applicable than to the one before us, where the evidence is largely the

testimony of experts as to which a trial court may be enlightened by scientific demonstrations. This trial occupied some three testimony of experts as to which a trial court may be enlightened by scientific demonstrations. This trial occupied some three weeks, during which, as the record shows, the trial judge visited laboratories with counsel and experts to observe actual demonstrations of welding as taught by the patent and of the welding accused of infringing it, and of various stages of the prior art. He viewed motion pictures of various welding operations and tests, and heard many experts and other witnesses."

336 U. S. 336 U.S. 271, 336 U. S. 274-275.

The trial judge found on the evidence before him that the Lincolnweld flux and the composition of the patent in suit are substantially identical in operation and in result. He found also that Lincolnweld is in all respects equivalent to Unionmelt for welding purposes. And he concluded that,
"for all practical purposes, manganese silicate can be efficiently and effectively substituted for calcium and magnesium silicates as the major constituent of the welding composition."
These conclusions are adequately supported by the record; certainly they are not clearly erroneous. <ref> Rule 52(a), Federal Rules of Civil Procedure provides in part:

"Findings of fact shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses."

MR. JUSTICE BLACK, with whom MR. JUSTICE DOUGLAS concurs, dissenting.

I heartily agree with the Court that "fraud" is bad, "piracy" is evil, and "stealing" is reprehensible. But, in this case, where petitioners are not charged with any such malevolence, these lofty principles do not justify the Court's sterilization of Acts of Congress and prior decisions, none of which is even mentioned in today's opinion.

The only patent claims involved here describe respondent's product as a flux "containing a major proportion of alkaline earth metal silicate." The trial court found that petitioners used a flux "composed principally of manganese silicate." Finding also that "manganese is not an alkaline earth metal," the trial court admitted that petitioners' flux did not "literally infringe" respondent's patent. Nevertheless it invoked the judicial "doctrine of equivalents" to broaden the claim for "alkaline earth metals" so as to embrace "manganese." On the ground that "the fact that manganese is a proper substitute . . . is fully disclosed in the specification" of respondent's patent, it concluded that
"no determination need be made whether it is a known chemical fact outside the teachings of the patent that manganese is an equivalent. . . ."

Since today's affirmance unquestioningly follows the findings of the trial court, this Court necessarily relies on what the specifications revealed. <ref> For this reason, the tidbits of evidence painstakingly selected from the record by this Court have no significance, since the trial court avowedly did not look beyond the specifications themselves. </ref> In so doing, it violates a direct mandate of Congress without even discussing that mandate.

R.S. § 4888, as amended, 35 U.S.C. § 33, provides that an applicant

"shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery."

We have held in this very case that this statute precludes invoking the specifications to alter a claim free from ambiguous language, since "it is the claim which measures the grant to the patentee." <ref> This Court's approval of the trial judge's resort to specifications is ironic as well as unfortunate. In its original opinion, this Court rejected respondent's contention that the very language invoked here to support infringement should be applied to validate a claim otherwise too board to be upheld. 336 U. S. 271, 336 U. S. 277. </ref> Graver Mfg. Co. v. Linde Co., 336 U. S. 271, 336 U. S. 277. What is not specifically claimed is dedicated to the public. See, e.g., Miller v. Brass Co., 104 U. S. 350, 104 U. S. 352. For the function of claims under R.S. § 4888, as we have frequently reiterated, is to exclude from the patent monopoly field all that is not specifically claimed, whatever may appear in the specifications. See, e.g., Marconi Wireless Co. v. United States, 320 U. S. 1, 320 U. S. 23, and cases there cited. Today, the Court tacitly rejects those cases. It departs from the underlying principle which, as the Court pointed out in White v. Dunbar, 119 U. S. 47, 119 U. S. 51, forbids treating a patent claim

"like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. . . . The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms."

Giving this patentee the benefit of a grant that it did not precisely claim is no less "unjust to the public" and no less an evasion of R.S. § 4888 merely because done in the name of the "doctrine of equivalents."

In seeking to justify its emasculation of R.S. § 4888 by parading potential hardships which literal enforcement might conceivably impose on patentees who had for some reason failed to claim complete protection for their discoveries, the Court fails even to mention the program for alleviation of such hardships which Congress itself has provided. 35 U.S.C. § 64, authorizes reissue of patents where a patent is "wholly or partly inoperative" due to certain errors arising from "inadvertence, accident, or mistake" of the patentee. And while the section does not expressly permit a patentee to expand his claim, this Court has reluctantly interpreted it to justify doing so. Miller v. Brass Co., 104 U. S. 350, 104 U. S. 353-354. That interpretation, however, was accompanied by a warning that "Reissues for the enlargement of claims should be the exception and not the rule." 104 U.S. at 104 U. S. 355. And Congress was careful to hedge the privilege of reissue by exacting conditions. It also entrusted the Patent Office, not the courts, with initial authority to determine whether expansion of a claim was justified, <ref> "This provision was inserted in the law for the purpose of relieving the courts from the duty of ascertaining the exact invention of the patentee by inference and conjecture, derived from a laborious examination of previous inventions, and a comparison thereof with that claimed by him. This duty is now cast upon the Patent Office. There, his claim is, or is supposed to be, examined, scrutinized, limited, and made to conform to what he is entitled to. If the office refuses to allow him all that he asks, he has an appeal. But the courts have no right to enlarge a patent beyond the scope of its claim as allowed by the Patent Office, or the appellate tribunal to which contested applications are referred. When the terms of a claim in a patent are clear and distinct (as they always should be), the patentee, in a suit brought upon the patent, is bound by it. Merrill v. Yeomans, 94 U. S. 568."

Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274, 95 U. S. 278. MR. JUSTICE DOUGLAS, dissenting.

The Court applies the doctrine of equivalents in a way which subverts the constitutional and statutory scheme for the grant and use of patents.

The claims of the patent are limited to a flux "containing a major proportion of alkaline earth metal silicate." Manganese silicate, the flux which is held to infringe, is not an alkaline earth metal silicate. It was disclosed in the application and then excluded from the claims. It therefore became public property. See Mahn v. Harwood, 112 U. S. 354, 112 U. S. 361. It was, to be sure, mentioned in the specifications. But the measure of the grant is to be found in the claims, not in the specifications. Milcor Steel Co. v. Fuller Co., 316 U. S. 143, 316 U. S. 145-146. The specifications can be used to limit, but never to expand, the claim. See McClain v. Ortmayer, 141 U. S. 419, 141 U. S. 424.

The Court now allows the doctrine of equivalents to erase those time-honored rules. Moreover, a doctrine which is said to protect against practicing "a fraud on a patent" is used to extend a patent to a composition which could not be patented. For manganese silicate had been covered by prior patents, now expired. Thus, we end with a strange anomaly: a monopoly is obtained on an unpatented and unpatentable article. </ref> and barred suits for retroactive infringement based on such expansion. Like the Court's opinion, this congressional plan adequately protects patentees from "fraud," "piracy," and "stealing." Unlike the Court's opinion, it also protects businessmen from retroactive infringement suits and judicial expansion of a monopoly sphere beyond that which a patent expressly authorizes. The plan is just, fair, and reasonable. In effect, it is nullified by this decision undercutting what the Court has heretofore recognized as wise safeguards. See Milcor Steel Co. v. Fuller Co., 316 U. S. 143, 316 U. S. 148. One need not be a prophet to suggest that today's rhapsody on the virtue of the "doctrine of equivalents" will, in direct contravention of the Miller case, supra, make enlargement of patent claims the "rule," rather than the "exception."

Whatever the merits of the "doctrine of equivalents" where differences between the claims of a patent and the allegedly infringing product are de minimis, colorable only, and without substance, that doctrine should have no application to the facts of this case. For the differences between respondent's welding substance and petitioner's claimed flux were not nearly so slight. The claims relied upon here did not involve any mechanical structure or process where invention lay in the construction or method, rather than in the materials used. Rather, they were based wholly on using particular materials for a particular purpose. Respondent's in the materials used. Rather, they were based wholly on using particular materials for a particular purpose. Respondent's assignors experimented with several metallic silicates, including that of manganese. According to the specifications (if these are to be considered), they concluded that, while several were "more or less efficacious in our process, we prefer to use silicates of the alkaline earth metals." Several of their claims which this Court found too broad to be valid encompassed manganese silicate; the only claims found valid did not. Yet today the Court disregards that crucial deficiency, holding those claims infringed by a composition of which 88.49% by weight is manganese silicate.
In view of the intense study and experimentation of respondent's assignors with manganese silicate, it would be frivolous to contend that failure specifically to include that substance in a precise claim was unintentional. Nor does respondent attempt to give that or any other explanation for its omission. But the similar use of manganese in prior expired patents, referred to in the Court's opinion, raises far more than a suspicion that its elimination from the valid claims stemmed from fear that its inclusion by name might result in denial or subsequent invalidation of respondent's patent.

Under these circumstances, I think petitioner had a right to act on the belief that this Court would follow the plain mandates of Congress that a patent's precise claims mark its monopoly boundaries, and that expansion of those claims to include manganese could be obtained only in a statutory reissue proceeding. The Court's ruling today sets the stage for more patent "fraud" and "piracy" against business than could be expected from faithful observance of the congressionally enacted plan to protect business against judicial expansion of precise patent claims. Hereafter, a manufacturer cannot rely on what the language of a patent claims. He must be able, at the peril of heavy infringement damages, to forecast how far a court relatively unversed in a particular technological field will expand the claim's language after considering the testimony of technical experts in that field. To burden business enterprise on the assumption that men possess such a prescience bodes ill for the kind of competitive economy that is our professed goal.

The way specific problems are approached naturally has much to do with the decisions reached. A host of prior cases, to some of which I have referred, have treated the 17-year monopoly authorized by valid patents as a narrow exception to our competitive enterprise system. For that reason, they have emphasized the importance of leaving businessmen free to utilize all knowledge not preempted by the precise language of a patent claim. E.g., Sontag Stores Co. v. Nut Co., 310 U. S. 281, and cases there cited. In the Sontag case, Mr. Justice McReynolds, speaking for a unanimous Court, said in part:

"In the case under consideration, the patentee might have included in the application for the original patent claims broad enough to embrace petitioner's accused machine, but did not.

This 'gave the public to understand' that whatever was not claimed 'did not come within his patent and might rightfully be made by anyone.'"
310 U.S. at 310 U. S. 293. The Court's contrary approach today causes it to retreat from this sound principle. The damages retroactively assessed against
petitioner for what was authorized until today are but the initial installment on the cost of that retreat. </ref>

It is difficult to conceive of a case more appropriate for application of the doctrine of equivalents. The disclosures of the prior art made clear that manganese silicate was a useful ingredient in welding compositions. Specialists familiar with the problems of welding compositions understood that manganese was equivalent to, and could be substituted for, magnesium in the composition of the patented flux ,and their observations were confirmed by the literature of chemistry. Without some explanation or indication that Lincolnweld was developed by independent research, the trial court could properly infer that the accused flux is the result of imitation, rather than experimentation or invention. Though infringement was not literal, the changes which avoid literal infringement are colorable only. We conclude that the trial court's judgment of infringement respecting the four flux claims was proper, and we adhere to our prior decision on this aspect of the case.

Affirmed.

MR. JUSTICE MINTON took no part in the consideration or decision of this case.

<ref> L. Hand in Royal Typewriter Co. v. Remington Rand, 168 F.2d 691, 692. </ref>

===FOOTNOTES===
<references/>