Talk:Warner-Jenkinson v. Hilton Davis Petitioner Brief

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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.