Kemnetz: Warner-Jenkinson v. Hilton Davis Petitioner Brief

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  • how scope of the invention is determined
  • View: an invention protected by the federal patent monopoly cannot go beyond what the patentee has told the PTO (and the public) the invention is
  • can't claim something as the invention unless it is asserted as the invention before the PTO
  • Federal Circuit disagreed with:

"determining the scope of the patent is a matter of reading and interpreting documents to discern what the patentee has asserted and what it has surrendered, a task that, when performed in infringement litigation, is well within the traditional function of judges."


  • need to do "an independent assessment of the scientific facts to determine what changes from the patentee's asserted invention would make a “substantial difference.”
  • the invention is not limited to what the patentee has defined through the statutory PTO processes for issuing (or reissuing) patents
  • it IS defined in court through factual determinations, even allowing recapture of coverage the patentee dropped in the PTO to obtain the patent, all based on a reassessment in the infringement action of what the patentee could have claimed."
  • federal circuit didn't follow precedent of Graver Tank, their decision goes against: the statute's fundamental requirement that patentees circumscribe their patent monopolies by the disclosures made to and approved by the PTO, so that other inventors, market competitors, and the public can understand with clarity and without costly independent experimentation where each such monopoly ends


  • Hilton Davis's patent no where claims a pH below 6, and this limit is no accident b/c lower pH levels caused "tremendous foaming problems in the plant".
  • the invention protected against infringement should reach no farther than waht the patentee asserted as the invention through the prescribed PTO-approval processes -- Federal Court overstepped the role of precisely claiming the boundaries of a patent
  • the definition of the invention should be limited to what the original patent asserted and not what is determined by a later independent inquiry into whether scientific facts make the original disclosure unduly narrow. Courts CANNOT look beyond what the full patent claims as the invention, when determining what the invention is/was and what it covers.
  • can't claim what they may have claimed and then dropped from coverage in order to get approved by the PTO, such amendments constitute a surrender of coverage
  • Graver cannot support the conclusion that the 1952 Congress codified a doctrine of equivalents like the one adopted by the Federal Circuit (same with other precedents)
  • don't want patent protection to stifle innovation, so it's difficult to define and justify a doctrine of equivalents
  • juries rather than judges should apply to DoE, as long as:

"is completely dependent on this Court's accepting the generally applicable “substantial differences” standard of the Federal Circuit, which calls for what the patentee invented to be defined by scientific testimony about what was technologically important or unimportant to the invention. A standard that, in contrast, limits the “invention” to what the patentee disclosed is plainly a matter for application by judges, as the interpretation of patent documents is at the core of judges' traditional role and expertise."