Talk:Warner-Jenkinson v. Hilton Davis Respondent Brief
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
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, 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. 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.”