The Historic and Modern Doctrines Of Equivalents and Claiming the Future:

Part I (1790-1870)

Joshua D. Sarnoff
July 11, 2004
Forthcoming Journal of the Patent and Trademark Office Society (Fall 2004)

ABSTRACT

From its beginning, American patent law has extended patent protection
beyond the explicitly disclosed examples of an invention described in a patent
specification, applying patents to some range of equivalent substituted technologies.
From the middle of the 19th Century until 1950, the Supreme Court was careful to
limit this historic doctrine of equivalents to products or processes that physically
embody the construed language of a patents claims. In Graver Tank &
Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605 (1950), the Supreme
Court radically altered the nature of the doctrine of equivalents, expanding patent
protection beyond the scope of application of construed claim language in order to
protect the value of patents from alleged fraud. In Warner-Jenkinson Co. v. Hilton
Davis Chemical Co., 520 U.S. 17 (1997), and Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., 535 U.S. 722 (2002), the Supreme Court extended patent
protection under this modern doctrine to later-arising technologies not contemplated
by the inventor. As discussed in Part I of this article, the Supreme Court in 1853
stated that patent protection was limited to the scope of application of construed
claim language. In the 1870 Patent Act, Congress codified a distinct claiming
requirement that should have foreclosed the modern doctrine of equivalents. As
discussed in Part II, until Graver Tank, the Supreme Court consistently limited the
doctrine of equivalents under the 1870 Patent Act to the scope of application of
construed claim language. In the 1952 Patent Act, Congress neither codified nor
impliedly ratified the modern doctrine of equivalents, and did not extend it to later-
arising technologies.

This article is the second in a series of articles relating to the doctrine of

equivalents. These articles seek to encourage and to set the context for future
discussions of abolishing the modern doctrine of equivalents and of claiming later-
arising technologies. The first article, to be published in the Federal Circuit Bar
Journal, describes conflicts among the modern doctrine and prosecution history
estoppel and additional implied disclaimer and claim scope doctrines. It explains
how the modern doctrine improperly extends patent protection to equivalents that
could not validly be claimed. The third article, to be published in the Berkeley
Technology Law Journal discusses the lack of theoretical justification for, social
costs of, and complexity created by the modern doctrine. It argues that the historic
doctrine of equivalents should be restored and that additional limits on claiming
later-arising technologies may be needed to promote progress.
1
 Table of Contents

INTRODUCTION

I. The Doctrine of Equivalents and Claiming The Future From 1790 to 1870

A. Early Patent Scope, the Historic Doctrine of Equivalents, and Limiting Patent Protection to
Claims

1. Protection of Patented Principles and Claiming Under the 1790 and 1793 Patent Acts
2. Legislative Recognition of Evans and Claiming Under the 1836 Patent Act
3. Blocking Patents and the Doctrine of Equivalents Under the 1793 and 1836 Patent
Acts
4. Restriction of Patent Protection to the Scope of Application of Construed Claim
Language Under the 1836 Patent Act

B. Winans v. Denmead and Protection for Equivalents Only As Embodiments of Construed

Claims

1. The Principle Invented and the Claim At Issue

2. Limiting Protection to The Construed Claim
3. Encouragement of Liberal Claim Construction
4. Lack of Support For Extending Patent Protection Beyond the Scope of Application
of Construed Claim Language

C. Codification (or Ratification) of The Limits of Patent Protection in the 1870 Patent Act

1. Purposes of the 1870 Patent Act

2. Evidence That the 1870 Patent Act Codified (or Impliedly Ratified) Brooks Dicta
a. The Distinct Claiming Requirement
b. Supporting Evidence From Amendments to Reissue, Abandonment, and
Disclaimer Provisions
3. Limited Evidence that Congress Codified (or Impliedly Ratified) The Scope of
Permissible Claiming Language

CONCLUSION

2
The Historic and Modern Doctrines Of Equivalents and Claiming the Future:
Part I (1790-1870)

Joshua D. Sarnoff1
June 24, 2004

The doctrine of equivalents ... is anomalous, if the claim is measured only by its
words, and for this reason we once went so far as to say that it means no more than
that the language of claims shall be generously construed.... In Winans v. Denmead,
[56 U.S. (15 How.) 330 (1853)] ... the Supreme Court, apparently for the first time,
laid down the doctrine ... and based it upon the theory that the claim was not intended
to be verbally definitive, but to cover the invention which should, to some extent
anyway, be gathered from the disclosure at large.

Claude Neon Lights, Inc. v. E. Machlett & Son, 36 F.2d 574, 575 (2d Cir. 1929) (emphasis added).

The claim, or summing up, however, is not to be taken alone, but in connection with
the specifications and drawings; the whole instrument is to be construed together.
But we are to look at the others only for the purpose of enabling us correctly to
interpret the claim.

Brooks v. Fiske, 56 U.S. (15 How.) 212, 215 (1853) (emphasis added).

[W]hat the patentee, by a strict construction of the claim, has disclaimed ... cannot
now be regained by recourse to the doctrine of equivalents, which at most operates,

1
Assistant Director, Glushko-Samuelson Intellectual Property Law Clinic, Washington College of Law,
American University. Many ideas for this article were developed in collaboration with Shondell Foster, Samuel
Hechtman, Georgina McCoughan, Justin Perillo, and students in the Clinic who wrote a Supreme Court amicus brief in
support of Respondents in the Festo case. I am also indebted to Michael Madison and Richard Ugelow for helpful
criticism of the amicus brief I filed in the Federal Circuit in the Festo case on remand from the Supreme Court, to Linda
Alcorn for citations in the amicus brief I filed in the Medtronic case, to Angela Malley, Timothy Tyre, Daniel Yampolski,
and Shawnna Yashir for research assistance, to Jonathan Baker, David Chavkin, Donald Chisum, Christine Farley, Paul
Janicke, Peter Jaszi, Mark Lemley, James Love, Michael Meurer, Craig Nard, Arthur Neustadt, Arti Rai, Ann Shalleck,
Janet Spragens, Greg Vetter, and Douglas Wyatt for their helpful insights and comments, and to the Deans and Faculty of
the Washington College of Law for providing the opportunity for me to return to teaching and scholarship.

1
 by liberal construction, to secure to the inventor the full benefits, not disclaimed, of
the claims allowed.

Exhibit Supply Corp. v. Ace Patents Corp., 315 U.S. 126, 137 (1942) (emphasis added).

INTRODUCTION

For centuries, patent law has sought to reconcile a fair scope of protection for inventors with
certainty for the public regarding the limits of patent rights and the consequent scope of the public
domain.1 Protection not only must be commensurate with inventors just merits, but also must
avoid depriv[ing the world] of improvements, nor [retard] the progress of the arts.2 In 1822, to
assure that the public received adequate notice, the Supreme Court in Evans v. Eaton3 encouraged
patent applicants to provide in their written specifications4 a clear description of the scope of the
invention to which patent protection would directly apply.5 In the 1836 Patent Act, Congress
ratified Evans by codifying a requirement for patent applicants to particularly specify and point out
the part, improvement, or combination, which he claims as his own invention or discovery.6 Since
that time, formal patent claim language has marked the boundaries of the invention to which
intangible patent property rights attach, just like the written descriptions of metes and bounds in a
deed mark the boundaries of real property to which tangible property rights attach.7

In 1853, to assure a fair scope of protection, the Court in Winans v. Denmead8 adopted a
liberal construction of a claims language so that the claim would apply to an equivalent technology

1
The public domain is the repository of knowledge that is already in the actual or constructive possession of the
public; such knowledge cannot be newly disclosed to the public. See, e.g., Bartnicki v. Vopper, 532 U.S. 514, 546 (2001)
(Rehnquist, J., dissenting); J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION 1:30 (4th
ed. 2002). See generally Symposium, The Public Domain, 66 LAW & CONTEMP. PROBS. 1-483 (2003).
2
Sayre v. Moore, 102 Eng. Rep. 139, 140 (1785) (Lord Mansfield, C.J.). See generally Donald S. Chisum, The
Scope of Protection for Patents After the Supreme Courts Warner-Jenkinson Decision: The Fair Protection-Certainty
Conundrum, 14 SANTA CLARA COMP. & HIGH TECH. L.J. 1 (1998).
3
20 U.S. (7 Wheat.) 356 (1822).
4
See 35 U.S.C. 112, 1 (2000) (requirements for a written description of the invention). Requirements for
patent specifications developed in the mid-18th century. See, e.g., H. DUTTON, THE PATENT SYSTEM AND INVENTIVE
ACTIVITY DURING THE INDUSTRIAL REVOLUTION, 1750-1852, at 75-76 (1984).
5
See Evans, 20 U.S. (7 Wheat.) at 433-34. I use the terms directly apply or direct infringement, rather than
the more common literally apply or literal infringement, because claim construction may be non-literal. However,
direct infringement is often used to refer both to construction and application of claims and to infringement under the
doctrine of equivalents. See, e.g., Univ. of Houston L. Center, Institute for Intel. Prop. & Info. L., Decisions for 2002,
http://www.patstats.org/2002.html (last visited Feb. 8, 2004) (categorizing infringement cases as [l]iteral direct and
[d]octrine of equivalents direct). By literal construction, I refer to a meaning that existed at the relevant time, even
though the meaning may have been an uncommon usage. By liberal construction, I refer to a broad, literal construction
even though a narrower, literal construction could be applied. In contrast, by non-literal construction, I refer to the
creation of a new meaning for a disputed claim term that did not exist at the relevant time.
6
Act of July 4, 1836, ch. 357, 6, 5 Stat. 117, 119.
7
See, e.g., Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989); In re
Vamco Mach. & Tool, Inc., 752 F.2d 1564, 1577 n.5 (Fed. Cir. 1985).
8
56 U.S. (15 How.) 330 (1853).
2
that was known to be a substitute for the invention described in the patent specification.9 The
application of patents to substituted technologies later became known as the doctrine of
equivalents.10 However, a doctrine of equivalents has existed since the beginning of American
patent law, originating as a necessary comparison of the allegedly infringing product or process to
the patented invention before formal claim language was required.11 For over a century after Evans,
the Supreme Court was careful to limit this historic doctrine of equivalents to the direct application
of construed claim language.12

In 1950, the Supreme Court in Graver Tank & Mfg, Co. v. Linde Air Prods. Co.13 articulated
a modern doctrine of equivalents.14 Under the modern doctrine, a product or process that does not
directly 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.15 The modern doctrine of equivalents thus extends patent
protection beyond the scope of physical embodiments (i.e., applications, whether or not enumerated
in the specification)16 of a claims language. It extends the exclusionary patent law infringement
right17 (and contributory liability18) to additional products or processes that are considered to be
factually equivalent to those embodiments.

In two recent cases, Warner-Jenkinson Co. v. Hilton Davis Chemical Co.,19 and Festo Corp.
v. Shoketsu Kinzoku Kogyo Kabushiki Co.,20 the Supreme Court unanimously upheld the modern
9
See id. at 341-43.
10
See Jay I. Alexander, Cabining the Doctrine of Equivalents in Festo: A Historical Perspective on the
Relationship Between the Doctrines of Equivalence and Prosecution History Estoppel, 51 AM. U. L. REV. 553, 562
(2002) (citing McCormick v. Talcott, 61 U.S. (20 How.) 402, 405 (1857), for coining the term doctrine of equivalents).
11
See, e.g., Reutgen v. Kanowrs, 20 F. Cas. 555, 556 (C.C.D. Pa. 1804) (No. 11,710) (Washington, J.); Odiorne v.
Winkley, 18 F. Cas. 581, 582 (C.C.D. Mass. 1814) (No. 10,432) (Story, J.). See generally Harold C. Wegner, Equitable
Equivalents: Weighing the Equities to Determine Patent Infringement in Biotechnology and Other Emerging
Technologies, 18 RUTGERS COMPUTER & TECH. L.J. 1, 9-13 (1992) (citing additional cases).
12
See Ronald D. Hantman, Doctrine of Equivalents, 70 J. PAT & TRADEMARK OFF. SOCY 511, 533-35 (1988).
13
339 U.S. 605 (1950).
14
See id. at 607-08.
15
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997). Although claims are frequently
described as having elements, it is often preferable to refer to limitations of claims and to elements of inventions. See,
e.g., Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 564 n.1 (Fed. Cir. 2000) (en banc), vacated on
other grounds, 535 U.S. 722 (2002). Whether specific language within a claim imposes a limitation thus poses a
critically important level of generality problem. See, e.g., JANICE M. MUELLER, AN INTRODUCTION TO PATENT LAW
242-43 (Aspen 2003). See generally Laurence H. Tribe & Michael C. Dorff, Levels of Generality in the Definition of
Rights, 57 U. CHI. L. REV. 1057 (1990).
16
See Markmanv. Westview Instruments, Inc., 517 U.S. 370, 386 (1996) (the whole subject-matter of a patent is
an embodied conception outside of the patent itself.") (citation omitted).
17
See 35 U.S.C. 271(a) (2000); Bauer & Cie. v. O'Donnell, 229 U.S. 1, 10 (1913).
18
See 35 U.S.C. 271(b)-(c) (2000). Such liability cannot be found without an actual infringement. See Aro Mfg.
Co. v. Convertible Top Replacement Co., 365 U.S. 336, 341-42 (1961). See generally 5 DONALD S. CHISUM, CHISUM ON
PATENTS 17.02, 17.03 (2002) (hereinafter CHISUM ON PATENTS).
19
520 U.S. 17 (1997).
20
535 U.S. 722 (2002).
3
doctrine from various statutory challenges,21 extended equivalents protection to later-arising
equivalent technologies,22 and imperfectly reconciled the modern doctrine with the doctrine of
prosecution history estoppel for amended claims.23 In this context, prosecution history estoppel
provides a legal limitation on the application of the doctrine of equivalents by excluding from the
range of equivalents subject matter surrendered during prosecution of the application for the
patent.24 In doing so, the Court departed from its historic standards for strictly construing
statements and amendments made by the applicant during prosecution and for determining whether
they resulted in implied disclaimers of patentable subject matter.25

This article explains why the modern doctrine of equivalents generally and in its application
to later-arising technologies lacks historic and statutory support. Part I discusses how the doctrine of
equivalents originated, how the Supreme Court and Congress required claiming language and
limited the doctrine of equivalents to direct applications of the construed claiming language, and
how the Court (and possibly Congress) limited the scope of inventive principles that could be
claimed and the breadth of the language that could be used to claim them. Section A. discusses the
development of these patent law doctrines by the Court and Congress under the 1790, 1793, and
1836 Patent Acts. In particular, the Court in 1853 in Brooks v. Fiske26 suggested in dicta that patent
protection was limited to direct application of construed claim language, because the disclosure in
the specification was to be looked at only for the purpose of enabling [judges] correctly to interpret
the claim.27

Section B. discusses how the Court in Winans reiterated that patent protection was limited to
the scope of application of construed claim language, when purportedly establishing the modern
doctrine of equivalents. Although the Court encouraged liberal construction of claim language, it
did not extend patent protection beyond a fair construction of that language. Rather, the Court
21
Specifically, the Court rejected challenges based on inconsistency with the distinct claiming, patent office
examination, and reexamination requirements, and on negative implication from legislative authorization in the 1952
Patent Act for means-plus-function claims that literally apply to corresponding structure and equivalents thereof. 35
U.S.C. 112, 6 (2000). See Warner-Jenkinson, 520 U.S. at 24-30 (discussing 35 U.S.C. 112, 2 & 6, 131 & 251,
4 (2000)); id. at 21, 25-26 (citing rejection of the same arguments made by the dissent in Graver Tank, 339 U.S. 605,
613-15 (1950) (Black, J., dissenting), and in Winans v. Denmead, 56 U.S. (15 How.) 330, 347 (1853) (Campbell, J.,
dissenting)); id. at 26-27 (noting that pre-1952 precedent survived the passage of the 1952 Act) (citing Aro Mfg. Co. v.
Convertible Top Replacement Co., 365 U.S. 336, 342 (1961)). See also Festo, 535 U.S. 722, 726-27, 732-33 (2002)
(citing Warner-Jenkinson).
22
See Warner-Jenkinson, 520 U.S. at 37. Cf. Festo, 535 U.S. at 740 (discussing unforeseeable technology).
23
See Warner-Jenkinson, 520 U.S. at 30-34; Festo, 535 U.S. at 726-42.
24
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc) (citation omitted). Prosecution
history estoppel was previously referred to as file wrapper estoppel, because the prosecution record was called the file
wrapper. See, e.g., Autogiro Co. of Am. v. United States, 384 F.2d 391, 398 (Ct. Cl. 1967).
25
See, e.g., Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-37 (1942) (by narrowing the claim
language in an amendment, the patentee recognized and emphasized the difference between the two phrases and
proclaimed his abandonment of all that is embraced in that difference.... The difference which he thus disclaimed must be
regarded as material, and since the amendment operates as a disclaimer of that difference it must be strictly construed
against him.) (citations omitted).
26
56 U.S. (15 How.) 212 (1853).
27
Id. at 215.
4
recognized that claim language could create an implied-in-fact or an implied-in-law disclaimer of
disclosed patentable subject matter.28

Section C. discusses how Congress ratified the Courts approach in the 1870 Patent Act,
which should have foreclosed later development of the modern doctrine of equivalents. Specifically,
Congress codified a requirement for patent applicants to particularly point out and distinctly claim
the part, improvement, or combination which [the applicant] claims as his invention or discovery.29
The distinct claiming requirement should be understood to have ratified Brooks dicta, fixing the
limits of patent protection at the scope of application of construed claim language.30 In doing so,
Congress also mandated the shift in patent drafting from central to peripheral claiming language.31

Part II, to be published in a subsequent issue, describes how the Supreme Court consistently
applied the historic doctrine of equivalents following the 1870 Patent Act until the 1950 decision in
Graver Tank, and how Congress in the 1952 Patent Act neither codified nor impliedly ratified the
Courts radical new approach to the doctrine of equivalents.32 Section A. discusses (1) how the
Court authorized use of broad claiming language for important fundamental (pioneering) inventions
that applied to later-arising technologies.33 At the same time, the Court: (2) continued to limit the
application of claims to embodiments of construed claim language and further developed implied
disclaimer and prosecution history estoppel doctrines34; (3) adopted a reverse doctrine of equivalents
to limit temporal expansion of claim meaning35 and revised its requirements that prevented overly

28
See Winans v. Denmead, 56 U.S. (15 How.) 330, 337-44 (1853).
29
Act of July 8, 1870, ch. 230, 26, 16 Stat. 198, 201 (emphasis added) (currently codified at 35 U.S.C. 112, 2
(2000)).
30
See Arthur H. Swanson, Discussion of the Application of the Doctrine of Equivalents in the Graver v. Linde
Case, 33 J. PAT. & TRADEMARK OFF. SOCY 19, 27-28 (1951) (describing the adoption of the 1870 Patent Acts distinct
claiming requirement, connecting it to the majority holding in Brooks, and describing that holding as having prevailed,
and it has since been held many times that it is the claim which measures the grant of the Patent.).
31
See, e.g., Markman v. Westview Instruments, Inc., 517 U.S. 370, 379 (1996); Hilton Davis Chem. Co. v.
Warner-Jenkinson Co., 62 F.3d 1512, 1566 (Fed. Cir. 1995) (en banc) (Nies, J., dissenting) (the Act of 1870 ... while a
small language change, was interpreted to effect a major change from central to peripheral claiming); Wegner, supra
note 11, at 16-18, 19 & n.56 (central definition claiming describes a typical embodiment with the expectation that
protection will be provided to other embodiments of the invented principle; peripheral definition claiming describes the
metes and bounds of the invented principle to be protected) (citing RIDSDALE ELLIS, PATENT CLAIMS 3, 4 (1949)). But
see Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 n.4 (1997) (The suggested change in claiming
practice ... is not of statutory origin, and seems merely to reflect narrower inventions in more crowded arts.).
32
See Joshua D. Sarnoff, The Historic and Modern Doctrines of Equivalents and Claiming the Future: Part II
(1870-1952), __ J. PAT. & TRADEMARK OFF. SOCY __ (2004).
33
See, e.g., Morley Sewing Mach. Co. v. Lancaster, 129 U.S. 263, 273 (1889) (having been the first person who
succeeded in producing an automatic machine ... is entitled to a liberal construction of the claims of his patent);
Brothers v. United States, 250 U.S. 88, 89 (1919) (pioneer invention was entitled to a broad construction and the claims
to a liberal application of the doctrine of equivalents). See generally 5 CHISUM ON PATENTS, supra note 18, 18.02[2],
18.04[2].
34
See, e.g., Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. (5 Otto) 274, 278-79 (1877); Leggett v. Avery, 101
U.S. (11 Otto) 256, 259-60 (1879); Miller v. Bridgeport Brass Co., 104 U.S. (14 Otto) 350, 352 (1881); Exhibit Supply
Co. v. Ace Patents Corp., 315 U.S. 126, 136-37 (1942).
35
See, e.g., Boyden Power Brake Co. v. Westinghouse, 170 U.S. 537, 573 (1898); Warner-Jenkinson Co. v. Hilton
5
broad claiming language36; and, for narrow improvement inventions, (4) limited patent protection to
equivalents known to be substitutes when the patent issued37 and prohibited use of functional
claiming language to describe an inventions novel features.38

Section B. describes how the Court fashioned the modern doctrine in Graver Tank,
expanding patent protection beyond the scope of application of construed claim language in order to
provide additional and purportedly fair protection.39 Perversely, one year earlier in the very same
case, the Court had reiterated that the claims determine the scope of patent protection.40 Further, the
majority mischaracterized the relevant patent law history and ignored cogent arguments in dissent
that its new doctrine conflicted with various provisions of the 1870 Patent Act and cases decided
under that Act, none of which are even mentioned in [the] opinion.41

Section C. describes how Congress in the 1952 Patent Act recodified the distinct claiming
requirement and codified the patent law infringement right.42 Congress thereby provided a statutory
locus for the direct infringement right, which had been developed by the judiciary in the interstices
of various provisions of the Patent Act.43 However, Congress intended to change infringement law

Davis Chem. Co., 520 U.S. 17, 28 (1997) (citing Graver Tank & Mfg, Co. v. Linde Air Prods. Co., 339 U.S. 605, 608-09
(1950), for having recognized the existence of a reverse doctrine of equivalents, which restricts the application of broad
literal claim language).
36
See, e.g,. Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 256-57 (1928); The Incandescent Lamp
Patent (Consolidated Electric Light Co. v. McKeesport Light Co.), 159 U.S. 465, 472-74 (1895).
37
See, e.g., Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 555-56 (1870); Halliburton Oil Well Cementing Co. v.
Walker, 329 U.S. 1, 13 (1946).
38
See, e.g., General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 368-71 (1938); Halliburton Oil Well
Cementing Co., 329 U.S. at 8-13. In Halliburton, the Court initially focused on the distinct claiming requirement,
currently codified at 35 U.S.C. 112, 2 (2000). See id. at 8-10 (discussing indefiniteness). However, the Court also
discussed the patentees failure adequately to describe the alleged invention, id.at 13, which suggests an inadequate
written description or lack of enablement, requirements currently codified at 35 U.S.C. 112, 1 (2000).
39
See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608-09 (1950). But see id. at 613 (Black,
J., dissenting) (criticizing the purported fairness arguments). See generally Paul M. Janicke, Heat of Passion: What
Really Happened in Graver Tank, 24 AIPLA Q. J. 1 (1996).
40
See Graver Tank & Mfg. Co. v.Linde Air Prods. Co., 336 U.S. 271, 276-77 (1949).
41
Graver Tank, 339 U.S. at 613 (Black, J., dissenting). See id. at 613-18.
42
See Act of July 19, 1952, ch. 950, Pub. L. No. 82-593, 66 Stat. 792, 798-99, 812 (enacting Section 112, 2 and
Section 271(a), currently codified at 35 U.S.C. 112, 2, 271(a) (2000)). Section 271(a) provides that whoever
without authority makes, uses, offers to sell, or sells any patented invention ... infringes the patent. 35 U.S.C. 271(a)
(2000). See generally 5 CHISUM ON PATENTS, supra note 18, 16.02 (tracing judicial development of the direct
infringement right); 7 CHISUM ON PATENTS, supra note 18, 20.02 (discussing statutory and judicial development of
damages and injunction remedy and jurisdiction provisions).
43
See, e.g., Seymour v. Osborne, 78 U.S. 516, 533 (1870) (Inventions secured by letters patent are property in the
holder of the patent). See generally 5 CHISUM ON PATENTS, supra note 18, 16.02 (tracing judicial development of the
direct infringement right); 7 CHISUM ON PATENTS, supra note 18, 20.02 (discussing statutory and judicial development
of the damage and injunction remedy and jurisdiction provisions). Whatever its status before the 1952 Patent Act, the
infringement right now provides a statutory rather than a common-law claim. See, e.g., North Am. Philips Corp. v. Am.
Vending Sales, Inc., 35 F.3d 1576, 1579 (Fed. Cir. 1994). The property right, jurisdictional, and remedy provisions of the
Patent Act are currently codified at 35 U.S.C. 154(a)(1) (2000) (a patent grants the right to exclude others from
making, using, offering for sale, or selling the invention ....); 35 U.S.C. 281 (2000) (remedy by civil action for
6
only by reversing the Supreme Courts holdings on contributory infringement44 and the Courts
prohibition on functional claiming for improvement inventions. The Court thus authorized the use
of means-plus-function claiming language to describe structural limitations (and of step-plus-
function language for process limitations).45 In authorizing functional claims, Congress at most may
have expanded the scope of permissible claim language for improvement inventions, thereby
allowing improvement claims to apply directly to later-arising technologies.46

In summary, Congress did not codify or impliedly ratify the radical modern doctrine of
equivalents articulated in Graver Tank, extending patent protection beyond the scope of application
of construed claim language.47 Had Congress intended to approve of such a major change to direct
infringement law, it certainly would have said something to this effect.48 In upholding the validity
of the modern doctrine and extending it to later-arising technologies in Warner-Jenkinson, the
Supreme Court had its historic presumptions backward when it stated that 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.49 Rephrasing the Courts later words in Festo, there is no
[less] reason for holding the patentee to the literal terms of an amended claim than there is for

infringement); 35 U.S.C. 283 (2000) (injunctive relief); 35 U.S.C. 284 (2000) (damages).
44
See, e.g., Mercoid Corp. v. Mid-Continent Inv. Co., 320 U.S. 661, 668-69, rehg denied, 321 U.S. 802 (1944).
45
See Act of July 19, 1952, ch. 950, Pub. L. No. 82-593, ch. 950, 66 Stat. 799 (enacting 35 U.S.C. 112, 3,
currently codified at 35 U.S.C. 112, 6 (2000)). For such claims, courts must decide whether functionally claimed
limitations directly apply to technological equivalents that perform functions that are identical to those of enumerated
embodiments. See, e.g., Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1308-10 (Fed. Cir.
1998); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934 (Fed.Cir. 1987) (en banc)); Lockheed Martin Corp.
v. Space Sys./Loral, Inc., 324 F.3d 1308, 1320 (Fed. Cir. 2003).
46
The Federal Circuit, however, has held that Congress intended to limit statutory means-plus-function
equivalents to technological substitutes for claim limitations known at the time a patent issues. See, e.g., Chiuminatta
Concrete Concepts, Inc., 145 F.3d at 1310 (discussing technologies developed after the patent is granted); Schering
Corp. v. Amgen, Inc., 222 F.3d 1347, 1352-54 (Fed. Cir. 2000). But see Lockheed Aircraft Corp. v. United States, 553
F.2d 69, 84 (C.C.P.A. 1977).
47
See, e.g., Fogerty v. Fantasy, 510 U.S. 517, 527-32 (1994) (Congress is presumed to adopt a prior judicial
interpretation only when there is a history of uniform construction that Congress might have endorsed). This is true
notwithstanding the Supreme Courts dicta that Congress in the 1952 Patent Act left intact the entire body of case law
on direct infringement. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 26-27 (1997) (quoting Aro
Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 342 (1961)); 35 U.S.C. 271 (2002). See Aro Mfg., 365
U.S. at 339 ([T]he claims made in the patent are the sole measure of the grant). Cf. P.J. Federico, Commentary on the
New Patent Act, reprinted in 75 J. PAT. OFF. SOCY 161, 170 (1993) (The new Act has two objectives, one, the making
of various revisions and amendments in the patent law, and the other the codification of the patent statutes and some prior
case law.); FDA v. Brown & Williamson Tobacco Corp., 529 U.S. 120, 182 (2000) (Breyer, J., dissenting) (newly
adopted statutory provisions were equally consistent with an intent to ratify a clear prior interpretation as with an intent to
leave existing law ambiguous). But see Warner-Jenkinson, 520 U.S. at 27 (suggesting legislative approval of Graver
Tank).
48
See Hantman, supra note 12, at 544-46 (discussing the limited legislative history and the lack of support for any
ratification of Graver Tank ); Ronald D. Hantman, Why Not the Statute? Revisited, 83 J. PAT. & TRADEMARK OFF. SOCY
685, 691-94 (2001) (same); Ronald D. Hantman, Patent Infringement, 72 J. PAT. & TRADEMARK OFF. SOCY 454, 486-88
(1990) (same). Cf. Warner-Jenkinson Co., 520 U.S. at 28 (Because 112, 6, was enacted as a targeted cure to a
specific problem ... such limited congressional action should not be overread for negative implications);
49
Warner-Jenkinson, 520 U.S. at 28.
7
abolishing the doctrine of equivalents altogether and holding every patentee to the literal terms of
the patent.50

This article is the second in a series of articles relating to the doctrine of equivalents.
This article demonstrates the lack of statutory support for the modern doctrine and the judicial
activism that created and perpetuates it, contrary to the Supreme Courts recent statements that
if the doctrine is to be discarded, it is Congress and not the Court that should do so.51 These
articles seek to encourage and to set the context for future discussions of abolishing the modern
doctrine of equivalents and of claiming later-arising technologies. The first article explains how
the modern doctrine of equivalents operates and describes how it conflicts with prosecution
history estoppel and additional implied disclaimer and claim scope doctrines in light of recent
Supreme Court and Federal Circuit decisions. In particular, the first article discusses how the
modern doctrine improperly extends patent protection to later-arising equivalent technologies
that the applicant could not validly have claimed.52 The third article discusses the lack of
theoretical justification for the modern doctrine of equivalents, the social costs that it imposes,
and the doctrinal complexity that it creates. The third article argues that the doctrine of
equivalents should be restored to its historic form, limiting patent protection to the scope of
application of construed claim language, and that the Supreme Court or Congress may need to
impose additional limits on claiming later-arising technologies in order to effectuate the
constitutional purpose of promot[ing] Progress.53

I. The Doctrine of Equivalents and Claiming The Future From 1790 to 1870

A. Early Patent Scope, the Historic Doctrine of Equivalents, and Limiting Patent Protection to
Claims

1. Protection of Patented Principles and Claiming Under the 1790 and 1793 Patent Acts

Patent claims developed at a time when patent scope and patent protection were not
determined by reference to or limited by claims.54 The 1790 Patent Act required applicants for a
patent to provide a specification ... so particular ... as not only to distinguish the invention or
discovery from other things before known and used, but also to enable a workman ... skilled in the
art ... to make, construct, or use the same, to the end that the public may have the full benefit thereof,

50
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 738 (2002).
51
Id. at 733 (citing Warner-Jenkinson Co., 520 U.S. at 28). Cf. Janicke, supra note 39, at 40 (noting that the 1952
Patent Act did not freeze the Courts ability to adopt intervening rights, in order to balance unfair applications of the
doctrine of equivalents).
52
See Joshua D. Sarnoff, The Doctrine of Equivalents and Claiming the Future After Festo, __ FED. CIR. BAR J. __
(forthcoming 2004).
53
U.S. CONST., art. I, 8, cl. 8. See Joshua D. Sarnoff, Abolishing the Doctrine of Equivalents and Claiming the
Future After Festo, 19 BERK. TECH. L.J. __ (forthcoming 2004).
54
See generally William R. Woodward, Definiteness and Particularity in Patent Claims, 46 MICH. L. REV. 755,
757-59 (1948); Robert Lutz, Evolution of Claims of U.S. Patents (Part I), 20 J. PAT. OFF. SOC. 134, 134-43 (1938).
8
after the expiration of the patent term.55 Under the 1793 Patent Act, applicants were required to
provide a description in such full, clear, and exact terms, as to distinguish the same from all other
things before known, and to enable any person skilled in the art ... to make, compound, and use the
same.56 Nothing in the specification requirement mandated that patent applicants provide a
separate, additional description of the limits or level of generality of the invention for which patent
protection was sought.57 Consequently, nothing in the 1793 Patent Act could limit the scope of
patent protection to the scope of application of interpreted formal claiming language. Instead, patent
scope was determined by reference to the principle of the invention that distinguished it from the
prior art, as revealed by the description provided in the disclosure of the written specification.58

Two decades after enactment of the 1793 Patent Act, Supreme Court justices riding circuit59
and later the Court as a whole -- in the seminal case of Evans v. Eaton60 -- inferred from the written
description requirement that applicants must provide language in the specification that was sufficient
to distinguish their inventions (particularly improvement inventions) from the prior art. Absent such
language, judges and the public would not know what the inventor thought had been invented and
whether it was actually new. If the specification were not limited to the clearly identified patentable
scope of the invention, the patent would be overbroad and invalid. The requirement for a
distinguishing description also provided clear notice to the public so that it could avoid infringing on
the patent.61

As Justice Story cogently articulated in Lowell v. Lewis,62

the patentee is bound to describe, in full and exact terms, in what his invention
consists; and, if it be an improvement ... he should distinguish, what is new and what
is old in his specification, so that it may clearly appear, for what the patent is granted
.... [U]nless it be distinctly stated, in what that invention specifically consists, it is
impossible to say, whether it ought to be patented or not; and it is equally difficult to
know whether the public infringe upon or violate the exclusive right .... If, therefore,
the description in the patent mixes up the old and the new, and does not distinctly
ascertain for which, in particular, the patent is claimed, it must be void; since if it

55
Act of April 10, 1790, ch. 7, 2, 1 Stat. 109.
56
Act of Feb. 21, 1793, ch. 11, 3 1 Stat. 318. For machines the description had to explain the principle ... by
which it may be distinguished from other inventions. Id., 1 Stat. 321-22.
57
See Woodward, supra note 54, at 758-59; 3 CHISUM ON PATENTS, supra note 18, at 8.02 n.2, 8.02[1].
58
See Lutz, supra note 54, at 135-39 (citing cases); Robert Lutz, Evolution of the Claims of U.S. Patents (Part II),
20 J. PAT. OFF. SOCY 377, 377-78 (1938) (discussing the principle of invention approach to determining patent scope,
under section 3 of the 1793 Patent Act and section 6 of the 1836 Patent Act).
59
See, e.g., Lowell v. Lewis, 15 F. Cas. 1018, 1020 (C.C.D. Mass. 1817) (No. 8,568) (Story, J.); Isaacs v. Cooper,
13 F. Cas. 153 (C.C.D. Pa. 1821) (No. 7,096) (Washington, J.).
60
20 U.S. (7 Wheat.) 356 (1822).
61
See Evans, 20 U.S. (7 Wheat.) at 433-34 (purposes to clarify for the public whether the patent claims anything
that is in common use, or is already known, and to guard against prejudice or injury from unknowing infringement). See
generally Lutz, supra note 54, at 139-42 (citing Lowell, Isaacs, Evans, and other cases).
62
15 F. Cas. 1018, 1020 (C.C.D. Mass. 1817) (No. 8,568).
9
 covers the whole, it covers too much, and if not intended to cover the whole, it is
impossible for the court to say, what, in particular, is covered as a new invention.63

In response to these decisions, patent applicants began to include summary language at the
end of their specifications that more specifically identified what they regarded as and claimed to be
their inventions and what distinguished them from the prior art.64 In turn, Supreme Court Justices
began to hold that patent scope was limited by the summary language used to indicate the invention
for which protection had been sought. Such language expressly or impliedly disclaimed any broader
scope of invention that was elsewhere described in the specification. The summary language
operate[s] as a proviso restraining and limiting the patent to the object so specified and results in a
disclaimer ... [that] estops the patentee.65

2. Legislative Recognition of Evans and Claiming Under the 1836 Patent Act

In 1836, Congress required that a patent applicant shall particularly specify and point out
the part, improvement, or combination, which he claims as his own invention or discovery.66 The
1836 Patent Act was intended to codify the pre-existing patent law.67 The specify and point out
language clearly reflects legislative understanding and substantive approval of the requirement for a
distinguishing description adopted by the Supreme Court in Evans.68 However, it is unclear to what
extent Congress intended to codify or impliedly ratify judicial interpretations that had been
developed under the 1793 Patent Act in regard to disclaimer and estoppel.

63
Id. at 1020 (emphasis added).
64
See Woodward, supra note 54, at 758-59; 3 CHISUM ON PATENTS, supra note 18, at 8.02[1]. See also 35
U.S.C. 112, 2 (2000) (codifying the distinct claiming and regards-as-invention requirements); Allen Engg Corp. v.
Bartell Indus., Inc., 299 F.3d 1336, 1348-49 (Fed. Cir. 2002) (definiteness of claims and correspondence to the
applicants understanding are distinct requirements, determined from the perspective of skilled artisans). See generally
Herbert J. Hammond, The Regards As His Invention Requirement of Section 112, Paragraph 2 of the Patent Act:
Ensuring That The Inventor Claims What He Regards As His Invention, 5 TEX. INT. PROP. L.J. 257 (1997); Janet S.
Hendrickson, Solomon v. Kimberly-Clark Corp.: The Federal Circuit Throws Out the 112, 2 Regards Clause with
Inventor Litigation Testimony, 32 U. TOL. L. REV. 407, 426-45 (2001) (discussing Solomon v. Kimberly-Clark Corp.,
216 F.3d 1372, 1380 (Fed. Cir. 2000)).
65
Whitney v. Emmett, 29 F. Cas. 1074, 1079 (C.C.D. E.D. Pa. 1831) (No. 17,585) (Baldwin, J.). See Ames v.
Howard, 1 F. Cas. 755, 757 (C.C.D. Mass. 1833) (No. 326) (Story, J.) (patent should be construed consistent with ... the
antecedent negative declarations of the plaintiff.). See generally Lutz, supra note 54, at 142 (citing cases).
66
Act of July 4, 1836, ch. 357, 6, 5 Stat. 117, 119 (emphasis added). The full language of the relevant section of
the 1836 Act required the applicant to deliver a written description of his invention or discovery, and of the manner and
process of making, constructing, using, and compounding the same, in such full, clear, and exact terms, avoiding
unnecessary prolixity, as to enable any person skilled in the art or science to which it appertains, or with which it is most
nearly connected, to make, construct, compound, and use the same; and in case of any machine, he shall fully explain the
principle and the several modes in which he has contemplated the application of that principle or character by which it
may be distinguished from other inventions; and shall particularly specify and point out the part, improvement, or
combination, which he claims as his own invention or discovery. Id.
67
See Woodward, supra note 54, at 759-60; Lutz, supra note 54, at 143.
68
See Woodward, supra note 54, at 759-60; Lutz, supra note 54, at 143; 3 CHISUM ON PATENTS, supra note 18, at
8.02 n.2, 8.02[2] (in the 1836 Act, Congress adopted the rule of Evans v. Eaton).
10
 The legislative history on the 1836 Act is extremely sparse.69 Although the language adopted
may reflect legislative cognizance of the developing claiming practices,70 it did not clearly require
the use of an ending summary or formal claim language to indicate the intended scope for which
protection was sought.71 Requiring such language for existing patents and applications that lacked
them, moreover, might have raised serious retroactivity concerns (under then-applicable due process
standards).72

For the first two decades after the 1836 Patent Act, the Supreme Court did not definitively
resolve whether the various forms of claim language employed after Evans might result in a
disclaimer of patentable subject matter disclosed in the specification.73 During this period, the
whole patent document, including the claims as a guide, was to be viewed to ascertain the scope and
nature of the invention and to determine whether the invention was embodied in the defendants
practices or devices.74 Nevertheless, the Supreme Court in Prouty v. Ruggles,75 noted that it was
engaging in claim interpretation when it determined the scope of patent protection by considering
the disclosure. The first question ... is, whether [specific combinations]... are claimed as material
parts of the plaintiffs improvement. We think they are ... [based on language in the written
description a]nd in their summing up, they declare, [w]hat they claim as new.76

69
The Senate issued a report that focuses on the need for an examination system (with rights of appeal), in order to
prevent patents from creating unjust monopolies by covering inventions already within the prior art. The report also
addresses the need for a new building to house the Patent Office. The report does not specifically address the change to
the language of the written description requirement. See S. REP. NO. 24-338, at 1-8 (1836) (accompanying S. 239, 24th
Cong., 1st Sess. (1836)).
70
See Markman v. Westview Instruments, Inc., 517 U.S. 370, 379 (1996) (claim practice was recognized in the
1836 Patent Act but claims were not required until the 1870 Patent Act); supra note 31 and accompanying text.
71
Neither the Patent Office nor later commentators on patent law consider the 1836 Act to have imposed any new
standard of definiteness on the types of claim language that had to be used during prosecution. Lutz, supra note 58, at
463. See Markman, 517 U.S. at 379 (citing 1 ANTHONY DELLER, PATENT CLAIMS 4, at 9 (2d ed. 1971)). The leading
contemporaneous patent treatise in 1867 thus described the claiming requirement as allowing the patentee to state what
he claimed as new and to state negatively that he did not claim anything old. The Patent Office amended its example
claim only in 1869. See Lutz, supra note 58, at 464-66 (citing CURTIS ON PATENTS (1st ed. 1849 & later eds.).
72
See Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 553-54 (1852) (noting that Congress in adopting various
legislative extensions of patent terms intended to preserve the post-expiration use rights of owners of licensed products
that had existed under the 1836 Patent Act; articulating due process retroactivity concerns were the Court to interpret the
extension at issue -- which doubled the seven-year administrative extensions authorized by the 1836 Patent Act -- to
authorize the patentee to recall rights which he had granted to others under patents or to reinvest in [the patentee]
rights of property previously sold).
73
Woodward, supra note 54 at 760 (for a long time ... the particular formulations ... [were not regarded] as the
definitive measure of the scope of the patent.).
74
Id.
75
41 U.S. 336 (1842).
76
Id. at 340. See Ryan v. Goodwin, 21 F. Cas. 110, 111 (C.C.D. Mass. 1839) (No. 12, 186) (Story, J.) (If,
therefore, there be any ambiguity or uncertainty in any part of the specification; yet, if ... the court can perceive the exact
nature and extent of the claim made by the inventor, it is bound to adopt that interpretation, and to give it full effect.).
11
 In 1840 in Wyeth v. Stone,77 Justice Story followed precedents under the 1793 Patent Act,
which had held that the scope of protection was limited to the interpretation of the summary claim
and thus the claim would necessarily disclaim any broader patentable subject matter disclosed in the
specification.78 [W]e must look to the summing up of the invention, and the claim therefor,
asserted in the specification; for it is the duty of the patentee to sum up his invention in clear and
determinate terms; and his summing up is conclusive upon his right and title.79 Claiming language
thus was recognized to create an implied-in-fact disclaimer of any unclaimed patentable subject
matter disclosed in the specification. The patentee also could disclaim patentable subject matter
through other actions, including the filing of a formal disclaimer.80

3. Blocking Patents and the Doctrine of Equivalents Under the 1793 and 1836 Patent
Acts

A provision of the 1793 Patent Act created a conceptual problem -- resulting in doctrinal
tensions that remain to this day -- by basing both patentable improvements and infringement of an
original patent on the principle of an invention. Patents for the principle of an original invention
were to apply to subsequent improvements on the principle, which also were patentable. For
improvements in the principle of any machine, or in the process of any composition of matter,
which shall have been patented, and shall have obtained a patent for such improvement, [the
improver] shall not be at liberty to make, use, or vend the original discovery, nor shall the first
inventor be at liberty to use the improvement.81 In modern terms, the provision authorized blocking
patents82 for later-arising, non-obvious improvement technologies.83 Blocking patents are possible

77
30 F. Cas. 723 (C.C.D. Mass. 1840) (No. 18,107).
78
See supra note 64-65 and accompanying text.
79
Wyeth, 30 F. Cas. at 726 (emphasis added).
80
See, e.g., id. at 726 (recognizing the competen[ce] for a patentee at any time, by overt acts or by express
dedication, to abandon or surrender to the public, for their use, all the rights secured by his patent, if such is his pleasure,
clearly and deliberately expressed.). Formal disclaimers of subject matter were introduced in the 1837 Patent Act. Act
of March 3, 1837, ch. 45, 7, 5 Stat. 193.
81
Act of February 21, 1793, ch. 11, 2, 1 Stat. 317, 318. See Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 366 (1822)
(the first section of the 1793 Act treated improvements as patentable inventions). See generally 5 Woodward, supra
note 54, at 767-68; CHISUM ON PATENTS, supra note 18, at 16.02[1][a]. In the 1836 Patent Act, Congress removed the
express authorization for such blocking but retained the authorization of patents for improvements. See Act of July 4,
1836, ch. 357, 6, 5 Stat 117, 119 (patents applications could be made for any new and useful improvement on any art,
machine, manufacture, or composition of matter).
82
See, e.g., Catalina Marketing International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809-10 (Fed. Cir.
2002) (blocking patents are common for new, nonobvious uses of disclosed structural inventions); Prima Tek II, L.L.C. v.
A-Roo Co., 222 F.3d 1372, 1379 n.2 (Fed. Cir. 2000) (blocking patents are common for pioneer and improvement
inventions). See generally Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90
COLUM. L. REV. 839, 909-11 (1990) (discussing blocking patents in regard to both the modern doctrine and the reverse
doctrine of equivalents, and encouraging express consideration of the degree of improvement of the equivalent over the
claimed invention, similarly to determining the permissible scope of broad claims for pioneering inventions).
83
Improvements based on new uses of existing machines were not then patentable, and thus could not result in
blocking patents originally claiming the apparatus and later claiming a new and non-obvious method of use. See Ames v.
Howard, 1 F. Cas. 755, 757 (C.C.D. Mass. 1833) (No. 326) (Story, J.) (It requires no commentary to establish, that the
application of an old thing to a new use, without any other invention, is not a patentable contrivance.).
12
because the scope of application of claim language may expand over time (without invalidating the
claim) to non-obvious, later-arising technologies.84

Because the original patents scope extended to the principle invented, however, the
improvement (in order to be patentable) must have been more than a mere change of form and
proportions, but a combination of well known materials on new principles.85 Unless the
improvement was premised on adding further limitations to the claim and further elements to the
embodiments, a logical dilemma precluded the possibility of blocking patents.86 Substitution of
elements for the limitations of an original invention either would create a new principle (and thus the
improvement should not have been subservient to and could not infringe the original patented
principle)87 or would not create a new principle (and thus the improvement should not have been
patentable).88 As a consequence, Courts routinely were required in infringement actions to resolve
the limits to the principle of the original patented invention and to determine whether the alleged
infringers (often patented) substituted elements so far changed the improvement in principle that it
no longer embodied the original patents principle.89

If the patent in suit related to and improved on a developed technology (i.e., was in a
crowded field of prior art), the patented principle was an improvement of some prior invented
principle that was either patented or in the public domain. The principle of the improvement patent
therefore was necessarily narrow (because the patent otherwise would be invalid by applying to the
prior art that it improved) and the patent had a narrow range of application. Accordingly, small
substitutions to the invention would avoid infringing the improvement patents principle.90 If the

84
See Merges & Nelson, supra note 82, at 861 & n.96 (noting that subservient -- blocked -- patents are possible
because the dominant patents disclosure is not inadequate by failing to describe with particularity the non-obvious
embodiments to which the dominant patents claims apply). See also T. Whitley Chandler, Prosecution History Estoppel,
the Doctrine of Equivalents, and the Scope of Patents, 13 HARV. J. L. & TECH. 465, 496 (2001) (discussing the different
time frames for determining obviousness of equivalents during prosecution and infringement); ROBERT P. MERGES &
JOHN F. DUFFY, PATENT LAW AND POLICY: CASES AND MATERIALS 229-300 (3d ed. 2002) (discussing Enablement and
the Temporal Paradox). See generally Donald S. Chisum, Anticipation, Enablement and Obviousness, An Eternal
Golden Braid, 15 AIPLA Q.J. 57 (1987).
85
Evans, 20 U.S. (7 Wheat.) at 376.
86
See Winans v. Denmead, 56 U.S. (15 How.) 330, 342 (1853) (noting that patentable improvements are almost
always made by changing some one or more forms of one or more parts, and thereby introducing some mechanical
principle or mode of action not previously existing in the machine, and so securing a new or improved result.). Cf. Jon
W. Henry, Understanding & Simplifying Restriction Practice Under 35 USC 121, 86 J. PAT. & TRADEMARK OFF.
SOCY 17, 24 (2004) (discussing additional features in regard to one-way patentable distinctness).
87
See, e.g., Evans, 20 U.S. (7 Wheat.) at 380; McCormick v. Talcott, 61 U.S. (20 How.) 402, 405 (1857); Burr v.
Duryee, 68 U.S. (1 Wall.) 531, 572 (1863); Reutgen v. Kanowrs, 20 F. Cas. 555, 556 (C.C.D. Pa. 1804) (No. 11,710)
(Washington, J.).
88
See, e.g.,OReilly v. Morse, 56 U.S. (15 How.) 62, 123 (1853); Reutgen, 20 F. Cas. at 556.
89
See Lutz, supra note 58, at 378-99 (discussing judicial concern with limits to patentable principles, based on: (1)
preclusion of subsequent invention if the claim were to extend to nonobvious changes to the principle; (2) extension of
the monopoly of the first patent by obtaining an improvement patent; (3) the need to limit method claims to means for
accomplishing results, rather than the results themselves; and (4) inclusion of inoperative embodiments, because not part
of the invention) (citing, inter alia, OReilly, Burr, and Corning v. Burden, 56 U.S. (15 How.) 252 (1853)).
90
See, e.g., Woodcock v. Parker, 30 F. Cas. 491 (C.C.D. Mass. 1813) (No. 17,971) (Story, J.); Odiorne v. Winkley,
13
invention was pioneering, however, the patented principle could be extremely broad and could apply
to (and block) a wide range of (patentable) substitutions.91

Even pioneering principles, however, had to be limited, in order to avoid blocking

subsequent improvements that were too far changed from the pioneering patents disclosed principle.
Such patent protection would defeat the constitutional purpose of promoting technological
progress.92 Thus, in Burr v. Duryee, the Supreme Court held invalid a reissue patent for a machine,
because it contained a claim to a mode of operation ... embodied in the following description of the
mode of application, as a result of which by the use of general and abstract terms, the
specification is made so elastic that it may be construed to claim ... all previous or future inventions
for the same purpose.93

The range of application of a patented principle (and after claims were required, the scope of
application of the claim language reflecting and potentially limiting that principle) became known as
the doctrine of equivalents.94 The doctrine of equivalents was originally thought to apply only to
mechanical equivalents, because mechanical principles were predictable and thus a range of
substitutions would necessarily fall within the scope of application of the principle of a patented
invention.95 (Of course, the range of the mechanical principle would vary, depending on whether the
invention was pioneering or was an improvement of a known mechanical principle or apparatus). In
contrast, for unpredictable arts such as chemistry, the scope of operable substitutes could not be
known in advance and the patented principle therefore might not extend to any substitutes.
Nevertheless, a chemical compound claim might be infringed by substituted components within the
scope of the claims language that were substantially similar to the disclosed components.96

Under the 1836 Patent Act, courts were required to apply the doctrine of equivalents to
determine if there was an infringement, by deciding whether the improvement (or a substituted
element in the improvement) was equivalent in principle to the disclosed enumerated embodiments
(and elements), based on predictability in the art at the time the original invention was patented.

18 F. Cas. 581, 582 (C.C.D. Mass. 1814) (No. 10,432) (Story, J.).
91
See, e.g., Evans, 20 U.S. (7 Wheat.) at 380.
92
See U.S. CONST., art. I, 8, cl. 8.
93
Burr v. Duryee, 68 U.S.(1 Wall.) 531, 575-77 (1863).
94
See McCormick v. Talcott, 61 U.S. (20 How.) 402, 405 (1857) (The inventor of the first improvement cannot
invoke the doctrine of equivalents to suppress all other improvements which are not mere colorable invasions of the
first.) (emphasis added); Alexander, supra note 10, at 562 (noting that McCormick coined the phrase doctrine of
equivalents as a term of art for patent law).
95
See, e.g., Tyler v. Boston, 74 U.S. (7 Wall.) 327, 330 (1868); 5 A CHISUM ON PATENTS, supra note 18, at
18.02[1] (noting that Tyler limited the doctrine of equivalents to mechanical inventions).
96
See Tyler, 74 U.S. (7 Wall.) at 330-31 (upholding a jury instruction to determine whether the defendants
product infringed, by substituting naphtha for kerosene, based on whether one compound of given proportions is
substantially the same as another compound varying in the proportions); id. at 328 (describing the broad claim for a
combination of the mineral or earthy oils with fusel oil, and disclosure in the specification of the substitution of an
equal quantity of naphtha for kerosene, requiring experimentation for the exact proportion of fusel oil to accomplish the
desired result).
14
After Evans v. Eaton97 and Wyeth v. Stone,98 courts decided whether the improvement was an
embodiment of the claim (or whether the substituted element was an embodiment of a claim
limitation), as the claim (or limitation) was interpreted in light of the disclosed equivalent
embodiments (or disclosed equivalent elements).

Courts also had to resolve how broad a principle the inventor could regard as his invention
and thus could claim in the patent, given that inventors reduce to practice before patenting at most a
limited set of embodiments of the invented principle. Although prior art would limit the scope of the
principle patented for improvement inventions, the absence of prior art for pioneering inventions
could potentially allow patentees to claim all future improvements of the patented principle. In
Wyeth, Justice Story held that the patentee could regard as the invention only the inventive mode or
apparatus embodying the patented principle that was actually disclosed in the patent specification.
The patent was invalid if granted for any mode whatsoever [of performing the discovered principle]
by means of an apparatus ... in the abstract, whatever it may be. If it be the latter, it is plain, that the
patent is void, as it is for an abstract principle, and broader than the invention, which is only
[performing the function] by one particular mode, or by a particular apparatus or machinery.99

Pioneering inventors could not broadly claim all future applications of the invented principle,
but rather were limited to disclosed embodiments and some limited range of improvements
equivalent to those embodiments. The Supreme Court in OReilly v. Morse100 subsequently adopted
the limits established by Justice Story in Wyeth for permissible claim scope and future application.
The Court in OReilly held invalid a claim to a principle of invention that by its express terms was
not limited to the specific machinery or parts of machinery described in the foregoing specification
and claims ... [but encompassed] the use of the motive power of the electric or galvanic current, ...
however developed for marking or printing intelligible characters, signs or letters, at any
distances.101 Significantly, OReilly grounded the limits to claim scope on the ability of patentees
to provide written descriptions of and enabling disclosures for the breadth of the principles claimed.

New discoveries in physical science may enable him to combine it with new agents and new
elements, and by that means attain the object in a manner superior to the present process and
altogether different from it.... And ... [he] need place no description of the new manner,
process, or machinery, upon the records of the patent office. And when the patent expires,
the public must apply to him to learn what it is. In fine, he claims an exclusive right to use a
manner and process which he has not described and indeed had not invented, and therefore
could not describe when he obtained his patent. The court is of the opinion that the claim is
too broad, and not warranted by law.102
97
20 U.S. (7 Wheat.) 356 (1822).
98
30 F. Cas. 723 (C.C.D. Mass. 1840) (No. 18,107) (Story, J.).
99
Id. at 727. See Lutz, supra note 54, at 148-56 (patents were found invalid when the claimed scope was not
limited to particular methods of applying a broad principle) (citing, inter alia, Wyeth and Brooks v. Fiske, 56 U.S. (15
How.) 212 (1853)).
100
56 U.S. (15 How.) 62 (1853).
101
Id. at 112 (quoting the eighth claim in the reissued patent of 1848).
102
Id. at 113.
15
Shortly after OReilly, the Supreme Court held in Corning v. Burden103 that processes were not
claimable (using functional means or method language), because such patents would not be
limited to the specific means or machine embodiments that had been invented or disclosed.104

4. Restriction of Patent Protection to the Scope of Application of Construed Claim

Language Under the 1836 Patent Act

Two decades after codifying Evans v. Eaton, and the same year it decided OReilly, the
Supreme Court in Brooks v. Fiske105 reiterated in dicta that patentable scope was to be determined by
interpreting and applying formal claiming language. However, the Court for the first time clearly
and expressly disapproved of the idea of extending patent protection beyond the scope of application
of construed claiming language.106 Specifically, the Court stated that the claim, or summing up,
however, is not to be taken alone, but in connection with the specifications and drawings; the whole
instrument is to be construed together. But we are to look at the others only for the purpose of
enabling us correctly to interpret the claim.107 The Court cited no precedent for its dicta. In
contrast, the dissent cited prior cases and stated that [t]he written specification, including the
drawings, constitute a part of the patent, and must be construed as the claim of the plaintiff.108

The Courts statement in Brooks was dicta, because the dispute actually focused on
interpretation of the claim109 in light of the prior art and the limits the prior art imposed on the
patentable scope of the invention. The majority held the patented principle at issue was limited by
the prior art to an improvement of a known machine, and found that the allegedly infringing device
was not equivalent to that limited scope.110 In contrast, the dissent argued that the prior art did not
103
56 U.S. (15 How.) 252 (1853).
104
See id. at 268 (a man cannot have a patent for the function or abstract effect of a machine, but only for the
machine which produces it.); id. at 269 (His claim cannot change or nullify his previous specification with safety to his
patent. He cannot describe a machine which will perform a certain function, and then claim the function itself, and all
other machines that may be invented to perform the same function.).
105
56 U.S. (15 How.) 212 (1853).
106
See 3 CHISUM ON PATENTS, supra note 18, at 8.02[2] (discussing earlier suggestions of the limits of patent
scope); Lutz, supra note 54, at 145-56 (tracing to 1850 judicial suggestions that patent scope was limited to interpretation
of claims) (citing, inter alia, Parker v. Sears, 18 F. Cas. 1159 (C.C.D. Pa. 1850) (No. 10,748) (Grier, J.)).
107
Brooks, 56 U.S. (15 How.) at 215 (emphasis added).
108
Id. at 223 (McLean, J., dissenting) (citations omitted).
109
The claim was drawn to a machine for cutting wood, i.e.,the employment of rotary planes, substantially such as
herein described, in combination with rollers, or any analogous device to prevent the boards from being drawn up by the
planes. Brooks, 56 U.S. (15 How.) at 215. The interpretive dispute focused on whether the patent covered all machines
that planed boards to a uniform thickness, or only machines that did so by the specific combination of components
disclosed in the plaintiffs patent. See id.; id. at 223-24 (McLean, J. dissenting).
110
The majority held (without referring to the claim language) that prior art machines separately disclosed how to
plane boards to equal thickness and how to keep them from lifting off plates by means of pressure rollers. The invention
was therefore an improvement patent and was necessarily limited to a new combination of three known parts, the novelty
of which was in the position of the rotary cutter above the fixed bed which inherently planed to a uniform thickness. The
defendant also employed an improved machine, which planed to a uniform thickness using a mobile rotary cutter located
below the bed but reciprocating with a bar (corresponding to the pressure rollers) above the bed and the thickness of the
16
so narrowly limit the patented scope, and that the infringing device was an equivalent to the
enumerated machine disclosed within the broader patented principle.111 The Court in Brooks thus
did not address a dispute where a claim was made to less than the full patentable scope of an
invention described in the specification. Accordingly, it did not elaborate on the possibility of an
implied-in-law disclaimer of additional patentable subject matter. Although the Supreme Court
consistently applied Brookss dicta in the years leading up to the 1870 Patent Act,112 the practice of
lower courts was less consistent.113

B. Winans v. Denmead and Protection for Equivalents Only As Embodiments of Construed

Claims

1853 was a big year for American patent law. Shortly after deciding OReilly, Brooks, and
Corning, the Supreme Court decided Winans v. Denmead.114 In Winans, the Court is supposed to
have given birth to a doctrine of equivalents extending patent protection beyond the scope of
application of construed claim language, based on broader principles disclosed in specifications.
But the Court did not and -- given Brookss dicta -- could not have done so. Rather, Winans clearly
supports judicial approval of liberal construction of claim language, in order to assure that claims are
interpreted so as to provide a meaning consistent with a fair scope of protection.

1. The Principle Invented and the Claim At Issue

Winans addressed an improvement invention for railroad cars that carried coal, which would
more stably hold the coal without deforming the metal car bodies. The invention allowed thinner
steel to be used in construction and more coal to be loaded onto each car.115 Specifically, the
invention related to the change in the shape of the car body. The specification included a claim for

wood. The Court then held that the different position of the blade was outside the patented scope See 56 U.S. (15 How.)
at 216-22.
111
The dissent argued that the prior art permitted construing the patent broadly to cover machines for planing wood
to a uniform thickness, not just for the specific arrangement of the blade fixed above the bed with the pressure rollers
keeping the wood on the bed. See 56 U.S. (15 How.) at 224-29 (McLean, J. dissenting) (discussing two prior art French
patents and an invention with the blade below the bed, which did not plane to uniform thickness, but failing to discuss the
Baltimore machine). Cf. id. at 219 (describing the Baltimore machine as reducing the plank to a uniform thickness
passing it between a fixed bed and a fixed cutter, and kept it down on the bed by a pressure roller.). The dissent viewed
the different position of the blade as a mechanical equivalent of the patented principle. See id. at 229-32. These
devices, though different in form, are the same in principle, and produce the same effect. Id. at 232.
112
See, e.g., Bennett v. Fowler, 75 U.S. (7 Wall.) 445, 448 (1869); Burr v. Duryee, 68 U.S. (1 Wall.) 531, 567-68
(1863); McCormick v. Talcott, 61 U.S. (20 How.) 402, 408 (1857).
113
Compare, e.g., Whipple v. Middlesex Co., 29 F. Cas. 940 (C.C.D. Mass. 1859) (No. 17,520) (holding that the
claim was to be construed so as to be co-extensive with the invention, if that can be done without doing violence to its
language.) with Huggens v. Hubby, 12 F. Cas. 826, 828 (C.C.D. N.D. Ohio 1861) (No. 6,839) (holding that, although
the first claim was inoperable, the patentee has [not] thereby so restricted his claim as to cover less than what he
invented.... We think the patentee has so framed his specifications, that his claim covers this new mode of operation).
114
56 U.S. (15 How.) 330 (1853).
115
See Winans, 56 U.S. (15 How.) at 339-40.
17
 making the body of a car for the transportation of coal, &c., in the form of a frustrum of a
cone, substantially as herein described, whereby the force exerted by the weight of the load
presses equally in all directions, and does not tend to change the form thereof, so that every
part resists its equal proportion, and by which also the lower part is so reduced as to pass
down within the truck frame, and between the axles, to lower the centre of gravity of the load
without diminishing the capacity of the car as described.116

The dispute centered on the meaning of the underlined claim terms, i.e., whether they strictly
limited the patented invention to conical car bodies. The patent owner had sued a competitor who
had built and used a coal car in an octagonal shape. The trial judge had provided a jury instruction
that effectively directed a verdict for the defendant, by construing the patent to be limited to railroad
cars strictly in the shape of a conical frustrum, rather than to the broader principle of shapes that
spread the weight equally and lowered the center of gravity.117 The patentee alleged that the court
below erred in excluding the [jury] inquiry whether the cars of the defendants were not
substantially the same in principle and mode of operation with those of the plaintiff; admitting that
these last were rectilinear in their sections and not curvilinear.118

2. Limiting Protection to The Construed Claim

Before reaching a holding, the Supreme Court in Winans reaffirmed Brookss dicta that
patent protection is to be determined from the interpreted limits of claims. The Court first stated that

[o]n such a trial, two questions arise. The first is, what is the thing patented; the second, has
that 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 the jury.119

Although the above-quoted language is consistent with construing the scope of the patent from the
description in the specification, it clearly distinguishes the specification of claim (i.e., the formal
claiming language) from the description of the invention.

The Court then immediately clarified that its focus when determining the scope of patent
protection was solely on the specification of claim.

[It] is alleged [that] the court construed the specification of claim erroneously.... In this, as
in most patent cases ... in order to determine what is the thing patented, it is necessary to
inquire ... [as to the structure described, the mode of operation, the means by which the result

116
Id. at 342 (emphasis added). The frustrum is the part of a conical solid between two cutting planes. THE
AMERICAN COLLEGE DICTIONARY 490 (Random House 1967).
117
Winans, 56 U.S. (15 How.) at 335-37.
118
Id. at 337.
119
Id. at 338.
18
 is obtained, and whether] the specification of claim cover[s] the described mode of operation
by which the result is attained.120

Prior to providing its claim interpretation, moreover, the Court repeatedly emphasized that its
decision was limited to interpreting the claim and determining its scope of application. [T]he only
question in this case is, whether [the patentee has framed his claim to cover the new mode of
operation which he has invented]; or whether he has restricted his claim to one particular
geometrical form.121 Given the nature of the dispute, the Court thus clearly indicated that patent
protection was limited to the scope of application of the construed claim language.

The Court also explicitly recognized the possibility of an implied-in-fact disclaimer, based on
claim scope that the patentee could have obtained but did not seek. An implied-in-fact disclaimer
necessarily would preclude more extensive patent protection than provided by the limiting claim
language. The Court expressly discouraged adoption of limiting claim constructions, so as to avoid
implied-in-fact disclaimers of patentable subject matter. But the Court limited expansive claim
constructions to fair interpretations of the actual claim language, reinforcing the point that the claim
defined the limits of patent scope. [T]he patentee may so restrict his claim as to cover less than
what he invented, or may limit it to one particular form of machine, excluding all other forms, yet
such an interpretation should not be put upon his claim if it can fairly be construed otherwise122

3. Encouragement of Liberal Claim Construction

Having made clear that the scope of protection was limited to the construed claims, the
Supreme Court proceeded to interpret the claim at issue. The Court held that the claim used terms
that were sufficiently broad that the narrow interpretation provided to the jury was in error. In doing
so, the Court reiterated basic patent principles, but added policy reasons why broad interpretation of
patent claims would better correspond to applicants presumed intentions and would better effectuate
patent law. Nevertheless, the Court based its holding on interpreting the relevant claim terms.

First, the Court noted that patent protection cannot be provided merely for a change of
form, and that the patent therefore must have applied to a change [in] the form of an existing
machine ... [to] employ ... a new mode of operation, and thus obtain a new and useful result.123
Second, the Court refused to find a disclaimer of the broad principle of the invention disclosed in the
specification, i.e., the shape of a railcar that uniformly distributes weight and lowers the center of
gravity. The Court cited as support the reasonable presumption that inventors intend to protect
their entire invention, and the constitutional and statutory purposes to promote progress by
allow[ing] inventors to retain to their own use ... what they themselves have created.124 Third, the

120
Id. at 338-39 (emphasis added).
121
Id. at 341 (emphasis added). See id. (the question is, whether the patentee has limited his claim to one out of
the several forms which thus embody his invention.).
122
Id..
123
Id. at 341.
124
Id. at 341-42 (citations omitted).
19
Court held that patentees are presumed to intend in fact to seek protection for, and patents are
implied in law to cover, unenumerated embodiments of the claimed principle.

[W]hen a patentee describes a machine, and then claims it as described, that he is

understood to intend to claim, and does by law actually cover, not only the precise
forms he has described but all other forms which embody his invention; it being a
familiar rule that, to copy the principle or mode of operation described, is an
infringement, although such copy should be totally unlike the original in form or
proportions.125

Having established the generally applicable principles, the Court expressly rejected the
argument that the claim at issue was limited to a single embodiment.126 The Court distinguished
cases where the claim was limited to the enumerated embodiment because that embodiment was the
only way to practice the invented principle.127 The Court held that the claims did not need to recite
specific language in order to encompass unenumerated embodiments, which are implied in law to be
included within claim scope unless [the patentee] manifests an intention to disclaim some of those
forms.128 Finally, the Court interpreted the claim at issue as having adopted a broad meaning that
included any shape so near to a true circle as substantially to embody the patentees mode of
operation, and thereby attain the same kind of result as was reached by his invention.... Whether, in
point of fact, the defendants cars did copy the plaintiffs invention, in the sense above explained, is
a question for the jury, and the court below erred in not leaving that question to them.129

The Court apparently believed this liberal construction of the disputed claim terms in the
form of a frustrum of a cone was a fair one. In interpreting the claim, the Court did not explicitly
rely on the additional claim terms substantially as herein described, which might have been argued
to preserve within the claim language itself a broader scope of protection.130 The Court, however,
did not provide an extended discussion of the claim terminology. It is therefore uncertain whether

125
Id. at 342.
126
See id. (It is not sufficient to distinguish this case to say, that here the invention consists in a change of form,
and the patentee has claimed one form only.).
127
See id. at 343 (citing Davis v. Palmer, 7 F. Cas. 154, 157 (C.C.D. Va. 1827) (No. 3,645) (Marshall, J.)).
128
Id. See id. (Patentees sometimes add to their claims an express declaration, to the effect that the claim extends
to the thing patented, however its form or proportions may be varied. But this is unnecessary. The law so interprets the
claim without the addition of these words.).
129
Id. at 344.
130
In subsequent cases interpreting claims drafted under the 1836 Patent Act, the Court alternately read
substantially as herein described or similar language to import limitations described in the specification into the claim,
to have no effect on claim scope, or to avoid literal narrowness of the claim language in order to prevent disclaimer. See,
e.g., Burr v. Duryee, 68 U.S. (1 Wall.) 531, 567 (1863); Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 547 (1870);
Mitchell v. Tilghman, 86 U.S. (19 Wall.) 287, 391 (1874); The Corn-Planter Patent (Brown v. Guild), 90 U.S. (23 Wall.)
181, 225 (1874); Fuller v. Yentzer, 94 U.S. (4 Otto) 288, 288 (1876). After the 1870 Patent Act, however, the Court held
that such language could not prevent an otherwise clear and distinct claim from disclaiming subject matter. The Corn
Planter Patent, 90 U.S. at 224. See Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. (5 Otto) 274, 275-78 (1877)
([w]hen a claim is so explicit, the courts cannot alter or enlarge it.).
20
the construction applied a literal meaning of the claim terms,131 or whether the Court adopted a non-
literal construction.132 But in either case, contrary to popular belief, Winans did not support
providing patent protection beyond the scope of application of the construed claim language.133

4. Lack of Support For Extending Patent Protection Beyond the Scope of Application
of Construed Claim Language

The Supreme Court in Winans did not in any way suggest that patent protection could or
should extend beyond the scope of application of the construed claim language. In contrast, the
patentee may have raised the issue and suggested such broader protection. To the extent the
patentee did so, the Court rejected that approach in specifying that the only issue was claim
construction.134 The patentees contentions were that the court below erred: (1) in the construction
which it gave to the specification, limiting it to a strictly conical form; (2) assuming a correct
construction, in excluding the inquiry whether the cars of the defendants were not substantially the
same in principle and mode of operation; and (3) in taking the question of fact from the jury.135
The first contention suggests that patent scope was to be determined either from the specification of
claim or more broadly from the entire disclosure and not limited to the claim.136 The second
contention also raises the question of providing patent protection beyond the scope of the claim
language (or even beyond the disclosure), because an alternative understanding (as an objection to
judgment based on a directed verdict) was addressed by the third contention.

The dissent also appears to have proceeded on the assumption that the case turned on
interpretation of the claim language used to describe what the patentee regarded as the invention.137
The dissent specifically argued that the 1836 Patent Act compelled an implied-in-law disclaimer if
the patentee had failed to employ claiming language as broad as the invention. The patentee is
obliged, by law, to describe his invention.... and the invention shall particularly specify and point
out what he claims as his invention. Fullness, clearness, exactness, preciseness, and particularity, in
the description of the invention, its principle, and of the matter claimed to be invented, will alone

131
See supra note 5. Cf. Ives v. Hamilton, 92 U.S. (2 Otto) 426, 430-31 (1875) (construing the term curved
guides and holding that the meaning of curved in mathematics includes a series of straight lines).
132
See supra note 5. Cf. Claude Neon Lights, Inc. v. E. Machlett & Son, 36 F.2d 574, 575 (2d Cir. 1929) (Hand, J.)
(Such a limitation [to generous, literal construction of claim language] is however irreconcilable with those extremely
numerous decisions which have extended a claim to structures which by no possibility it could cover, judged by any
tenable canons of documentary interpretation.).
133
See, e.g., Claude Neon Lights, 36 F.2d at 575 (the Supreme Court in Winans apparently for the first time, laid
down the doctrine [of equivalents] ... and based it upon the theory that the claim was not intended to be verbally
definitive).
134
See supra note 121 and accompanying text.
135
Winans, 56 U.S. at 336-37 (citing, for the second contention, Odiorne v. Winkley, 18 F. Cas. 581 (C.C.D. Mass.
1814) (No. 10,432), and Gray v. James, 10 F. Cas. 1015 (C.C.D. Pa. 1817) (No. 5718)).
136
See supra notes 119-20 and accompanying text.
137
See Winans, 56 U.S. (15 How.) at 345 (Campbell, J., dissenting) (Conceding, however, that the invention was
patentable, ... the inquiry is, what is the extent of the claim?); id. at 347 (The plaintiff confines his claim to the use of
the conical form, and excludes from his specification any allusion to any other. He must have done so advisedly.).
21
fulfill the demands of Congress or the wants of the country.138 Significantly, the dissent did not
address or criticize the majority for expanding patent protection beyond the interpreted scope of the
claim. Instead, it argued that the majority had improperly interpreted the permissible scope of both
the claim and the principle of the invention.139

In sum, prior to the 1870 Patent Act, the Supreme Court had limited patent protection to the
scope of application of construed claim language, had authorized liberal construction of claim
language to assure that patent scope would be commensurate with the invented principle (so long as
the claim language was fairly susceptible of such a broad construction), and had recognized that
claims might effectuate implied-in-fact and implied-in-law disclaimers of unclaimed but patentable
invented subject matter. Patent protection simply could not extend beyond the scope of application
of construed claim language, so as to apply to technological substitutes performing the same
functions as (but which were not) claimed embodiments. Conversely, all equivalent technologies
(including patentable improvements) would infringe the claims of the patent (which were subject to
specified limits on the use of broad claiming language and to prior art limits for improvement
inventions) whenever the equivalents embod[ied] the plaintiffs mode of operation, and, by means
of it, produce[d] the same new and useful result.140

C. Codification (or Ratification) of The Limits of Patent Protection in the 1870 Patent Act

In 1870, Congress amended the 1836 Patent Act to require that an applicant particularly
point out and distinctly claim the part, improvement, or combination which [the applicant] claims as
his invention or discovery.141 The legislative history is only somewhat more extensive than for the
1836 Patent Act, and does not expressly address the case law under the 1836 Act that had limited
patent protection to the scope of application of construed claims. Nevertheless, by adopting the
distinct claiming language and by making corresponding changes to additional provisions of the
Patent Act, Congress should be understood to have codified (or at least to have impliedly ratified)
this limit. Congress did not authorize patent protection for equivalents that were not embodiments

138
Id.
139
The dissent argued that the claim properly applied to a more limited principle of circular forms, because
neither the specification nor the claim. embrace[s] the workmanship of the defendants. Id. at 346, 348. The dissent
based this more limited interpretation on: prior art, as vessels of conical form were already known; its belief that the
broader principle of invention of the conical form was universally understood and should not be patentable; and an
implied-in-fact disclaimer of the principle invented to the particular form. See id. at 344-46. The dissent thus criticized
the majority for extend[ing], by construction, the scope and operation of [the] patent, to embrace every form which in
practice will yield a result substantially equal or approximate . Id. at 346.
140
Winans, 56 U.S. (15 How.) at 341. See id. at 344 (same); id. (same, describing jury instructions). Cf. Warner-
Jenkinson v. Hilton Davis Chem. Co., 520 U.S. 17, 35 (1977) (If the essential predicate of the doctrine of equivalence is
the notion of identity between a patented invention and its equivalent, there is no basis for treating an infringement
equivalent any differently from a device that infringes the express terms of a patent.).
141
Act of July 8, 1870, ch. 230, 26, 16 Stat. 198, 201 (emphasis added). Section 26 also required the applicant to
provide a written description of the [invention or discovery,] and of the manner and process of making constructing,
compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or
science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the
same.... Id.
22
of the construed claims.142 In contrast, the legislative history less strongly suggests that Congress
intended to impliedly ratify the pre-1870 limits on permissible claim language and consequent scope
for pioneering and improvement inventions.

1. Purposes of the 1870 Patent Act

[The 1870 Patent Act] was enacted as part of a program to revise and consolidate all
the laws of the United States then under way.... [A Commission on revision of the
laws] prepared a preliminary draft of the part relating to patents and copyrights in
1868, and a second preliminary draft in 1869. The following year, a draft of the
statutes relating to patents and copyrights as revised, simplified, arranged, and
consolidated by the Commission was reported to Congress, and at the same time
referred to the Committee on Patents; a bill was introduced by the chairman a few
days later. The object of the Commission ... was only to revise, arrange, and
consolidate the statutes in force and the draft reported from the Commission
presumably was for this purpose only.... [I]t appears that the Committee on Patents
studied the draft of the Commission and changed it by various amendments affecting
matters of substance.143

The 1870 Patent Act was introduced as H.R. 1714 on April 7, 1870 by the House Committee
on Patents and reported back with amendments on April 13, 1870.144 The purpose of the Act was to
codify the existing patent and copyright laws as they had been developed and interpreted, making
many specific changes to particular provisions that had been recommended to and adopted by the
Commission on revision.145 The text was to embody all the provisions of existing law, in brief,
clear, and precise language.146 Except for specifically enumerated and discussed changes, [t]here
[we]re no new nor additional provisions.... In other respects, the law stands without any other
change than that it is enlarged, defined, made clear in its terms and provisions, and in its proposed

142
The first extension of patent protection beyond the scope of application of construed claims occurred through
judicial development of the doctrine of contributory infringement. The earliest such case is Wallace v. Holmes, 29 F.
Cas. 74 (C.C.D. 1871) (No. 17,100). Wallace was not based on any interpretation of the Patent Act, however, but rather
was developed from common law principles of joint liability. See id. at 80 (if patent protection could be avoided by
having different people intentionally produce the components of a patented invention, such patents would, indeed, be of
little value. In such case, all are tort-feasors, engaged in a common purpose to infringe the patent, and actually, by their
concerted action, producing that result.). See generally 5 CHISUM ON PATENTS, supra note 18, at 17.02[1]. The
Supreme Court did not recognize the doctrine of contributory infringement until 1882, in American Cotton-Tie Co. v.
Simmons, 106 U.S. 89 (1882). Prior to the 1870 Act, the Court had expressly rejected the possibility of infringement
from producing less than an entire combination. See Prouty v. Ruggles, 41 U.S. 336, 341 (1842). Cf. Keplinger v. De
Young, 23 U.S. 358, 365-66 (1824) (holding that purchaser of product produced by infringing process could not be held
liable, but suggesting in dicta that defendant might be held liable if the purchase contract was a sham to evade the law).
See generally 5 CHISUM ON PATENTS, supra note 18, at 17.02[2].
143
H. REP. NO. 82-1923, at 2 (1952) (accompanying H.R. 7794).
144
See CONG. GLOBE, 41st Cong., 2d Sess. 2502, 2650 (1870).
145
See CONG. GLOBE, 41st Cong., 2d Sess. 2680 (1870).
146
Id. (statement of Rep. Jenckes, reporter for the Commitee on Patents of the House of Representatives).
23
execution, so that the remedies can be pursued without mistake and with effect.147 In addition to
substantive codification of patent rights, Congress also extended the patent infringement right to
equity courts, to prevent any violation of any right secured by patent.148 However, the bill was
careful to avoid retroactive effect, having been reviewed and determined to have carefully
preserved every existing right, extending the remedial provisions of this act to all proceedings and
suits hereinafter commenced, so that where remedies are enlarged they will be available to all those
who shall seek those remedies upon existing rights hereafter.149

2. Evidence That the 1870 Patent Act Codified (or Impliedly Ratified) Brooks Dicta

a. The Distinct Claiming Requirement

The distinct claiming requirement was adopted in Section 26 of the 1870 Patent Act, which
discussed the requirement for applicants to submit specifications.150 The text of the Act codified in
Statutes at Large contains a marginal notation that Section 26 (beginning on the line describing
disclosure requirements for machines and leading to the distinct claiming language three lines
below) identifying the relevant language as Specification and claim.151 In contrast, the text of the
April 7 draft did not contain the distinctly claim language.152 The distinctly claim language was
included in the April 13 draft by the House Committee on Patents.153 There is no record of the
reason for its inclusion. Both the April 7 and the April 13 draft also replaced in the text of that
section the words description and specification with specification and claim.154

In enacting the distinctly claim requirement, Congress should be understood to have

codified (or at least to have impliedly ratified155) the limits on patent scope articulated in Brooks v.

147
Id. at 2683. Although some amendments to the House bill were made by the Senate and ultimately agreed to in
conference, they [we]re all formal, and d[id] not alter the substance or effect of the bill. CONG. GLOBE, 41st Cong., 2d
Sess. 5240 (1870) (statement of Rep. Jenckes, addressing the amendments agreed to as provided in the Conference
Report).
148
Act of July 8, 1870, ch. 230, 55, 16 Stat. 206; see also id., 59, 16 Stat. 207 (legal damage action was made
applicable to infringement of any patent.).
149
CONG. GLOBE, 41st Cong., 2d Sess. 2854 (1870) (statement of Rep. Jenckes). See also id. at 2876 (1870)
(statement of Rep. Jenckes) (noting opposition -- because the whole principle of this revision, ... is, to destroy or impair
no existing rights -- to proposed changes that would prevent abandonment of rejected patent applications due to the
lapse of time and would prevent revived, rejected patent applications that subsequently issued as patents from affecting
the validity of patents issued after the original rejection).
150
See Act of July 8, 1870, ch. 230, 26, 16 Stat. 201 (codified as Rev. Stat. 4888); H.R. REP. NO. 41-1714
(1870).
151
16 Stat. at 201 (corresponding to 26) (emphasis added).
152
See H.R. 41-1714, at 10-11 (1870) (as introduced by Rep. Jenckes) (revising former 25 to become 26).
153
See id. (as reported with amendments from the Committee on Patents) (same).
154
See id. (identifying text changed from the 1836 act using brackets for deletions and italics for insertions).
Curiously, the bill did not recite the specify and language that was to be deleted from the Act.
155
See, e.g., Central Bank of Denver v. First Interstate Bank of Denver, 511 U.S. 164, 185 (1994) (ratification is
implied when Congress reenact[s] statutory language that has been given a consistent judicial construction).
24
Fiske156 and consistently followed thereafter.157 Both the April 7 and the April 13 draft were
accompanied by marginal notations identifying prior precedents, indicating an intent to codify the
preexisting case law. Although Brooks was not specifically included in the marginal list, the list
included OReilly v. Morse,158 Corning v. Burden,159 and Wood v. Underhill.160 All of these cases
addressed the permissible scope and extent of claims and the standards for the disclosure in the
specification.161

The legislative history contains no other direct evidence regarding the change to the language
of Section 26 from April 7 to April 13, and no legislative discussion directly addressed the distinct
claiming provision. Nevertheless, deliberations on the floor of the House recognized concerns
regarding invalid claims and the consequent improper application of overly broad patent protection.
The bills manager noted that when the claim as asked for is passed by the primary examiner, there
is no provision for a review of his decision within the office, and the public may be made to suffer
from [the examiners] ignorance or indolence in allowing without proper scrutiny the most broad
and comprehensive claims.162 At the time, moreover, such overbroad claims could continue to be
asserted even if they had been declared invalid.163

b. Supporting Evidence From Amendments to Reissue, Abandonment, and Disclaimer

Provisions

Additional changes to the 1870 Patent Act reflect legislative understanding that claim
language defined the limits of patent protection and that claim language could create an implied-in-
law disclaimer. These changes addressed reissue, appeal, and disclaimer provisions in the 1836
Act.164 Patentees could lose their rights to patent protection by obtaining improper claims.
Patentees also could lose their right to a broader scope of a disclosed invention by adopting
unnecessarily narrow claim language.

156
56 U.S. (15 How.) 212, 215 (1953).
157
See supra notes 30-31, 112 and accompanying text.
158
56 U.S. (15 How.) 62 (1853).
159
56 U.S. (15 How.) 252 (1853).
160
46 U.S. (5 How.) 1 (1847). See H.R. 41-1714, at 10-11 (1870) (Apr. 7, 1870 and Apr. 13, 1870 drafts).
161
See supra notes 99-104 and accompanying text; Wood , 46 U.S. (5 How.) at 5 (invented principles are not
patentable if they cannot be used ... without first ascertaining by experiment the proportion to be employed).
162
CONG. GLOBE, 41st Cong., 2d Sess., at 2877 (1870) (statement of Rep. Jenckes).
163
Until 1971, a declaration that a patent or patent claim was invalid in one action would not invalidate the patent
or claim as to other persons, whom the patentee could continue to sue. See 4 CHISUM ON PATENTS, supra note 18, at
11.07[2] (citing Triplett v. Lowell, 297 U.S. 638 (1936), and Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S.
313 (1971)); 6 CHISUM ON PATENTS, supra note 18, at 19.02[2][a] (same). The 1870 Patent Act included a new
provision to allow suits at law to declare an interfering patent (addressing the same claimed subject matter) invalid, as
prior equitable cases had not provided for such jurisdiction. Discussions of this provision, however, did not address the
distinct claiming requirement or the scope of patent protection. See Act of July 8, 1870, ch. 230, 58, 16 Stat. 207;
CONG. GLOBE, 41st Cong., 2d Sess, at 2682-83 (1870) (statement of Rep. Jenckes).
164
See Act of July 8, 1870, ch. 230, 32, 35, 53-54, 58, 60, 16 Stat. 202-03, 205-07; CONG. GLOBE,41st Cong., 2d
Sess, at 2874-77 (1870) (House of Representatives); id. at 4820-21 (June 24, 1870) (Senate).
25
 First, the 1870 Patent Act amended the reissue provisions of the 1836 Act.165 The 1836 Act
had authorized surrender and reissue of a new patent for patentees who had inadvertently failed to
include an adequate description or specification of their invention (i.e., had failed to support their
full invention or had claimed more than they had invented or than was new).166 Reissue also was
available for patentees who had inadvertently claimed less than they were entitled. The 1870 Patent
Act codified (or ratified) case law under the 1836 Act that had limited reissued patents to the same
invention, by prohibiting them from introducing new matter that was not in the original
specification and would have broadened the scope of the patented invention beyond what originally
had been disclosed.167 The patentee could reclaim unclaimed subject matter in the original patent by
seeking a reissued patent containing broader claims,168 but the reclaimed subject matter would then
apply only prospectively.169 The Supreme Court subsequently interpreted the 1870 Patent Act to

165
See Act of July 8, 1870, ch. 230, 53, 16 Stat. 206.
166
See Act of July 4, 1836, ch. 357, 13, 5 Stat. 117, 122. Until the 1952 Patent Act, if an original patent had a
single invalid claim, the entire patent was void unless, pursuant to a provision added by the 1837 Patent Act, the claim
was timely disclaimed. Act of July 19, 1952, ch. 950, Pub. L. No. 82-593, 66 Stat. 792, 813 (currently codified at 35
U.S.C. 288 (2000)). Under the 1837 Patent Act, a patentee could sue for infringement of overbroad claims of a patent,
so long as the overbroad claim resulted from error and the patentee filed a disclaimer prior to the action (or during its
pendency in the absence of unreasonable delay). See Act of Mar. 3, 1837, ch. 45, 7, 5 Stat. 191, 193; id. 9, 5 Stat.
194; Ensten v. Simon, Ascher & Co., 282 U.S. 445, 455 (1931).
167
See Morey v. Lockwood, 75 U.S. (8 Wall.) 230, 240-42 (1868) (upholding reissue for broadened claim after
improper rejection of original broad claim by Patent Office and acquiescence in narrower claim, because the reissue
claimed the same invention as originally disclosed and claimed). See also Seymour v. Osborne, 78 U.S. (11 Wall.) 516,
544-45 & n.14 (1870) (under the 1836 Patent Act, reissued patents could include whatever else was suggested or
substantially indicated in the specification or drawings, but not [i]nterpolations of new features, ingredients, or devices,
which were neither described, suggested, nor indicated in the original patent, or patent office model and -- except in
limited circumstances set forth in the provision -- no testimony was allowed on the nature and extent of the
improvement). See generally 4 CHISUM ON PATENTS, supra note 18, at 15.02[3], 15.02[4], 15.02[5], 1503[3] (citing
cases for judicial recognition under the 1836 Patent Act that the reissue must be for the same invention, and treating the
1870 Acts prohibition on new matter as codifying the case law). The new matter prohibition is currently codified for
original patents at 35 U.S.C. 131(a) (2000), and for reissued patents at 35 U.S.C. 251, 1 (2000).
168
Subsequent to the 1870 Patent Act, the Supreme Court created additional restrictions on filing of broader claims
in divisional applications (late claiming), limiting such later-filed claims to a substantially similar scope to the original
claims unless there had been a justified mistake by analogy to the laches and estoppel standards for reissue patents
and unless intervening rights of the public has arisen from adverse use of the unclaimed subject matter after the initial
patent had issued. See Webster Elec. Co. v. Splitdorf, 264 U.S. 463, 471 (1924). Patentees also had to claim previously
disclosed unclaimed subject matter within two years of issuance of another patent covering the unclaimed subject matter,
in order to trigger an interference to determine who had first invented the subject matter (which was more permissive
than treating as an abandonment the failure to claim the subject matter more than one year after the other patents
issuance). See Chapman v. Wintroath, 252 U.S. 126, 135-39 (1920). However, the Court later eliminated the mistake
requirement and allowed broadening claims in divisional applications more than two years after original issuance, so long
as no intervening rights had arisen from public use and unless there was additional proof of an abandonment of the
broader subject matter. See, e.g., Muncie Gear Works v. Outboard, Marine & Mfg. Co., 315 U.S. 759, 768 (1942);
Crown Cork & Seal Co. v. Ferdinand Gutmann Co., 304 U.S. 159, 167-68 (1938). In 1939, Congress required as a
condition on provoking an interference that claims drawn to cover the same subject matter as another patent must be filed
within one year of an original application. This corresponded to the reduction to one year in the statutory bar on
patenting what had been disclosed in other patents. See Act of Aug. 5, 1939, Pub. L. No. 76-286, ch. 450, 1, 53 Stat.
1212. See 4 CHISUM ON PATENTS, supra note 18, at 10.09[c][2][iii], 11.05[1][b], 11.05[2].
169
Under the 1836 and 1870 Patent Acts, the reissued patent was a new patent and could not apply retroactively,
even for claims in the original patent that were valid. See Peck v. Collins, 103 U.S. (13 Otto) 660, 664 (1881). The 1870
26
preclude broadened claims in reissued patents without proving a mistake (because the broader scope
would not have been regarded as the invention) and reissues that were filed more than two years
after the original patent issued (because the unclaimed subject matter left open to the public was
analogous to prior art that would have entered the public domain but for the reissue provision,
application of which the Court flexibly limited in equity under the rubric of laches).170

The public-domain-defining reissue provisions in the 1870 Patent Act thus were contingent
upon the presumptive, implied-in-law disclaimer of patent scope resulting from the patentees use of
limiting claim language. The original claim language precluded protection of any broader scope of
invention from being added to the disclosure (by the new matter prohibition) or any broader
disclosure from being claimed (absent a genuine mistake that was timely corrected.171) These
provisions simply make no sense if patents were not limited to the scope of application of the
original claims, but could protect equivalents that did not embody the claims based on a broader
invention or disclosure. In 1952, Congress codified the Courts equitable prohibition on broadening
reissues, adopting an inflexible, two-year limit for rebutting the presumptive implied-in-law
disclaimer of patentable subject matter.172

Second, the 1870 Patent Act revised the appeal provisions to provide a two-year limit for
completing an application or for responding to a rejection from the Patent Office. After that time,
the invention would be irrevocably deemed to be abandoned to the public (as a matter of law without
regard to the applicants intent) and the application could not be revived.173 Congress rejected as

Patent Act, however, prevented an application for a reissued patent from invalidating the original patent, by tying the
reissue to surrender of the original. See Act of July 8, 1870, ch. 230, 53, 16 Stat. 206.
170
See, e.g., Leggett v. Avery, 101 U.S. (11 Otto) 256, 259-60 (1879); Goodyear Dental Vulcanite Co. v. Davis,
102 U.S. (12 Otto) 222, 228 (1880); Miller v. Bridgeport Brass Co., 104 U.S. (14 Otto) 350, 352 (1881); Mahn v.
Harwood, 112 U.S. 354, 360-63 (1884); Shepard v. Carrigan,116 U.S. 593, 598 (1886). See generally 4 CHISUM ON
PATENTS, supra note 18, at 15.02[4], 15.02[5] (citing, inter alia, Parker & Whipple Co. v. Yale Clock Co., 123 U.S.
87, 99 (1887)).
171
Mistakes did not include simple errors of claim drafting judgment, which resulted in failure to claim broader
disclosed subject matter. Canceling similar but broader claims in an original patent also would indicate abandonment and
preclude reissue for the same matter. See, e.g., Miller, 104 U.S. (14 Otto) at 352; Yale Lock Mfg. Co. v. Berkshire Natl
Bank, 135 U.S. 342, 379, 403-04 (1890).
172
See Act of July 19, 1952, ch. 950, Pub. L. No. 82-593, 66 Stat. 792, 808 (currently codified at 35 U.S.C. 251,
4 (2000)); supra note 170 and accompanying text. The 1928 Patent Act amended the reissue provision to make the
reissue patent a continuation of the original patent. But the reissued patent could be applied retrospectively only to the
extent that its claims [we]re identical with the original patent. Act of May 24, 1928, Pub. L. No. 70-501, ch. 730,
4916, 45 Stat. 732 (currently codified at 35 U.S.C. 252, 1 (2000)). Under the 1836 Patent Act, moreover, no
intervening rights could arise regarding the invention disclosed in an original patent, even if the description was varied
somewhat in the reissue, because it would limit the value of the reissue. See, e.g., Stimpson v. Westchester R.R. Co., 45
U.S. (4 How.) 380, 402-03 (1846); 4 CHISUM ON PATENTS, supra note 18, at 15.02[3]. In 1952, Congress also created
intervening rights for inventions claimed by a broadening reissue patent. See Act of July 19, 1952, ch. 950, Pub. L. No.
82-593, 66 Stat. 808 (currently codified at 35 U.S.C. 252, 2 (2000)). See generally 4 CHISUM ON PATENTS, supra
note 18, at 15.05[2].
173
See Act of July 8, 1870, ch. 230, 32, 16 Stat. 198, 202. See also id. 35 (abandonment from failure to pay
fees more than two years after notice), 16 Stat. 202-03; CONG. GLOBE, 41st Cong., 2d Sess, at 2876 (1870) (statement of
Rep. Myers). Under the 1836 Patent Act, courts might have found the failure to respond inadvertent and not intended to
cause abandonment, and the application might then have been revived. However, no other person could patent the same
27
unnecessary under existing law an amendment that would have explicitly prevented a finding of
abandonment based solely on the passage of time, when an erroneous rejection had been made by
the Patent Office.174 It also rejected as unnecessary an amendment that would have protected other
inventors who obtained patents for the same invention from being adversely affected by revived
applications.175 Following the 1870 Patent Act, any failure to reapply for a patent within two years
of a rejection would irrevocably abandon the invention (or any broader claim scope) originally
sought to be patented.176 The failure to timely respond to a rejection of a claim therefore operated to
estop any revived or later-filed claims seeking to protect the additional, disclosed subject matter.

Third, the 1870 Patent Act amended the disclaimer provisions of the 1837 Patent Act, which
allowed patentees to recover from invalidity of their patents based on invalidity of a particular
claim.177 The 1870 Patent Act allowed a disclaimer to be filed at any time, but deprived the patentee
of costs in an infringement action if the disclaimer was not filed before commencement of the
action.178 The disclaimer provisions allowed patentees who had claimed more than they had
invented or than was patentable to enforce the scope of claims to which they were entitled, either by
canceling the broad claims and relying on narrower, issued claims or by narrowing specific claims
by disclaiming some portion of their subject matter.179 The scope of the patent thus was limited
either to valid claims that were in the original patent or to narrower, revised claims resulting from a
partial disclaimer, but which could not include new matter.180 Patent protection for a broader scope
of invention than the claims remaining after (or revised without new matter by) disclaimer was not
possible. Congress reinforced this point in 1952, by precluding disclaimers for less than the full
scope of a claim.181

In summary, by adopting the distinct claiming provision Congress expressed a clear intent to
require distinct claims that defined the scope of patent protection. In making changes to the reissue,
appeal, and disclaimer provisions, Congress expressed a clear intent to imply in law a disclaimer of
patentable subject matter by the intentional or unintentional claiming of less than the full scope of

invention after the rejection, because they would not be the first inventor. See id. (The gentleman says, suppose some
one comes in afterward and gets a patent for the same thing. That cannot be done under the law, or if such a patent were
got the court would declare it void.). The 1870 Patent Act precluded revival of applications two years after rejection,
and grandfathered pre-enactment patents by allowing two years to revive such applications. See Act of July 8, 1870, ch.
230, 32, 16 Stat. 202.
174
See id. (statement of Rep. Jenckes); id. at 2875 (proposed amendment by Rep. Butler).
175
The amendment was unnecessary because such later patents for the same invention should not have been issued,
and if issued they were invalid. The two-year limitation would assure that any revival was timely made and would result
in an interference to determine who was the first inventor. See id. (statement of Rep. Jenckes).
176
See CONG. GLOBE, 41st Cong., 2d Sess, at 2877 (1870) (statements of Rep. Jenckes and Rep. Kerr); id. at 2875
(proposed amendment by Rep. Kerr).
177
See supra note 166.
178
See Act of July 8, 1870, ch. 230, 54, 16 Stat. 206; id, 60, 16 Stat. 207. See also Sessions v. Romadka, 145
U.S. 29, 41-42 (1892).
179
See Federico, supra note 47, at 207-10; 4 CHISUM ON PATENTS, supra note 18, at 11.07[2].
180
See, e.g., Altoona Publix Theatres v. Am. Tri-Ergon Corp., 294 U.S. 477, 490-92 (1935).
181
See Act of July 19, 1952, ch. 950, Pub. L. No. 82-593, 66 Stat. 813 (currently codified at 35 U.S.C. 288
(2000)).
28
disclosed patentable subject matter.182 The 1870 Patent Act thus should be understood to have
foreclosed any doctrine of equivalents that would provide patent protection beyond the scope of
application of construed claim language. The principal issue that the 1870 Patent Act may have left
unresolved was how broad a principle of invention patentees could regard and claim as their own.

3. Limited Evidence that Congress Codified (or Impliedly Ratified) The Scope of
Permissible Claiming Language

By including OReilly, Corning, and Wood in its marginal notations, Congress may have
intended to codify in Section 26 of the 1870 Patent Act the Supreme Courts previously articulated
limits on patenting processes and on use of broad functional claiming language.183 In contrast to the
distinct claiming provision, however, the minor substantive change to the requirements for the
contents of the specification less strongly suggest that Congress intended to codify (or impliedly
ratify) the Courts limits to permissible claim scope.184 No corresponding changes to other sections
of the Patent Act compel this result, so long as the claims met prior art patentability requirements.
Shortly after the 1870 Patent Act, the Supreme Court revised the limits it had previously imposed on
the use of broad functional claiming language,185 further suggesting that Congress had not codified
or impliedly ratified these earlier decisions.

CONCLUSION

By adopting the distinct claiming requirement in the 1870 Patent Act, Congress should be
understood to have limited patent protection to the scope of application of construed claim language.
Congress thus foreclosed the modern doctrine of equivalents. As discussed in Part II, the Supreme
Court consistently interpreted the 1870 Patent Act in this way until 1950, when the Court radically
revised the doctrine of equivalents in Graver Tank. Congress did not approve of the modern
doctrine of equivalents in the 1952 Patent Act, and by authorizing use of functional claiming
language did not extend the modern doctrine to later-arising technologies for narrow improvement
inventions. Rather, the modern doctrine remains in conflict with and is not authorized by the Patent
Act.

182
Congress also clearly intended to imply in law a disclaimer of patentable subject matter from overbroad
claiming, absent a timely filed formal disclaimer.
183
See supra notes 99-104, 158-61 and accompanying text.
184
Compare Act of July 4, 1836, ch. 357 6, 5 Stat. 117 with Act of July 8, 1870, ch. 230, 26, 16 Stat. 201. See
3 CHISUM ON PATENTS, supra note 18, at 7.02[3] (The Patent Act of 1836 made only minor changes in the language
of the disclosure provision.... The Patent Act of 1870 changed the mode provision as to machines from several modes
to best mode.).
185
See, e.g., Cochrane v. Deener, 94 U.S. (4 Otto) 780, 787 (1876); Dolbear v. American Bell Telephone Co., 126
U.S. 1, 532-39 (1888); Morley Sewing Machine Co. v. Lancaster, 129 U.S. 263, 273 (1889).
29