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

Part II (1870-1952)

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 of equivalents 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

II. The Doctrine of Equivalents and Claiming The Future From 1870 to1952

A. Judicial Decisions Addressing Claiming and the Doctrine of Equivalents Under the 1870
Patent Act

1. Expansion of Permissible Claim Scope for Pioneering Inventions

2. Implied Disclaimers and Limiting Equivalents Protection To Construed Claims
3. Limiting Expansion of Claim Scope and Revised Limits To Prevent Overbroad
Claims
a. The Reverse Doctrine of Equivalents
b. Revised Requirement To Prevent Overly Broad Claiming
4. Limiting Equivalents and Claiming Language for Improvement Patents
a. Narrow and Temporally Static Equivalents
b. Prohibition of Functional Claiming Language for Improvement Patents

B. Creation of the Modern Doctrine of Equivalents in Graver Tank

1. Limiting Patent Protection to Construed Claims in Graver Tank I

2. Extending Patent Protection Beyond Construed Claims Graver Tank II

C. Lack of Approval of the Modern Doctrine of Equivalents in the 1952 Patent Act

1. Purposes of the 1952 Patent Act

2. Evidence That Congress Did Not Impliedly Ratify the Modern Doctrine of
Equivalents
a. Contemporary Understanding of the Controversial Nature of the Graver Tank
Decision
b. Supporting Evidence From Amendments To Claiming, Infringement, and
Other Provisions
3. Limited Evidence of Authorization for Later-Arising, Equivalent Embodiments of
Functional Claims

CONCLUSION

1
The Historic and Modern Doctrines Of Equivalents and Claiming the Future:
Part II (1870-1952)

Joshua D. Sarnoff1
July 11, 2004

[P]ermit[ting] imitation of a patented invention which does not copy every literal
detail would be to convert the protection of the patent grant into a hollow and useless
thing. Such a limitation would leave room for indeed encourage the
unscrupulous copyist to make unimportant and insubstantial changes and
substitutions in the patent which, though adding nothing, would be enough to take
the copied matter outside the claim, and hence outside the reach of law. The
doctrine of equivalents evolved in response to this experience. The essence of the
doctrine is that one may not practice a fraud on a patent. Originating almost a
century ago in the case of Winans v. Denmead, [56 U.S. (15 How) 330 (1853),] it has
been consistently applied by this Court and the lower federal courts, and continues
today ready and available for utilization when the proper circumstances for its
application arise[, t]o temper unsparing logic and prevent an infringer from stealing
the benefit of the invention.

Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 607-08 (1950) (quoting
Royal Typewriter Co. v. Remington Rand, Inc., 168 F.2d 691, 692 (2d Cir. 1948)).

I heartily agree with the Court that fraud is bad, piracy is evil, and stealing is
reprehensible. But in this case, where petitioners are not charged with any such
malevolence, these lofty principles do not justify the Court's sterilization of Acts of
Congress and prior decisions, none of which are even mentioned in today's

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, Jamie 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
 opinion. [The Patent Act] provides that an applicant shall particularly point out
and distinctly claim the part, improvement, or combination which he claims as his
invention or discovery. We have held in this very case that this statute precludes
invoking the specifications to alter a claim free from ambiguous language, since it is
the claim which measures the grant to the patentee. In seeking to justify its
emasculation of [the statute] by parading potential hardships which literal
enforcement might conceivably impose on patentees who had for some reason failed
to claim complete protection for their discoveries, the Court fails even to mention the
program for alleviation of such hardships [by reissuance of patents] which Congress
itself has provided.

Id. at 613-15 (Black, J., dissenting) (quoting the majority opinion, id. at 607-08, Rev. Stat.
4888 (currently codified at 35 U.S.C. 112, 2 (2000)), and Graver Tank & Manufacturing
Co. v. Linde Air Products Co., 336 U.S. 271, 277 (1949)).

INTRODUCTION

In 1950, the Supreme Court in Graver Tank & Mfg, Co. v. Linde Air Prods. Co.1 articulated
a modern doctrine of equivalents.2 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.3 The modern doctrine of equivalents thus extends patent
protection beyond the scope of physical embodiments (i.e., applications, whether or not enumerated
in the written specification)4 to which a literal construction of a claims language directly applies.5

1
339 U.S. 605 (1950).
2
See id. at 607-08. See also 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).
3
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).
4
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). 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); 35 U.S.C. 112, 1 (2000) (current requirements for a written
description of the invention in the specification).
5
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. 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.
2
 In two recent cases, Warner-Jenkinson Co. v. Hilton Davis Chemical Co.,6 and Festo Corp.
v. Shoketsu Kinzoku Kogyo Kabushiki Co.,7 the Supreme Court unanimously upheld the modern
doctrine from various statutory challenges,8 extended equivalents protection to later-arising
equivalent technologies,9 and imperfectly reconciled the modern doctrine with the doctrine of
prosecution history estoppel for amended claims.10 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.11 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.12

Part I of this article described how the historic doctrine of equivalents originated as a
necessary means for determining infringement prior to the use of formal claiming language to
identify the scope of a patented invention,13 how the Supreme Court and Congress required such
claiming language and limited the doctrine of equivalents to the scope of application of construed
claims, and how the Court (and possibly Congress) limited the scope of inventive principles that

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).
6
520 U.S. 17 (1997).
7
535 U.S. 722 (2002).
8
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).
9
See Warner-Jenkinson, 520 U.S. at 37. Cf. Festo, 535 U.S. at 740 (discussing unforeseeable technology).
10
See Warner-Jenkinson, 520 U.S. at 30-34; Festo, 535 U.S. at 726-42.
11
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).
12
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).
13
Since Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 433-34 (1822), formal claiming 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. 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).
3
could be claimed and the breadth of the language that could be used to claim them.14 Section A.
discussed 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. Fiske15 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.16

Section B. discussed how the Court in Winans v. Denmead17 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 in Winans encouraged liberal construction
of claim language, it did not extend patent protection beyond a fair construction of that language.
Rather, the Court recognized that claim language could create an implied-in-fact or an implied-in-
law disclaimer of disclosed patentable subject matter.18

Section C. discussed 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.19
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.20 In doing so,
Congress also mandated the shift in patent drafting from central to peripheral claiming language.21

Part II of this article describes how the Supreme Court consistently applied the historic
doctrine of equivalents following the 1870 Patent Act until the 1950 decision in Graver Tank,22 how
the Court radically revised the doctrine of equivalents in that decision,23 and how Congress in the
1952 Patent Act neither codified nor impliedly ratified the Courts new approach.24 Section A.
14
See Joshua D. Sarnoff, The Historic and Modern Doctrines of Equivalents and Claiming the Future: Part I
(1790-1870), __ J. PAT. & TRADEMARK OFF. SOCY ___ (2004).
15
56 U.S. (15 How.) 212 (1853).
16
Id. at 215.
17
56 U.S. (15 How.) 330 (1853).
18
See id. at 337-44.
19
Act of July 8, 1870, ch. 230, 26, 16 Stat. 198, 201 (emphasis added) (currently codified at 35 U.S.C. 112, 2
(2000)).
20
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).
21
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); 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, 16-18, 19 & n.56 (1992). But see Warner-Jenkinson Co. v. Hilton
Davis Chem. Co., 520 U.S. 17, 27 n.4 (1997).
22
See Ronald D. Hantman, Doctrine of Equivalents, 70 J. PAT & TRADEMARK OFF. SOCY 511, 533-35 (1988).
23
See Paul M. Janicke, Heat of Passion: What Really Happened in Graver Tank, 24 AIPLA Q. J. 1, 115-26 (1996).
24
See Hantman, supra note 22, 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
4
discusses (1) how the Court authorized use of broad claiming language for important fundamental
(pioneering) inventions that applied to later-arising technologies.25 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 doctrines26; (3) adopted a reverse
doctrine of equivalents to limit temporal expansion of claim meaning27 and revised its requirements
that prevented overly broad claiming language28; and, for narrow improvement inventions, (4)
limited patent protection to equivalents known to be substitutes when the patent issued29 and
prohibited use of functional claiming language to describe an inventions novel features.30

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.31 Perversely, one year earlier in the very same
case, the Court had reiterated that the claims determine the scope of patent protection.32 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.33

685, 691-94 (2001) (same); Ronald D. Hantman, Patent Infringement, 72 J. PAT. & TRADEMARK OFF. SOCY 454, 486-88
(1990) (same) (hereinafter Hantman, Patent Infringement).
25
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 DONALD S. CHISUM, CHISUM ON PATENTS
18.02[2], 18.04[2] (2002) (hereinafter CHISUM ON PATENTS).
26
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).
27
See, e.g., Boyden Power Brake Co. v. Westinghouse, 170 U.S. 537, 573 (1898); Warner-Jenkinson Co. v. Hilton
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).
28
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).
29
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).
30
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.
31
See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608-09 (1950). Cf. Sayre v. Moore, 102
Eng. Rep. 139, 140 (1785) (Lord Mansfield, C.J.) (patent 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.). But see id.
at 613 (Black, J., dissenting) (criticizing the Courts fairness arguments). 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).
32
See Graver Tank & Mfg. Co. v.Linde Air Prods. Co., 336 U.S. 271, 276-77 (1949).
33
Graver Tank, 339 U.S. at 613 (Black, J., dissenting). See id. at 613-18.
5
 Section C. describes how Congress in the 1952 Patent Act recodified the distinct claiming
requirement and codified the patent law infringement right.34 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.35 However, Congress intended to change infringement law
only by reversing the Supreme Courts holdings on contributory infringement36 and the Courts
prohibition of functional claiming language 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).37 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.38

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.39 Had Congress intended to approve of such a major change to direct

34
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 25, 16.02 (tracing judicial development of the direct
infringement right); 7 CHISUM ON PATENTS, supra note 25, 20.02 (discussing statutory and judicial development of
damages and injunction remedy and jurisdiction provisions).
35
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 25, 16.02 (tracing judicial development of the
direct infringement right); 7 CHISUM ON PATENTS, supra note 25, 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
infringement); 35 U.S.C. 283 (2000) (injunctive relief); 35 U.S.C. 284 (2000) (damages).
36
See, e.g., Mercoid Corp. v. Mid-Continent Inv. Co., 320 U.S. 661, 668-69, rehg denied, 321 U.S. 802 (1944).
37
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).
38
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).
39
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
6
infringement law, it certainly would have said something to this effect.40 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.41 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
abolishing the doctrine of equivalents altogether and holding every patentee to the literal terms of
the patent.42

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.43 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.44 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.45

II. The Doctrine of Equivalents and Claiming The Future From 1870 to1952

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).
40
See supra note 24 and accompanying text. 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);
41
Warner-Jenkinson, 520 U.S. at 28.
42
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 738 (2002).
43
Id. at 733 (citing Warner-Jenkinson Co., 520 U.S. at 28). Cf. Janicke, supra note 23, 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).
44
See Joshua D. Sarnoff, The Doctrine of Equivalents and Claiming the Future After Festo, __ FED. CIR. BAR J.
___ (forthcoming 2004).
45
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).
7
A. Judicial Decisions Addressing Claiming and the Doctrine of Equivalents Under the 1870
Patent Act

In the decade following Congressional enactment of the 1870 Patent Act, the Supreme Court
unpacked the implications of the specification disclosure and claiming provisions. The Court first
loosened its earlier restrictions on the scope of patentable principles for pioneering inventions and on
the language that could be used to claim those principles,46 suggesting that the 1870 Patent Act had
not codified those limits.47 At the same time, the Court developed implied-in-fact and implied-in-law
disclaimer doctrines for patents that claimed less than the full scope of a disclosed patentable
invention, first in regard to reissue and later for infringement actions (when patentees argued for
broader constructions of issued claims than they had suggested by amendment or argument in the
Patent Office). Significantly, the Court held that these doctrines were compelled by the 1870 Patent
Act, in particular by the distinct claiming and reissue provisions.48 Narrow claiming prevented
protection of any broader scope of disclosed invention, absent timely and limited correction through
reissue, appeal, or continued prosecution.49

From 1870 until 1950, the Court consistently held that patent protection including the
doctrine of equivalents was limited to the scope of application of construed claim language
(although that scope had been dramatically expanded for pioneering patents).50 In the few cases that

46
Compare, e.g., OReilly v. Morse, 56 U.S. (15 How.) 62, 112-13 (1853) (prohibiting overly broad claims for
principles that apply to a manner and process that was not described or invented by the patentee), Corning v. Burden,
56 U.S. (15 How.) 252, 268-69 (1853) (prohibiting claims for processes using functional means or method
language), and Wyeth v. Stone, 30 F. Cas. 723, 727 (C.C.D. Mass. 1840) (No. 18,107) (Story, J.) (limiting patents to the
inventive mode or apparatus embodying the patented principle actually disclosed in the patent specification) with
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).
47
Although Congress referenced some of these cases in marginal notations to drafts of the requirements for
disclosure in the specification, Congress made only limited changes to the text of the provision (other than the distinct
claiming requirement). See H.R. 41-1714 (1870) (Apr. 7, 1870 and Apr. 13, 1870 drafts); 3 CHISUM ON PATENTS, supra
note 25, 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.). Compare
Act of July 4, 1836, ch. 357 6, 5 Stat. 117 with Act of July 8, 1870, ch. 230, 26, 16 Stat. 201.
48
See, e.g., Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136 (1942); Shepard v. Carrigan, 116 U.S.
593, 598 (1886); Sargent v. Hall Safe & Lock Co., 114 U.S. 63, 86 (1885); Miller v. Bridgeport Brass Co.,104 U.S. (14
Otto) 350, 352 (1881).
49
Cf. Alexander, supra note 2, at 567 & n.106 (noting that the Court did not distinguish between original and
reissued claims in regard to the doctrine of equivalents) (citing Fay v. Cordesman, 109 U.S. 408, 420-21 (1883)). In
addition, failure to timely disclaim invalid (including overly broad) claims would result in invalidity of the entire patent,
which also would preclude enforcing any broader scope of disclosed invention than the valid claims of the patent. 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). Cf. 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)) (limiting invalidity to particular claims).
50
The discussion below focuses on the most significant Supreme Court cases between 1870 and 1950 that address
the limits to claim scope, claiming language, and prosecution history estoppel. The history of the Courts prosecution
history estoppel cases has been thoroughly canvassed elsewhere. See, e.g., Alexander, supra note 2, at 568-84 (tracing
development of prosecution history estoppel in the Supreme Court from Leggett v. Avery, 101 U.S. (11 Otto) 256 (1879),
through Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126 (1942)); John W. Schlicher, The Law, History, and Policy
8
the Court liberally (and possibly non-literally) construed claim language,51 the Court did not suggest
that it was extending patent protection beyond the scope of the claims.52 Nor could the Court extend
protection beyond construed claim scope when adopting the reverse doctrine of equivalents, when
further revising the scope of inventions that could validly be claimed (and the language used to
claim them), or (for improvement inventions) when limiting the application of claims to known
equivalents and prohibiting use of functional claiming language.53 Although the Courts dicta
sometimes improperly suggested this result,54 none of the cases before Graver Tank that are
commonly argued to have applied the modern doctrine of equivalents actually did so.55

1. Expansion of Permissible Claim Scope for Pioneering Inventions

In a series of cases beginning shortly after the 1870 Patent Act, the Supreme Court overruled
its earlier decisions that had limiting patentees from claiming as their inventions broad functional
and structural principles with a wide range of application to unenumerated embodiments.56 The

of Prosecution History Estoppel in Patent Actions in the U.S. Supreme Court -- Implications for Festo (Part I), 84 J. PAT.
& TRADEMARK OFF. SOCY 581, 590-611 (2002).
51
See Hantman, supra note 22, at 533 (arguing that only six cases exist before Graver Tank in which the Court
provided protection more broadly than the literal language of the claims suggested, and in these cases the equivalent
element is so close to the language of the claim, it is even arguable whether an expansive doctrine of equivalents was
applied to the claims at all.) (citing Ives v. Hamilton, 92 U.S. (2 Otto) 426 (1875); Imhaeuser v. Buerk, 101 U.S. (11
Otto) 647 (1879); Royer v. Schultz Belting Co., 135 U.S. 319 (1890); Western Elec. Co. v.LaRue, 139 U.S. 601 (1890);
Hoyt v. Horne, 145 U.S. 302 (1892); National Cash Register Co. v. Boston Cash Indicator and Recorder Co., 156 U.S.
502 (1895)).
52
See Ives, 92 U.S. (2 Otto) at 430-31 (construing curved guides to include a series of straight lines, by
explaining that the term curve in mathematics includes such a meaning); Imhaeuser, 101 U.S. (11 Otto) at 655, 657
(stating that [e]quivalents may be claimed in an improvement invention, and noting that the appeal was based on
Circuit Court err[or] in holding that the respondents have infringed the claims of the complainants patent); Royer, 145
U.S. at 325 (noting that if the patented invention was pioneering, it was entitled to a broader range of equivalents than
those enumerated in the disclosure and then holding that the question, on a proper construction of the patent, whether
the defendants machines infringed its claims, was a question of fact for the jury to determine); Western Elec., 139 U.S.
at 605 (holding that [t]he question of infringement turns upon the construction to be given to the third claim of the
patent); Hoyt, 145 U.S. at 308 (noting that [i]t is insisted ... that there is no infringement of the first claim.... Literally,
it is not [infringed].); National Cash Register, 156 U.S. at 510 (noting arguments that in view of certain prior patents,
the[] patent is subject to limitations which affect materially the construction of the first claim, and show defendants
machine not to be an infringement.).
53
See, e.g., Boyden Power Brake Co. v. Westinghouse, 170 U.S. 537, 573 (1898) (reverse doctrine); The
Incandescent Lamp Patent (Consolidated Electric Light Co. v. McKeesport Light Co.), 159 U.S. 465, 472-74 (1895)
(claiming limits); Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 8-13 (1946) (improvement patents).
54
See, e.g., Boyden Power Brake Co., 170 U.S. at 568 (We have repeatedly held that a charge of infringement is
sometimes made out, though the letter of the claims be avoided.); Union Paper-Bag Mach. Co. v. Murphy, 97 U.S. (7
Otto) 120, 125 (1877) (Authorities concur that the substantial equivalent of a thing, in the sense of the patent law, is the
same as the thing itself).
55
See, e.g., Warner-Jenkinson v. Hilton Davis Chem. Co., 520 U.S. 17, 35 (1977) (citing Union Paper-Bag Mach.
Co., 97 U.S. (7 Otto) at 125); Graver Tank (citing Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42 (1929), Union
Paper-Bag Mach. Co., 97 U.S. (7 Otto) at 125, and Imhaeuser, 101 U.S. (11 Otto) at 655); Pennwalt v. Corp. v. Durand-
Wayland, Inc. 833 F.2d 931, 968 (Fed. Cir. 1987) (Newman, J., Commentary) (citing United States v. Harvey Steel Co.,
227 U.S. 165 (1913), and Knapp v. Morss, 150 U.S. 221 (1893)).
56
See supra note 46 and accompanying text.
9
Court first expanded permissible claim scope to authorize functional claim language for processes,
including claims for pioneering inventions that covered all unenumerated improvements in the
application of the process.57 The Courts expansion of functional claiming culminated in Dolbear v.
American Bell Telephone Co.,58 in which the Court narrowed OReilly v. Morse.59 Specifically, the
Court held that OReilly had prohibited only the claiming of an inventive principle without regard
to the particular process with which it was connected in the patent ... [but] its use in that connection
could [be claimed].60

As a result of the Courts more permissive approach to functional claiming for pioneering
processes, a patentee could patent all subsequent embodiments of a broadly claimed process even
though the specification disclosed only a single embodiment . [A] patent is not to be confined to
the mere means [the patentee] improvised to prove the reality of his conception.61 Pioneering
process claims, moreover, could extend to a potentially unlimited range of future equivalents to the
disclosed method of performing the process and disclosed structures used therein. Conversely, a
broad pioneering process claim could issue based on an enabling disclosure, even though the
inventor had not reduced the claimed invention to practice prior to filing an application.62

Three years after Dolbear, in Morley Sewing Machine Co. v. Lancaster,63 the Court extended
its holdings on functional claims to structural claims. Through liberal construction, such claims
would apply to all subsequent machines which employ substantially the same means to accomplish
the same result... although the subsequent machine may contain improvements in the separate
mechanisms which go to make up the machine.64 Because the pioneering inventor would be the
first to invent the principle on which new machines would operate, the patent specification
necessarily would not enumerate or reflect reduction to practice of all devices that would substitute
for the new combination of elements. In this sense the mechanical devices used by the defendant
are known substitutes or equivalents to those employed in the... machine to effect the same result,
and this is the proper meaning of the term known equivalent, in reference to a pioneer machine.65

57
See Cochrane v. Deener, 94 U.S. (4 Otto) 780, 787 (1876) (processes are patentable); Tilghman v. Proctor, 102
U.S. (12 Otto) 707, 722, 728-29 (1880) (processes are patentable if the inventor describes a particular mode or apparatus
for application of the process to accomplish an actual and beneficial result); Robert Lutz, Evolution of the Claims of U.S.
Patents (Part II), 20 J. PAT. OFF. SOCY 377, 478 (1938). But see Mitchell v. Tilghman, 86 U.S. (19 Wall.) 287, 391-92,
404 (1874) (in order to preserve validity, interpreting a functional claim to have a limited range of application to
unenumerated embodiments and as not intending to claim all means of performing the function).
58
126 U.S. 1 (1888). Dolbear is the captioned case in what is commonly referred to as the The Telephone Cases.
59
56 U.S. (15 How.) 62 (1853).
60
Dolbear, 126 U.S. at 534.
61
Id. at 539. See id. at 532-39.
62
See id. at 535 (in his specification he did describe [his process] ... with sufficient precision to enable one of
ordinary skill in such matters to make it).
63
129 U.S. 263 (1889).
64
Id. at 273 (emphasis added).
65
Id. at 289-90.
10
 Patent protection also would apply to later-arising improvements substituting for known elements
corresponding to the claim limitations.66

After Morley Sewing Machine Co., patentees could structurally claim the principle of a
pioneering invention at a high level of generality and could block most later-arising, patentable
improvements.67 No logical contradiction regarding the identity of principles of invention would
result, because the levels of generality of (and time frames for assessing) the pioneer and the
improvement inventions would differ.68 Given the broad language that now could be used to claim a
pioneering invention, most non-obvious improvements would fall within the scope of application of
the claim and would be subservient to the dominant patent.69 Nevertheless, the broad ability to
claim future embodiments was restricted to pioneering inventions because improvement inventions
were limited by prior art,70 and patent protection remained limited to the scope of application of the
construed claim language.71

66
See Edison Elec. Light Co. v. Boston Incandescent Lamp Co., 62 F. 397, 398-99 (C.C.D. Mass. 1894) (holding
that newly discovered substances or devices substituting for previously known elements are within the scope of
pioneering claims, because it is difficult to point out in this class of cases what known equivalents existed at the date of
the patent, for the reason that the combination of elements in which the invention is embodied was first made known by
the patentee.).
67
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); supra note 3 and accompanying text.
68
See Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90 COLUM. L. REV.
839, 861 & n.96 (1990) (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).
69
See, e.g., Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 380 (1822) (discussing the broad range of substitutions
blocked by patents for pioneering inventions).
70
See, e.g., Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 555-56 (1871); Gould v. Rees, 82 U.S. (15 Wall.) 187,
192 (1872); Gill v. Wells, 89 U.S. (22 Wall.) 1, 15 (1874); Fuller v. Yentzer, 94 U.S. (4 Otto) 288, 296-97 (1876); Rowell
v. Lindsey, 113 U.S. 97, 102 (1885); Miller v. Eagle Mfg. Co., 151 U.S. 186, 207 (1894); Boyd v. Janesville Hay-Tool
Co., 158 U.S. 260, 261, 267 (1895); Cimiotti Unhairing Co. v. Am. Fur Refining Co., 198 U.S. 399, 406 (1905);
Continental Paper Bag Co. v. E. Paper Bag Co., 210 U.S. 405, 415 (1908); General Elec. Co. v. Wabash Appliance
Corp., 304 U.S. 364, 369 (1938); Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 10-13 (1946). See also
Woodcock v. Parker, 30 F. Cas. 491 (C.C.D. Mass. 1813) (No. 17,971) (Story, J.) (discussing substitution to avoid the
narrow patented principle of improvement inventions); Odiorne v. Winkley, 18 F. Cas. 581, 582 (C.C.D. Mass. 1814)
(No. 10,432) (Story, J.) (same). In some cases, improvement inventions are referred to as combination inventions.
See, e.g., Halliburton Oil Well Cementing Co., 329 U.S. at 10. However, given that all inventions consist of
combinations of old [previously known] elements, the relevant issue was the breadth of novelty in the combination.
Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 965 (Fed.Cir. 1987) (en banc) (Newman, J., dissenting). See id.
at 965-67 (noting the narrower scope of improvement patents that combined old elements); id. at 963-65 (noting the
variable scope of equivalents that could be claimed for pioneering inventions).
71
See, e.g., Sessions v. Romadka, 145 U.S. 29, 45 (1892) (In view of the fact that [the inventor] was a pioneer ...
11
 2. Implied Disclaimers and Limiting Equivalents Protection To Construed Claims

Almost a decade after the 1870 Patent Act, the Supreme Court began to prohibit patentees
from reclaiming subject matter in broadening reissue patents that they had earlier formally or
impliedly disclaimed (or had invalidly claimed using overly broad claiming language). Estoppel of
broader claim scope in the reissue prosecution necessarily resulted either from failing to claim
patentable subject matter during initial prosecution or from adopting narrowing amendments and
arguments during such prosecution.72 Such estoppel was based on the patentees disclosure of
patentable but unclaimed (or invalidly claimed) subject matter, which created an implied-in-law
dedication to the public domain73 of the unclaimed, disclosed subject matter.74 The only exception
was for errors or mistakes in drafting the claims (which avoided an implied-in-fact dedication),75 so
long as the broadening reissue was applied for without unreasonable delay (as determined by
analogy to the grace period before a public use would place an invention in the public domain).76
These cases established implied disclaimer as an objective result of adopting narrower claims than
the disclosed principle of invention, without regard to the applicants intent (except as relevant to a

he is entitled to a liberal construction of his claim, and that the [defendants] device, containing ... all the elements of the
combination, should be held an infringement ... though there are superficial dissimilarities).
72
See, e.g., Leggett v. Avery, 101 U.S. (11 Otto) 256, 259-60 (1879); Goodyear Dental Vulcanite Co., 102 U.S.
(12 Otto) at 228; Miller v. Bridgeport Brass Co., 104 U.S. (14 Otto) 350, 352 (1881); Mahn v. Harwood, 112 U.S. 354,
360-61 (1884).
73
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).
74
See, e.g., Miller, 104 U.S. (14 Otto) at 352 (the claim of a specific device or combination, and an omission to
claim other devices or combinations apparent on the face of the patent, are, in law, a dedication to the public of that
which is not claimed.).
75
See, e.g., id. (Nothing but a clear mistake, or inadvertence, and a speedy application for its correction, is
admissible when it is sought merely to enlarge the claim.); Yale Lock Mfg. Co. v. Berkshire Natl Bank, 135 U.S. 342,
379, 403-04 (1890) (cancelling similar broader claims in the original patent would indicate abandonment and preclude
reissue for the same matter).
76
See, e.g., id. (If two years' public enjoyment of an invention with the consent and allowance of the inventor is
evidence of abandonment, and a bar to an application for a patent, a public disclaimer in the patent itself should be
construed equally favorable to the public.); Mahn, 112 U.S. at 363 (two year statutory bar is an apposite analogy but
not a rule, because the bar to such reclaiming was then based on the equitable doctrine of laches). In 1952, Congress
codified the Courts equitable prohibition of broadening reissues, adopting an inflexible, two-year limit for rebutting the
presumptive implied-in-law disclaimer of patentable subject matter. 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)). Cf. 35 U.S.C. 102(b) (2000) (current public
use bar of one year prior to application). 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].
12
reissue with broader claims). Significantly, the Court based its implied disclaimer doctrines on the
distinct claiming language of the 1870 Patent Act and the consequent need to claim with
particularity the scope of the invention to be patented.77

The same implied-in-law disclaimer principles were later applied by the Supreme Court to
estop patentees from broadening claims of an original patent by construction in infringement
actions,78 or from arguing for broader constructions in infringement actions than they had suggested
or had acquiesced to during prosecution in the Patent Office.79 The Court stated emphatically that
patentee responses to Patent Office rejections were to be strictly construed against the inventor and
in favor of the public, and looked upon as in the nature of disclaimers.80 Similarly, the effect of
filing an amendment was the categorical exclusion of all subject matter broader than the narrowed
claim. Having thus narrowed his claim in order to obtain a patent the patentee may not by
construction, or by resort to the doctrine of equivalents, give to the claim the larger scope which it
might have had without the amendments [and accompanying arguments], which amount to a
disclaimer.81 As the Court later recognized in Festo, [w]ere it otherwise, the inventor might avoid
the PTO's gatekeeping role and seek to recapture in an infringement action the very subject matter
surrendered as a condition of receiving the patent.82

The Supreme Courts implied disclaimer cases clarified that patents could not protect a
broader scope of patentable subject matter than a fair construction of the claims allowed. Resort to
the doctrine of equivalents could not further expand patent protection, because the doctrine applied

77
See, e.g., Merill v. Yeomans, 94 U.S. (4 Otto) 568, 570, 572-73 (1876) (discussing the act of Congress [which]
very wisely requires of the applicant a distinct and specific statement of what he claims to be new, and to be his
invention and cases in which the Court provided the benefit of a liberal construction in support of the patent where
it appears that a valuable invention has really been made; noting that it would uphold that which was really invented,
and which comes within any fair interpretation of the patentee's assertion of claim); Miller, 104 U.S. (14 Otto) at 354-55
(discussing the particularly specify and point out claiming requirement under the 1836 Patent Act and the failure of
Congress to contemplate broadening reissues under that Act).
78
See, e.g., Shepard v. Carrigan, 116 U.S. 593, 598 (1886) (Under the circumstances of this case the inventor
could not even get a reissue based on the broader claim which she had abandoned.... Much less can she, in a suit brought
to restrain its infringement, enlarge her patent by argument so as to cover elements not falling within its terms, and which
she had explicitly abandoned.) (citing Leggett v. Avery, 101 U.S. (11 Otto) 256 (1879)).
79
See, e.g., I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 443-44 (1926); Hubbell v. United States, 179
U.S. 77, 80 (1900); Knapp v. Morss, 150 U.S. 221, 224-25, 230 (1893). Cf. Goodyear Dental Vulcanite Co. v. Davis,
102 U.S. (12 Otto) 222, 228 (1880) (it is reasonable to hold that ... a construction may be confirmed by what the
patentee said when he was making his application. The understanding of a party to a contract has always been regarded
as of some importance in its interpretation.).
80
Sargent v. Hall Safe & Lock Co., 114 U.S. 63, 86 (1885). See I.T.S. Rubber, 272 U.S. at 434-44.
81
Weber Elec. Co. v. E.H. Freeman Elec. Co., 256 U.S. 668, 677-78 (1921). See Exhibit Supply Co. v. Ace
Patents Corp., 315 U.S. 126, 136-37 (1942) (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 [the patentee]
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.").
82
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 734 (2002) (citing Goodyear Dental
Vulcanite, 102 U.S. (12 Otto) at 228).
13
only within the scope of the construed claim language.83 In the years following adoption of the
implied disclaimer doctrines, the Court consistently limited patent protection to the scope of
application of construed claims. Unfortunately, however, the Court sometime employed dicta that
has been misconstrued to support extending patent protection beyond that scope.

For example, in Union Paper-Bag Machine Co. v. Murphy,84 the Court suggested in dicta
that patent protection could extend beyond the scope of application of construed claim language,
based on determining factual equivalency of an allegedly infringing device to the embodiments of
the invention enumerated in the disclosure.

The court or jury, as the case may be, are not to judge about similarities or
differences by the names of things.... Authorities concur that the substantial
equivalent of a thing, in the sense of the patent law, is the same as the thing itself ...
even though they differ in name, form, or shape.85

The context of the Courts statement, however, makes clear that the Court found the claim language
broad enough to find the device to be an equivalent embodiment. It will be sufficient to describe
the nature and operation of the principal device embodied in that claim.86 The Court thus remanded
with instructions to find infringement, because the infringing device fell within the scope of
application of the claim.87

Contemporaneous cases make clear that the Court in Union Paper-Bag Machine Co. did not
intend to create broader patent protection than the scope of application of the interpreted claim. In
Merill v. Yeomans,88 the Court addressed a claim for a manufacture that ambiguously applied to
both a new method of distilling oils and to the product of the process. The infringer produced
similar oils using a different process. The Court held that the patent protected only the process and
thus found no infringement. Significantly, the Court stated that the 1870 Patent Act required the
scope of patentable subject matter to be determined from construction of the formal claim, and that
any broader scope of patentable invention disclosed in the specification could be protected only by
seeking a broadening reissue.

83
See, e.g., Smith v. Magic City Kennell Club, Inc., 282 U.S. 784, 790 (1931) (stating that [t]he patentee is
thereafter estopped to claim the benefit of his rejected claim or such a construction of his amended claim as would be
equivalent thereto); Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220-21 (1940) (The patentee may not,
by resort to the doctrine of equivalents, give to an allowed claim a scope which it might have had without the
amendments); Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 128, 136 (1942) (Whatever may be the
appropriate scope and application of the doctrine of equivalents ... it has long been settled that recourse may not be had to
that doctrine to recapture claims which the patentee has surrendered by amendment.).
84
97 U.S. (7 Otto) 120 (1877).
85
Id. at 125.
86
Id. at 122 (emphasis added). See id. at 124 (defendants knife constitute[s] a cutter substantially like the one
[claimed and] employed in the complainants' machine.).
87
See id. at 123-26.
88
94 U.S. (4 Otto) 568 (1876).
14
 The issue thus presented must be decided solely on a correct construction of the
plaintiffs patent, and the accompanying specifications, in which, as required by the
act of Congress, he makes the statement of his invention. No such question could
have arisen if appellant had used language which clearly and distinctly points out
what it is that he claims i[s] his invention. We use the word claim as distinct from
description.89

In contrast, the dissent in Merill would have interpreted the claim to include the product.90

In Keystone Bridge Co. v. Phoenix Iron Co.,91 the Supreme Court was even more explicit.
The Court held that a broader disclosure than the formal claim language could not be used to extend
patent protection, that courts should not take on the role of the Patent Office in determining whether
patentees were entitled to the broader scope, and that any broader scope was disclaimed as a matter
of law.

When a claim is so explicit, the courts cannot alter or enlarge it. If the patentees
have not claimed the whole of their invention, and the omission has been the result of
inadvertence, they should have sought to correct the error by a surrender of their
patent and an application for a reissue. They cannot expect the courts to wade
through the history of the art, and spell out what they might have claimed, but have
not claimed.... [T]he courts have no right to enlarge a patent beyond the scope of its
claim as allowed by the Patent Office, or the appellate tribunal to which contested
applications are referred.... And the [patentees] cannot show that their invention is
broader than the terms of their claim; or, if broader, they must be held to have
surrendered the surplus to the public.92

In other cases, the Court also did not extend patent protection beyond the scope of
application of construed claim language, although dicta from those referring in the alternative to
claim construction and the doctrine of equivalents could mistakenly suggest this result. In Knapp v.
Morss,93 the Supreme Court found a patent invalid for lack of novelty over the prior art. The Court
stated that if the patent had been a valid pioneering invention, the doctrine of equivalents might be
invoked with regard to the sliding blocks and rests, and thus a different question would be raised.94
Because it was at most a narrow improvement, the patent was neither entitled to a broad
construction, nor can any doctrine of equivalents be invoked so as to make the appellants device an

89
Id. at 569. See id. at 570 (This distinct and formal claim is, therefore, of primary importance, in the effort to
ascertain precisely what it is that is patented to appellant in this case.); id. at 573 (If the patentee is also entitled to a
patent for the product ... and has failed ... to obtain it, the law affords him a remedy, by a surrender and reissue.).
90
See id. at 574 (Clifford, J., dissenting).
91
95 U.S. (5 Otto) 274 (1877).
92
Id at 278-79. See also Miller v. Bridgeport Brass Co., 104 U.S. (14 Otto) 350, 352 (1881) (The legal effect of
the patent cannot be revoked unless the patentee surrenders it).
93
150 U.S. 221 (1893).
94
Id. at 230.
15
infringement.95 Although the reference to the doctrine of equivalents is phrased as an alternative to
broad construction, the statement does not refer to patent protection that extends beyond the
construed claims. Rather, it reflects the Courts understanding that the scope of equivalents claimed
varied with the nature of the invention, with pioneering claims having a broader range of equivalent
embodiments. Thus, the dissent would have found the admittedly not radical improvement claim
valid over the prior art patents and infringed by the substitution of well-known equivalents.96 For
another example, in Weber Electric Co. v. E.H. Freeman Electric Co.97 the Court held that a
narrow claim could not be construed broadly to find infringement, which was sufficient to
dispose of the case, notwithstanding the Courts reference to claiming a larger scope by
construction, or by resort to the doctrine of equivalents.98 The cases cited in Weber,99 as well as
subsequent cases,100 further suggest that such alternative references to claims construction and to the
doctrine of equivalents meant only the range of equivalent embodiments of the claims.

In United States v. Harvey Steel Co.,101 the Supreme Court found the defendant liable for
using the same invented process, although the Court had earlier held that the defendants process
avoided infringing the language of the claims.102 But the Court in holding for the plaintiff was
clearly construing contract expectations regarding the meaning of the process, rather than
determining the scope of patent protection. The Court phrased the question for decision as
construction of the contract, and reiterated that its earlier decision construing the contract had held
that the patent was not triggered due to the absence of the claimed element.103

The argument that the doctrine of equivalents provides protection beyond the scope of
applicatiaon of construed claim language finds its most powerful support before 1950 in dicta from
Sanitary Refrigerator Co. v. Winters.104

95
Id.
96
Id. (Brown, J., dissenting).
97
256 U.S. 668 (1921).
98
Id. at 669, 676, 677 (citing Shepard v. Carrigan, 116 U.S. 593, 598 (1886), and Hubbell v. United States, 179
U.S. 77, 80 (1900)). See I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 443, 444 (1926) ([h]aving thus reached
the conclusion that all of the claims in suit are limited by amendments and arguments, [t]he patentee is thereafter
estopped to claim the benefit of his rejected claim or such a construction of his amended claim as would be equivalent
thereto).
99
See, e.g., Shepard, 116 U.S. at 597, 598 (holding that the patentee cannot after the issue of the patent broaden
his claim by dropping the element which he was compelled to include in order to secure his patent .... [In] this case, the
inventor could not even get a reissue based on the broader claim which she had abandoned .... Much less can she, in a
suit brought to restrain its infringement, enlarge her patent by argument, so as to cover elements not falling within its
terms.); Hubbell, 179 U.S. at 80, 82, 84 (While not allowed to revive a rejected claim, by a broad construction of the
claim allowed, yet the patentee is entitled to a fair construction of the terms of his claim as actually granted.).
100
See supra note 83 and accompanying text.
101
227 U.S. 165 (1913).
102
See id. at 167-70 (citing United States v. Harvey Steel Co., 196 U.S. 310, 317 (1905)).
103
See id. at 168-70.
104
280 U.S. 30 (1929).
16
 [T]he question of infringement resolves itself in each case into one of law, depending
upon a comparison between the structure disclosed on the face of the patent and the
device ... and the correct application thereto of the rule of equivalency..... [W]e find
that the two devices are substantially identical, operating upon the same principle,
and accomplishing the same result in substantially the same way, and that the slight
change in the form ... is merely a colorable departure.... There is a substantial
identity, constituting infringement, where a device is a copy of the thing described by
the patentee, either without variation, or with such variations as are consistent with
its being in substance the same thing.105

In order to avoid resolving whether a broader construction would invalidate the claims, the Court
adopted for analysis the narrow construction of the lower courts limiting the claims to the structure
... disclosed in the specification.106

Nevertheless, the Supreme Court in Sanitary Refrigerator Co. held the interpreted claims
sufficiently broad to find infringement, as it had done earlier in Union Paper-Bag Machine Co.107
The Court described the question for decision as whether the five specific claims of the ... patent
were infringed and held that the ... patent, although thus limited [by its claim interpretation] had
some range of equivalents; and we think that, though it be a narrow one, it is sufficient.108 The
Courts quotation of language from Burr v. Duryee reinforces this conclusion, as the Court in Burr
had interpreted the ambiguous claim narrowly, had specified that the range of equivalents was
limited, and thus had found no infringement.109 In any event, the Court subsequently reiterated that
patent protection was limited to the scope of application of the construed claims.110

3. Limiting Expansion of Claim Scope and Revised Limits To Prevent Overbroad

Claims

a. The Reverse Doctrine of Equivalents

105
Id. at 36, 41, 42 (quoting Burr v. Duryee, 68 U.S. (1 Wall.) 531, 573 (1863)).
106
Id. at 41.
107
97 U.S. (7 Otto) 120, 122-26 (1877). See supra notes 88-90 and accompanying text.
108
Sanitary Refrigerator, 280 U.S. at 41.
109
See 68 U.S. (1 Wall.) at 567-77. The other cases cited by the Court to support its dicta also held only that the
differences between the disclosed and infringing inventions were or were not within the scope of embodiments of the
claim language. See Sanitary Refrigerator, 280 U.S. at 42 (citing Duff v. Sterling Pump Co. 107 U.S. 636, 639 (1883),
Elizabeth v. Pavement Co., 97 U.S. (7 Otto) 126, 137 (1877), Ives v. Hamilton, 92 U.S. (2 Otto) 426, 430 (1875), and
McCormick v. Talcott, 61 U.S. (20 How.) 402, 405 (1867)).
110
See, e.g., Milcor Steel Co. v. George A. Fuller Co., 316 U.S. 143, 145-146 & n.3 (1942) (holding that
disclaimers cannot add new matter and thereby claim narrower, previously unclaimed combinations; stating it is these
claims, not the specifications, that afford the measure of grant to the patentee; and citing the distinct claiming
requirement of Rev. Stat. 4888, then codified at 35 U.S.C. 33 (1940)); Smith v. Snow, 294 U.S. 1, 11, 14 (1935)
(stating that the claims of the patent, not its specification, measure the invention, and that the pioneering nature of the
invention authorized a liberal construction of [the broad claims] made) (citing Winans v. Denmeade, 56 U.S. 330, 341,
343 (1850)).
17
 When authorizing broad claiming language for pioneering patents, the Supreme Court
recognized that such claiming language would extend the scope of equivalents that were
embodiments of the claims. In Boyden Power Brake Co. v. Westinghouse,111 the Court adopted a
reverse doctrine of equivalents, which limited the range of later-arising technologies that could be
considered equivalent embodiments of the literally claimed principle of the invention.112 The
Courts reverse doctrine may have been a mistake, as the Court failed to distinguish clearly between
different principles of invention and blocking patents.113 In contrast, the dissent clearly recognized
the issue and suggested blocking was appropriate.114

In Boyden Power Brake, the Court tentatively and relatively narrowly construed a broad
claim of one of Westinghouses patents for an improved railroad car brake.115 Specifically, the
Court read into the claim a structural limitation to an auxiliary valve that was disclosed in the
specification. The Court thereby avoided deciding whether the claim was invalid as impermissibly
overbroad (by claiming a function and all means of performing it).116 The Court then determined
that the invention was not pioneering, but nevertheless was more than an ordinary improvement
and was entitled to a relatively broad range of equivalents.117 The Court found that the substitution
of a slide valve for the disclosed poppet valve was by itself insufficient to avoid infringement,
because it was a known equivalent.118 Nevertheless, the Court refused to find infringement of two
additional claims that were expressly limited to the auxiliary valve, based on a slight change in the
functions of two of [the] valves, and the incorporation of a new element.119

111
170 U.S. 537 (1898).
112
See supra note 27 and accompanying text.
113
See Boyden Power Brake Co., 170 U.S. at 573 (the means used in accomplishing this function are so different
that we find it impossible to say, even in favor of a primary patent, that they are mechanical equivalents.... although Mr.
Boyden may have intended to accomplish the same results, the Westinghouse patent, if he had had it before him, would
scarcely have suggested the method he adopted to accomplish these results. Under such circumstances, the law entitles
him [Boyden] to the rights of an independent inventor.).
114
See 170 U.S. at 574 (Shiras, J., dissenting) (The very term 'pioneer patent' signifies that the invention has been
followed by others. A pioneer patent does not shut, but opens, the door for subsequent invention.). See also Hildreth v.
Mastoras, 257 U.S. 27, 36 (1921) (Doubtless this was an improvement which was perhaps patentable, but none of the
tribunals ... deemed this to be more than an improved equivalent of the trough which did not take these machines out of
the domination of the claim awarded to Dickinson.).
115
See Boyden Power Brake Co., 170 U.S. at 553.
116
See id. at 557-58 (given the inability to claim a function of a machine, the claim must be limited to the
particular means described in the specification .... In thus reading the specification into the claim, we can adopt no other
construction than to consider it as if the [disclosed limitation] were inserted in the claim in so many words, and then to
inquire whether the defendants make use of such [limitation], or its mechanical equivalents.). As alternatives to finding
an implied term, the Court also held that the claims use of the phrase substantially as set forth imported the limitation
from the specification and that prosecution history estoppel required reading the claim to contain that limitation. See id. at
558-60.
117
Id. at 561-62.
118
Id. at 567. See id. (the substitution was not material ... since there is no invention in substituting one valve or
spring of familiar shape for another) (citing Imhaueser v. Buerk, 101 U.S. (11 Otto) 647, 656 (1879)). In contrast, the
dissent would have found the invention to be pioneering and the broad claim to the function to be unambiguous, valid,
and infringed by a mechanical equivalent. See id. at 573-74, 582-83 (Shiras, J., dissenting).
119
Id. at 572. See id. at 571 (the means used in accomplishing this function are so different that we find it
18
 [E]ven if it be conceded that the Boyden device corresponds with the letter of the
Westinghouse claims, that does not conclusively settle the question of infringement.
We have repeatedly held that a charge of infringement is sometimes made out,
though the letter of the claims be avoided.... The converse is equally true. The
patentee may bring the defendant within the letter of his claims, but if the latter has
so far changed the principle of the device that the claims of the patent, literally
construed, have ceased to represent his actual invention, he is as little subject to be
adjudged an infringer as one who has violated the letter of a statute has to be
convicted, when he has done nothing in conflict with its spirit and intent....
Conceding that the functions of the two devices are practically the same, the means
used in accomplishing this function are so different that we find it impossible to say,
even in favor of a primary patent, that they are mechanical equivalents.120

The Court thus created a new doctrine to avoid finding infringement by later-arising technologies
that might embody the construed language of the claims but exceed the scope of the invented
principle actually patented. It remains unclear, however, whether in doing so the Court adopted a
narrow, non-literal construction that did not directly apply or denied protection notwithstanding
direct application.

b. Revised Requirement To Prevent Overly Broad Claiming

In addition to limiting broad pioneering claims or their application under the reverse doctrine
of equivalents, the Supreme Court found additional claim scope limitations in the written
specification and distinct claiming requirements of the 1870 Patent Act.121 In 1895 in The
Incandescent Lamp Patent (Consolidated Electric Light Co. v. McKeesport Light Co.),122 the
Supreme Court limited the broad dicta in Dolbear123 and Morley Sewing Machine Co.124 regarding
the ability of pioneering inventors broadly to claim all future functional and structural embodiments
of an invented principle.125

impossible to say, even in favor of a primary patent, that they are mechanical equivalents.). The incorporation of the
new element, as an additional limitation, might have been patentable, but should have resulted in blocking rather than
avoiding infringement. In contrast, the slight changes in function likely should not have been patentable or (if
patentable) should not have resulted in infringement. See supra note 68 and accompanying text.
120
Boyden Power Brake Co., 170 U.S. at 568, 571 (citing for finding infringement notwithstanding the letter of
the claims Hoyt v. Horne, 145 U.S. 302 (1892), Sessions v. Romadka, 145 U.S. 29 (1892), Elizabeth v. Pavement Co.,
97 U.S. (7 Otto) 137 (1877), Union Paper Bag Machine Co. v. Murphy, 97 U.S. (7 Otto) 120 (1887), Ives v. Hamilton, 92
U.S. (2 Otto) 431, (1875), and Morey v. Lockwood, 75 (8 Wall.) U.S. 230 (1868)). But see supra notes 51-52 and
accompanying text.
121
See Act of July 8, 1870, ch. 230, 26, 16 Stat. 198, 201 (currently codified at 35 U.S.C. 112, 2 (2000)).
122
159 U.S. 465 (1895).
123
Dolbear v. American Bell Telephone Co., 126 U.S. 1 (1888).
124
Morley Sewing Machine Co. v. Lancaster, 129 U.S. 263 (1889).
125
See Dolbear, 126 U.S. at 532-39; Morley Sewing Machine Co. v. Lancaster, 129 U.S. at 273-90; supra notes 58-
66 and accompanying text.
19
 Instead of confining themselves to carbonized paper, as they might properly have
done, and in fact did in their third claim, they made a broad claim for every fibrous
or textile material.... If the description be so vague and uncertain that no one can tell,
except by independent experiments, how to construct the patented device, the patent
is void.126

The Court thus adopted the modern standard for enablement of claim scope, based on the ability of
skilled practitioners to apply the disclosure without the need for additional experimentation.127 The
Courts dicta also may have suggested a separate definiteness requirement under the distinct
claiming provision.

In Eibel Process Co. v. Minnesota & Ontario Paper Co.,128 the Supreme Court held that
claim terms were not indefinite and were enabled so long as they were sufficiently clear to skilled
practitioners in the relevant technical field and allowed them to practice the invention. The Court
first held that the improvement patent was entitled to a broad construction, even though it was not a
pioneer, and rejected arguments that there was no patentable invention in light of the prior art.129
The Court then held that the claim terms substantial and high were not indefinite by failing to
define the requisite pitch for a wire used in paper-making and that the claim was not invalid by
failing to disclose a sufficient range of enumerated embodiments in the specification so that the
public [would know] how the discovery, if there is one, can be made useful and how its infringement
may be avoided.130 The Court held that readers skilled in the art ... had no difficulty... in
determining what was the substantial pitch needed to equalize the speeds of the stock and wire....131

126
Id. at 472, 474 (citing Grant v. Raymond, 31 U.S. (6 Pet.) 218, 247 (1832)) (emphasis added). See id. at 475
(citing Wood v. Underhill, 46 U.S. (5 How.) 1, 5 (1847), and Tyler v. Boston, 74 U.S. (7 Wall.) 327, 330 (1868)); Grant,
31 U.S. (6 Pet.) at 246-47 (Section 3 of the 1793 Patent Act required a correct specification and description of the
invention; the failure to provide a complete disclosure constituted a defense to infringement, notwithstanding a
requirement of deceptive intent for voiding the patent in Section 6; the complete disclosure was necessary in order to
give the public, after the privilege shall expire, the advantage for which the privilege is allowed, and is the foundation of
the power to issue the patent.). Cf. 35 U.S.C. 112, 1 (2000) (The specification shall contain a written description of
the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the
same); Amgen Inc. v. Hoechst Marion Roussel, Inc.,314 F.3d 1313, 1330 (Fed. Cir. 2003) (holding that the written
description requirement is distinct from the enablement requirement).
127
The Federal Circuit has modified the enablement standard to be more favorable to inventors, allowing them to
obtain broad claims for pioneering inventions at earlier stages of technological development. See, e.g., Durel Corp. v.
Osram Sylvania, Inc., 256 F.3d 1298, 1306 (Fed. Cir. 2001) (enablement of claim scope is evaluated under the standard
of undue experimentation at the time of filing); In re Wands, 858 F.2d 731, 740 (Fed. Cir. 1988) (discussing factors to
consider when determining enablement). See also In re Curtis, 354 F.3d 1347, 1355 (Fed. Cir. 2004) (the disclosure
must clearly convey[] to one of skill in the art characteristics common to all species that explain how and why they
make the invention operable.) (citing In re Smythe, 480 F.2d 1376, 1384 (C.C.P.A. 1973)).
128
261 U.S. 45 (1923).
129
See id. at 52-65.
130
Id. at 65.
131
Id. at 66 (citing, inter alia, Tilghman v. Proctor, 102 U.S. (12 Otto) 707 (1880), and Rubber Co. v. Goodyear,
76 U.S. (9 Wall.) 788 (1869)). See BJ Servs. Co. v. Halliburton Energy Servs., 338 F.3d 1368, 1372 (Fed.Cir.2003)
("The definiteness inquiry focuses on whether those skilled in the art would understand the scope of the claim when the
20
 In Holland Furniture Co. v. Perkins Glue Co.,132 the Supreme Court extended the
enablement requirement to impose new prohibitions on the use of broad functional claiming
language for compositions and machines.133 The Court held invalid a claim for glue, which
expressed one of the constituent elements in terms of the use or function of the product itself.134
The Court held that such functional claiming language not only failed to enable skilled practitioners
to use the claimed glue without elaborate experimentation or to understand where the claim ended,
but also would provide the patentee with too great a scope of protection.135 The Court implied that
such protection would violate the constitutional premises of patent law, by

enabl[ing] the inventor, who has discovered that a defined type of starch answers the
required purpose, to exclude others from all other types of starch, and so foreclose
efforts to discover other and better types. The patent monopoly would thus be
extended beyond the discovery, and would discourage rather than promote
invention.136

4. Limiting Equivalents and Claiming Language for Improvement Patents

a. Narrow and Temporally Static Equivalents

In 1870 in Seymour v. Osborne,137 the Supreme Court addressed an original and four reissue
patents for improvements to reaping and harvesting machines. The second defense to the
infringement action on appeal was that the patents were void because they did not (using the 1836
Patent Acts language) specify and point out in their specifications and claims the parts,
improvements, or combinations which they claim as their respective inventions.138 The fourth
defense was that the reissued patents were void, because they were not granted for the same
invention as that embodied in the original letters patent, nor for any invention made by the patentees

claim is read in light of the rest of the specification."). The Court also rejected arguments that invention was
unpatentable because: (1) it was inherent in prior art machines, although the principle was not recognized in those
machines; (2) it addressed unpatentable subject matter (a matter of degree in pitch); or (3) the same result could have
been achieved by other means. See id at 66-69.
132
277 U.S. 245 (1928).
133
The Court also refused to distinguish compositions from the long history of case law on the limited scope of
improvement claims for machines. See id. at 257-58.
134
Id. at 256. See id. (The chosen starch ingredient was to possess such qualities that, when combined with three
parts of water and with alkali, it would produce a product 'as good as animal glue' for veneering, or having the properties
of animal glue, these properties being described in terms of its functions. The ingredient was thus described, not in terms
of its own physical characteristics or chemical properties or those of the product, but wholly in terms of the manner of
use of the product.).
135
Id. at 257.
136
Id. at 257 (citing, inter alia, The Incandescent Lamp Patent, 159 U.S. 465 (1895), and OReilly v. Morse, 56
U.S. (15 How.) 62 (1853)). See U.S. CONST., art. I, 8, cl. 8 (providing Congress with patent power to promote
Progress by securing to inventors their Discoveries).
137
78 U.S. (11 Wall.) 516 (1870).
138
Id. at 541. See Act of July 4, 1836, ch. 357, 6, 5 Stat. 117, 119.
21
before the original letters patent were granted.139 The fifth and sixth defenses were that the patents
were overbroad and thus void, because the claims patented are for an effect, and not for any
particular machinery and because they were addressed to a broader scope of invention than the
patentee had invented.140 The eighth defense was that the patents were drawn only to an
unpatentable improvement that combined old parts without sufficient inventive skill.141

The Court rejected each of these sets of arguments. Specifically, the Court: (1) recognized a
pioneers ability to claim an entire machine142; (2) held that the reissued patents did not contain new
matter, because the corresponding original patent had not been placed in evidence and no
comparison was possible143; (3) interpreted the terms substantially as described and substantially
as set forth in the claims of the patents to make them congruent with the specifications, and thus to
incorporate limitations present in the enumerated embodiments rather than to extend the claims to all
future equivalent combinations144; and (4) upheld the patentability of a narrow improvement based
on a combination of old elements.145

After upholding the claims of the improvement patents, the Court held that they were limited
in their scope of application to equivalents that contained elements known to be substitutes at the
time the patent had issued.

[Patentees] cannot suppress subsequent improvements which are substantially

different, whether the new improvements consist in a new combination of the same
ingredients, or of the substitution of some newly-discovered ingredient, or of some
old one, performing some new function not known at the date of the letters patent, as
a proper substitute for the ingredient withdrawn from the combination constituting
their invention .... [In contrast,] the withdrawal of one ingredient from the same and
the substitution of another which was well known at the date of the patent as a proper
substitute for the one withdrawn, is a mere formal alteration of the combination if the
ingredient substituted performs substantially the same function as the one
withdrawn.146

The dicta of Seymour is significant, because it requires treating substituted, later-arising technologies
as non-equivalent, i.e., as substantially different.147

139
Id. at 544.
140
Id. at 547.
141
Id.
142
See id. at 541-42.
143
See id. at 545-46.
144
See id. at 547. See also id. (Omit the words 'substantially as described,' or 'substantially as set forth,' and the
question presented would be a very different one.).
145
See id. at 548 (inventions were patentable if the change of construction and operation actually adapts the
machine to a new and valuable use not known before, and it actually produces a new and useful result).
146
Id. at 555-56 (emphasis added).
147
Id. at 555.
22
 Following Seymour, the Court routinely held that the scope of an improvement patent was
limited to equivalents with elements that were known to be substitutes at the time of patent
issuance.148 Similarly, the Court routinely held that improvement patents were entitled to a narrower
range of equivalents than pioneering patents.149 The Court explained that [t]he range of
equivalents depends upon the extent and nature of the invention. If the invention is broad or primary
in its character, the range of equivalents will be correspondingly broad, under the liberal
construction which the courts give to such inventions.150 Although the narrower range of
equivalents was logically compelled by the existence of prior art, the limitation of improvement
patents to existing technologies was not.151

b. Prohibition of Functional Claiming Language for Improvement Patents

In General Electric Co. v. Wabash Appliance Corp.,152 the Supreme Court extended to
improvement inventions its holding in Holland Furniture Co.153 prohibiting the use of broad,
functional claiming language for pioneering inventions.154 The Court invalidated claims for
improved tungsten lighting filaments that expressed their structure in terms of the improved function
of the filiaments.155 The Court clearly articulated a definiteness requirement under the distinct
claiming language of the 1870 Patent Act.156 The Court noted the policies that supported the
definiteness requirement, stated that it applied to both pioneering and improvement inventions, and
distinguished it from the enablement standard by assuming that the description was sufficient to
inform those skilled in the art how to make and use his filament.157

148
See supra note 70 and accompanying text; Rowell v. Lindsey, 113 U.S. 97, 102 (1885) (infringement of a
combination invention patent is limited to mechanical equivalents which were known to be such at the time when the
patent was granted.). Cf. Mitchell v. Tilghman, 86 U.S. (19 Wall.) 287, 391 (1873) (Two things are not the same under
the patent law when one is in practice substantially better than the other ... [because] the second improvement is not
gained by the use of the same means or known mechanical equivalents.).
149
See, e.g., Miller v. Eagle Mfg. Co., 151 U.S. 186, 207 (1894); Boyd v. Janesville Hay Tool Co., 158 U.S. 260,
261, 267 (1895); Cimiotti Unhairing Co. v. Am. Fur Refining Co., 198 U.S. 399, 406 (1905); Contintental Paper Bag Co.
v. E. Paper Bag Co., 210 U.S. 405, 415 (1908); General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 369
(1938); Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 8 (1946).
150
Continental Paper Bag Co. v. E. Paper Bag Co., 210 U.S. 405, 414-15 (1908) (citing, inter alia, Kokomo Fence
Mach. Co. v. Kitselman, 189 U.S. 8 (1903), Cimiotti Unhairing Co v. Am. Fur Refining Co., 198 U.S. 399 (1905), and
Computing Scale Co. v. Automatic Scale Co., 204 U. S. 609 (1907)).
151
See supra note 70 and accompanying text.
152
304 U.S. 364 (1938).
153
Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245 (1928).
154
See id. at 256-57.
155
See 304 U.S. at 368 n.1 (a typical claim in the patent was drawn to filaments composed substantially of
tungsten and made up mainly of a number of comparatively large grains of such size and contour as to prevent substantial
sagging and off-setting during a normal or commercially useful life for such a lamp or other device.); id. at 375 (holding
such claims invalid).
156
See supra note 127 and accompanying text.
157
See 304 U.S. at 368.
23
 Congress requires of the applicant a distinct and specific statement of what he
claims to be new, and to be his invention. Patents, whether basic or for
improvements, must comply accurately and precisely with the statutory requirement
as to claims of invention or discovery. The limits of a patent must be known for the
protection of the patentee, the encouragement of the inventive genius of others, and
the assurance that the subject of the patent will be dedicated ultimately to the
public.158

The Court also noted that the patentee could not broaden the narrow improvement product
claims by using functional claiming language.159 The Court held that the limitation on functional
claiming adopted in Holland Furniture Co. applied both to claiming the entire scope of the invention
by its function and to more narrow functional claiming of the actual patentable improvement.160
Finally, the Court held that it could not preserve the validity of the claim by importing limitations
from the specification, because the description was silent as to the nature of the product, how it
distinguished the prior art, and what limits might exist in regard to products created with the
disclosed process.161

In Halliburton Oil Well Cementing Co. v. Walker,162 the Supreme Court also found indefinite
a claim for an improved apparatus to pump oil that used conveniently functional language at the
exact point of novelty.163 The invention resulted from Walkers recognition that acoustic shoulder
echo waves could better calculate the depth of the fluid surface in wells, using existing sound-
receiving equipment to measure distance. The number of shoulder echos would reflect known
distances, which were independent of the speed of the echo waves through the medium. The
improvement claimed by Walker added additional equipment (a mechanical acoustical resonator) to
a known machine for measuring echo waves, making the number of shoulder echos easier to
discern. But the claim was drafted broadly to describe the additional equipment in terms of its
function: means associated with said pressure responsive device for tuning said receiving means to

158
Id. at 368-69 (quoting Merill v. Yeomans, 94 U.S. (4 Otto) 568, 570 (1876)).
159
See id. at 371 (The claim uses indeterminate adjectives which describe the function of the grains to the
exclusion of any structural definition, and thus falls within the condemnation of the doctrine that a patentee may not
broaden his product claims by describing the product in terms of function.).
160
See id. (But the vice of a functional claim exists not only when a claim is 'wholly' functional, if that is ever
true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently
functional language at the exact point of novelty.) (citing Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245,
256-58 (1928)).
161
See id. at 373-75. Cf. Lowell v. Lewis, 15 F. Cas. 1018, 1020 (C.C.D. Mass. 1817) (No. 8,568) (Story, J.) (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 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.).
162
329 U.S. 1 (1946).
163
Id. at 8 (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938), and citing Rev. Stat.
4888, then codified as 35 U.S.C. 33 (1946)). Although the Court initially focused on the distinct claiming
requirement, it later suggested that the claims failed adequately to describe the alleged invention. 329 U.S. at 13.
Thus, the Court may also have suggested that the claims were invalid based on an inadequate written description or for
lack of enablement.
24
the frequency of echoes from the tubing collars of said tubing sections to clearly distinguish the
echoes from said couplings from each other.164

The Court first noted its precedents in Holland Furniture Co.165 and General Electric Co.,166
which had held such functional claims invalid and had refused to distinguish claims for
combinations of old elements from other product claims.167 The Court then noted that patentable
scope of the improvement was narrow, and that the patentee was therefore entitled to claim only a
relatively narrow range of equivalents as embodiments.168 The Court held that such functional
claims for improvement inventions would apply to both equivalent and non-equivalent technologies,
and described the problem with such claims as the preclusion of subsequent invention.

In this age of technological development there may be many other devices beyond
our present information or indeed our imagination which will perform that function
and yet fit these claims. And unless frightened from the course of experimentation
by broad functional claims like these, inventive genius may evolve many more
devices to accomplish the same purpose.... Yet if Walkers blanket claims be valid,
no device to clarify echo waves, now known or hereafter invented, whether the
device be an actual equivalent of Walkers ingredient or not, could be used in a
combination such as this, during the life of Walkers patent.169

Finally, the Court reiterated that a proper scope for such improvement claims was limited to known
substitutes, and thus held the broad functional claim invalid.170

Thus, from 1870 until just before 1950, the Supreme Court had consistently held: that the
1870 Patent Acts distinct claiming requirement limited patent protection to the scope of application
of construed claim language and that failure to claim disclosed patentable subject matter resulted in
an implied-in-law disclaimer of any broader protection; that patentees could broadly claim
pioneering inventions by using functional claiming language, but were subject to the reverse
doctrine of equivalents and to enablement and definiteness limits on the scope of those claims; and
that patents for improvement inventions were limited to known equivalents and could not employ

164
Id. at 8-9 (quoting Claim 1 of the patent).
165
Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245 (1928).
166
General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938).
167
See 329 U.S. at 9 (citing Holland Furniture Co., 277 U.S. at 256-57, and General Elec. Co., 304 U.S. at 371).
168
See id. at 8-12 (citing, inter alia, Gill v. Wells, 89 U.S. (22 Wall.) 1, 25-26 (1874), Fuller v. Yentzer, 94 U.S. (4
Otto) 288, 298-98 (1876), Merill v. Yeomans, 94 U.S. (4 Otto) 568, 570 (1876), Lincoln Engg Co. v. Stewart-Warner
Corp., 303 U.S. 545, 549-51 (1938), and General Elec. Co., 330 U.S. at 368-69)).
169
Id. at 12 (citations omitted).
170
See id. at 13 (Had Walker accurately described the machine he claims to have invented, he would have had no
such broad rights to bar the use of all devices now or hereafter known which could accent waves. For had he accurately
described the [invention] ... and sued for infringement, charging the use of something else used in combination ... the
alleged infringer could have prevailed if the substituted device (1) performed a substantially different function; (2) was
not known at the date of Walker's patent as a proper substitute for the resonator; or (3) had been actually invented after
the date of the patent.) (citing Fuller, 94 U.S. (4 Otto) at 296, 297, and Gill, 89 U.S. (22 Wall.) at 29).
25
functional claiming language to describe their novel features. These limits on claim scope and
claiming language prevented improvement invention patents from treating as equivalents to claimed
embodiments all later-arising, patentable or unpatentable substituted technologies. These limits also
prevented pioneering invention patents from claiming or having their claims apply to later-arising,
substituted technologies that the inventor had not invented, disclosed, or enabled. The subsequent
creation of the doctrine of equivalents in Graver Tank without intervening legislation is truly
remarkable in light of this history.

B. Creation of the Modern Doctrine of Equivalents in Graver Tank

1. Limiting Patent Protection to Construed Claims in Graver Tank I

In Graver Tank & Manufacturing Co. v. Linde Air Products Co.,171 the Supreme Court
invalidated product and process claims that had applied to too many inoperative embodiments. The
patent addressed an improved method of flux welding to create stronger and faster electric welds of
metal used in water pipes, ship-building, and other industries. The patent also claimed improved
flux compounds using different types of metal silicates that were suited for use in this
method.172 The District Court had held four relatively narrow flux claims drawn specifically to
alkaline earth metal silicates to be valid and infringed by the defendants use of manganese silicates
in its flux compound (notwithstanding scientific understanding that manganese is not an alkaline
earth metal), and had invalidated other flux claims and all of the process claims. The Court of
Appeals for the Seventh Circuit in two separate judgments had affirmed the validity and
infringement of the four alkaline earth metal silicates flux claims, but reversed the District Courts
holding of invalidity of the remaining claims.173

Justice Jackson, writing for a unanimous Court, first upheld the validity and infringement
findings for the four claims for alkaline earth metal silicates fluxes (based on exclusion of
inoperative embodiments from those claims), holding that the underlying factual determinations
were not clearly erroneous.174 The Court then reinstated the trial judges determination that two of
the broad composition claims for fluxes were invalid. The dispute centered on whether to interpret
the terms silicates and metallic silicates narrowly by incorporating limitations from the
specification, in order to restrict these terms to the nine metal silicates that had been previously
shown to be operative (and thus to exclude inoperative embodiments).175 The Court refused to
import the limitations from the specification and reinstated the findings of invalidity, focusing on the
distinct claiming requirement of the 1870 Patent Act.176 Significantly, in doing so, the Court
reiterated that patent protection was limited to the scope of valid claims.

171
336 U.S. 271 (1949).
172
See id. at 272-74. A cogent discussion of the nature of the invention, of its commercial success, and of its
importance to the Allied war effort during World War II is provided in Janicke, supra note 23, at 9-74.
173
See 336 U.S. at 273, 276.
174
See id. at 273-76.
175
See id. at 276-77.
176
See id. at 277.
26
 It would accomplish little to require that claims be separately written if they are not
to be separately read. While vain repetition is no more to be encouraged in patents
than in other documents, and claims like other statements may incorporate other
matter by reference, their text must be sufficient to particularly point out and
distinctly claim an identifiable invention or discovery. We have frequently held that
it is the claim which measures the grant to the patentee.... While the cases more often
have dealt with efforts to resort to specifications to expand claims, it is clear that the
latter fail equally to perform their function as a measure of the grant when they
overclaim the invention. When they do so to the point of invalidity and are free from
ambiguity which might justify resort to the specifications, we agree with the District
Court that they are not to be saved because the latter are less inclusive.177

The Court also upheld the District Courts factual findings that the patent taught welding
procedures that were identical to the prior art except for use of the novel flux compositions, and that
the patent therefore was not for a pioneering new process as had been suggested. The Court thus
upheld the District Courts invalidation of all of the process claims, because they were not limited to
use of these compositions and therefore improperly applied to prior art processes.178 The Court also
rejected arguments that the patent was unenforceable because it had been misused to extend the
patentees monopoly to unpatentable materials.179

Had any doubt existed that the Supreme Court believed the 1870 Patent Act limited patent
protection to the scope of application of valid, construed claim language, Graver I would have
extinguished it. Nevertheless, one year later in the very same case, Justice Jackson abolished that
limit. In doing so, the Court established the modern doctrine of equivalents.

2. Extending Patent Protection Beyond Construed Claims Graver Tank II

On rehearing in Graver Tank & Manufacturing Co. v. Linde Air Products Co.,180 the Court
revisited the question of infringement of the four alkaline earth metal silicates flux claims that it had
previously held valid and infringed. Significantly, the use of manganese in fluxes was known from a
prior art patent to be a substitute for alkaline earth metals in fluxes, and the defendants manganese
177
Id.at 276-77 (citing Milcor Steel Co. v. George A. Fuller Co., 316 U.S. 143, 145 (1942); General Elec. Co. v.
Wabash Appliance Corp., 304 U.S. 364, 369, 373-74 (1938); Altoona Publix Theatres v. Am. Tri-Ergon Corp., 294 U.S.
477, 487 (1935); Cimiotti Unhairing Co. v. American Fur Refining Co., 198 U.S. 399, 410 (1905); and McClain v.
Ortmayer, 141 U.S. 419, 424-25 (1891)) (emphasis added). See Janicke, supra note 23, at 87-88 (discussing the
inoperative scope of the composition claims).
178
See Graver Tank, 336 U.S. at 277-79. The process claims made no specific reference to the fluxes used, were
overbroad in their application to inoperable fluxes (similarly to the invalidated composition claims), or erroneously
imported an element that was not part of the process actually invented. See id.; Janicke, supra note 23, at 86 & n. 316
(discussing the District Courts determination that erroneous ideas [we]re incorporated in the specification and noting
that the modern basis for invalidation would be inadequate support in the specification) (citation omitted); id. at 87-88
(discussing the overbreadth of the claims, which included use of all silicates).
179
See Graver Tank, 336 U.S. at 279-80.
180
339 U.S. 605 (1950).
27
fluxes were within the scope of application of the flux claims that the Court had earlier held
overbroad and invalid.181 The Court apparently believed and absent a non-literal construction of
the claim terms alkaline earth metals relevant precedents required a holding that the alkaline
earth metal silicates flux claims did not directly apply to the manganese fluxes.182 The Court likely
strove to extend protection to reach the manganese silicates, because the broader but invalid flux
claims would have applied to manganese and the patentee thus had not intended to disclaim
manganese silicates from the scope of the patent.

Because silicate fluxes that substituted manganese for alkaline earth metals were within the
prior art, moreover, claims that expressly included manganese (or divisional applications that
specifically claimed manganese) likely would have been held invalid as anticipated or obvious.183
The invention thus comprised and the alkaline earth metal silicates flux claims were drawn to a
relatively narrow improvement invention. Under applicable precedents, the manganese fluxes
should not have been considered equivalents of these claims, even though manganese was a known
substitute for alkaline earth metals184 and even though the manganese fluxes perform[ed]
substantially the same function [as the plaintiffs invention] in substantially the same way to obtain
the same result.185

In order to uphold the judgment of infringement, the Court was required to extend patent
protection beyond the scope of application of the construed claim language and to ignore almost one
hundred and fifty years of patent law. Specifically, the Court held that the manganese fluxes non-
literally infringed the patent under the doctrine of equivalents.

It is difficult to conceive of a case more appropriate for application of the doctrine of

equivalents. [T]he trial court could properly infer that the accused flux is the

181
Lincoln had petitioned for rehearing in reliance on the Courts dicta that the specification should not be used to
expand claim scope, arguing that the claims for alkaline earth metal silicates fluxes could not be infringed by the
manganese fluxes. See Graver Tank, 336 U.S. at 276. Lincoln implicitly argued that infringement was inconsistent with
the 1870 Patent Act, because a finding of infringement would exclude the public from an additional penumbral area to
which the patent owner in law has no title. Janicke, supra note 23, at 115-16 (quoting Petr Opening Rehg Br.).
Lincoln did not mention the prior art until its reply, arguing that it had a right to use the prior art and implying that the
patented claims could not encompass the prior art as equivalents. See id. at 116. Following the grant of rehearing,
Lincoln broadly attacked the validity of the doctrine of equivalents. In contrast, Linde argued that application of the
doctrine was valid because manganese was a known substitute. See id. at 118.
182
The Court most likely thought the alkaline earth metal silicates flux claims excluded manganese fluxes, given
the Courts prior holding precluding the silicates and metallic silicates flux claims from importing limitations to operative
embodiments, its dicta prohibiting expansion of claim scope by reference to the specification, and its determination that
the alkaline earth metal silicates flux claims were valid because they excluded inoperative embodiments. See supra notes
174-77 and accompanying text. Including manganese silicates in the alkaline earth metal silicates flux claims also would
have conflicted with the literal meaning of the claim and with the long history of cases holding that the only way to
reclaim patentable scope from invalid claims was by resort to reissue. See supra notes 72-77 and accompanying text.
183
See Graver Tank, 339 U.S. at 618 (Douglas J. dissenting) (Moreover, a doctrine which is said to protect against
practicing a fraud on a patent is used to extend a patent to a composition which could not have been patented. For
manganese silicate had been covered by a prior patent, now expired.); Janicke, supra note 23, at 121 & n.444.
184
See supra notes 137-51 and accompanying text.
185
Graver Tank, 339 U.S. at 608 (quoting Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42 (1929)).
28
 result of imitation rather than experimentation or invention. Though infringement
was not literal, the changes which avoid literal infringement are colorable only. We
conclude that the trial court's judgment of infringement respecting the four flux
claims was proper.186

In upholding the District Courts infringement ruling, the Court did not suggest that it was
broadly construing the language of the alkaline earth metal claim so as to directly apply to
manganese. Rather, the Court reached its decision by mischaracterizing the origins and nature of the
doctrine of equivalents and by making highly questionable fairness arguments. The Court stated that
the doctrine of equivalents: (1) had evolved in response to th[e] experience of unscrupulous
copy[ing] and piracy; (2) had as its essence ... that one may not practice a fraud upon the
patent; (3) originated in Winans v. Denmead187 and had been consistently applied by the Court and
lower courts; and (4) was available [t]o temper unsparing logic and prevent an infringer from
stealing the benefit of the invention.188 In fact, the doctrine: (1) had evolved as a necessary
construct for determining the scope of patent protection before and after requiring use of formal
claims; (2) had as its essence a required judicial judgment of the level of generality of the patented
principle of invention and (after claims were required) that permissibly had been claimed; (3)
originated before Winans, which reinforced that the doctrine was limited to the scope of application
of construed claims; and (4) was available only within the scope of application of construed claims,
in order to provide notice to the public and to prevent fraud on the Patent Office, and required the
patentee to seek a timely reissued patent in order to protect any broader scope of a disclosed
patentable invention that had not validly been claimed.189

The Court purported to justify its holding by arguing that the patent system and society
would be better off by ignoring the claim limitations selected and relied on by the patentee and the
public.

But courts have also recognized that to permit imitation of a patented invention
which does not copy every literal detail would be to convert the protection of the
patent grant into a hollow and useless thing. Such a limitation would leave room for
indeed encourage the unscrupulous copyist to make unimportant and
insubstantial changes and substitutions in the patent which, although adding nothing,
would be enough to take the copied matter outside the claim, and hence outside the
reach of law. One who seeks to pirate an invention, like one who seeks to pirate a
copyrighted book or play, may be expected to introduce minor variations to conceal
and shelter the piracy. Outright and forthright duplication is a dull and very rare type

186
Id. at 612.
187
56 U.S. (15 How.) 330 (1853).
188
Graver Tank, 339 U.S. at 607-08 (quoting Royal Typewriter Co. v. Remington Rand, Inc., 168 F.2d 691, 692 (2d
Cir. 1948)).
189
See supra, passim. Cf. Warner-Jenkinson, 520 U.S. 17, 34 (1997) (although Graver Tank refers to the
prevention of copying and piracy when describing the benefits of the doctrine of equivalents[, t]hat the doctrine produces
such benefits, however, does not mean that its application is limited only to cases where those particular benefits are
obtained.).
29
 of infringement. To prohibit no other would place the inventor at the mercy of
verbalism and would be subordinating form to substance. It would deprive him of
the benefit of his invention and would foster concealment rather than disclosure of
inventions, which is one of the primary purposes of the patent system.190

The Courts justification for the modern doctrine was contradicted by the earlier history of
American patent law, in which the Court and Congress had progressively required distinct claims
and limited the protection to the scope of application of a fair construction of those claims. As the
Court had stated seventy-four years earlier:

The developed and improved condition of the patent law, and of the principles which
govern the exclusive rights conferred by it, leave no excuse for ambiguous language
or vague descriptions. The public should not be deprived of rights supposed to
belong to it, without being clearly told what it is that limits these rights.... It seems to
us that nothing can be more just and fair, both to the patentee and to the public, than
that the former should understand, and correctly describe, just what he has invented,
and for what he claims a patent.191

Nor could the claim limitations at issue have placed the inventor at the mercy of verbalism or have
subordinat[ed] form to substance.192 Manganese was foreseeably excluded from a literal
interpretation of the alkaline earth metal claim, particularly as it was known to be a substitute for
alkaline earth metals and manganese fluxes had been generically claimed in the broader, invalid flux
claims. Although the court treated the known ability to substitute manganese for alkaline earth
metals in fluxes as a minor and insubstantial change,193 the patented invention was a narrow
improvement. Manganese thus should not have been viewed as an equivalent substitute for alkaline
earth metals (in the limitation of the relevant flux claims).194 The Court, however, resisted enforcing
the implied-in-law disclaimer required by the Courts earlier decision holding invalid the broader
flux claims, as it would have denied the patentee any relief.195

190
Graver Tank, 339 U.S. at 607.
191
Merill v. Yeomans, 94 U.S. 568 (4 Otto) 568, 573-74 (1876) (emphasis added).
192
Graver Tank, 339 U.S. at 607. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 741
(2002) (allowing rebuttal of prosecution history estoppel when the patentee could not reasonably be expected to have
described the insubstantial substitute.).
193
Graver Tank, 339 U.S. at 607. See id. at 612 (It is difficult to conceive of a case more appropriate for
application of the doctrine of equivalents. The disclosures of the prior art made clear that manganese silicate was a
useful ingredient in welding compositions. Specialists familiar with the problems of welding compositions understood
that manganese was equivalent to and could be substituted for magnesium in the composition of the patented flux and
their observations were confirmed by the literature of chemistry.).
194
See supra notes 183-85 and accompanying text. Because the Court focused on the known substitution of
manganese, Graver Tank provided no support for the Courts subsequent extension of the doctrine of equivalents to later-
arising technologies. See Warner-Jenkinson v. Hilton Davis Chem. Co., 520 U.S. 17, 37 (1997). This is true
notwithstanding the Courts additional holding that equivalency is a factual determination subject to clearly erroneous
appellate review, Graver Tank, 339 U.S. at 609-10.
195
Cf. Janicke, supra note 23, at 98-99 (noting that the District Court may have been influenced by the fact that no
protection at all would have resulted for a truly important albeit narrow improvement in welding technology).
30
 Carried away by a mistaken belief that the defendant had pirated a broader principle of
invention (which would not have been patentable), the Court created a radical new patent law
doctrine.196 Justice Jacksons opinion for the Court is perverse, given that his prior unanimous
opinion in the same case took great care to discuss the statute and the relevant precedents. The later
opinion did not even acknowledge (much less respond to) Justice Blacks trenchant dissent, which
argued that statutory requirements precluded a finding of infringement and that the Courts prior
precedents required treating any disclosed but invalidly claimed subject matter as dedicated to the
public domain.197 Nor did the Court acknowledge (or respond to) Justice Douglass argument in
dissent that the Courts infringement holding withdrew the disclosed but unclaimed subject matter
from the public domain.198

Just prior to the 1952 Patent Act, the Supreme Court in Graver Tank had created a radically
new, modern doctrine of equivalents that expanded patent protection beyond the scope of application
of construed claim language in order to protect the value of patents from substituted technologies.
The Court sought to justify this doctrine as providing a fair scope of protection for patentees. The
Court did not attempt to harmonize its new doctrine with prior its cases interpreting the distinct
claiming or written specification requirements. Rather, the Court articulated the modern doctrine
without referring to the Patent Act and without responding to arguments that the doctrine conflicted
with the Patent Act. Had Congress two years later intended to ratify the Courts Graver Tank
decision and the modern doctrine of equivalents it articulated, Congress at least would have had to
acknowledge the existence of that decision.199
196
See id. at 119-26; Graver Tank, 339 U.S. at 613 (Black, J., dissenting) (I heartily agree with the Court that
fraud is bad, piracy is evil, and stealing is reprehensible. But in this case, where petitioners are not charged with any
such malevolence, these lofty principles do not justify the Court's sterilization of Acts of Congress and prior decisions,
none of which are even mentioned in today's opinion.). Cf. supra note 31 and accompanying text; Wilson Sporting
Good Co. v. David Geoffrey & Assocs., 904 F.2d 677, 684 (Fed. Cir. 1990) ([A] patentee should not be able to obtain,
under the doctrine of equivalents, coverage which he could not lawfully have obtained from the PTO by literal claims.
The doctrine of equivalents exists to prevent a fraud on a patent ... not to give a patentee something which he could not
lawfully have obtained from the PTO had he tried.) (emphasis omitted).
197
See Graver Tank, 339 U.S. at 613-18 (Black J., dissenting) (discussing conflicts with: (1) the claiming
requirement, as articulated in the Courts prior decision in the case; (2) the principle that disclosed but unclaimed scope is
dedicated to the public, citing, inter alia, Miller v. Bridgeport Brass Co., 104 U.S. (14 Otto) 350 (1881); (3) the principle
that claims cannot import from specifications broader patentable scope than their language can support, citing White v.
Dunbar, 119 U.S. 47 (1886); (4) the reissue provision, and the limitations on reclaiming disclaimed scope that it imposes,
citing Miller; (5) the examination requirement, particularly for reissue patents, which relieved the judiciary from having
to make difficult determinations of patentable scope, citing Merill v. Yeomans, 94 U.S. (4 Otto) 568 (1874), and Keystone
Bridge Co. v. Phoenix Iron Co., 95 U.S. (5 Otto) 274 (1876); and (6) protection against retroactive infringement suits
and judicial expansion of a monopoly sphere beyond that which a patent expressly authorizes, citing Milcor Steel Co. v.
George A. Fuller Co., 316 U.S. 143 (1942)). See also Janicke, supra note 23, at 118, 122-24 (discussing the petitioners
arguments in its rehearing merits brief).
198
See 339 U.S. at 618 (Douglas, J., dissenting). See also Janicke, supra note 23 at 126 (discussing the petitioners
arguments in its rehearing petition reply brief).
199
See supra note 39; 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); supra note 37. Cf. 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
31
C. Lack of Approval of the Modern Doctrine of Equivalents in the 1952 Patent Act

In the 1952 Patent Act, Congress changed the language of the distinct claiming requirement
to the gerund verb form.200 Congress also codified a direct infringement right,201 codified
contributory infringement and inducement rights (thereby reversing the Supreme Courts
contributory liability cases),202 expressly authorized patent protection for processes (thereby
ratifying the Courts earlier approval of functional method claims),203 and expressly authorized use
of means-plus-function claiming language (thereby reversing the Courts earlier holding in
Halliburton Oil Well Cementing Co. v. Walker204 that prevented use of such claiming language to
define the novelty of improvement inventions).205

Nothing in these changes or in the legislative history remotely supports the idea that
Congress codified or impliedly ratified Graver Tanks extension of patent protection beyond the
scope of application of construed claim language. Congress simply did not address Graver Tank,
and it barely mentioned the doctrines of equivalents.206 When Congress intended to revise the 1870
Patent Act (or cases interpreting it), it said so.207 Nor did Congress extend the doctrine of
equivalents to later-arising technologies. In authorizing use of means-plus-function claiming
language, however, Congress disturbed the settled case law limiting the scope and application of
claims. Congress thus may have authorized (without requiring) the application of claims employing
such functional language to later-arising equivalent technologies.208 But Congress failed to adopt
suggested legislative language that expressly would have authorized this result.209 At most,
Congress left the courts free to determine the extent to which inventors may claim the future.

as with an intent to leave existing law ambiguous); Robert Lutz, Evolution of Claims of U.S. Patents (Part I), 20 J. PAT.
OFF. SOC. 134, 156 (1938) (Congress ... has inserted in the new act some provisions which codify the common law of
patents as it existed prior to the recent apostasy from the benevolent policy of the Constitution.).
200
See Act of July 19, 1952, ch. 950, Pub. L. No. 82-593, ch. 950, 66 Stat. 798-99 (currently codified at 35 U.S.C.
112, 2 (2000)); supra note 34 and accompanying text.
201
See id., 66 Stat. 811 (currently codified at 35 U.S.C. 271(a) (2000)); supra notes 34-35 and accompanying
text.
202
See id., 66 Stat. 811 (currently codified at 35 U.S.C. 271(b) & (c) (2000)); supra note 36 and accompanying
text.
203
See id., 66 Stat. 794 (currently codified at 35 U.S.C. 101 (2000)) (Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new and useful improvement therof,); id.
(currently codified at 35 U.S.C. 100 (2000)) (defining process to include method); supra notes 57-66 and
accompanying text.
204
329 U.S. 1 (1946).
205
See id., 66 Stat. 799 (adopting 35 U.S.C. 112, 3, currently codified at 35 U.S.C. 112 6 (2000)); supra
notes 37, 162-70 and accompanying text.
206
See supra note 24 and accompanying text.
207
See supra notes 36-40 and accompanying text.
208
See supra note 43 and accompanying text. But see supra note 38 and accompanying text.
209
See Hearings Before Subcommittee No. 3 of the Committee on the Judiciary, House of Representatives on H.R.
3760, A bill to Revise and Codify the Laws Relating to Patents and the Patent Office, and to Enact Into Law Title 35 of
the United States Code Entitled Patents, Serial No. 9, , 82d Cong., 1st Sess., June 13, 14, and 15, 1951, at 22-26, 30-33.
32
 1. Purposes of the 1952 Patent Act

The 1952 Patent Act was intended to recodify, clarify, and revise the 1870 Patent Acts
provisions.210 Prior to the 1952 codification, the 1870 Patent Act, as recodified without revision in
1874 and as subsequently amended, formed the basis of applicable patent law.211 The bill also was
intended to make changes to the laws that had been previously suggested to Congress.212

Although the principle purpose of the bill is the codification of title 35, United States
Code and involves simplification and clarification of language and arrangement, and
elimination of obsolete and redundant provisions there are a number of changes in
substantive statutory law. The major changes or innovations in the title consist of
incorporating a requirement for invention in 103 and the judicial doctrine of
contributory infringement in 271.213

By recodifying the law generally and by making specific changes to ratify or reverse prior
Supreme Court interpretations, Congress did not intend to ratify all prior judicial interpretations.214
In particular, Congress should not be understood to have codified or ratified recent and controversial
decisions. This is particularly true given that Congress studied the Act for many years before
settling on final language, and [a]s a result of this thorough discussion ... the language of the act
was considerably improved and the more controversial provisions were removed.215

2. Evidence That Congress Did Not Impliedly Ratify the Modern Doctrine of
Equivalents

a. Contemporary Understanding of the Controversial Nature of the Graver Tank

Decision

The leading patent journal had published an article the year before enactment of the 1952
Patent Act that identified Graver Tank as a radical departure from prior law, by expanding the
infringement right and by contravening the distinct claiming requirement of the 1870 Patent Act.

210
See H.R. REP. NO. 82-1923, at 3 (1952) (accompanying H.R. 7794) (the purpose of the bill is to revise and
codify the laws relating to patents and enact into law title 35 of the United States Code entitled patents).
211
See id. at 2 (The present laws consists of about 60 sections of the Revised Statutes of 1874, together with a
large number of acts of Congress passed since that date revising various sections ... or making new enactments not
related to any section of the Revised Statutes. Since the sections of the Revised Statutes relating to patents were merely a
compilation of the act of July 8, 1870, our present patent law is essentially the act of 1870 with subsequent amendatory
and supplemental enactments.).
212
See id. (The preliminary draft ... included a collection of a large number of proposed changes in the law which
had come to the attention of Congress during the past quarter-century in the form of bills or otherwise.).
213
Id. at 5. See supra note 36 and accompanying text.
214
See supra notes 39, 199 and accompanying text.
215
Karl B. Lutz, The New 1952 Patent Statute, 35 J. PAT. & TRADEMARK OFF. SOCY 155, 156 (1953).
33
 The decision would seem to have diminished any difference in meaning intended by
Congress when it changed the language of the Statute to require an inventor to
distinctly claim his invention. It may be argued that the decision in the Graver v.
Linde case with respect to the Doctrine of Equivalents is in conflict with other recent
rulings of the Supreme Court to the effect that: The claim is the measure of the
grant.... The application of the Doctrine does not involve going outside of the claim
to find supplements or limitations. Moreover, it has application only when a valid
claim is found and a court is called upon to determine whether an accused structure
comes within the scope thereof.216

It would be difficult to find a clearer summary of the nature of the historic doctrine of
equivalents and of the unauthorized revision of that doctrine articulated by the Supreme Court in
Graver Tank. Given publication of this statement in the leading trade journal in an area of highly
specialized law, Congress must have been aware of the radical nature of the Graver Tank decision
(to the extent that Congress is held to be constructively aware of anything when passing legislation).
But the legislative history of the 1952 Patent Act nowhere expresses an intent to adopt or to approve
of that holding.

Under these circumstances, Congress should not be understood to have ratified Graver Tank
or to have frozen the judiciarys ability to repeal the modern doctrine of equivalents.217 The
standards for implied ratification218 must be invalid if Congress can impliedly ratify a single, highly
controversial judicial decision that conflicts with pre-existing statutory requirements and long-
standing judicial interpretations, without ever mentioning the decision and having intended to avoid
any controversial decisions. The modern doctrine of equivalents was neither codified nor impliedly
ratified by Congress in the 1952 Patent Act. The modern doctrine thus is not authorized by and
conflicts with the statute.

b. Supporting Evidence From Amendments To Claiming, Infringement, and Other

Provisions

In the 1952 Patent Act, Congress separated the written specification requirements from the
distinct claiming requirement when it codified new section 112, paragraph 3.219 Paragraph 3 was
intended to reverse the Supreme Courts Halliburton decision, which prohibited the use of functional
claim language in improvement patents.220 Congress did not intend any significant change to the

216
Swanson, supra note 24, at 33.
217
See supra note 43 and accompanying text.
218
See supra notes 39, 199 and accompanying text.
219
As enacted, the specification requirements were contained in paragraph 1, the distinct claiming requirement was
contained in paragraph 2, and the means-plus-function authorization language was contained in paragraph 3. Act of July
19, 1952, Pub. L. No. 82-593, ch. 950, 66 Stat. 792, 798-99 (currently codified at 35 U.S.C. 112, 1, 2, 6).
Paragraph 3 later became paragraph 6 when, in order to implement the Patent Cooperation Treaty, Congress added three
paragraphs following paragraph 2 authorizing dependent and multiply dependent claims, and the manner in which
those claims were to be written, respectively. See Act of Nov. 4, 1975, Pub. L. No. 94-131, 7, 89 Stat. 691.
220
Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 8-9 (1946). See Hantman, Patent Infringement,
34
written specification or distinct claiming requirements of the 1870 Patent Act221 when separating
these provisions and revising their language.222 The legislative history confirms that no relevant
substantive amendments were intended by the changes to the language of Section 112.223 The
changes were intended to emphasize the distinct claiming requirement, to eliminate separate
standards for disclosing machine inventions (making a corresponding change to the best mode
requirement), and to expressly authorize functional claiming language.224

supra note 24, at 480-82.

221
Section 26 of the 1870 Patent Act had been codified as Revised Statutes 4888, and was later recodified in
1946 as 35 U.S.C. 33 (1946). This section had been amended in 1915 and 1930 had made minor amendments to the
language that eliminated the requirement for two witnesses to the applicants signature and that implemented the
requirements of the Townsend-Purnell Plant Patent Act of 1930, by requiring only as complete a disclosure as is
reasonably possible in a plant patent. See Act of March 3, 1915, ch. 94, 1, 38 Stat. 958; Act of May 23, 1930, ch. 312,
2, 46 Stat. 376; Act of May 23, 1930, Pub. L. No. 71-245, ch. 312, 46 Stat. 376, amended by Act of Sept. 3, 1954, Pub.
L. No. 83-775, 68 Stat. 1190 (currently codified at 35 U.S.C. 161-64 (2000)).
222
The formal requirements for the specification also were separated from the substantive provisions. The formal
requirements were placed in Section 111. Act of July 19, 1952, ch. 950, Pub. L. No. 82-593, 66 Stat. 798 (currently
codified at 35 U.S.C. 111 (2000)). The substantive provisions were placed in Section 112. Paragraphs 1 and 2 of
Section 112 reflected only minor wording changes to the relevant language of then-existing section 33 of the Patent Act.
The revised language: (1) eliminated the terms constructing, compounding from the requirement for an enabling
description of the manner and process of making and using it; (2) substituted in the claiming requirement the terms the
subject matter which the applicant regards as his invention for the part, improvement, or combination which he claims
as his invention or discovery; and (3) added to the introduction of the newly adopted 2 the additional words The
specification shall conclude with one or more claims, making a corresponding change to put the verbs point and
claim in their gerund forms. Given prior recognition that the distinct claiming provision required both identification of
what the applicant regarded as the improvement over prior art and a clear and distinct formal statement thereof, no
substantive change should be inferred from these linguistic changes. See William R. Woodward, Definiteness and
Particularity in Patent Claims, 46 MICH. L. REV. 755, 758-59 (1948); 3 CHISUM ON PATENTS, supra note 25, at 8.02[1].
See also 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))
223
When discussing significant changes made by the Act, both the House and Senate reports of the respective
Judiciary Committees omit mention of any change to the written description and distinct claiming requirements or to the
newly created section 112 that incorporated these provisions. See S. REP. NO. 82-1979, at 7 (1952) (accompanying H.R.
7794); H.R. REP. NO. 82-1923, at 6 (1952) (accompanying H.R. 7794). In contrast, the summary describes the changes
made to the language of the novelty provisions of Section 102, to the creation of the obviousness condition in Section
103, and to the reissue and disclaimer provisions of Sections 251-253. See S. REP. NO. 82-1979, at 5-7 (1952); H.R. REP.
NO. 82-1923, at 6-8 (1952).
224
See S. REP. NO. 82-1979, at 19 (1952) (accompanying H.R. 7794) (noting five changes to the language of 35
U.S.C. 33 (1946): (1) elimination of the signature requirement, which had been placed in Section 111; (2) removal of
the plant patent sentence to a different chapter; (3) omission of the clause describing a separate disclosure standard for
machines (which was still based on explain[ing] the principle thereof, and the best mode in which he has contemplated
applying that principle, so as to distinguish it from other inventions) and making the best mode provision applicable to
all inventions; (4) separating the claim requirement language into a separate paragraph to emphasize the distinction
between the description and the claim or definition, and the language is modified; and (5) a new paragraph relating to
functional claiming is added.); H.R. REP. NO. 82-1923, at 6 (1952) (accompanying H.R. 7794) (using identical
language).
35
 The reversal of the Supreme Courts Halliburton decision to authorize functional claiming
language, moreover, was not considered a major change or innovation. It was widely recognized that
claims were not limited to enumerated embodiments and that use of functional claiming language
was a common method of claiming equivalents to unenumerated embodiments.225 Authorization of
such language would not necessarily authorize overly broad claims using such functional language,
because Congress was careful to preserve the pre-existing limits on overbroad claiming that would
extend patent protection to all processes for performing a function.226

There are only two references in the entire legislative history to the doctrine of equivalents,
and both relate to the new means-plus-function claiming provision. The first was a statement by a
Department of Justice representative who helped to draft the legislation, opposing the means-plus-
function language on the grounds that Congress had not clearly identified the scope of the doctrine
of equivalents.227 In this context, however, the reference to the doctrine of equivalents meant only
that Congress had not clearly identified the scope of embodiments that could validly be claimed
using such functional language. Congress apparently intended to leave to further judicial
interpretation the limits on later-arising equivalents that could validly be claimed using functional
language.228

Similarly, the chief sponsor of the bill in the House, Congressman Joseph Bryson of South
Carolina, suggested in a speech given to the Philadelphia Patent Law Association and printed in
the Congressional Record as an extension of remarks that the authorization for functional claiming
also expressed an intent to impliedly recognize the doctrine of equivalents.229 In this context, the
statement again suggests recognition of the scope of equivalents that could be validly be claimed
using the broad functional claiming language that the provision would authorize. This interpretation

225
See supra note 223 and accompanying text; Lutz, supra note 216, at 161 (It is generally agreed both here and
in other countries, that an inventor is entitled to a greater field of protection than the specific thing illustrated in his
patent. One of the time-honored ways of doing this is to claim an element of the device by its function, i.e. what it
does. In recent years some courts have been overly-critical of these functional statements, and one section of the new
law provides that a claim shall not be held invalid on the sole grounds that it contains a functional statement.) (footnote
omitted).
226
See Patent Law Codification and Revision: Hearings on H.R. 3760 Before Subcomm. No. 3 of the House
Comm. on the Judiciary, 82d Cong., 1st Sess. 45 (1951) (Section 112 in the last paragraph recognizes the validity of
combination claims wherein the novelty is expressed in functional terms and while offsetting the much criticized theory
of the Halliburton case is advisedly drafted so as not to extend to the point of permitting single means claims.). Cf.
supra notes 58-66, 152-69 and accompanying text.
227
See Patent Law Codification and Revision: Hearings on H.R. 3760 Before Subcomm. No. 3 of the House
Comm. on the Judiciary, 82d Cong., 1st Sess. 95 (1951) (the provision inroduces into the statute for the first time
the controversial doctrine of equivalents without defining its scope.).
228
See, e.g., Federico, supra note 40, at 186-87.
229
See 98 CONG. REC. A 415, 416 (Jan. 28, 1952) (the provision for functional claiming will permit
combination claims to be expressed functionally at the point of novelty. This provision in reality will give statutory
sanction to combination claiming as it was understood before the Halliburton decision . This has been strongly
recommended by the patent bar and appears to us logically necessary if combination claiming is to be recognized as
acceptable. This provision also gives recognition to the doctrine of equivalents.).
36
is reinforced by the fact that the entire legislative record of this provision makes no mention of
Graver Tank.

The means-plus-function claiming provision thus should not be understood to have ratified
the modern doctrine of equivalents. It would be perverse to infer a Congressional intent to provide
or authorize protection beyond the scope of application of construed claim language by reinforcing
the distinct claiming requirement, by adopting a provision designed to expand the scope of
protection that could validly be claimed (but which carefully limited that scope), and by expressly
authorizing particular types of claims. Rather, it is immediately seen that the statutory means
claiming system has absolutely nothing to do with the doctrine of equivalents.230

Congress also did not intend to expand patent protection beyond the scope of application of
construed claim language by expressly authorizing the patentability of methods (as processes) in
new Sections 100 and 101.231 Although the Court had disapproved of method claims under the 1836
Patent Act, it had approved of method claims under the 1870 Patent Act since 1876.232 Congress
sought finally to put the matter to rest by using explicit statutory language. Nothing in the
legislative history of these sections suggests a legislative intent to expand patent protection beyond
the construed scope of application of method claims. Rather, Congress intended only substitute the
term process for the archaic term art in the section defining patentable subject matter, and added
a definition of processes to include methods.233

Congress also did not impliedly ratify the modern doctrine of equivalents when codifying the
direct infringement right or when making other changes to the Patent Act. New section 271(a) was
230
Harold C. Wegner, The Disclosure Requirements of the 1952 Patent Act: Looking Back and a New Statute for
the Next Fifty Years, 37 AKRON L. REV. 243, 243 (2004). See id. (This determination therefore has absolutely nothing
to do with the Festo-basd inquiry on limitations to expansion of protection beyond the literal scope of the claim.).
231
See Act of July 19, 1952, ch. 950, Pub. L. No. 82-593, 66 Stat. 797 (currently codified at 35 U.S.C. 100,
101 (2000)).
232
See supra notes 46, 57 and accompanying text.
233
See Act of July 8, 1870, 24, 16 Stat. 200 (That any person who has invented or discovered any new and
useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof,); Act of
Apr. 10, 1790, 1, 1 Stat. 109 (hath or have invented or discovered any useful art, manufacture, engine, machine,
or device, or any improvement therein.); S. Comm. Judiciary, P.L 82-593, Title 35, United States Code B Patents,
S. REP. NO. 82-1979, at 1, 4, 6 (June 27, 1952) (Art in this place in the present statute has a different meaning
than the words useful art in the Constitution, and a different meaning than the use of the word art in other places
in the statutes, and it is interpreted by the courts to be practically synonymous with process or method. The word
process has been used to avoid the necessity of explanation that the word art as used in this place means process
or method, and that it does not mean the same thing as the word art in other places. The definition of process
has been added in section 100 to make it clear that process or method is meant, and also to clarify the present law
as to the patentability of certain types of processes or methods as to which some insubstantial doubts have been
expressed.... The word art in the corresponding section of the existing statute has a different meaning than the
same word as used in other places in the statute; it has been interpreted by the courts as being practically
synonymous with process or method. Process has been used as its meaning is more readily grasped than art as
interpreted, and the definition in section 100(b) makes it clear that process or method is meant. The remainder of
the definition clarifies the status of processes or methods which involve merely the new use of a known process,
machine, manufacture, composition of matter, or material; they are processes or methods under the statute and may
be patented provided the conditions for patentability are satisfied.).
37
intended only to provide a locus for the actions that constituted an infringement of the patent
property right, 234 not to define the scope of the property right.235 Congress intended to change direct
infringement law only in regard to contributory infringement doctrines (making corresponding
changes to the law of patent misuse).236

Congress in 1952 adopted minor changes to the reissue and disclaimer provisions of the
Patent Act. Specifically, Congress reinforced the Supreme Courts earlier flexible equitable
restrictions on claiming broader protection in reissued patents, revising the language of the mistake
provisions and codifying a strict two-year limit.237 Congress simultaneously assured that reissued
claims of similar scope would apply retroactively and provided intervening rights for any broader
scope.238 Congress also avoided the need to formally disclaim invalid claims in order to preserve

234
See Act of July 19, 1952, ch. 950, Pub. L. No. 82-593, 66 Stat. 812 (enacting Section 271(a), currently codified
at 35 U.S.C. 271(a) (2000)); S. REP. NO. 82-1979, at 8 (1952) (Section 271, paragraph (a), is a declaration of what
constitutes infringement. There is no declaration of what constitutes infringement in the present statute. It is not actually
necessary because the granting clause creates certain exclusive rights and infringement would be any violation of those
rights.); H.REP. NO. 82-1923 at 9 (1952) (same); Federico, supra note 40, at 212 (The last chapter of this title deals
with judicial remedies for infringement. Three sections of the old statute ... dealt with actions for infringement of
patents. They were somewhat confused and the language in some respects archaic. In the new statute, they have been
subdivided and rearranged, with changes in language and some additions.); supra notes 34-35 and accompanying text.
235
See Lutz, supra note 216, at 159 (The new act makes no effort to codify the common law rules relating to
direct infringement, except to state broadly that whoever uses the invention without authority infringes the patent);
Federico, supra note 40, at 212 (The prior statute had no section defining or dealing with what constitutes infringement
of a patent. Paragraph (a) of section 271, for completeness and other reasons, declares the list of actions that constitute
an infringement).
236
See Act of July 19, 1952, ch. 950, Pub. L. No. 82-593, 66 Stat. 812 (enacting Sections 271(b), (c) & (d),
currently codified at 35 U.S.C. 271(b), (c) & (d)); S. REP. NO. 82-1979, at 4, 8, 27 (1952) (discussing contributory
infringement standards); H.R. REP. NO. 82-1923, at 5, 9, 28 (1952) (same); Federico, supra note 40, at 212 (Paragraphs
(b), (c), and (d) of section 271 are of considerable importance and the Committee Report characterizes them as one of the
major changes or innovations in the title.); supra note 36 and accompanying text. Similarly codification of the defenses
provision in Section 282 reflects no intent to alter substantive standards for infringement, except where changes to
corresponding provisions of the act were made. See Federico, supra note 40, at 215 (noninfringement defenses include
that the patented invention has not been made, used, or sold by the defendant; license; and equitable defenses such as
laches, estoppel, and unclean hands; invalidity for lack of patentability defenses include most of the usual defenses
such a slack of novelty, prior publication, prior public use, lack of invention; invalidity for failure to comply with
written description and claiming requirements include the defense of insufficient disclosure, and ... reissue defenses.).
237
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)); See S. REP. NO. 82-1979, at 25 (1952); H.R. REP. NO. 82-1923, at 26 (1952); supra notes 72-77 and
accompanying text. Congress also codified a new matter prohibition for reissued patents, which the Court had
articulated under the reissue provisions of the 1836 and 1870 Patent Acts. 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, 1 (2000)). See, e.g., Morey v. Lockwood,
75 U.S. (8 Wall.) 230, 240-42 (1868); Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 544-45 & n.14 (1870). See
generally 4 CHISUM ON PATENTS, supra note 18, at 15.02[3], 15.02[4], 15.02[5], 1503[3].
238
The 1928 Patent Act had amended the reissue provisions 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 modified the
38
validity of other claims in a patent, but prohibited any formal disclaimers from applying to less than
an entire claim.239 These changes reinforce the distinct claiming requirement, by highlighting the
consequences of failing to properly claim disclosed patentable subject matter. Although the
disclaimer changes could make sense even if patent protection were not limited to claims (because
under the 1870 Patent Act one invalid claim would have invalidated the entire patent), there is
simply no suggestion in the legislative history that Congress intended patent protection to extend
beyond the scope of application of the construed claim language.

3. Limited Evidence of Authorization for Later-Arising, Equivalent Embodiments of

Functional Claims

In the 1952 Patent Act, Congress did not explicitly reverse the long line of decisions
(culminating in Halliburton Oil Well Cementing Co. v. Walker240) that limited improvement patents
to a narrow scope of equivalents and that precluded improvement patents from applying to later-
arising technologies.241 Nevertheless, Congress expressly reversed the holding in Halliburton that
prohibited use of functional claiming language to describe the novelty of improvement inventions.242
In doing so, Congress could be understood to have intended to overturn the other holding of
Halliburton and to revise the standards for the scope of application of functionally claimed
improvement inventions.

When authorizing use of functional claiming language, however, Congress was careful to
preserve rather than to prescribe prior law regarding permissible claim scope and application.243
Further, Congress was presented with draft legislative language that would have expressly
authorized application of functional claims to later-arising technologies, but Congress did not adopt
that language. A coordinating committee of patent law associations had suggested specific changes
to a draft of what was then H.R. 3760, which included a recommendation to add to the mean-plus-
function claim provision language authorizing such claims to encompass equivalents whether or not
known at the time the invention was made.244 The legislative history is silent as to why Congress

identicality requirement and 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].
239
See 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)); S. REP. NO. 82-1979, at 26, 29 (1952); H.R. REP. NO. 82-1923, at 27, 30 (1952). 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).
240
329 U.S. 1 (1946).
241
See supra notes 137-51 and accompanying text.
242
See supra notes 152-70, 220-226 and accompanying text.
243
See supra notes 225-26 and accompanying text.
244
Hearings Before Subcommittee No. 3 of the Committee on the Judiciary, House of Representatives on H.R.
3760, A bill to Revise and Codify the Laws Relating to Patents and the Patent Office, and to Enact Into Law Title 35
of the United States Code Entitled Patents, Serial No. 9, , 82d Cong., 1st Sess., June 13, 14, and 15, 1951, at 22-26,
30-33.
39
did not adopt the recommendation. Given the consistent prior case law limiting improvement
inventions to known technological equivalents, Congress most likely would have adopted such
language if it had meant to encourage the courts to provide protection for later-arising equivalents of
such functionally drafted claims.245

The 1952 Patent Act thus should be interpreted to have authorized, but not to have required,
application of functional claims for improvement inventions to later-arising equivalent technologies.
Nothing in the language adopted by Congress reflects an intent to freeze judicial interpretation
regarding the permissible scope of future embodiments that can be claimed using such functional
language. To the extent that the courts decide to apply functional claims for improvement
inventions to later-arising substituted technologies, however, they will have to contend with two
hundred years of patent claim scope doctrines and with the Constitutional mandate to promote
progress. Regardless of whether functional claiming language applies to later-arising technologies,
Congress did not authorize in the 1952 Patent Act patent protection for later-arising equivalent
technologies that were not validly claimed as embodiments.

CONCLUSION

In Graver Tank & Manufacturing Co. v. Linde Air Products Co.,246 the Supreme Court
adopted without statutory authorization a radical new modern doctrine of equivalents that extends
patent protection beyond the scope of application of construed claim language. In Warner-
Jenkinson Co. v. Hilton Davis Chemical Co.,247 the Court extended the modern doctrine to later-
arising equivalent technologies. In doing so, the Supreme Court created a doctrinal morass for
patent law. As discussed in another article, the doctrinal tensions created by the modern doctrine
will not be relieved by the Courts recent efforts to reconcile the modern doctrine with prosecution
history estoppel in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.248 Simplicity and
conceptual elegance are virtues in the law, even if they may not be in our efforts to understand the
natural world.249

As discussed in another article, the Supreme Court or Congress should abolish the doctrine of
equivalents in its current form and should limit patent protection to equivalent embodiments of
literally construed claim language.250 In doing so, the Court or Congress will restore to the Patent
Act the primacy of the distinct claiming provision and the implied disclaimer doctrines developed by

245
See supra note 38 and accompanying text.
246
339 U.S. 605 (1950).
247
520 U.S. 17 (1997).
248
535 U.S. 722 (2002). See Sarnoff, supra note 44.
249
Cf. Peter Drummond, Elegance: Keeping it Simple and Testable, PHYSICS TODAY, ONLINE, at
http://www.aip.org/pt/vol-53/iss-8/p12b.html (last visited Mar. 4, 2003) (In the interest of clearness, it appeared to
me inevitable that I should repeat myself frequently, without paying the slightest attention to the elegance of the
presentation. I adhered scrupulously to the precept of that brilliant theoretical physicist L. Boltzmann, according to
whom matters of elegance ought to be left to the tailor and the cobbler.) (quoting ALBERT EINSTEIN, RELATIVITY
(1916)).
250
See Sarnoff, supra note 45.
40
the Court under the 1870 Patent Act, and will better assure that patents protect only what applicants
regard as their inventions and a fair scope for their invented principles. The Court or Congress also
should carefully consider and potentially revise the extent to which claims may directly apply to
later-arising equivalent technologies, in order to better assure that patent law will promote ...
Progress.251

251
U.S. CONST., art. I, 8, cl. 8.
41