Although Continental Paper Bag was decided in 1908, it was not
forgotten forty years later. After reaching its holding in Halliburton,
the Court stated that its conclusion was not in conflict with its
earlier decision in Continental Paper Bag because the claims at issue in
Continental "structurally described the physical and operating
relationship of all the crucial parts of the novel combination."
(35) Thus, the Halliburton Court ostensibly did not overrule Continental
Paper Bag, which had held that a means-plus-function clause at the
precise point of novelty did not render the claims invalid. (36)
Instead, the Court distinguished Continental Paper Bag on the basis that
the means-plus-function clause in Continental was contained in claims
that properly defined the relationship between the various claim
elements. (37)
In light of the courts' less-than-favorable attitude toward
patents in the 1940's, however, there was concern that all claims
having one or more means-plus-function clauses would be held invalid
under the ruling of Halliburton. (38) In 1952, following the impetus of
the patent bar, Congress voted in favor of the Continental Paper Bag
approach by adopting 35 U.S.C. [section] 112, paragraph 6. (39)
IV. LEGISLATIVE HISTORY
The legislative history concerning [section] 112, paragraph 6, is
sparse, but it shows that the initial draft of this section first
appeared as a proposal in December 1950, (40) shortly after the Supreme
Court's landmark opinion on the doctrine of equivalents in Graver
Tank. (41) In subsequent hearings on the patent bill, in which this
section appeared in essentially its present state, (42) there was
recognition that the purpose of the section was to offset the much
criticized Halliburton decision. (43) However, there was opposition to
this section by the Department of Justice because it "introduce[d]
into the statute for the first time the controversial doctrine of
equivalents." (44)
Others favored the section, but they agreed that this new section
would serve to establish a statutory foothold for the doctrine of
equivalents. For example, a paper by Representative Bryson, Chairman of
the Patent and Trademark Subcommittee handling the drafts of the Patent
Act of 1952, stated:
I should like to say a word on the provision in the bill for
functional claiming. The subcommittee realizes that this 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 provision also gives recognition
to the existence of the doctrine of equivalents.
An article by James L. Harris, Counsel to the Patent, Trademark and
Copyright Subcommittee that prepared the drafts of the 1952 Act,
similarly stated that "[t]o provide for the proper interpretation
of the claims commensurate with the invention, the doctrine of
equivalents is specifically mentioned in the section." (46)
Thus, [section] 112, paragraph 6, came into being very shortly
after the Graver Tank opinion had reaffirmed the doctrine of
equivalents, which was the only form of equivalence in existence at the
time. Additionally, the section sought to solve the Halliburton problem
by relying on this doctrine. (47) In 1997, even the Supreme Court
attributed this role to [section] 112, paragraph 6, stating, "This
is an application of the doctrine of equivalents in a restrictive role,
narrowing the application of broad literal claim elements." (48)
V. LIFE UNDER TWO DIFFERENT STANDARDS
It is difficult to assess the practical effect of the judicial
creation of two different standards of equivalence, one for [section]
112, paragraph 6, and a different one under the traditional doctrine of
equivalents. Actually, [section] 112, paragraph 6, has been construed to
bring into play two standards, one for literal infringement and another
if literal infringement is not established. (49) Also, the doctrine of
equivalents rather than [section] 112, paragraph 6, equivalence applies
in situations where the accused device does not employ precisely the
same function claimed in the patent. (50) One obvious effect of this
state of the law is confusion.
It is often a metaphysical exercise to determine whether two
elements are "equivalent" in patent law. This is doubly
perplexing when there are two different equivalence standards. Moreover,
when both standards may apply seriatim to a means-plus-function clause,
the fact finder is truly in Wonderland.
The genesis of two different equivalence standards appears to be
the Federal Circuit opinion in D.M.I., Inc. v. Deere & Co., (51)
where the court stated:
Thus the word "equivalent" in [section] 112 should not be confused,
as it apparently was here, with the "doctrine of equivalents." In
applying the doctrine of equivalents, the fact finder must
determine the range of equivalents to which the claimed
invention is entitled, in light of the prosecution history, the
pioneer-non-pioneer status of the invention, and the prior art. It
must then be determined whether the entirety of the accused
device or process is so "substantially the same thing, used in
substantially the same way, to achieve substantially the same
result" as to fall within that range.... In applying the "means
plus function" paragraph of [section] 112, however, the sole
question is whether the single means in the accused device which
performs the function stated in the claim is the same as or an
equivalent of the corresponding structure described in the
patentee's specification as performing that function. (52)
This passage does not identify the factors to be considered in
assessing whether the structure in the accused device is equivalent to
the corresponding structure under [section] 112, paragraph 6. It does
note, however, that this equivalence operates differently from the
traditional doctrine of equivalents because the latter is applied to
"the entirety of the accused device or process." (53) The
Supreme Court had no difficulty, however, in applying the doctrine of
equivalents to an individual means in Continental Paper Bag. (54) Also,
more recently, the Supreme Court eliminated this difference by holding
that the doctrine of equivalents must be applied on an
element-by-element basis. (55)
D.M.I. was followed by Palumbo v. Don-Joy Co., (56) where the
Federal Circuit noted the proximity in time of the 1952 Act to the
Supreme Court's doctrine of equivalents opinion in Graver Tank.
(57) The court also noted that both of the Federal Circuit's
predecessor courts had applied the Graver Tank concept of equivalents to
means-plus-function clauses under [section] 112, paragraph 6, (58) which
should have compelled a similar result in the Federal Circuit, absent an
en banc ruling to the contrary. (59) The court found, however, that
[section] 112, paragraph 6, equivalence differs from the doctrine of
equivalents in that [section] 112, paragraph 6, equivalence may lead
only to a finding of literal infringement. (60) As previously noted, no
support for this reading can be found in the statute.
Thereafter, in Valmont Industries, Inc. v. Reinke Manufacturing
Co., (61) the Federal Circuit stated that [section] 112, paragraph 6,
and the doctrine of equivalents "have separate origins and
purposes," (62) but there is no explanation why the difference in
origin and purpose calls for a new mode of equivalence. Nor is there any
apparent reason why this should be the case. The court also stated,
perhaps as an illustration of the different purposes, that [section]
112, paragraph 6, limits a claim, while the doctrine of equivalents
expands it. (63) However, as the Supreme Court discussed in Graver Tank
and mentioned in Warner-Jenkinson, these different purposes are both
roles of the doctrine of equivalents. (64)
The court followed the same path in Alpex Computer Corp. v.
Nintendo, (65) stating that the two forms of equivalence are
characterized by separate origins, purposes and applications. (66)
Again, no effort was made to demonstrate why these factors might compel
a new form of equivalence, rather than the traditional doctrine of
equivalents. The only further explanation in Alpex is an observation
that [section] 112, paragraph 6, involves a comparison to the structure
that corresponds to the claimed means, while the doctrine of equivalents
involves a comparison of the entire claim with the accused device. (67)
As noted, this difference ignores the Supreme Court's ruling in
Continental and has clearly been eliminated by the Supreme Court's
ruling in Warner-Jenkinson. (68)
Having embarked on a path of two different equivalence standards,
it became necessary to determine not only the meaning of each standard
and how the standards differ, but whether the traditional doctrine of
equivalents always applies when [section] 112, paragraph 6, equivalence
fails. For a statute that was heralded as being clear on its face, it
may seem strange that the profession had no idea what tack the courts
would take on these basic questions for some forty years. Nor has the
tack been a consistent one.
COPYRIGHT 2006 Rutgers University School of Law -
Newark Reproduced with permission of the copyright holder. Further reproduction or distribution is prohibited without permission.
Copyright 2006, Gale Group. All rights
reserved. Gale Group is a Thomson Corporation Company.
NOTE: All illustrations and photos have been removed from this article.