001 US v. UNIVIS LENS CO. (VILLAVICENCIO) 1.
Univis Lens Company, was the owner of a number of patents and two
May 11, 1942 | Stone, J. | Sale of a patent
PETITIONER: United States
RESPONDENTS: Univis Lens Co.
SUMMARY: The Lens Company acquired the majority shares of Univis Lens
Company. The Company offers a licensing system that allows licensees to purchase
lens blanks from the Company to finish them by grinding and polishing and to sell
them at prices fixed by the Company. The lens blanks are rough opaque pieces of
glass of suitable size, design, and composition for use, when ground and polished,
as multi-focal lenses in eyeglasses. Each blank is composed of two or more pieces
of glass of different refractive power of such size, shape, and composition, and so
disposed that, when fused together in the blank, it is said to conform to the
specifications and claims of some one of the Corporation's patents. The
Corporation issues three classes of licenses -- licenses to wholesalers, to finishing
retailers, and to prescription retailers. The Corporation cancels licenses principally
because of the failure of licensees to adhere to the price-fixing provisions. The
district court held that prescription retailer licenses are unlawful because their
restrictions upon the resale of the finished product are not within the patent
monopoly, and are proscribed by the Sherman Act. WoN the scope of the lens
patent extends beyond the structure of the lens blanks, and consequently affords no
basis for the Corporation's restrictions on the sale of the finished lenses which the
wholesalers and finishing retailers fashion from blanks purchased from the Lens
Company. – NO, because sale of a patent exhausts the monopoly in that article.
Hence, the patentee cannot control the resale price of the patented articles which he
has sold.
DOCTRINE: An incident to the purchase of any article, whether patented or
unpatented, is the right to use and sell it, and, upon familiar principles, the
authorized sale of an article which is capable of use only in practicing the patent is
a relinquishment of the patent monopoly with respect to the article sold.  10. The prices prescribed and maintained under the licensing system are: $3.25
FACTS:
trademarks relating to multi-focal lenses.
2. The Lens Company then acquired Univis and now holds a majority of the
stock of the corporation.
3. The licensing system of the now Lens Company is as follows: the
Corporation licenses the Lens Company to manufacture lens blanks and to
sell them to designated licensees of the Corporation, upon the Lens
Company's payment to the Corporation of an agreed royalty of 50 cents a
pair.
4. The lens blanks are rough opaque pieces of glass of suitable size, design,
and composition for use, when ground and polished, as multi-focal lenses
in eyeglasses. Each blank is composed of two or more pieces of glass of
different refractive power of such size, shape, and composition, and so
disposed that, when fused together in the blank, it is said to conform to the
specifications and claims of some one of the Corporation's patents.
5. The Corporation also issues three classes of licenses -- licenses to
wholesalers, to finishing retailers, and to prescription retailers.
6. The licenses to wholesalers authorize the licensees to purchase the blanks
from the Lens Company, to finish them by grinding and polishing, and to
sell them to prescription licensees only at prices fixed by the Corporation
licensor.
7. The licenses to finishing retailers -- who purchase the blanks from the Lens
Company, grind and polish them, and adjust the lenses, in frames or
supports, to the eyes of the consumers -- contain similar provisions. The
retailers are licensed to purchase the blanks of the Lens Company and to
sell them to their customers at prices prescribed by the Corporation
licensor.
8. The licenses to prescription retailers, who are without facilities for grinding
and finishing the lenses, but who prescribe and adjust glasses for their
customers, are signed both by the Corporation and a licensor wholesaler,
and grant to the retailer a "franchise to prescribe and fit Univis lenses," in
return for which the prescription retailer agrees to sell finished lenses only
to consumers and only at prices prescribed by the Corporation.
9. No royalties are exacted of any of the licensees other than the 50 cents
collected by the Corporation for each pair of blanks sold by the Lens
Company.
a pair for the blanks sold by the Lens Company to wholesalers, and $4 a
pair for those sold to finishing retailers; $7 a pair for finished lenses sold
by wholesalers; $16 a pair for white, and $20 for tinted, lenses sold to
 consumers by prescription and finishing retailers.
11. The Corporation cancels licenses principally because of the failure of
licensees to adhere to the price-fixing provisions, but also because they
advertise prices or the acceptance of installment payments,
12. or for other forms of advertising objectionable to it; for selling Univis
lenses to customers other than those designated by the Corporation; for not
giving a certain percentage of the licensees' multi-focal lens business to
Univis; because the licensee is located in a drug, department, or jewelry
store, or because the licensee engaged in price-cutting in the sale of the
products of other manufacturers.
13. Of the sixteen patents owned by the Corporation, three are unrelated to the
issues of the present case;
14. five are for methods of producing lenses utilized by the Lens Company in
manufacturing blanks, and do not concern any method or process
employed by the licensees who finish the lens blanks.
15. Each of the remaining eight patents relates to the shape, size, composition,
and disposition of the pieces of glass of different refractive power in the
blanks into which they are fused.
16. The district court thought that, without the granted license, the final step in
finishing the lens would infringe the patent, and concluded that, for this
reason, the Corporation could condition its licenses upon the maintenance
by the licensee of the prescribed retail price.
17. But district court held that the prescription retailer licenses are unlawful
because their restrictions upon the resale of the finished product are not
within the patent monopoly, and are proscribed by the Sherman Act
18. The court accordingly limited the relief which it granted to an injunction
restraining respondents from carrying out or enforcing the restrictive
provisions of the prescription retailer licenses and the fair trade
agreements, and from using its licensing system -- as has been done in one
instance -- as the means of preventing a particular competitor from
manufacturing and distributing multi-focal lens blank similar in appearance
to those produced by the Lens Company.
ISSUE/s:
1. WoN the scope of the lens patent extends beyond the structure of the lens
blanks, and consequently affords no basis for the Corporation's restrictions
on the sale of the finished lenses which the wholesalers and finishing
retailers fashion from blanks purchased from the Lens Company. – NO,
because sale of a patent exhausts the monopoly in that article. Hence, the
patentee cannot control the resale price of the patented articles which he has
sold.
RULING: The injunction of the district court will therefore be continued, and
extended so as to suppress all the license contracts and the maintenance of the
licensing system which appellees have established other than the Corporation's
license to the Lens Company. The judgment in No. 856 is affirmed. The judgment in
No. 855 is reversed, and both cases are remanded to the district court for the entry of
an appropriate decree in conformity to this opinion.
RATIO:
1. it does not follow that the patentee can control the price at which the
finished lens is sold.
2. But, in any case, it is plain that, where the sale of the blank is by the
patentee or his licensee -- here, the Lens Company -- to a finisher, the only
use to which it could be put, and the only object of the sale, is to enable the
latter to grind and polish it for use as a lens by the prospective wearer.
3. An incident to the purchase of any article, whether patented or unpatented,
is the right to use and sell it, and, upon familiar principles, the authorized
sale of an article which is capable of use only in practicing the patent is a
relinquishment of the patent monopoly with respect to the article sold. 
4. Sale of a lens blank by the patentee or by his licensee is thus, in itself, both
a complete transfer of ownership of the blank, which is within the
protection of the patent law, and a license to practice the final stage of the
patent procedure.
5. The declared purpose of the patent law is to promote the progress of
science and the useful arts by granting to the inventor a limited monopoly,
the exercise of which will enable him to secure the financial rewards for
his invention.
6. The full extent of the monopoly is the patentee's "exclusive right to make
use, and vend the invention or discovery." The patentee may surrender his
monopoly in whole by the sale of his patent, or in part by the sale of an
article embodying the invention. His monopoly remains so long as he
retains the ownership of the patented article.
7. But sale of it exhausts the monopoly in that article, and the patentee may
not thereafter, by virtue of his patent, control the use or disposition of the
article. 
8. Hence, the patentee cannot control the resale price of patented articles
which he has sold, either by resort to an infringement suit or, consistently
with the Sherman Act (unless the Miller-Tydings Act applies), by
stipulating for price maintenance by his vendees.
 002 ROCHE PRODUCTS v. BOLAR PHARMACEUTICALS
(GUECO)
April 23, 1984 | Nichols, J. | Experimental Use
PETITIONER: Roche Products, Inc.
RESPONDENTS: Bolar Pharmaceutical Co., Inc.
FACTS:
SUMMARY: Roche is a pharmaceutical company which sells the prescription
sleeping pill called “Dalmane”. The active ingredient for the said pill is known
as the flurazepam hydrochloride, for which Roche had a patent on. A year
before the expiration of Roche’s patent, Bolar, a generic drug company, began
working on a process which attempted to produce a generic drug that is
equivalent to Roche’s flurazepam hcl. After experimenting, it submitted its
generic version of the Dalmane for approval with the FDA (this happened even
before the patent of Roche expired). When Roche found out about this, it
applied for an injunction to enjoin Bolar from marketing its generic drug after
its patent expires. It also claimed that Bolar committed patent infringement.
Bolar denied infringing on Roche’s patent. It argued that the tests and
experiments that it conducted were purely scientific inquiries. Hence, there can
be no infringement. The trial court ruled in favor of Bolar; however, on appeal,
the appellate court reversed the trial court’s decision. It stated that the concept
of experimental use is not applicable in this case since Bolar had the intention to
sell its generic drug in competition with Roche’s drug. Experimental use, to be
considered as an exception to patent infringement, should be for purposes which
are not commercial in nature (i.e., amusement, to satisfy curiosity, or for
philosophical inquiry). In this case, however, Bolar’s experimental use was for a
commercial purpose. ISSUE: WoN the use of a patented drug for purposes of
having it approved by the FDA before expiration of the patent constitutes
experimental use—NO, BOLAR’S USE WAS COMMERCIAL IN NATURE.
RULING: Bolar contends that its experiments were “true scientific inquiries”.
The circumstances, however, show otherwise. Bolar’s intended experimental
use was solely for business reasons and not for amusement, to satisfy idle
curiosity or for strictly philosophical inquiry. Bolar may have intended to
perform experiments but *see doctrine*
DOCTRINE: Unlicensed experiments which are conducted with the view of
adopting the patented product to the experimenter’s business is a violation of
the patentee’s right to exclude others from using his patented invention. The
experimental use rule should not be construed so broadly as to allow a violation
of the patent laws in the guise of “scientific inquiry”, when that inquiry has
definite, cognizable, and substantial commercial purpose.
1. Roche Products, Inc. (“Roche”) is a pharmaceutical company which sells a
prescription sleeping pill called “Dalmane”. The active ingredient of the
said pill is known as flurazepam hydrochloride.
2. Roche applied for and was granted a patent for the said active ingredient.
3. A year before the expiration of Roche’s patent, Bolar Pharmaceutical Co.
(“Bolar”), a generic drug company, began working on a process which
attempted to produce a generic drug that is equivalent to flurazepam hcl.
4. After experimenting, it submitted its generic version of the Dalmane for
approval with the FDA (this happened even before the patent of Roche
expired).
a. Reason why Bolar submitted its drug for approval even before the
expiration of Roche’s patent: Because the success of a generic drug
company is measured by how quickly it is able to release a generic
drug (equivalent to a brand-name drug) to the market after the patent
for such brand-name drug expires. Also because approval with the
FDA for the equivalent of an established drug takes more than two
years.
5. When Roche found out about this, it applied for an injunction to enjoin
Bolar from marketing its generic drug after its patent expires. It also
claimed that Bolar committed patent infringement.
6. Bolar denied committing infringement. It contended that it had no intention
to market the drug before the expiration of the patent, and that even if it
wanted to, the approval of the FDA is first needed. Further, it argued that:
a. Infringement only happens if the activities being contested are
hostile to the pecuniary interest of the patentee. Thus, where the
patented product is used as an experiment, whether for the
gratification of scientific tastes (as in this case where Bolar argues
that the tests were for true scientific inquiries), or for curiosity, or
 for amusement, the interests of the patentee are not antagonized
and the effect is only to promote the user’s knowledge (concept of
“experimental use”), and;
b. Public policy, which favors making available generic drugs after a
patent expiration, justifies the experimental use of the patented
chemical because denying such use would extend the patentee’s (in
this case Roche’s) monopoly beyond the expiration date. Bolar
argues that the FDCA (Federal Food, Drug, and Cosmetic Act) was
only intended to assure the provision of safe and effective drugs for
the public. It was not enacted to extend a pharmaceutical company’s
monopoly for an indefinite time. Hence, since the FCDA which was
enacted as a later law, affects the Patent law, Bolar argues that patent
laws should then apply to drugs differently.
7. The trial court ruled in favor of Bolar; however, on appeal, the appellate
court reversed the trial court’s decision. It stated that the concept of
experimental use is not applicable in this case since Bolar had the intention
to sell its generic drug in competition with Roche’s drug. Experimental use,
to be considered as an exception to patent infringement, should be for
purposes which are not commercial in nature (i.e., amusement, to satisfy
curiosity, or for philosophical inquiry). In this case, however, Bolar’s
experimental use was for a commercial purpose.
ISSUE:
2. Bolar contends that its experiments were “true scientific inquiries”. The
circumstances, however, show otherwise.
3. Bolar’s intended experimental use was solely for business reasons and not
for amusement, to satisfy idle curiosity or for strictly philosophical inquiry.
Bolar may have intended to perform experiments, but unlicensed tests
conducted with a view of adopting the patented product to the
experimenter’s business is a violation of the patentee’s right to exclude
others from using his patented invention.
4. The experimental use rule should not be construed so broadly as to
allow a violation of the patent laws in the guise of “scientific inquiry”,
when that inquiry has definite, cognizable, and substantial commercial
purpose.
5. As to Bolar’s second contention on FCDA and Patent laws : SC said that it
is a poor reason to ask the court to rewrite an earlier statute just because a
subsequently enacted statute affects in some way the earlier enacted statute.
Repeals by implication are not favored. Because “laws are presumed to be
passed with deliberation, and with full knowledge of all existing ones on the
same subject,” it must be presumed that Congress was aware that the FCDA
would affect the earning potentiality of a drug patent, and chose to permit it.
It must be noted that during Congress’ deliberations on the 1962
amendments to the FCDA, it considered the relationship and interaction of
the patent laws with the drug laws. Further, no matter how persuasive the
policy arguments are for or against the laws, the court is not the proper
forum in which to debate them. Where Congress has the clear power to
enact legislation, the court’s role is only to interpret and apply that
legislation.

1. WoN the use of a patented drug for purposes of having it

approved by the FDA before expiration of the patent constitutes
experimental use—NO, BOLAR’S USE WAS COMMERCIAL
IN NATURE.

RULING: WHEREFORE,

RATIO:

1. Section 271(a) of the US Patents Law prohibits any and all uses of a
patented invention. As such, whoever makes, uses, or sells any patented
invention without authority during the term of the patent is liable for
infringement.
 003 CRESER v. CA (HIRANG)
2 February 1998 |Martinez, J. | Who may bring the action for infringement
PETITIONER: CRESER PRECISION SYSTEMS INC.
RESPONDENTS: COURT OF APPEALS AND FLORO INTERNATIONAL
CORPORATION
SUMMARY: Floro was granted a patent over its AERIAL FUZE however, the
president of the corporation found out that Creser Precision System was submitting
samples of the patented aerial fuze to the AFP for testing and that it planned to
manufacture the same commercially. Floro wrote a letter to creser informing it of its
patent and warning Creser of possible court action if it would manufacture it
commercially. Instead of complying, Creser filed an infringement suit against Floro
claiming that it was the original inventor of the aerial fuze. Floro on the otherhand
contends that Creser has no cause of action as he has no patent for such aerial fuze.
To answer this, Creser stated that under Sec 42 of Patent Law it can file an
infringement suit even if he is not a patent holder. Creser filed the suit as an entity
with interest in the patented invention. The issue is WoN Creser can file the
infringement suit and the Court ruled in the negative. The SC held that when the
law stated anyone possessing any right, title or interest in and to the patented
invention it refers to the patentee’s successors-in-interest, assignees or grantees
which in this case, Creser was not any of those. Moreover, the right to file an
infringement suit can only arise if Creser has a patent over such invention as
whatever right one has to an invention arises only from the grant of patent.
However, although a non-patent holder cannot file an infringement suit, he could
file a cancellation of the patent granted under Sec 28 of the Patent Law but in this
case, since Creser did not impugn the validity of the patent of Floro, Creser cannot
do so now.
DOCTRINE: The phrase anyone possessing any right, title or interest in and to the
patented invention upon which petitioner maintains its present suit, refers only to
the patentees successors-in-interest, assignees or grantees since actions for
infringement of patent may be brought in the name of the person or persons
interested, whether as patentee, assignees or grantees, of the exclusive right.
Moreover, there can be no infringement of a patent until a patent has been issued,
since whatever right one has to the invention covered by the patent arises alone
from the grant of patent
FACTS
1. Floro is a domestic corporation engaged in the manufacture, production,
distribution and sale of military armaments, munitions, airmunitions and
other similar materials.
2. On January 23, 1990, Floro was granted by the Bureau of Patents,
Trademarks and Technology Transfer (BPTTT), a Letters Patent No. UM-
6938 covering an aerial fuze which was published in the September-
October 1990, Vol. III, No. 5 issue of the Bureau of Patents Official Gazette
3. In November 1993, Floro, through its president, Mr. Gregory Floro, Jr.,
discovered that petitioner submitted samples of its patented aerial fuze to
the Armed Forces of the Philippines (AFP) for testing. He learned that
Creser was claiming the aforesaid aerial fuze as its own and planning to bid
and manufacture the same commercially without license or authority from
private respondent.
4. Floro wrote to Creser advising it of its existing patent and its rights
thereunder, warning petitioner of a possible court action and/or application
for injunction, should it proceed with the scheduled testing by the military.
This was not heeded by Creser.
5. Creser thereafter filed a complaint for infringement against Floro claiming
that they are the first, true and actual inventor of an aerial fuze
denominated as Fuze, PDR 77 CB4 which is developed as early as
December 1981 under the Self-Reliance Defense Posture Program (SRDP)
of the AFP; that sometime in 1986, petitioner began supplying the AFP with
the said aerial fuze; that private respondents aerial fuze is identical in every
respect to the petitioners fuze; and that the only difference between the two
fuzes are miniscule and merely cosmetic in nature
6. Floro on the other hand contends that Creser has no cause of action to file a
complaint of infringement against it since it has no patent for the aerial
fuze which it claims to have invented; that Creser’s available remedy is to
file a petition for cancellation of patent before the Bureau of Patents; that
 Floro as the patent holder cannot be stripped of its property right over the
patented aerial fuze consisting of the exclusive right to manufacture, use
and sell the same and that it stands to suffer irreparable damage and injury
if it is enjoined from the exercise of its property right over its patent
7. It is Creser’s contention that it can file, under Section 42 of the Patent
Law (R.A. 165), an action for infringement not as a patentee but as an
entity in possession of a right, title or interest in and to the patented
invention. It advances the theory that while the absence of a patent may
prevent one from lawfully suing another for infringement of said patent,
such absence does not bar the first true and actual inventor of the patented
invention from suing another who was granted a patent in a suit for
declaratory or injunctive relief recognized under American patent laws.
This remedy, petitioner points out, may be likened to a civil action for
infringement under Section 42 of the Philippine Patent Law
ISSUE/s: WoN Creser Precision Inc can institute the action even if he is not a
patent holder – NO. The law pertains to person possessing any right, title or
interest in and to the patented invention as those who are the patentee’s successors-
in-interest, assignees or grantees.
RULING: WHEREFORE, the decision of the Court of Appeals is hereby
AFFIRMED. No pronouncement as to costs.
RATIO:
1. SECTION. 42. Civil action for infringement. Any patentee, or anyone possessing any right,
title or interest in and to the patented invention, whose rights have been infringed, may
bring a civil action before the proper Court of First Instance (now Regional Trial court), to
recover from the infringer damages sustained by reason of the infringement and to secure an
injunction for the protection of his right. x x x
2. SC held that Under the aforequoted law, only the patentee or his successors-
in-interest may file an action for infringement. The phrase anyone
possessing any right, title or interest in and to the patented invention upon
which petitioner maintains its present suit, refers only to the patentees
successors-in-interest, assignees or grantees since actions for infringement
of patent may be brought in the name of the person or persons interested,
whether as patentee, assignees or grantees, of the exclusive right
3. Moreover, there can be no infringement of a patent until a patent has
been issued, since whatever right one has to the invention covered by
the patent arises alone from the grant of patent. In short, a person or
entity who has not been granted letters patent over an invention and has not
acquired any right or title thereto either as assignee or as licensee, has no
cause of action for infringement because the right to maintain an
infringement suit depends on the existence of the patent
4. Creser admits it has no patent over its aerial fuze. Therefore, it has no legal
basis or cause of action to institute the petition for injunction and damages
arising from the alleged infringement by private respondent. While
petitioner claims to be the first inventor of the aerial fuze, still it has no
right of property over the same upon which it can maintain a suit unless it
obtains a patent therefor
5. Further, the remedy of declaratory judgment or injunctive suit on patent
invalidity relied upon by petitioner cannot be likened to the civil action for
infringement under Section 42 of the Patent Law. The reason for this is that
the said remedy is available only to the patent holder or his successors-in-
interest. Thus, anyone who has no patent over an invention but claims to
have a right or interest thereto can not file an action for declaratory
judgment or injunctive suit which is not recognized in this jurisdiction. Said
person, however, is not left without any remedy. He can, under Section
28 of the aforementioned law, file a petition for cancellation of the
patent within three (3) years from the publication of said patent with
the Director of Patents and raise as ground therefor that the person to
whom the patent was issued is not the true and actual inventor. Hence,
petitioners remedy is not to file an action for injunction or infringement but
to file a petition for cancellation of private respondent patent. Petitioner
however failed to do so. As such, it can not now assail or impugn the
validity of the private respondents letters patent by claiming that it is the
true and actual inventor of the aerial fuze.
004 ARO MFG. CO. INC. v. CONVERTIBLE TOP CO. (VICENCIO) owner to which petitioners could contribute. On remand, the CA reinstated the
judgment for CTR with respect to Ford cars, holding that, since Ford had not been
June 8, 1964 | Brennan, J. | Contributory Infringement
licensed to produce the top structures on those cars, petitioners' sale of replacement
fabrics for them constituted contributory infringement even though the replacement
was merely "repair."
PETITIONER: Aro Manufacturing Co. Inc.

RESPONDENTS: Convertible Top Co.

Issue: WoN Aro is liable for contributory infringement, under 35 U.S.C. § 271(c),
with respect to its manufacture and sale of replacement fabrics for the Ford cars –
YES, for those sales made after 1955. Persons who purchased cars from Ford,
SUMMARY: Convertible Top Replacement Co. Inc. (CTR) acquired the patent which infringed the patent by manufacturing and selling them with the top
rights of Autombile Body Research Corp. (AB) in the Mackie-Duluk patent structures, likewise infringed by using or repairing the top structures. The
through assignment. This is combination patent covering a top structure for purchasers committed direct infringement. And Aro, supplier of replacement
automobile convertibles. This structure was used by the convertibles made by fabrics for use in such infringing repair was a contributory infringer under § 271(c)
General Motors and Ford Motor Companies. However, although General Motors of the Patent Code,
had the authority of alicense granted to it by AB, Ford does not. It only had its
license in July 21, 1955. Hence, for the period of 1952-1954, Ford’s manufacture
and sale of said automobiles infringed the patent. Petitioner Aro Manufacturing
DOCTRINE 1: § 271(c) of the Patent Code states: "Whoever sells a component of
here, also NOT licensed under the patent, produces fabric components designed as
a patented machine, manufacture, combination or composition, or a material or
replacements for worn-out fabric portions of convertible tops. Aro’s fabrics are
apparatus for use in practicing a patented process, constituting a material part of the
specially tailord for installation in particular models of convertibles, both of
invention, knowing the same to be especially made or especially adapted for use in
General Motors and Ford.
an infringement of such patent, and not a staple article or commodity of commerce
suitable for substantial noninfringing use, shall be liable as a contributory
infringer."
AB notified Aro through a letter on January 2, 1954, that Aro’s sale of fabrics to fit
Ford tops would be contributory infringement. On July 21, 1955, Ford paid the
patent owner $73,000, and it was agreed that Ford, its dealers, customers and users,
DOCTRINE 2: § 271(c) requires knowledge by the alleged contributory infringer,
were released from all claims of infringement of the patent, other than with respect
not merely that the component sold by him was especially designed for use in a
to “replacement top fabrics.” The patent owner reserved the right to license the
certain machine or combination, but also that the combination for which the
manufacture, use, and sale of such replacement fabrics under the patent.
component was designed was BOTH patented and infringing.

CTR brought an action against Aro in 1956 to enjoin it from its alleged
This knowledge requirement affords Aro no defense with respect to replacement
infringement and contributory infringement, to obtain an accounting, with respect
fabric sales AFTER January 2, 1954, since they then had been notified of Ford's
to replacements fabrics sold by it. CTR’s claim of contributory infringement was
infringement through a letter. Aro however, is not liable for contributory
upheld in the District Court and the CA. That holding was reversed in the first Aro
infringement with respect to sales before that date, absent a showing on remand of
Case however, the ground that the fabric replacement was permissible "repair" and
its previous knowledge of Ford's infringement.
not infringing "reconstruction," so that there was no direct infringement by the car

(I suggest not going further here for recit, because it messes up the ruling)
HOWEVER: After the July 21, 1955 agreement, Ford car owners had authority to
use and repair the patented top structures; hence, they were no longer direct
infringers, and hence Aro, as sellers of replacement fabrics for such use and repair,
were not contributory infringers. The patent owner's (CTR's) attempt, in the
agreement with Ford, to reserve the right to license future replacement sales was
invalid, since it cannot, in granting the right to use patented articles, impose
conditions as to unpatented replacement parts to be used with those articles.
Hence, the final ruling is that Aro is not liable for sales made after 1955. It is liable
however, for sales made before 1955 agreement, EXCEPT with sales Aro had no
knowledge of infringement.
FACTS:
1. Respondent Convertible Top Replacement Co., Inc., (CTR) acquired by
assignment from the Automobile Body Research Corporation (AB) all
rights for the territory of Massachusetts in United States Patent No.
2,569,724, known as the Mackie-Duluk patent.
2. This is a combination patent covering a top structure for automobile
"convertibles." Structures embodying the patented combination were
included as original equipment in 1952-1954 models of convertibles
manufactured by the General Motors Corporation and the Ford Motor
Company.
3. They were included in the General Motors cars by authority of a license
granted to General Motors by AB; Ford, however, had no license during
the 1952-1954 period, and no authority whatever under the patent until
July 21, 1955, when it entered into an agreement, discussed later, with AB.
4. Ford's manufacture and sale of the automobiles in question therefore
infringed the patent.
5. Petitioner Aro Manufacturing Co., Inc. (Aro), which is not licensed
under the patent, produces fabric components designed as replacements for
worn-out fabric portions of convertible tops; unlike the other elements of
the top structure, which ordinarily are usable for the life of the car, the
fabric portion normally wears out and requires replacement after about three
years of use.
6. Aro's fabrics are specially tailored for installation in particular models of
convertibles, and these have included the 1952-1954 General Motors and
Ford models equipped with the Mackie-Duluk top structures.
7. CTR brought an action against Aro in 1956 (in a previous case) to enjoin
the alleged infringement and contributory infringement, and to obtain an
accounting, with respect to replacement fabrics made and sold by Aro for
use in both the General Motors and the Ford cars embodying the patented
structures.
8. The interlocutory judgment entered for CTR by the District Court for the
District of Massachusetts, and affirmed by the CA for the First Circuit, was
reversed here (by the SC, before in the 1st Aro Case). 
9. Our previous decision dealt, however, only with the General Motors, and
not with the Ford cars. Like the CA, we treated CTR's right to relief as
depending wholly upon the question whether replacement of the fabric
portions of the convertible tops constituted infringing "reconstruction" or
permissible "repair" of the patented combination.
10. The lower courts had held it to constitute "reconstruction," making the
car owner for whom it was performed a direct infringer and Aro,
which made and sold the replacement fabric, a contributory infringer;
we disagreed, and held that it was merely "repair."
11. The reconstruction-repair distinction is decisive, however, only when the
replacement is made in a structure whose original manufacture and sale
have been licensed by the patentee, as was true only of the General Motors
cars; when the structure is unlicensed, as was true of the Ford cars, the
traditional rule is that even repair constitutes infringement.
12. Thus, the District Court had based its ruling for CTR with respect to the
Ford cars on the alternative ground that, even if replacement of the fabric
portions constituted merely repair, the car owners were still guilty of direct
infringement, and Aro of contributory infringement, as to these unlicensed,
and hence infringing, structures. This aspect of the case was not considered
or decided by our opinion in Aro I.
 13. However, we granted certiorari to consider that question, and to consider
also the issue that had not been decided in Aro I: whether Aro is liable for
contributory infringement, under 35 U.S.C. § 271(c), with respect to its
manufacture and sale of replacement fabrics for the Ford cars.
14. CONTENTION OF CTR: since Ford infringed the patent by making and
selling the top structures without authority from the patentee, persons who
purchased the automobiles from Ford likewise infringed by using and
repairing the structures, and, hence Aro, by supplying replacement fabrics
specially designed to be utilized in such infringing repair, was guilty of
contributory infringement under 35 U.S.C. § 271(c).
15. In Aro Ithe Court said:
16. "It is admitted that petitioners [Aro] know that the purchasers intend to use
the fabric for replacement purposes on automobile convertible tops which
are covered by the claims of respondent's combination patent, and such
manufacture and sale with that knowledge might well constitute
contributory infringement under § 271(c) if, but only if, such a replacement
by the purchaser himself would, in itself, constitute a direct infringement
under § 271(a), for it is settled that, if there is no direct infringement of a
patent, there can be no contributory infringement. . . . It is plain that §
271(c) -- a part of the Patent Code enacted in 1952 -- made no change in the
fundamental precept that there can be no contributory infringement in the
absence of a direct infringement.
17. That section defines contributory infringement in terms of direct
infringement -- namely, the sale of a component of a patented combination
or machine for use 'in an infringement of such patent.' And § 271(a) of the
new Patent Code, which defines 'infringement,' left intact the entire body of
case law on direct infringement. The determinative question, therefore,
comes down to whether the car owner would infringe the combination
patent by replacing the worn-out fabric element of the patented convertible
top on his car ... "
ISSUE/s:
1. WoN Aro is liable for contributory infringement, under 35 U.S.C. § 271(c),
with respect to its manufacture and sale of replacement fabrics for the Ford
cars – YES,
RULING: The result is that the judgment of the Court of Appeals is reversed insofar
as it holds Aro liable for contributory infringement with respect to replacement
fabric sales made after July 21, 1955. The judgment is affirmed insofar as it holds
Aro liable with respect to sales made before that date, but subject to the reservation
based on the knowledge requirement with respect to sales made before January 2,
1954. The case is remanded to the District Court for further proceedings consistent
with this opinion.
RATIO:
The Car Owners Committed Direct Infringement
1. To determine whether Aro committed contributory infringement, we must
first determine whether the car owners, by replacing the worn-out fabric
element of the patented top structures, committed direct infringement.
2. We think it clear, under § 271(a) of the Patent Code and the "entire
body of case law on direct infringement" which that section "left
intact," that they did.
3. Section 271(a) provides that "whoever without authority makes, uses or
sells any patented invention ... infringes the patent." It is not
controverted -- nor could it be -- that Ford infringed by making and selling
cars embodying the patented top structures without any authority from the
patentee.
4. If Ford had had such authority, its purchasers would not have infringed by
using the automobiles, for it is fundamental that sale of a patented article by
the patentee or under his authority carries with it an "implied license to
use.”
5. But with Ford lacking authority to make and sell, it could, by its sale of
the cars, confer on the purchasers no implied license to use, and their
use of the patented structures was thus "without authority," and
infringing under § 271(a).
6. If the owner's use infringed, so also did his repair of the top structure,
as by replacing the worn-out fabric component. Where use infringes,
repair does also, for it perpetuates the infringing use.
 7. "No doubt ... a patented article may be repaired without making the
repairer an infringer, ... but not where it is done for one who is. It is
only where the device in patented form has come lawfully into the
hands of the person for or by whom it is repaired that this is the case.
8. In other words, if one, without right, constructs or disposes of an infringing
machine, it affords no protection to another to have merely repaired it; the
repairer, by supplying an essential part of the patented combination,
contributing by so much to the perpetuation of the infringement."
9. Consequently, replacement of worn-out fabric components with fabrics
sold by Aro, held in Aro I to constitute "repair," rather than
"reconstruction," and thus to be permissible in the case of licensed
General Motors cars, was not permissible here in the case of unlicensed
Ford cars.
10. Here, as was not the case in Aro I, the direct infringement by the car
owners that is prerequisite to contributory infringement by Aro was
unquestionably established.
Aro was a Contributory Infringer
1. We turn next to the question whether Aro, as supplier of replacement
fabrics for use in the infringing repair by the Ford car owners, was a
contributory infringer under § 271(c) of the Patent Code.
2. That section provides: "Whoever sells a component of a patented
machine, manufacture, combination or composition, or a material or
apparatus for use in practicing a patented process, constituting a material
part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a
staple article or commodity of commerce suitable for substantial
noninfringing use, shall be liable as a contributory infringer."
3. We think Aro was indeed liable under this provision. Such a result would
plainly have obtained under the contributory infringement case law that §
271(c) was intended to codify.
4. In cases where, as here, suit was brought to hold liable for contributory
infringement a supplier of replacement parts specially designed for use in
the repair of infringing articles:
5. In Union Tool Co. v. Wilson, supra, 259 U.S. the Court held that, where use
of the patented machines themselves was not authorized, "There was,
consequently, no implied license to use the spare parts in these machines.
As such use, unless licensed, clearly constituted an infringement, the sale of
the spare parts to be so used violated the injunction [enjoining
infringement]."
6. As early as 1897, Circuit Judge Taft, as he then was, thought it "well
settled" that,
7. "where one makes and sells one element of a combination covered by a
patent with the intention and for the purpose of bringing about its use
in such a combination he is guilty of contributory infringement and is
equally liable to the patentee with him who in fact organizes the
complete combination."
8. These cases are all authority for the proposition that "The right of one,
other than the patentee, furnishing repair parts of a patented
combination, can be no greater than that of the user, and he is bound to
see that no other use of such parts is made than that authorized by the
user's license."
9. HOWEVER, the language of § 271(c) presents a question, apparently not
noticed by the parties or the courts below, concerning the element of
knowledge that must be brought home to Aro before liability can be
imposed.
10. It is only sale of a component of a patented combination "knowing the
same to be especially made or especially adapted for use in an
infringement of such patent" that is contributory infringement under
the statute.
11. Was Aro "knowing" within the statutory meaning because -- as it
admits, and as the lower courts found -- it knew that its replacement
fabrics were especially designed for use in the 1952-1954 Ford
convertible tops, and were not suitable for other use? Or does the
statute require a further showing that Aro knew that the tops were
patented, and knew also that Ford was not licensed under the patent, so
that any fabric replacement by a Ford car owner constituted
infringement?
12. On this question, a majority of the Court is of the view that § 271(c) does
 require a showing that the alleged contributory infringer knew that the
combination for which his component was especially designed was both
patented and infringing.
13. With respect to many of the replacement fabric sales involved in this
case, Aro clearly had such knowledge. For, by letter AB informed Aro
that it held the Mackie-Duluk patent; that it had granted a license under the
patent to General Motors but to no one else; and that from the foregoing and
from an inspection of the convertible automobile sold by the Ford Motor
Company that anyone selling ready-made replacement fabrics for these
automobiles would be guilty of contributory infringement of said patent."
14. Thus, the Court's interpretation of the knowledge requirement affords
Aro no defense with respect to replacement fabric sales made after
January 2, 1954.
15. It would appear that the overwhelming majority of the sales were, in fact,
made after that date, since the oldest of the cars were 1952 models and since
the average life of a fabric top is said to be three years.
16. With respect to any sales that were made before that date, however,
Aro cannot be held liable in the absence of a showing that, at that time,
it had already acquired the requisite knowledge that the Ford car tops
were patented and infringing.
17. When the case is remanded, a finding of fact must be made on this question
by the District Court, and, unless Aro is found to have had such prior
knowledge, the judgment imposing liability must be vacated as to any sales
made before January 2, 1954.
18. As to subsequent sales, however, we hold, in agreement with the lower
courts, that Aro is liable for contributory infringement within the terms
of § 271(c).
Effect of AB and Ford’s 1955 Agreement on Liability of Aro
1. The defense is based on the agreement of July 21, 1955, between Ford and
AB.
a. "1. AB hereby releases Ford, its associated companies . . . [and] its
and their dealers, customers and users for its and their products, of
all claims that AB has or may have against it or them for
infringement of said patents arising out of the manufacture, use or
sale of devices disclosed therein and manufactured before
December 31, 1955, other than the 'replacement top fabrics'
licensed under paragraph 3. "
b. In paragraph 3, AB licensed Ford to make and sell "replacement
top fabrics" for the Mackie-Duluk top structures, receiving in
return a royalty -- separate from the $73,000 lump-sum payment --
of 5% of the net sales.
c. And in paragraph 5, AB expressly reserved the right "to license
under ... said Mackie-Duluk patent ... the manufacture, use and sale
of replacement top fabrics other than those supplied to, made by or
sold by Ford ... to the extent that AB is entitled to reserve such
right ... "
2. By authorizing Ford to use the top structures after 1955, they were then
authorized to repair.By the agreement, AB authorized the Ford car
owners, in return for a payment from Ford, to use the patented top structures
from and after July 21, 1955. Since they were authorized to use the
structures, they were authorized to repair them so as "to preserve [their]
fitness for use. . . ."
3. Provisions restricting right of use and repair (par. 3 and 5) are
INVALID.When the patentee has sold the patented article or authorized its
sale, and has thus granted to the purchaser an "implied license to use," it is
clear that he cannot thereafter restrict that use; "so far as the use of it was
concerned, the patentee had received his consideration, and it was no longer
within the monopoly of the patent." In particular, he cannot impose
conditions concerning the unpatented supplies, ancillary materials, or
components with which the use is to be effected.
4. Through the agreement, CTR cannot restrict others from using or
repairing the productIt follows that here, where the patentee has, by the
Ford agreement, explicitly authorized the purchasers to use the articles, the
patentee cannot thereafter restrict that use by imposing a condition that
replacement parts may be purchased only from a licensed supplier.
5. Conclusion: No contributory infringement for those sales made after
1955.With the restriction thus eliminated from consideration, it is clear that
Aro cannot be liable for contributory infringement in connection with sales
of replacement fabrics made after July 21, 1955. After that date, the Ford
car owners had authority from the patentee -- indeed, had a "license" -- fully
to use and repair the patented structures, hence no direct infringement and
subsequently, no contributory infringement by ARO.
 005 C.R. BARD INC v. ACS (Arcenas)
August 2, 1990 | Plage, Circuit J. | Contributory infringement
PETITIOENR: C.R. Bard, Inc. (Bard)
RESPONDENT: Advanced Cardiovascular Systems, Inc. (ACS)
SUMMARY: ACS was marketing the only perfusion catheter approved by the
United States Food and Drug Administration (US-FDA) for use in coronary
angioplasty.  Bard sued ACS for alleged infringement of its ‘017 U.S. Patent,
which was filed in 1983 and was issued to Harvinder Sahota in 1986, which Bard
purchased all rights to the said patent in the same year. Bard claims that ACS’
catheter was especially adapted for use by a surgeon in a manner that infringed
claim 1 of Bard’s method patent. Hence, ACS was a contributory infringer and had
actively induced infringement. Bard successfully alleged that there was no
evidence that any procedures using the ACS catheter would be non-infringing.
ACS appealed, claiming that the catheter could be used in non-infringing
procedures. The US District Court for the Central District of California granted
Bard summary judgment against ACS determining that the '017 patent was not
invalid, and finding infringement of claim 1 of the '017 patent.
ISSUES: 1) Does an individual induce infringement under 35 U.S.C. § 271 by
actively and knowingly aiding and abetting another person’s direct infringement?
YES. An individual induces infringement under 35 U.S.C. § 271 by actively and
knowingly aiding and abetting another person’s direct infringement
2) Whether the ACS catheter has no use except through practice of the patented
method thereby infringed on Bard’s patent – YES. On this record a reasonable jury
could find that there are substantial non-infringing uses for the ACS catheter
and that Bard is not entitled to judgment as a matter of law. Example: claim 1 is
applicable to the third of the fact patterns, it remains true that on this record a
reasonable jury could find that, pursuant to the procedure described in the first fact
pattern (a non-infringing procedure).
The grant of summary judgment finding ACS a contributory infringer under Sec.
271(c) is not appropriate. The evidence before the trial judge on the motion for
summary judgment was at best ambiguous regarding the fact pattern or patterns
under which the catheter was to be used. Because a genuine issue of material fact
thus exists, a grant of summary judgment finding ACS induced infringement is
also not appropriate. Included in the grant of summary judgment in Bard's favor
was a determination by the trial judge that the '017 patent was not invalid for
obviousness. This conclusion rested solely on the statutory presumption of validity.
HOWEVER, ACS presented evidence on this issue, including certain prior art,
from which inferences could reasonably be drawn contrary to those of the trial
court. Thus, ACS has raised a genuine issue of fact. Accordingly, the grant of
summary judgment of no invalidity must be reversed and remanded for a full
hearing and determination of this issue. Case remanded so no actual ruling as to
whether there is infringement.
DOCTRINE: An individual induces infringement under 35 U.S.C. § 271 by
actively and knowingly aiding and abetting another person’s direct infringement.
FACTS:
1. SUBJECT MATTER: C.R. Bard’s '017 patent relating to a method for
using a catheter in coronary angioplasty.
2. In the human circulatory system, the left ventricle of the heart pumps blood
into the aorta, the body's largest artery, which then distributes the blood to
smaller arteries throughout the body. The first arteries to branch off from
the aorta are the left and right main coronary arteries, which provide blood
to the heart muscle itself.
3. Atherosclerosis may cause these arteries to be progressively narrowed
(stenosis) by the formation of plaque within the arteries resulting in
coronary artery disease. This decreases blood flow to the heart muscle and
may cause problems ranging from chest pain (angina) to, in the extreme, a
fatal heart attack (myocardial infarction).
4. Bypass surgery allows the grafting of a vein to the affected coronary artery
to bypass the stenosis. Percutaneous transluminal coronary angioplasty
(PTCA), an alternative procedure, involves inserting a deflated balloon
dilation catheter through the patient's arteries to reach the stenosis in the
coronary artery. The balloon is inflated to dilate the stenosis and then
deflated and removed to restore blood flow to the heart.
5. A difficulty associated with PTCA is that a prolonged blockage of blood
flow to the heart muscle in the course of the procedure, caused by the
 inflated balloon, may itself result in angina or a heart attack. Typically
during a PTCA, repeated inflations of the balloon, each lasting from 60-90
seconds, are performed.
6. (Original Patent) U.S. Patent '725 filed in 1982 and issued in 1984,
discloses a catheter having a multiple surgical cuff with an inflatable cuff
member, and having a central lumen or channel containing side window
openings in fluid communication with the central lumen.
a. The side openings allow blood to circulate through the central
lumen even while the inflatable cuff is inflated, thus avoiding
blockage of fluid flow when the cuff member is inflated. The '725
patent discloses that, in an angioplasty, the side openings ... should
be located at the level of the aorta to create the highest blood
pressure and to prevent the side openings ... from being closed
laterally by an adherent small artery wall.
7. In 1983, inventor Sahota filed a patent application (ultimately issuing as the
'017 patent, the patent at issue in this case) having
a. device claims for a catheter to administer an angioplasty treatment
and
b. method claims for the manner in which a surgeon would use the
catheter in administration of an angioplasty treatment.
8. BUT, all claims were rejected by the patent examiner. In particular, claim 4
of the application (after amendment, became claim 1 of the '017 patent) was
rejected, inter alia, in view of the prior art '725 patent.
a. Following this rejection, Sahota modified certain claims, BUT
those were also rejected.
b. Following this rejection, the inventor removed all claims to a
catheter, and claimed only a method of administering an
angioplasty.
9. FINALVERSION OF CLAIM 4: Sahota argued to the examiner that "the
proximal orifices which admit blood to the main lumen in the blood catheter
[are] 'immediately adjacent said balloon’"
10. Claim 4 of the application was ultimately allowed as claim 1 of the '017
patent, and contained the "immediately adjacent" language.
THE PATENT INFRINGEMENT
ACS’ Catheter BARD’s Catheter
ACS Stack Perfusion Catheter ‘017 US Patent
(devise itself) balloon-type catheter Method claim of administering an angioplasty
having side openings in the main lumen where the proximal orifices which admit
located near the proximal end of the blood to the main lumen in the catheter are
balloon where the main lumen is simply immediately adjacent the balloon.
open past the distal end of the balloon to
let blood flow through while the balloon
is inflated
ACS catheter has a series of ten openings Claim 1 of the '017 patent claims, inter alia,[a]
in the tube near, and at the proximal end method of administering an angioplasty
of, the balloon. The first of these treatment to a patient to produce acceptable
openings--the one closest to the balloon-- blood flow in a stenotic region of a coronary
is approximately six millimeters (less artery having restricted blood flow,
than 1/4 inch) from the edge of the comprising: inserting a tube having an outer
proximal end of the balloon. The surface enclosing a main lumen terminating in
remainder are located along the main a main axial orifice into said coronary artery
lumen at intervals, the furthest from the channeling blood flow through the wall of
balloon being 6.3 centimeters said proximal portion of said main lumen
(approximately 2 1/2 inches) away. immediately adjacent said balloon to fluidly
connect locations within said coronary artery
surrounding said proximal and distal portions
of said tube while said balloon is inflated
within said coronary artery to conduct blood
downstream from the portion of said coronary
artery occluded by the inflated balloon
11. ACS was marketing the only perfusion catheter approved by the United
States Food and Drug Administration (US-FDA) for use in coronary
angioplasty. 
12. Bard sued ACS for alleged infringement of its ‘017 U.S. Patent, which was
filed in 1983 and was issued to Harvinder Sahota in 1986.
a. Bard purchased all rights to the ‘017 patent in the same year.
13. Bard alleges that the ACS catheter is especially adapted for use by a
surgeon in the course of administering a coronary angioplasty in a manner
that infringes claim 1 of the '017 patent, that therefore ACS is a contributory
infringer, and that ACS actively induces infringement.
14. ACS denied both charges and challenged the validity of the Bard patent.
 The district judge agreed with Bard and granted Bard's request for summary
judgment, finding ACS to have "actively induced or contributed to the
infringement" of claim 1 of the '017 patent, and to have failed to prove the
invalidity of the '017 patent.
ISSUE/s:
1. Does an individual induce infringement under 35 U.S.C. § 271 by actively
and knowingly aiding and abetting another person’s direct infringement?
YES. An individual induces infringement under 35 U.S.C. § 271 by actively
and knowingly aiding and abetting another person’s direct infringement
2. Whether the ACS catheter has no use except through practice of the
patented method thereby infringed on Bard’s patent
RULING: REVERSED AND REMANDED. The grant of summary judgment is
reversed in all respects, and the matter is remanded to the trial court for further
proceedings consistent with this opinion.
RATIO:
On summary judgment (can skip)
1. The law governing summary judgment is well established. Summary judgment
is as appropriate in a patent case as it is in any other case. A motion for
summary judgment is properly granted where the pleadings, depositions,
answers to interrogatories, and admissions on file, together with the affidavits, if
any, show that there is no genuine issue as to any material fact and that the
moving party is entitled to a judgment as a matter of law.
a. In reviewing the grant by the trial court of a summary judgment
motion, this court is not bound by the court's holding that no material
facts are in dispute; we are required to determine for ourselves whether
the standards for summary judgment have been met.
The infringement
1. Bard alleges that under 35 U.S.C. § 271(b), (c) (1988): ACS has both (1)
induced infringement of method claim 1 in the '017 patent and contributorily
infringed.
2. A finding of induced or contributory infringement must be predicated on a direct
infringement of claim 1 by the users of the ACS catheter. Bard argues that by
selling its catheter for use by surgeons in angioplasty procedures, ACS is a
contributory infringer of Bard's method claim 1 in the '017 patent.
a. Section 271 of Title 35, United States Code, deals with infringement of
patents; subsection (c) specifies what is necessary to be a contributory
infringer.
3. For purposes of this case, the statute requires that ACS sell a catheter for use in
practicing the '017 process, which “use” constitutes a material part of the
invention, knowing that the catheter is especially made or adapted for use in
infringing the patent, and that the catheter is not a staple article or commodity of
commerce suitable for substantial non-infringing use.
a. To establish infringement Bard seeks to establish the requisite direct
infringement by arguing that there is no evidence that any angioplasty
procedures using the ACS catheter would be non-infringing i.e.
evidence that any angioplasty procedure using ACS catheter is
infringing
4. Testing this assertion requires a two step analysis.
a. First is a determination of the scope of the claim at issue.
b. Second is an examination of the evidence before the court to ascertain
whether, under Sec. 271(c), use of the ACS catheter would infringe the
claim as interpreted 
5. Claim interpretation, which is a question of law, involves examination of the
claim at issue, the specification, and the prosecution history. Claim
interpretation may depend upon conflicting evidentiary material which can give
rise to a genuine factual dispute. Resolution of any such factual dispute is
required for proper claim interpretation.
6. Bard argues that the prior art '725 patent teaches the use of the catheter with
the inlets (side openings) where the blood enters the tube placed only in the
aorta, whereas the '017 method in suit involves insertion of the catheter into
the coronary artery in such a manner that the openings "immediately adjacent
[the] balloon fluidly connect locations within [the] coronary artery surrounding
[the] proximal and distal portions of [the] tube."
a. Thus, a surgeon, inserting the ACS catheter into a coronary artery to
a point where an inlet at the catheter's proximal end draws blood
from the artery, infringes the '017 patent.
7. This case involves two competing manufacturers of catheters.  However, it
appears to be the doctor using the catheter.  Thus, Congress amended the
patent laws in 1996 to exempt doctors who perform medical processes from
liability for infringement.
How is the ‘017 patent different from the use of ACS catheter?
8. Note that the ACS catheter has a series of ten openings in the tube near, and at 12. On this record a reasonable jury could find that there are substantial non-
the proximal end of, the balloon. The first of these openings--the one closest to infringing uses for the ACS catheter and that Bard is not entitled to judgment
the balloon--is approximately six millimeters (less than 1/4 inch) from the edge as a matter of law. The grant of summary judgment finding ACS a contributory
of the proximal end of the balloon. The remainder are located along the main infringer under Sec. 271(c) is not appropriate.
lumen at intervals, the furthest from the balloon being 6.3 centimeters a. The evidence before the trial judge on the motion for summary
(approximately 2 1/2 inches) away. judgment was at best ambiguous regarding the fact pattern or patterns
9. It would appear that three possible fact patterns may arise in the course of using under which the catheter was to be used.
the ACS catheter during a PTCA. b. Because a genuine issue of material fact thus exists, a grant of summary
a. The first pattern involves positioning the catheter such that all of its judgment finding ACS induced infringement is also not appropriate.
side openings are located only in the aorta. This is clearly contemplated c. Included in the grant of summary judgment in Bard's favor was a
by the prior art '725 patent cited by the examiner; claims to this method determination by the trial judge that the '017 patent was not invalid
were expressly given up by inventor Sahota during patent prosecution for obviousness. This conclusion rested solely on the statutory
and are not now available to Bard. presumption of validity. HOWEVER, ACS presented evidence on this
b. The second of the possible fact patterns - all of the side openings are issue, including certain prior art, from which inferences could
located within the coronary artery. This situation appears to have been reasonably be drawn contrary to those of the trial court. Thus, ACS has
contemplated by the '017 patent. In this situation, it correctly can be raised a genuine issue of fact. Accordingly, the grant of summary
said that blood flowing through the main lumen will "fluidly connect judgment of no invalidity must be reversed and remanded for a full
locations within [the] coronary artery surrounding [the] proximal and hearing and determination of this issue.
distal portions of [the] tube."
c. In the third fact pattern, some of the side openings are located in the
aorta and some are located in the artery.
C.R. Bard ‘017 PATENT ILLUSTRATION
10. The trial judge concluded, that ACS has added extra holes further from the
balloon does not affect the conclusion of infringement, as the patent does not
require that all holes be "immediately adjacent" the balloon, nor that the blood
flowing through the balloon come solely from the coronary artery.
11. There is evidence in the record that 40 to 60 percent of the stenoses that require
angioplasty are located less than three centimeters from the entrance to the
coronary artery.
a. ACS argues that the ACS catheter may be used in such a way that all of
the openings are located in the aorta. Even assuming that the trial
judge's conclusion is correct that claim 1 is applicable to the third of
the fact patterns, it remains true that on this record a reasonable
jury could find that, pursuant to the procedure described in the
first fact pattern (a non-infringing procedure), there are substantial
non-infringing uses for the ACS catheter.
b. [w]hen a charge of contributory infringement is predicated entirely on
the sale of an article of commerce that is used by the purchaser
[allegedly] to infringe a patent, the public interest in access to that
article of commerce is necessarily implicated

SC RULING
 006 DAWSON CHEM. CO. v. ROHM & HAAS CO. (PELIÑO) affirmative for the second. Viewed against the backdrop of judicial precedent, court
believes that the language and structure of the statute lend significant support to R&H’s
June 27, 1980 | Blackmun, J. | Contributory Infringement contention that, because Sec. 271(d) immunizes its conduct from the charge of patent
misuse, it should not be barred from seeking relief. The approach that Congress took
toward the codification of contributory infringement and patent misuse reveals a
compromise between those 2 doctrines and their competing policies that permits patentees
PETITIONER: Dawsom Chem. Co. to exercise control over non-staple articles used in their inventions. Sec. 271(c) identifies
the basic dividing line between contributory infringement and patent misuse. It adopts a
RESPONDENT: Rohm & Haas Co. restrictive definition of contributory infringement that distinguishes between staple and
nonstaple articles of commerce. It also defines this class of nonstaple items narrowly. it is
no longer necessary to resort to the doctrine of patent misuse in order to deny patentees
control over staple goods used in their inventions. Court said that since the present task is
SUMMARY: In the 1950’s, propanil was discovered to have properties that made it
one of statutory construction, questions of public policy cannot be determinative of the
useful as a selective, post-emergence herbicide, particularly well-suited for the cultivation
outcome unless specific policy choices fairly can be attributed to Congress itself.
of rice. If it is applied in the proper quantities, it kills weeds normally found in rice crops
Congress chose a compromise between competing policy interests. The policy of free
without adversely affecting the crops themselves. Eventually, Monsanto Company was
competition runs deep in our law. It underlies both the doctrine of patent of misuse and
able to get a patent on the propanil itself, but that patent was subsequently invalidated
the general principle that the boundary of patent monopoly is to be limited by the literal
because it was revealed to be in the prior art dating back to 1902 even though the
scope of the patent claims. But the policy of stimulating invention that underlies the entire
herbicide use was only recently discovered, so Monsanto declared the patent to the public.
patent system runs no less deep. And the doctrine of contributory infringement, which has
So R&H obtained a patent on the method or process for applying propanil. They became
been called “an expression both of law and morals” can be of crucial importance in
the owners of the Wilson patent, which covered a method for applying propanil to inhibit
ensuring that the endeavors and investments of the inventor do not go unrewarded. R&H
the growth of undesirable plants in areas containing established crops. On the other hand,
is not guilty of patent misuse since its conduct is in sync with Sec. 271(d). It is not guil
Dawson is also a chemical manufacturer. They have manufactured and sold propanil for
application to rice crops since before R&H received their patent. They market the
chemical in containers on which are printed directions for application in accordance with
the method claimed in the Wilson patent. They didn’t cease manufacturing and selling the DOCTRINE: The provisions of Sec. 271(d) effectively confer upon the patentee, as a
propanil after the Wilson patent was issued despite knowledge that farmers purchasing lawful adjunct of his patent rights, a limited power to exclude others from competition in
their products would infringe on the patented method by applying propanil to their crops. nonstaple goods. (In addition to the ratio after the issues)
R&H filed a case in the US District Court for the Southern District of Texas seeking
injunctive relief against Dawson on the ground that the manufacturing and selling of
propanil interfered with its patent rights. The complaint alleged that not only did Dawson
contribute to infringement by farmers who purchased and used Dawson’s propanil, but FACTS:
they also actually induced such infringement by instructing the farmers how to apply the
herbicide. Dawson responded by requesting licenses to practice the patented method, but 1. In 1950’s, a chemical compound known as “3, 4-dichloropropionanilide”,
R&H denied the licenses. Dawson moved for summary judgment which the District Court later referred to as propanil was discovered to have properties that made it
granted since R&H was barred from obtaining relief against the infringers because of
useful as a selective, “post-emergence” herbicide, particularly well-suited
patent misuse (which translates to: even if there is contributory infringement, if you
for the cultivation of rice.
commit patent misuse, then you can’t seek for the relief of contributory infringement). On
appeal to the US CA, they reversed saying that propanil is a nonstaple article (no
a. If such is applied in the proper quantities, it kills weeds normally found
commercial use except in connection with the patented invention), so since R&H’s
conduct was designed to accomplish only what the statute has contemplated, the court
in rice crops without adversely affecting the corps themselves.
ruled that the defense of patent misuse was of no avail. Hence, this petition. The issues in
b. It permits spraying of general areas where the crops are already
this case are whether or not R&H is guilty of patent misuse and whether or not R&H may
maintain an action for contributory infringement against other manufacturers of the growing, and eliminates the necessity for hand weeding or flooding of
chemical use in the process. As to the first issue, the Court answered in the negative and the rice fields.
 c. It’s one of several herbicides that is commercially available for use in
rice cultivation.
2. Efforts to obtain patent rights to propanil or its use have been continuous.
a. Monsanto Company was the first of 3 successive applications for a
patent on propanil itself, but the patent granted was subsequently
declared invalid.
b. Monsanto tried to enforce the patent by suing Rohm & Haas (R&H), a
competing manufacturer, for direct infringement, but the court in that
case said that propanil had been implicitly revealed in prior art dating
back to 1902 even though the herbicide use was only recently
discovered, so Monsanto declared the patent to the public.
3. Because of the invalidation of the Monsanto patent, R&H obtained a patent
on the method or process for applying propanil.
a. This began in 1958 and bore fruit when the US Patent Office issued the
Wilson patent.
b. Wilson patent (280 patent) contains several claims covering a method
for applying propanil to inhibit the growth of undesirable plants in
areas containing established crops. Since the issuance of the Wilson
patent, R&H has been the sole owner of the patent. (The Wilson
patent and R&H’s patent are the same; court sometimes uses it
interchangeably)
4. Dawson Chem. Co. (Dawson) are also chemical manufacturers.
a. They have manufactured and sold propanil for application to rice crops
since before R&H received its patent.
b. They market the chemical in containers on which are printed directions
for application in accordance with the method claimed in the Wilson
patent. (product nila Dawson but yung method is based on Wilson)
c. They did not cease manufacture and sale of propanil after the patent
was issued despite knowledge that farmers purchasing their products
would infringe on the patented method by applying propanil to their
crops.
5. R&H filed a case in the US District Court for the Southern District of
Texas, seeking injunctive relief against Dawson on the ground that their
manufacture and sale of propanil interfered with its patent rights.
a. The complaint alleged that not only did Dawson contribute to
infringement by farmers who purchased and used Dawson’s propanil,
but they also actually induced such infringement by instructing the
farmers how to apply the herbicide.
b. Dawson responded by requesting licenses to practice the patented
method, but R&H denied the licenses.
c. Dawson raised the defense of patent misuse and filed a counterclaim.
d. Parties entered into a stipulation of facts and moved for partial
summary judgment, arguing that R&H has misused its patent by
conveying the right to practice the patented method only to purchasers
of its own propanil.
6. District Court granted summary judgment for Dawson.
a. It agreed that R&H was barred from obtaining relief against infringers
of its patent because it attempted illegally to extend its patent
monopoly. (Patent misuse based on how I understood it in the case is
when the patentee extends the monopoly of its patent to things which
are unpatented.)
b. It held that 35 USC § 271(d) 1 specifies certain conduct which is not to
be deemed patent misuse, but ruled however that the language of the
provision simply does not encompass the totality of R&H’s conduct in
the case.
1
271(c): [w]hoever sells a component of a patent machine, manufacture, combination, or composition, or
a material or apparatus for use in practicing a patented process, constituting a material part of the
invention, knowing the same to be especially made or especially adapted for use in an infringement of
such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use,
shall be liable as a contributory infringer.”
Sec. 271(d): [n]o patent owner otherwise entitled to relief for infringement or contributory infringement of
a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason
of his having done one or more of the following: (1) derived revenue form acts which if performed by
another without his consent would constitute contributory infringement of the patent; (2) licensed or
authorized another to perform acts which if performed without his consent would constitute contributory
infringement of the patent; (3) sought to enforce his patent rights against infringement or contributory
infringement.
 c. That their refusal to grant licenses other than the implied licenses
conferred by operation of law to the purchasers of R&H constituted an
attempt by means of a “tying” arrangement” to effect a monopoly over
an unpatented component of the process.
d. Ths conduct would be deemed patent misuse under the judicial
decisions that preceded the provision and that neither the legislative
history of such nor the language indicates that the rule has been
modified.
7. US CA for the 5th Circuit reversed.
a. It emphasized that propanil is a nonstaple article – one that has no
commercial use except in connection with R&H’s patented invention.
b. It concluded that the legislation restored to the patentee protection
against contributory infringement that decisions of the Court had
undermined.
c. To securet hat result, Congress found it necessary to cut back on the
doctrine of patent misuse.
d. “Congress did clearly provide for a patentee’s right to exclude others
and reserve to itself, if it chooses, the right to sell nonstaples used
substantially only in its invention.”
e. Since R&H’s conduct was designed to accomplish only what the statute
has contemplated, the court ruled that the defense of patent misuse was
of no avail.
8. Hence, this petition.
9. Material facts that are not in dispute:
a. Validity of the Wilson patent is not in question, hence, it is to be
assumed that R&H is the lawful owner of the sole and exclusive right
to use, license others to use, propanil as a herbicide on rice fields in
accordance with the method in the Wilson patent.
b. Dawson does not dispute that their manufacture and sale of propanil,
together with instructions for use as an herbicide, constitute
contributory infringement of the R&H patent.
c. Dawson admits:
i. Propanil constitutes a material part of R&H’s invention and that it
is especially made or especially adapted for use in an infringement
of the patent and that it is not a staple article or commodity of
commerce suitable for substantial noninfringing use.
ii. That they have produced and sold propanil with knowledge that it
would be used in a manner infringing on R&H’s patent rights.
iii. They admit the commission of a tort and raise as their only defense
to liability the contention that R&H, by engaging in patent misuse,
comes to court with unclean hands.
d. The parties agree that: R&H makes and sells propanil, that it refused to
license Dawson or any others to do the same, that it hasn’t granted
express licenses either to retailers or to end users of the product, and
that farmers who buy propanil from R&H may use it, without fear of
being sued for direct infringement, by virtue of an “implied license”
they obtain when R&H relinquishes its monopoly by selling the
propanil.
e. They further agree that Sections 271(d)(1) and (3) permit R&H to both
sell propanil itself and to sue others who sell the same product without
a license and that under Sec. 271(d)(2), it would be free to demand
royalties from others for the sale of propanil if it chose to do so.
10. Arguments of Dawson:
a. That there has been misuse because R&H has “tied” the sale of patent
rights to the purchase of propanil, an unpatented and indeed
unpatentable article and because it refused to grant licenses to other
producers of the chemical compound.
b. That Sec. 271(d) does not permit any sort of tying arrangement, and
that resort to such a practice excludes R&H from the category of
patentees “otherwise entitled to relief” within the meaning of the
provision.
11. Arguments of R&H:
a. They deny patent misuse; that Sec. 271(d) by express mandate, excepts
from characterization as patent misuse.
 b. That if the conduct results in an extension of the patent right to a
control over an unpatented commodity, in this instance, the extension
has been given express statutory sanction.
ISSUE/s:
1. WON owner of a patent on a chemical process is guilty of patent misuse
and therefore is barred from seeking relief against contributory infringement
of its patent rights, if it exploits the patent only in conjunction with the sale
of an unpatented article that constitutes a material part of the invention and
is not suited for commercial use outside the scope of the patent claims. –
NO, the conduct of R&H is not dissimilar in either nature or effect from the
conduct that is clearly embraced in Sec. 271(d).
2. WON R&H, owner of a process patent on a chemical herbicide, may
maintain an action for contributory infringement against other
manufacturers of the chemical use in the process. – YES, the provisions of
Sec. 271(d) effectively confer upon the patentee, as a lawful adjunct of his
patent rights, a limited power to exclude others from competition in
nonstaple goods.
RULING: The judgment of the Court of Appeals is therefore AFFIRMED.
RATIO:
On whether the acts of R&H are considered under patent misuse
1. Viewed against the backdrop of judicial precedent, court believes that
the language and structure of the statute lend significant support to
R&H’s contention that, because Sec. 271(d) immunizes its conduct
from the charge of patent misuse, it should not be barred from seeking
relief.
a. The approach that Congress took toward the codification of
contributory infringement and patent misuse reveals a compromise
between those 2 doctrines and their competing policies that permits
patentees to exercise control over non-staple articles used in their
inventions.
2. Sec. 271(c) identifies the basic dividing line between contributory
infringement and patent misuse.
a. It adopts a restrictive definition of contributory infringement that
distinguishes between staple and nonstaple articles of commerce. It
also defines this class of nonstaple items narrowly.
b. This provision places materials like dry ice in the Carbice case
outside the scope of contributory infringement.
c. As a result, it is no longer necessary to resort to the doctrine of
patent misuse in order to deny patentees control over staple goods
used in their inventions.
3. The provisions of Sec. 271(d) effectively confer upon the patentee, as a
lawful adjunct of his patent rights, a limited power to exclude others
from competition in nonstaple goods.
a. A patentee may sell a nonstaple article himself while enjoining
others from marketing that same good without his authorization.
b. By doing so, he is able to eliminate competitors, and thereby to
control the market for that product.
c. His power to demand royalties from others for the privilege of
selling the nonstaple item itself implies that the patentee may
control the market for the nonstaple good; otherwise, his “right” to
sell licenses for the marketing of the nonstaple good would be
meaningless, since no one would be willing to pay him for a
superfluous authorization.
4. In this case, the conduct of R&H is not dissimilar in either nature or
effect from the conduct that is clearly embraced in Sec. 271(d).
a. R&H sells propanil, authorizes others to use propanil, and it sues
contributory infringers; these are all protected activities.
b. R&H does not license others to sell propanil, but nothing on the
face of the statute requires it to do so.
c. The sum effect of R&H’s actions is to suppress competition in the
 market for an unpatented commodity. But, in this, its conduct is no a.
different from that which the statute expressly protects.
b.
5. The one aspect of R&H’s behavior that is not expressly covered by Sec.
271(d) is its linkage of 2 protected activities—sale of propanil and
authorization to practice the patented process—together in a single
transaction.
c.
a. Dawson argues that this linkage, which they characterize as
“tying”, supplies the otherwise missing element of misuse.
But court said that: Sec. 271(d) permits licensing but doesn’t require it.
Dawson failed to adduce any evidence from the legislative history that
the offering of a license to the alleged contributory infringer was a
critical factor in inducing Congress to retreat from the Mercoid
decisions.
Dawson’s argument runs contrary to the long-settled view that the
essence of a patent grant is the right to exclude others from profiting by
the patented invention.

b. But the argument of Dawson fails to identify any way in which this
“tying” of 2 expressly protected activities results in any extension of
control over unpatented materials beyond what Sec. 271(d) already
allows. Nevertheless, the language of the provision does not
explicitly resolve the question when linkage of this variety becomes
patent misuse.
9. Dawson argues that the interpretation of Sec. 271(d) as adopted is
foreclosed by decisions of the court following the passage of the 1952 Act.
That in subsequent cases, the Court has continued to rely upon the Mercoid
decisions, but the Court said that the decisions there were not directly
concerned with the doctrine of contributory infringement and they didn’t
require the court to evaluate Sec. 271(d) or its impact on Mercoid.

6. Dawson argues that the legislative materials indicate a modest purpose for
Sec. 271, while R&H asserts that the principal purpose of Congress was to
clarify the law of contributory infringement as it had been developed by the
courts, rather than to effect any significant substantive change.
7. But the court said that based on the legislative history 2, there is nothing to
support this assertion.
a. R&H has done nothing that would extend its right of control over
unpatented goods beyong the line that Congress drew.
b. R&H, to be sure, has licensed use of its patented process only in
connection with purchases of propanil. But propanil is a nonstaple
product, and its herbicidal property is the heart of H&R’s
invention.
10. Court said that since the present task is one of statutory construction,
questions of public policy cannot be determinative of the outcome
unless specific policy choices fairly can be attributed to Congress itself.
a. Congress chose a compromise between competing policy interests.
The policy of free competition runs deep in our law. It underlies
both the doctrine of patent of misuse and the general principle that
the boundary of patent monopoly is to be limited by the literal
scope of the patent claims.
b. But the policy of stimulating invention that underlies the entire
patent system runs no less deep. And the doctrine of contributory
infringement, which has been called “an expression both of law and
morals” can be of crucial importance in ensuring that the
endeavors and investments of the inventor do not go unrewarded.

c. The method of doing business is essentially the same method as that
condemned in the Mercoid decision and the legislative history would
reveal that Sec. 271(d) was deisgned to retreat from Mercoid.
8. Dawson argues that the unwillingness of R&H to offer similar licenses to
the would-be competitors in the manufacture of propanil would legally
distinguish its case and set it outside Sec. 271(d).
2
See legislative history at the end.
c. It is perhaps noteworthy that holders of “new use” patents on
chemical processes were among those designated to Congress as
intended beneficiaries of the protection against contributory
infringement that Sec. 271 was designed to restore.
d. Characteristics of practical chemical research are such that this
form of patent protection is particularly important to inventors in
that field. The number of chemicals either known to scientists or
 disclosed by existing research is vast.
e. Under the construction of Sec. 271(d) that Dawson advances, the
rewards available to those willing to undergo the time, expense, and
interim frustration of such practical research would provide at best
a dubious incentive. As a result, noninventors would be almost
assured of an opportunity to share in the spoils even though they
contributed nothing to the discovery.
f. The incentive to await the discoveries of others might well prove
sweeter than the incentive to take the initiative oneself.
g. Thus, they hold that R&H has not engaged in patent misuse, either
by its method of selling propanil or by its refusal to license others
to sell that commodity.
White, J., dissenting (Joined by Justices Brennan, Marshall, and Stevens):
1. For decades, the court has denied relief from contributory infringemet to
patent holders who attempt to extend their patent monopolies to unpatented
materials used in connection with patented inventions.
a. In this case, Justice White says that the court here refused to apply the
patent misuse principle in the very area in which such attempts to
restrain competition are most likely to be successful.
b. The court in this case holds exempt from the patent misuse doctrine a
patent holder’s refusal to license others to use a patented process unless
they purchase from him an unpatented product that has no substantial
use except in the patented process.
c. That in deciding in favor of R&H, this court construed Sec. 271, a
provision that created exceptions to the misuse doctrine.
2. He says that in construing statutes, the court has subscribed to the view that
they should be wary of testimony before the committee hearings and that
the fears and doubts of the opposition are no authoritiative guide to the
construction of legislation.
3. Justice White says that based on the committee reports or even in those
found in the statements of those who sponsored the bill, they couldn’t find
the interpretation adopted by this court; it only focused on 1 interpretation.
4. All parties as well as the courts agree that R&H’s refusal to license the use
of its patent except to those who purchase unpatented propanil from it
would be deemed patent misuse and would bar recovery from contributory
infringement.
5. In several jurisprudence, the court emphasized that the patent misuse
doctrine applies whatever the nature of the device by which the owner of a
patent seeks to effect such unauthorized extension of the monopoly.
a. The decisions established that the patent misuse doctrine would bar
recovery by a patent holder who refused to license others to use a
patented process unless they purchased from him an unpatented product
for use in the process.
b. Such conduct was deemed patent misuse because it involved an attempt
to extend the patent monopoly beyond the scope of the invention to
restrain competition in the sale of unpatented materials.
6. Justice White believes that the conduct of R&H clearly constitutes patent
misuse under the pre-Mercoid decisions because they refused to license
others to use its patented process unless they buy the unpatented propanil
from them.
a. The fact that R&H accomplishes this end through the practice of
granting implied licenses to those who purchase propanil from it is as
devoid of legal significance to alter this conclusion.
b. Moreover, the fact that propanil is a nonstaple product having no
substantial use except in the patented process has been without
significance at least since in the BB Chemical case.
c. Since propanil has no substantial noninfringing use, it cannot be sold
without incurring liability for contributory infringement unless the
vendor has a license to sell propanil or its vendee has an unconditional
license to use the patented process.
7. Plain language of Sec. 271(d) would show that R&H’s conduct is not
immunized from application of the patent misuse doctrine. The statute
merely states that R&H may (1) derive revenue from sales of unpatented
propanil, (2) license others to sell propanil, (3) sue unauthorized sellers of
propanil.
 a. While none of these acts can be deemed patent misuse if R&H is 1.
otherwise entitled to relief, the law does not state that R&H can exclude
all competitors from the propanil market by refusing to license all those
who don’t buy from it; this is the very conduct which constitutes patent
misuse.
b. With regard to licensing, just because the law doesn’t provide for a
licensing requirement doesn’t mean that R&H’s refusal to license is
protected by Sec. 271(d).
2.
8. It may be true that the concepts of contributory infringement and patent
misuse rest on antithetical foundations, but it doesn’t follow that the price of
their coexistence inevitably must be the wholesale suppression of
competition in the markets for unpatentable nonstaples.
Wallace v. Holmes: new burner for oil lamp
a. Court gave here the reason for contributory infringement—that it exists
to protect patent rights from subversion by those who, without directly
infringing the patent themselves, engage in acts designed to facilitate
infringement by others. This protection is of particular importance in
situations where enforcement against direct infringers would be
difficult.
Moran Envelope v. Albany Paper Co.: patented device for dispensing toilet
paper against supplier of paper rolls that fit the patented invention
a. Court allowed contributory infringement but held that it can’t be
invoked against a supplier of perishable commodities used in a patented
invention since a contrary outcome would give the patentee “the benefit
of patent” on ordinary articles of commerce.

Stevens, J., dissenting:
1. R&H has offered no licenses, either to competing sellers of propanil or to
consumers, except the implied license that it granted to those who buy
R&H’s propanil. So every license granted under this patent is conditioned
on the purchase of their unpatented propanil. According to Justice Stevens,
this is a classic case of patent misuse.
2. Logic of the court’s holding seem to justify the extension of the patent
monopoly to unpatented “nonstaples” even in cases in which the patent
could be profitably exploited without misuse.
a. For example, the majority’s decision would allow a manufacturer to
condition a long-term lease of a patented piece of equipment on the
lessee’s agreement to purchase tailor-made (nonstaple) supplies or
components for use with the equipment exclusively from the patentee.
3. Leeds & Catlin v. Victor: phonograph discs specially designed for use in a
patented disc-and-stylus combination.
a. Although the disc wasn’t patented, it was essential to the functioning of
the patented combination, and that its method of interaction with the
stylus was what marked the advance upon the prior art.
4. Henry v. AB Dick Co.: manufacturer of a patented printing machine
a. Market for the supplies (like paper and ink) was created by the
invention, and that the sale of a licensee to use the patented product,
like sale of other species of property, could be limited by whatever
conditions the property owner wished to impose.
5. Motion Picture Patents Co. v. Universal Film Mfg. Co.: owner of patent on
projection equipment.

a. Attempted restriction on use of unpatented supplies was improper since

Jurisprudence cited
** In short, the decisions just show the trend of contributory infringement and patent
misuse. That, the trend before this case was that patent misuse and contributory are
in different spheres. The court in the other decisions said that even if contributory
infringement did exist but there was patent misuse on the part of the patentee, then
they are not entitled to relief.**
the film is not a part of the invention of the patent in suit. It is an
attempt to continue the patent monopoly in this particular character of
film after it has expired, and because to enforce it would be to create a
monopoly in the manufacture and use of moving picture films, wholly
outside of the patent in suit and of the patent law as we have interpreted
it.
6. Carbice Corp v. American Patents Corp: dry ice
 a. Patent holder and its licensee were attempting to exclude competitiors doing anything which he could do before the new property of the
in the refrigerant business from a portion of the market, and this chemical had been discovered.
conduct constituted patent misuse.
b. Proposed legislation provided that the mere use or enforcement of the
7. Leitch Mfg. Co. v. Barber Co.: patent for curing cement through the sale of right to be protected against contributory infringement shall not be
bituminous emulsion regarded as misuse of the patent.

a. Every use of a patent as a means of obtaining a limited monopoly of c. One of the draftsmen, Giles Rich (prominent patent lawyer), said that
unpatented material is prohibited. there were tensions between the judicial doctrines of contributory
infringement and patent misuse and that although the previous
8. B.B. Chemical Co. v. Ellis: decisions were ‘just’ it carried the doctrine too far, so far that it has
practically eliminated from the the law the doctrine of contributory
a. Patent misuse barred relief even where infringement had been actively
infringement as a useful legal doctrine. So he was arguing that passing
induced and that practical difficulties in marketing a patented invention
the bill pertained in this hearing would correct the situation left by the
could not justify patent misuse.
Mercoid case.
9. Mercoid v. Midcontinent Investment Co. (Mercoid I) and Mercoid v.
d. However, there were also others who defended the Mercoid decision.
Minneapolis Honeywell Regulator Co. (Mercoid II) [collectively known as
Mercoid decisions]: furnace heating system 2. 199 Hearings: the previous bill wasn’t agreed upon, so they had another
hearing.
a. Mercoid I: Court barred patentee from obtaining relief because it
deemed the licensing arrangement to be an unlawful attempt to extend a. This time, Mr. Rich was saying that there is a conflict between the
the patent monopoly. doctrines of contributory infringement and patent misuse.

b. Mercoid II: Didn’t really add much, but reinforced the conclusion that b. That in order to make contributory infringement operative again is to
its ruling made no exception for elements essential to the inventive make some exceptions to the misuse doctrine and say that certain acts
character of a patented combination. shall not be misuse.

c. Those who defended the Mercoid decision, like John Stedman, argued
that staple-nonstaple distinction should be irrelevant for purposes of
Legislative history
patent misuse.
**In short, they wanted to move past the Mercoid decisions.**
d. Mr. Rich argues further that passing the bill and making exceptions to
1. 198 Hearings: the misuse doctrine is necessary because it would preserve the doctrine
of contributory infringement.
a. The memorandum in the draft bill proposed here explained the rationale
behind contributory infringement and it have as one example a proper 3. 191 Hearings:
application for the protection of a patent for use of a chemical: one who
a. Mr. Rich again pushed that they have to eliminate the confusion left by
supplies unused chemical to the public for use in a new method is
the Mercoid decision by drawing a sensible line between contributory
stealing the benefit of the discovery of the property of this chemical
infringement and patent misuse.
which made the new method possible. To enjoin him from distributing
the chemical for use in the new method does not prevent him from
 007 WINANS v. DENMEAD (PUNSALAN) this is unnecessary. The law so interprets the claim without the addition of these words.
The exclusive right to the thing patented is not secured, if the public are at liberty to
1853 | Curtis, Circuit J. | When invention’s substance embodies its different forms make substantial copies of it, varying its form or proportions.

PETITIONER: Ross Winans DOCTRINE: Under US law a patent cannot be granted merely for a change of form.
Merely to change the form of a machine is the work of a constructor, not of an
RESPONDENTS: Denmead (wala talaga yung full name niya sa case) inventor; such a change cannot be deemed an invention.

SUMMARY: Ross Winans filed an action for infringement of his exclusive right to
FACTS:
make, use, and sell “an improvement in cars for the transportation of coal” which was
granted to him in 1847. The structure described by the letter patent granted to him is the 1. Ross Winans brought action in the District Court of Maryland for
body of a burden railroad car which is conical in shape and which has a principle of infringement of his exclusive right to make, use, and sell “an improvement
balancing the weight which makes the car support itself more in carrying heavy load. in cars for the transportation of coal” which was granted to him by letters
Denmead, et. al manufactured cars which produce the same effect, but the only
patent (June 26, 1847)
difference is that theirs has an octagonal shape. Even a witness testified that both
burden railroad cars, although different in form, produce the same effect. Nevertheless, 2. Court rendered it necessary to examine the letters patent, and the schedule
the district court ruled that there is no infringement of Winans’ letter patent, given that annexed to them to see whether their construction was correct
the patent only covers specifications limited only to circular forms and not to rectilinear
(such as octagonal) forms which Denmead has. a. What is the structure or device, described by the patentee
(Winans), as embodying his invention
Issue: (1) WoN the patentee (Winans) has limited his claim to one out of the several
forms which embody his invention – NO, the reason why such a patent covers only one b. What mode of operation is introduced and employed by this
geometrical form, is not that the patentee has described and claimed that form only; it is structure or device
because that form alone is capable of embodying his invention, and consequently, if
the form is not copied, the invention is not used. c. What result is attained by means of this mode of operation
(2) WoN there is a letter patent infringement despite the burden cars involved have d. Does the specification claim cover the described mode of operation
different shapes (conical and octagonal but produces the same results) – YES, because by which the result is attained
having described his invention, and claimed it in that form which most perfectly
embodies it, is, in contemplation of law, deemed to claim every form in which his 3. The structure described by the letter patent is the body of a burden
invention may be copied, unless he manifests an intention to disclaim some of those railroad car
forms.
a. made of sheet iron,
It is generally true, when a patentee describes a machine and then claims it as
described, that he is understood to intend to claim not only the precise forms he b. the upper part being cylindrical
has described, but all other forms which embody his invention, it being a familiar
rule that to copy the principle or more of operation described is an infringement, c. the lower part in the form of a frustum of a cone (frustum: yun
although such copy should be totally unlike the original in form or proportions. yung part na ‘pag ginupit mo yung tip ng cone, nagiging flat plane
Patentees sometimes add to their claims an express declaration, to the effect that the yung pointy area so magiging katulad ng base niya), the under
claim extends to the thing patented, however its form or proportions may be varied. But edge of which has a flange secured upon it and a movable
 bottom is attached
d. bottom made movable in order to discharge the load through
the aperture left by removing it
4. By reason of the circular form of the car body, the pressure of the load
outwards was equal in every direction, and thus the load supported itself in
a great degree.
a. By making the lower part conical, the lower part of the car could
be carried down the truck, between the wheels, thus lowering the
center of gravity of the load
b. The pressure outwards upon all parts of the circle being equal,
the tensile strength of the iron ws used to a much greater
degree than in a car of a square form
c. This lower part facilitated the discharge of the load through the
aperture, when the bottom was removed.
5. By this change of form, Winans has introduced a mode of operation not
before employed in burden cars – nearly equal pressure in all directions by
the entire load, save the small part which rests on the movable bottom – the
effects of which are that the load supports itself to a great degree and the
tensile strength of the iron is used
ISSUE/s:
a. In addition, its form depresses the center of gravity of the load and
its discharge is facilitated
6. The specification states:
a. "The transportation of coal, and all other heavy articles in lumps, has been
attended with great injury to the cars, requiring the bodies to be constructed
with great strength to resist the outward pressure on the sides, as well as the
vertical pressure on the bottom, due not only to the weight of the mass, but the
mobility of the lumps among each other tending to 'pack,' as it is technically
termed. Experience has shown that cars, on the old mode of construction,
cannot be made to carry a load greater than its own weight; but, by my
improvement, I am enabled to make cars of greater durability than those
heretofore made, which will transport double their own weight of coal,"
7. Defendants Denmead et. al (unnamed yung defendants pero kasi naka-
plural siya so nag et. al ako) had made cars similar to Winans’ except that
the form was octagonal instead of circular. There was evidence proving
that the octagonal car was substantially the same as the circular.
a. James Milholland testified that the advantage of a reduced bottom
of a car was obtained regardless of being conical or octagonal; that
its strengthening was the same with either of the two; that the
circular form was the best to resist the pressure in a steam boiler
while the octagonal one was better than the square form; that the
octagonal was not better than the conical car and was as good as
the other.
8. District judge ruled that there is no infringement of Winans patent
a. While the patent is good for what is described (conical body in
whole or in part), this is supported by any of the modes indicated
for sustaining a conical body on a carriage or truck along with
principles which were due alone to conical vehicles and NOT to
rectilinear bodies.
b. Since Denmead’s were rectilinear, such does not apply to their
octagonal cars (substance of ruling limited to the particular
geometrical form in the specification) even if it attanted the same
results.
1. WoN the patentee (Winans) has limited his claim to one out of the several
forms which embody his invention – NO, the reason why such a patent
covers only one geometrical form, is not that the patentee has described and
claimed that form only; it is because that form alone is capable of
embodying his invention, and consequently, if the form is not copied,
the invention is not used.
2. WoN there is a letter patent infringement despite the burden cars involved
have different shapes (conical and octagonal but produces the same results)
– YES, because having described his invention, and claimed it in that form
which most perfectly embodies it, is, in contemplation of law, deemed to
claim every form in which his invention may be copied, unless he
manifests an intention to disclaim some of those forms.
RULING: District court is REVERSED. Letters patent was indeed INFRINGED.
RATIO:
What the law says
1. Under US law a patent cannot be granted merely for a change of form. The
Act of February 21, 1793, § 2, so declared in express terms; and though this
declaratory law was not reenacted in the Patent act of 1836, it is a principle
which necessarily makes part of every system of law granting patents for
new inventions.
a. Merely to change the form of a machine is the work of a
constructor, not of an inventor; such a change cannot be
deemed an invention.
b. Nor does Winans’ patent rest upon such a change
2. To change the form of an existing machine, and by means of such change
to introduce and employ other mechanical principles or natural
powers, or, as it is termed, a new mode of operation, and thus attain a
new and useful result, is the subject of a patent. Such is the basis on
which the Winans’ patent rests.
a. The substance should be a new mode of operation in which a new
result is obtained
b. This gives it the character of an invention and such will be entitled
to protection
3. Patentees should frame their specification of claim as to cover a new mode
of operation which he has invented in order to be entitled to protection.
Issue # 1
1. There being evidence that other forms do, in fact, embody Winans’ mode of
operation, and, by means of it, produce the same new and useful result, the
question is whether the patentee has limited his claim to one out of the
several forms which thus embody his invention.
2. While it is undoubtedly true that the patentee may restrict his claim as to
cover less than what he invented, excluding all other forms (though they
also embody his invention), yet such an interpretation should not be put
upon his claim if it can fairly be construed otherwise, and this for two
reasons:
a. Because the reasonable presumption is that, having a just right to
cover and protect his whole invention, he intended to do so
b. Because specifications are to be construed liberally, in accordance
with the design of the Constitution and the patent laws of the
United States, to promote the progress of the useful arts, and allow
inventors to retain to their own use, not anything which is matter of
common right, but what they themselves have created.
3. It is generally true, when a patentee describes a machine and then claims
it as described, that he is understood to intend to claim, and does by
law actually cover, not only the precise forms he has described, but all
other forms which embody his invention, it being a familiar rule that to
copy the principle or more of operation described is an infringement,
although such copy should be totally unlike the original in form or
proportions.
4. Why should not this rule be applied to this case?
5. It is not sufficient to distinguish this case to say that here the invention
consists in a change of form, and the patentee has claimed one form only.
a. Patentable improvements in machinery are almost always made by
changing someone or more forms of one or more parts, and thereby
introducing some mechanical principle or mode of action not
previously existing in the machine, and so securing a new or
improved result.
b. In the numerous cases in which it has been held, that to copy the
patentee's mode of operation was an infringement, the infringer
had got forms and proportions not described, and not in terms
claimed.
c. If it were not so, no question of infringement could arise. If the
machine complained of were a copy, in form, of the machine
described in the specification, of course it would be at once seen to
 be an infringement. It could be nothing else. It is only ingenious
diversities of form and proportion, presenting the appearance of
something unlike the thing patented, which give rise to questions,
and the property of inventors would be valueless if it were enough
for the defendant to say, "your improvement consisted in a change
of form; you describe and claim but one form; I have not taken
that, and so have not infringed."
d. The answer is “"my improvement did not consist in a change of
form, but… in a new mode of operation, embodied in a form by
means of which a new or better result is produced; it was this
which constituted my invention; this you have copied, changing
only the form; and that answer is justly applicable to this patent."
6. Undoubtedly there may be cases in which the letters patent do include only
the particular form described and claimed. But they are in entire accordance
with what is above stated.
a. The reason why such a patent covers only one geometrical
form, is not that the patentee has described and claimed that
form only; it is because that form only is capable of embodying
his invention, and consequently, if the form is not copied, the
invention is not used.
b. Where form and substance are inseparable, it is enough to look
at the form only. Where they are separable; where the whole
substance of the invention may be copied in a different form, it
is the duty of courts and juries to look through the form for the
substance of the invention – for that which entitled the
inventor to his patent, and which the patent was designed to
secure; where that is found, there is an infringement; and it is
not a defense, that it is embodied in a form not described, and
in terms claimed by the patentee.
7. Patentees sometimes add to their claims an express declaration, to the effect
that the claim extends to the thing patented, however its form or proportions
may be varied. But this is unnecessary.
a. The law so interprets the claim without the addition of these words.
The exclusive right to the thing patented is not secured, if the
public are at liberty to make substantial copies of it, varying its
form or proportions.
8. Therefore the patentee (Winans), having described his invention, and shown
its principles, and claimed it in that form which most perfectly embodies it,
is, in contemplation of law, deemed to claim every form in which his
invention may be copied, unless he manifests an intention to disclaim some
of those forms.
9. In our judgment, the only answer that can be given to these questions is that
it must be so near to a true circle as substantially to embody the patentee's
mode of operation, and thereby attain the same kind of result as was
reached by his invention. It is not necessary that the Denmead's cars should
employ the Winans' invention to as good advantage as he employed it, or
that the result should be precisely the same in degree. It must be the same in
kind, and effected by the employment of his mode of operation in
substance.
10. Whether in point of fact Denmead's cars did copy the Winans’ invention in
the sense above explained is a question for the jury, and the court below
erred in not leaving that question to them upon the evidence in the case,
which tended to prove the affirmative.
J. Campbell, dissenting
1. Conceding, however, that the invention was patentable, and this seems to
have been conceded in the circuit court, the inquiry is, what is the extent of
the claim?
2. The facts were all ascertained, and upon no construction of those facts was
Winans, in my opinion, entitled to a judgment.
3. In theory, the Winans’ car is superior to all others. His car displays the
qualities which his specification distinguishes. The equal pressure of the
load in all directions; the tendency to preserve the form, notwithstanding the
pressure of the load; the absence of the cross strain; the lowering of the
center of the gravity of the load – are advantages which it possesses in a
superior degree to that of the Denmead’s. Yet the experts say that there
is no appreciable difference in the substantial results afforded by the
two.
4. In the instruction asked for by the plaintiff, "form and circumstances" are
treated as more or less immaterial, but the verdict is claimed if the
 defendants have constructed cars "which, substantially on the same
principle and in the same mode of operation, accomplish the same result."

a. The principle stated in the patent applies only to circular

forms.

5. In this case, the language of the patent is full, clear, and exact. The claim is
particular and specific. Neither the specification nor the claim, in my
opinion, embraces the workmanship of the defendants. I therefore
respectfully dissent from the judgment of the Court, which implies the
contrary.
 008 GSELL v. YAP-JUE (RAYOS)
Jan. 19, 1909 | Carson , J. | Doctrine of Mechanical equivalent
PETITIONER: Carlos Gsell
RESPONDENTS: Valeriano Velos Yap-Jue
SUMMARY: The principal case to which these proceedings are ancillary, was an
action to enjoin infringement of a patented process for manufacture of curved
handles for canes, parasols, and umbrellas. In that case, plaintiff established his
title to a valid patent covering the process in question, and obtained against this
defendant a judgment, granting a perpetual injunction restraining its infringement,
which judgment was affirmed by this Court on appeal. The order was couched in
the following terms: “It is ordered that the defendant abstain from manufacturing
canes and umbrellas with a curved handle by means of a lamp or blowpipe fed
with mineral oil or petroleum, which process was protected by patent no. 19288,
issued in favor of Henry Gsell, and by him transferred to Carlos Gsell”. Thereafter
the defendant continued to manufacture curved cane handles for walking sticks
and umbrellas by a process in all respects identical with that used by the plaintiff
under his patent, except only that he substituted for a lamp fed with petroleum or
mineral oil, a lamp fed with alcohol. The trial court found the defendant “not
guilty” of contempt as charged; and this court, on appeal, held that “The violation,
if there has been any, was not of such a character that it could be made patent by
the mere annunciation of the acts performed by the defendant, which are alleged to
constitute the said violation. Consequently, the contempt with which the accused is
charged has not been fully and satisfactorily proved, and the order appealed from
should accordingly be affirmed in so far as it holds that the defendant is not guilty
of contempt. Substantially, the same question is submitted in these new
proceedings as that submitted in the former case. Issue: Whether the use of a
patented process by a third person, without license or authority therefore,
constitutes an infringement when the alleged infringer has substituted in lieu
of some unessential part of the patented process a well-known mechanical
equivalent? YES. Counsel for GSELL invokes the doctrine of “mechanical
equivalents” in support of his contention, and indeed that doctrine is applicable to
the facts of the case. This doctrine is founded upon sound rules of reason and
logic, and unless restrained or modified by law in particular jurisdiction, is of
universal application, so that it matters not whether a patent be issued by one
sovereignty or another, the doctrine may properly be invoked to protect the
patentee from colorable invasions of his patent under the guise of a substitution of
some part of his invention by some well-known mechanical equivalent. The use of
a process in all respects identical with a process protected by a valid patent, save
only that a well-known mechanical equivalent is substituted in lieu of some
particular part of the patented process is an infringement upon the rights of the
owner of the patent, which will be enjoined in appropriate proceeding, and the use
of such process, after the order enjoining its use has been issued, is a “contempt”,
under the provision of section 172 of the Code of Civil Procedure.
DOCTRINE: Under the doctrine of mechanical equivalents, the patentee is
protected from colorable invasions of his patent under the guise of substitution of
some part of his invention by some well known mechanical equivalent. It is an
infringement of the patent, if the substitute performs the same function and was
well known at the date of the patent as a proper substitute for the omitted
ingredient.
FACTS:
1. In a previous case Carlos Gsell established his title to a valid patent
covering the process in question, and obtained against this defendant a
judgment, granting a perpetual injunction restraining its infringement,
which judgment was affirmed by this court on appeal.
a. It is ordered that the defendant abstain from manufacturing canes
and umbrellas with a curved handle by means of a lamp or
blowpipe fed with mineral oil or petroleum, which process was
protected by patent No. 19228, issued in favor of Henry Gsell, and
by him transferred to Carlos Gsell.
2. Description of the whole process: After the canes have been cut for cane
or umbrella handles, the outsides are thoroughly cleaned. This operation
having been performed, they are then trimmed and the interior cleaned by
means of a gimlet of about 15 centimeters in length operated by a wheel, by
means of which the knots inside are broken. There is then introduced to a
depth of about 15 centimeters a piece of very clean bamboo, which
completely fills the hole made by the gimlet, thereby giving to the cane the
necessary strength to resist the heat of the lamp or blowpipe without
breaking or cracking. This operation having been performed, the cane, the
end of which is attached to a fixed point, is given the shape of a hook or
some other form by means of fire and pressure. Once the cane has been
 shaped as desired, it is allowed to cool, and is then cleaned, varnished, and
ornamented at will. This industry requires skillful, handiwork, owing to the
great risk engendered by the treatment of such fragile material as a light
cane. On the other hand, however, it affords large profits to the workman.
The patent applied for shall be for the industrial product "cane handles
for walking sticks and umbrellas, curved by means of a small lamp or
blowpipe, fed by petroleum or mineral fuel."
3. Thereafter Valeriano continued to manufacture curved cane handled for
walking sticks and umbrellas by a process in all respects identical with that
used by the plaintiff under his patent, except only that he be substituted for
a lamp fed with petroleum or mineral oil, lamp fed with alcohol, as appears
from a stipulation entered into between Gsell and Valeriano.
4. Contempt proceedings were instituted against Valeriano in the month of
February, 1904, Gsell alleging that Valeriano in disobedience of the
judgment of the same was and is now engaged in the unlawful manufacture
of umbrella handles by the identical process described in and protected said
patent, No. 19228, or a process so like the patented process as to be
indistinguishable.
5. TRIAL COURT: found Valeriano "not guilty" of contempt as charged; and
this court, on appeal, held that — a character that it could be made patent by
the mere annunciation of the acts performed by the defendant, which are
alleged to constitute the said violation. These acts were not clearly and
manifestly contrary to the precise terms of the prohibition.
6. According to the express language of the judgment, the prohibition is
against the manufacture of canes and umbrellas with curved handles by
means of the use of a cool or mineral oil-burning lamp or blowpipe and
the parties have stipulated that the defendant did not use a coal or
mineral oil-burning lamp but an alcohol-burning lamp.
7. Thereafter Gsell continued the use of the patented process, save only for the
substitutions of a lamp fed by alcohol for a lamp fed by petroleum or
mineral oil, and new proceedings were instituted under the provisions of
section 172 for the purpose of enforcing the original injunction above cited.
a. that alcohol is an equivalent or substitute, well known as such at
the time when the patent was issued, for mineral oil or petroleum,
in connection with blast lamps or blowpipes such as that which
plaintiff uses in the patented process
b. that the use of a blast lamp or blowpipe fed with petroleum or
mineral oil, rather than one fed with alcohol, is an unessential part
of the patented process the use of which was prohibited by the said
judgment.
8. It has seen that by its very terms this question implies in the present case the
existence of two fundamental facts which must first be duly established,
viz: (1) That the use of the lamp fed with petroleum or mineral oil was an
unessential part of the patented process the use of which by the accused was
prohibited by the said judgment; and (2) that alcohol is an equivalent and
proper substitute, well known as such, for mineral oil or petroleum in
connection with the said process.
9. The appellant has failed to affirmatively establish either of these two
essential facts. He has merely assumed their existence, without proving the
same, thus begging the whole question. Consequently, the contempt with
which the accused is charged has not been fully and satisfactorily proved,
and the order appealed from should accordingly be affirmed in so far as it
holds that the defendant is not guilty of contempt.
10. Hence Gsell filed a petition to the SC.
ISSUES: W/N there was infringement of Gsell’s patent when the defendant
substituted alcohol for petroleum or mineral oil? Yes. Gsell has established the
existence of two facts: (1) That the use of the lamp fed with petroleum or mineral oil
was an unessential part of the patented process the use of which by the defendant
was prohibited by the said judgment; and (2) that alcohol is an equivalent and proper
substitute, well known as such, for mineral oil or petroleum in connection with the
said process.
RULING: The judgment of the lower court should be and is hereby affirmed, with
the costs of this instance against the appellant.
RATIO:
Held/Ratio:
1. Gsell has established the existence of two facts: (1) That the use of the lamp
fed with petroleum or mineral oil was an unessential part of the patented
process the use of which by the defendant was prohibited by the said
judgment; and (2) that alcohol is an equivalent and proper substitute, well
known as such, for mineral oil or petroleum in connection with the said
process. It was clearly proven at the trial, that kerosene and alcohol blast
lamps are agencies for producing and applying heat, well known throughout
the world long prior to 1906, the date of the issue of the patent; that it is and
for many years has been known that one may for all ordinary purposes be
used in the place of the other.
2. It is true that defendant's blast lamp is fed with alcohol, and its shape varies
in unimportant details, for the purpose of accommodating the principle, by
which the flame is secured, to the different physical and chemical
composition of the fuel used therein; but the principle on which it works, its
mode of application, and its general design distinguish it in no essential
particular from that used by the plaintiff.
3. The doctrine of “mechanical equivalents” was also invoked by Gsell and the
Court ruled that it is applicable in this case. The doctrine may properly be
invoked to protect the patentee from colorable invasions of his patent under
the guise of substitution of some part of his invention by some well-known
mechanical equivalent.
4. As quoted by the Court from a U.S. case: “the inventor of an ordinary
machine is, by his letters patent, protected against all mere formal
alterations and against the substitution of mere mechanical equivalents.
Why should not the inventor of a new combination receive the same
protection? If he can not, then will his patent not be worth the parchment on
which it is written.”
5. No one infringes a patent for a combination who does not employ all of
the ingredients of the combination; but if he employs all the
ingredients, or adopts mere formal alterations, or substitutes, for one
ingredient another which was well known at the date of the patent as a
proper substitute for the one withdrawn, and which performs
substantially the same function as the one withdrawn, he does infringe.
An alteration in a patented combination which merely substitutes
another old ingredient for one of the ingredients in the patented
combination, is an infringement of the patent, if the substitute performs
the same function and was well known at the date of the patent as a
proper substitute for the omitted ingredient.
 009 GODINES v. CA (TIMBOL) modification and change, perfroms substantially the same function in substantially the same
way to acheieve substantially the same result.
September 13, 1993 | Romero, J. | Doctrine of Equivalents

FACTS:
PETITIONER: Esme E. Rosaire
1. The patent involved in this case is Letters Patent No. UM-2236 issued by
RESPONDENTS: Baroid Sales Division, National Lead Company
the Philippine Patent Office to one Magdalena S. Villaruz on July 15, 1976

2. It covers a utily model for a hand tractor or power tiller, the main
SUMMARY: SV-Agro acquired a patent from Villaruz through a Deed of Assignment, components of which are:
covering a hand tractor or power tiller (specifications and process of operation in facts 2 and
3). Pursuant to the patent, SV-Agro manufactured and sold its turtle power tiller products. a. A vacuumatic house float
However, it noticed that its sales declined in the area of Zamboanga del Sur. Upon
investigation, it found that Godines was selling similar products called floating power tiller. As b. A harrow with adjustable operating handle
such, SV-Agro filed a complaint against Godines for infringement. Godines alleged that (1) he
was not engaged in the manufacture and selling of the power tillers; and (2) that he made c. A pair of paddy wheels
different products based on customers specifications.
d. A protective water covering for the engine main drive

e. A transmission case
W/N Godines is liable for infringement – YES
f. An operating handle

g. An engine foundation on the top midportion of the vacuumatic

The SC held that Godines is engaged in the manufacture and selling of the power tillers. In his housing float to which the main engine drive is detachedly
answer, he admitted that he had been manufacturing and selling the products even before SV- installed
Agro, however, upon the specification of its customers. However, he was not able to show any
proof of any job orders by his customers that he indeed fabricated such power tillers on h. A frontal frame extension above the quarter – circularly shaped
specifications. Also, applying the tests for infringement, it can be shown that Godines indeed
water covering hold in place the transmission case
committed patent infringement. As to the literal infringement, when the products were
compared it can be seen from all angles and perspective that they are the same. And the
i. A V-belt connection to the engine main drive with transmission
specification of the claims as well as the product features were copied by Godines. As for the
gear through the pulley
doctrine of equivalents, an infringement will occur when a device appropriates a prior
invention by incorporating its innovative concent and, albeit with some modification and
j. An idler pully installed on the engine foundation
change, performs substantially the same function in substantially the same way to achieve
substantially the same result. In this case, as testified by Eduardo Canete, an 11 year engineer
3. The patented hand tractor works in the following manner:
who manufactured SV-Agro’s power tiller, that they operated with the same fundamental
principles a. The engine drives the transmission gear thru the V-belt, a driven
pulley and a transmission shaft

DOCTRINE: Doctrine of Equivalents - an infringement also occurs when a device b. The engine drives the transmission gear by tensioning of the V-belt
appropriates a prior invention by incorporating its innovative concept and, albeit with some which is controlled by the idler pulley
 c. The V-belt drives the pulley attached to the transmission gear
which in turn drives the shaft where the paddy wheels are attached
d. The operator handles the hand tractor through a handle which is
inclined upwardly and supported by a pair of substanding pipes
and reinforced by a U-shaped GI pipe at the V-shaped end
4. The above-mentioned patent was acquired by SV-Agro Industries
Enterprises, Inc. (SV-Agro), from Villaruz, by virtue of a Deed of
Assignment executed by the latter in its favor
5. On October 31, 1979, SV-Agro caused the publication of the patent in
Bulleting Today, a newspaper of general circulation
6. SV-Agro manufactured and sold the patented power tillers with the patent
imprinted on them
a. SV-Agro suffered a decline of more than 50% in sales in its
Molave, Zamboange del Sur branch
b. Upon investigation, it discovered that power tillers similar to those
patented by them were being manufactured and sold by Godines
c. Consequently, SV-Agro notified Godines about the existing patent
and demanded that the latter stop selling and manufacturing similar
power tilles
d. Upon failure to comply, SV-Agro filed before the RTC a
complaint for infringement of patent and unfair competition
7. RTC ruled in favor of SV-Agro, and was affirmed by the CA. Hence this
petition.
a. Godines contends that (1) he was not engaged in the manufacture
and sale of the power tillers as he made them only upon the special
order of his customers who agve their own specifications; (2)
those made by him were different from those being
manufactured and sold by SV-Agro
ISSUE/s:
1. WoN Godines is engaged in the manufacture and sale – YES,
2. WoN there was patent infringement - YES
RULING: WHEREFORE, premises considered, the decision of the Court of
Appeals is hereby AFFIRMED and this petition DENIED for lack of merit.
RATIO:
As to manufacture and sale
1. It is the contention of Godines that he did not manufacture or make
imitations or copies of SV-Agro’s turtle power tiller as what he merely did
was to fabricate his floating power tiller upon specifications and designs fo
those who ordered them
2. However, this contention appears untenable in the light of the following
circumstances
1. He admits in his Answer that he has been manufacturing power
tillers or hand tractors, selling and distributing them long before
SV-Agro started selling its turtle power tiller in Zamboanga del
Sur and Misamis Occidental, meaning that Godines is principally a
manufacturer of power tillers, not upon specification and design of
buyers, but upon his own specification an design
2. It would be unbelievable that defendant would fabricate pwer
tillers similar to the turtle power tillers of SV-Agro upon
specifications of buyers without requiring a job order where the
specification and designs of those ordered are specified
1. No document was ever been presented showing such job
orders, and it is rather unusal for Godines to manufacture
something without the specification and designs,
considering that he is an engineer by profession and
proprietor of the Ozamis Enginering shop
2. Also it would be unusual to order the fabrication based
on verbal instructions
As to patent infringement c. Viewed from any perspective or angle, the power tillers are
identical and similar
1. Tests have been established to determine infringement
d. The parts or components are virtually the same
a. Literal infringement
e. Both have the circularly-shaped vaccumatic housing float, a paddy
1. Resort must be had, in the first instance, in front, a protective water covering, a transmission box housing the
to the words of the claim transmission gears, a handle which is V-shaped and inclined
upwardly, attached to the side of the vacuumatic housing float and
2. If accused matter clearly falls within the
supported by the upstanding G.I. pipes and an engine base at the top
claim, infringement is made out and that is the end of it
midportion of the vacuumatic housing float to which the engine
3. To determine whether the particular drive may be attached
item falls within the literal meaning of the patent claims,
f. In operation, the floating power tiller of Godines operates in similar
the court must juxtapose the claims of the patent and the
manners as the turtle power tiller of SV-Agro
accused product within the overall context of the claims
and specifications, to determine whether there is exact g. Moreover, it appears that the claims of the patent and the features of
identity of all material elements the patented utily model were copied by Godines

b. Doctrine of equivalents 3. In using the DOCTRINE OF EQUIVALENTS

1. Recognizes that minor modifications a. SV-Agro’s witness Eduardo Canete, employed for 11 years as
in a patented invention are sufficient to put the item welder of the Ozamis Engineering, and therefore actually involved
beyond the scope of literal infringement in the making of the floating power tillers of SV-Agro tried to
explain the difference between the floating power tillers made by
c. Thus, according to this doctrine, an infringement also occurs
SV-Agro
when a device appropriates a prior invention by incorporation
its innovative concept and, albeit with some modification and b. But careful examination between the two power tillers will show
change, perfroms substantially the same function in that they will operate on the same fundamental principles
substantially the same way to acheieve substantially the same
result c. The law will protect a patentee against imitation of his patent by
other forms and proportions
d. The reason for doctrine of equivalents is that to permit the
imitation of a patented invention d. If two devices do the same work in substantially the same way, and
accomplish substantially the same result, they are the same, even
2. In using LITERAL INFRINGEMENT though they differ in name, form, or shape

a. Samples of Godines’ floating power tiller have been produced and 4. Sec. 37. Right of Patentees – A patentee shall have the exlusive right to
inspected by the corut and compared with that of the turtle power make, use and sell the patented machine, article or product, and to use the
tiller of SV-Agro patented process for the purpose of industry or commerce, through the
territory of the Philippines for the terms of the patent; and such making
b. In appearance and form, both the floating power tillers are virtually
using, or selling by any person without the authortization of the Patentee
the same
constitutes infringement of the patent.
 010 SMITH KLINE BECKMAN v. CA (SAN PEDRO)
August 14, 2003| J. Carpio-Morales | Doctrine of Equivalents
PETITIONER: Smith Kline Beckman Corporation
RESPONDENTS: The Honorable Court of Appeals and Tryco Pharma Corporation
SUMMARY: Smith Kline is a US corporation owning a patent entitled Methods and
Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-
Benzimidazole Carbamate (ang haba! If irerecite ko to sasabihin ko lang Methyl 5). This
is a new substance that fights parasite infections in animals. Tryco is a domestic
corporation that manufactures and sells veterinary products including Impregun; this
drug has Albendazole that also fights parasite infections in animals. Smith Kline sued
Tryco for patent infringement, invoking the doctrine of equivalents. The RTC and the
CA both found that Tryco is not liable for infringement. The SC agrees with the lower
courts. The doctrine of equivalents provides that an infringement takes place when a
device appropriates a prior invention by incorporating its innovative concept and,
although with some modification and change, performs substantially the same function in
substantially the same way to achieve substantially the same result. The doctrine of
equivalents thus requires satisfaction of the function-means-and-result test, the
patentee having the burden to show that all three components of such equivalency test
are met. Smith Kline fails in this regard. Smith Kline only established that Methyl 5 and
Albendazole are both anthelmintic agents, but did not provide proof regarding the
method or means by which Albendazole weeds out parasites in animals, thus giving no
information on whether that method is substantially the same as the manner by which
petitioners compound works.
DOCTRINE: The doctrine of equivalents thus requires satisfaction of the function-
means-and-result test, the patentee having the burden to show that all three components
of such equivalency test are met.
FACTS:
1. Smith Kline is a U.S. corporation that owns a patent for an invention
entitled Methods and Compositions for Producing Biphasic Parasiticide
Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.
2. The letters patent provides in its claims that the patented invention consisted
of a new compound named methyl 5 propylthio-2-benzimidazole carbamate
and the methods or compositions utilizing the compound as an active
ingredient in fighting infections caused by gastrointestinal parasites and
lungworms in animals such as swine, sheep, cattle, goats, horses, and even
pet animals.
3. Tryco Pharma Corporation (Tryco) is a domestic corporation that
manufactures and sells veterinary products including Impregon, a drug that
has Albendazole for its active ingredient and is claimed to be effective
against gastro-intestinal roundworms, lungworms, tapeworms and fluke
infestation in carabaos, cattle and goats.
4. Smith Kline sued Tryco for patent infringement and unfair corporation,
claiming that its patent covers or includes the substance Albendazole,
infringing Claims 2, 3, 4, 7, 8, and 9 of its letters patent.
a. Smith Kline argues that there is patent infringement following the
doctrine of equivalents.
5. Tryco’s defenses that it did not commit infringement:
a. Nowhere in the letters patent did the word Albendazole appear;
b. Even if the letters patent included Albendazole, such substance is
unpatentable;
c. The FDA allowed it to manufacture its product Impregon with
Albendazole as its known ingredient;
d. Tryco did not pass off as its own products those of Smith Kline
e. Smith Kline’s letters are null and void, the application for the issuance
thereof filed beyond one year from the application abroad, and thus in
violation of The Patent Law;
f. Smith Kline is not a registered patent holder.
6. The RTC dismissed Smith Kline’s complaint, ruling in favor of Tryco.
7. The CA partly affirmed and partly modified RTC’s decision.
a. The CA upheld the RTC finding that Tryco is not liable for
infringement.
b. The CA reversed the RTC decision on the validity of the letters patent.
The CA ruled that Smith Kline’s letters patent are not void.
ISSUE/s:
1. WON the Albendazole, the active ingredient in Tryco’s Impregon drug, is
included in Smith Kline’s letters patent, thus making Tryco liable for
 infringement – NO.
2. WON Smith Kline is liable for actual damages and attorney’s fees (not the
main issue) – NO, only temperate damages
RULING: WHEREFORE, the assailed decision of the Court of Appeals is hereby
AFFIRMED with MODIFICATION. The award of actual or compensatory damages
and attorneys fees to private respondent, Tryco Pharma Corporation, is DELETED;
instead, it is hereby awarded the amount of P20,000.00 as temperate or moderate
damages. SO ORDERED.
RATIO:
On the Patent Infringement
1. Smith Kline argues that under the doctrine of equivalents for determining
patent infringement, Albendazole, the active ingredient it alleges was
appropriated by private respondent for its drug Impregon, is substantially
the same as methyl 5 propylthio-2-benzimidazole carbamate covered by its
patent since both of them are meant to combat worm or parasite infestation
in animals.
a. It cites the unrebutted testimony of its witness Dr. Godofredo C.
Orinion (Dr. Orinion) that the chemical formula in Letters Patent No.
14561 refers to the compound Albendazole.
b. Smith Kline adds that the two substances substantially do the same
function in substantially the same way to achieve the same results,
thereby making them truly identical.
c. Smith Kline thus submits that the CA should have gone beyond the
literal wordings used in Letters Patent No. 14561, beyond merely
applying the literal infringement test, for in spite of the fact that the
word Albendazole does not appear in petitioners letters patent, it has
ably shown by evidence its sameness with methyl 5 propylthio-2-
benzimidazole carbamate.
2. Smith Kline likewise points out that its Philippine patent application with
the was merely a divisional application of a prior U.S. application. Hence,
petitioner concludes that both methyl 5 propylthio-2-benzimidazole
carbamate and the U.S.-patented Albendazole are dependent on each other
and mutually contribute to produce a single result, thereby making
Albendazole as much a part of Letters Patent No. 14561 as the other
substance is.
3. Smith Kline concedes that although methyl 5 propylthio-2-benzimidazole
carbamate is not identical with Albendazole, the former is an improvement
or improved version of the latter thereby making both substances still
substantially the same.
4. The Supreme Court disagrees with Smith Kline.
5. The doctrine of equivalents provides that an infringement also takes place
when a device appropriates a prior invention by incorporating its innovative
concept and, although with some modification and change, performs
substantially the same function in substantially the same way to achieve
substantially the same result.
6. Yet again, a scrutiny of petitioners evidence fails to convince this Court of
the substantial sameness of petitioners patented compound and
Albendazole. While both compounds have the effect of neutralizing
parasites in animals, identity of result does not amount to infringement of
patent unless Albendazole operates in substantially the same way or by
substantially the same means as the patented compound, even though it
performs the same function and achieves the same result. In other words,
the principle or mode of operation must be the same or substantially the
same.
7. The doctrine of equivalents thus requires satisfaction of the function-
means-and-result test, the patentee having the burden to show that all
three components of such equivalency test are met.
8. As stated early on, petitioners evidence fails to explain how Albendazole is
in every essential detail identical to methyl 5 propylthio-2-benzimidazole
carbamate. Apart from the fact that Albendazole is an anthelmintic agent
like methyl 5 propylthio-2-benzimidazole carbamate, nothing more is
asserted and accordingly substantiated regarding the method or means
by which Albendazole weeds out parasites in animals, thus giving no
information on whether that method is substantially the same as the
manner by which petitioners compound works. The testimony of Dr.
Orinion lends no support to petitioners cause, he not having been presented
or qualified as an expert witness who has the knowledge or expertise on the
matter of chemical compounds.
9. As for the concept of divisional applications proffered by petitioner, it
comes into play when two or more inventions are claimed in a single
application but are of such a nature that a single patent may not be issued
for them. The applicant thus is required to divide, that is, to limit the claims
to whichever invention he may elect, whereas those inventions not elected
 may be made the subject of separate applications which are called divisional
applications. What this only means is that petitioners methyl 5 propylthio-2-
benzimidazole carbamate is an invention distinct from the other inventions
claimed in the original application divided out, Albendazole being one of
those other inventions. Otherwise, methyl 5 propylthio-2-benzimidazole
carbamate would not have been the subject of a divisional application if a
single patent could have been issued for it as well as Albendazole.

On Damages

1. The Court did not sustain the award of actual damages amounting to
P330,000 because testimonies of Tryco’s officers are not competent proof
to establish actual damages. Actual damages require presentation of
documentary evidence.

2. The Court likewise did not sustain the award of attorney’s fees of P100,000
since there is no sufficient showing of bad faith.

3. However, the Court granted temperate damages of 20,000 since Tryco

suffered pecuniary loss the amount of which cannot be established with
certainty from the nature of the case.
 011 GRAVER TANK v. LINDE AIR (CANDELARIA)
May 29, 1950 | Jackson, J. | Doctrine of Equivalents
PETITIONER: GRAVER TANK & MFG. CO.
RESPONDENTS: LINDE AIR PRODUCTS CO.
SUMMARY: Two electric welding compositions are in question: the patented
composition, Unionmelt Grade 20 and the accused’s Lincolnweld 660. Unionmelt
uses a combination of alkaline earth metal silicate, whilst the Lincolnweld,
substituted metal silicate to magnesium. In all other respects the two are alike. The
issue is whether or not under the doctrine of equivalents the accused committed
patent infringement. The Court found affirmed the trial court ruling, stating that
Lincolnweld flux and the composition of the patent in suit are substantially
identical in operation and in result. He found also that Lincolnweld is in all respects
equivalent to Unionmelt for welding purposes.
In this case, involving a claim of a combination of alkaline earth metal silicate and
calcium fluoride, the substitution in the accused composition of manganese silicate
(which is not an alkaline earth metal silicate) for magnesium silicate (which is an
alkaline earth metal silicate), where the two compositions were substantially
identical in operation and result, was so insubstantial, in view of the technology
and the prior art, that the patent was infringed under the doctrine of equivalents.
DOCTRINE: The doctrine of equivalents is founded on the theory that, if two
devices do the same work in substantially the same way and accomplish
substantially the same result, they are the same, even though they differ in
name, form or shape
In determining equivalents, consideration must be given to the purpose for which
an ingredient is used in a patent, the qualities it has when combined with other
ingredients, the functions which it is intended to perform, and whether persons
reasonably skilled in the art would have known of the interchangeability of an
ingredient not contained in the patent with one that was
FACTS:
1. In this case two electric welding compositions or fluxes: the patented
composition, Unionmelt Grade 20, and the accused composition,
Lincolnweld 660.
2. UNIONMELT’S PATENT: made claims essentially a combination of
alkaline earth metal silicate and calcium fluoride; Unionmelt actually
contains, however, silicates of calcium and magnesium, two alkaline earth
metal silicates.
3. LINCOLNWELD’S PATENT: is similar to Unionmelt's, except that it
substitutes silicates of calcium and manganese -- the latter not an alkaline
earth metal -- for silicates of calcium and magnesium. In all other
respects, the two compositions are alike. The mechanical methods in
which these compositions are employed are similar. They are identical in
operation, and produce the same kind and quality of weld.
4. The Court questions whether the substitution of the manganese which is not
an alkaline earth metal, for the magnesium, which is, under the
circumstances of this case, and in view of the technology and the prior art,
is a change of such substance as to make the doctrine of equivalents
inapplicable; or, conversely, whether, under the circumstances, the change
was so insubstantial that the trial court's invocation of the doctrine of
equivalents was justified.
5. Linde Air Products Co., owner of the Jones patent for an electric welding
process and for fluxes to be used, brought an action for infringement
against Lincoln and the two Graver companies. The trial court held four
flux claims valid and infringed and certain other flux claims and all process
claims invalid. The CA the validity and infringement as to the four flux
claims, but reversed the TC and held valid the process claims and the
remaining contested flux claims. The Supreme Court reversed the CA
decision, and reinstated the TC ruling. Hence, this current petition.
ISSUE/s: W/N the substitution of the manganese for magnesium resulted in patent
infringement.
RULING: SC affirmed the lower courts decision. Pwede rin wherefore.
RATIO: consisting of a combination of old ingredients which produce new and
useful results. The doctrine is not always applied in favor of a patentee, but
1. In determining whether there was an infringement of a valid patent, the in fact is sometimes used against him. Thus, where a device is so far
literal infringement test states that resort must be had first in the words of changed in principle from a patented article that it performs the same or a
the claim. If it falls within the claim, infringement is clear. similar function in a substantially different way, but nevertheless falls
2. But courts have also recognized that to permit imitation of a patented within the literal words of the claim, the doctrine of equivalents may be
invention which does not copy every literal detail would be to convert the used to restrict the claim and defeat the patentee's action for infringement. 
protection of the patent grant into a hollow and useless thing. Such a 6. The Court had chemists familiar with the two fluxes testified that
limitation would leave room for – indeed, encourage – the unscrupulous manganese and magnesium were similar in many of their reactions. There is
copyist to make unimportant and insubstantial changes and substitutions in testimony by a metallurgist that alkaline earth metals are often found in
the patent which, though adding nothing, would be enough to take the manganese ores in their natural state, and that they have the same purpose.
copied matter outside the claim, and hence outside the reach of law. One 7. In patent, manganese could be included as an alkaline earth metal.
who seeks to pirate an invention, like one who seeks to pirate a copyrighted 8. DISCLOSURE OF PRIOR ART: The Miller patent, which preceded the
book or play, may be expected to introduce minor variations to conceal and
patent in suit, taught the use of manganese silicate in welding fluxes.
shelter the piracy. Outright and forthright duplication is a dull and very rare
Manganese was similarly disclosed in the Armor patent, which also
type of infringement. To prohibit no other would place the inventor at the
described a welding composition. There was no showing that Lincolnweld
mercy of verbalism, and would be subordinating substance to form. It
was developed as the result of independent research or experiments
would deprive him of the benefit of his invention, and would foster
9. The trial judge found that the Lincolnweld flux and the composition of the
concealment, rather than disclosure, of inventions, which is one of the
patent in suit are substantially identical in operation and in result. He found
primary purposes of the patent system
also that Lincolnweld is in all respects equivalent to Unionmelt for welding
3. The doctrine of equivalents evolved in response to this experience. The
purposes. And he concluded that, "for all practical purposes, manganese
essence of the doctrine is that one may not practice a fraud on a patent. A
silicate can be efficiently and effectively substituted for calcium and
patentee may invoke this doctrine to proceed against the producer of a
magnesium silicates as the major constituent of the welding composition.”
device "if it performs substantially the same function and accomplish
10. The disclosures of the prior art made clear that manganese silicate was a
substantially the same result, they are the same, even though they differ in
useful ingredient in welding compositions. Specialists familiar with the
name, form or shape.”
problems of welding compositions understood that manganese was
4. What constitutes equivalency must be determined against the context of the
equivalent to, and could be substituted for, magnesium in the composition
patent, the prior art, and the particular circumstances of the case.
of the patented flux ,and their observations were confirmed by the literature
Equivalence, in the patent law, cannot be considered in a vacuum. It does
of chemistry. Without some explanation or indication that Lincolnweld was
not require complete identity for every purpose and in every respect. In
developed by independent research, the trial court could properly infer that
determining equivalents, things equal to the same thing may not be equal to
the accused flux is the result of imitation, rather than experimentation or
each other, and, by the same token, things for most purposes different may
invention. Though infringement was not literal, the changes which avoid
sometimes be equivalents. Consideration must be given to the purpose for
literal infringement are colorable only. We conclude that the trial court's
which an ingredient is used in a patent, the qualities it has when combined
judgment of infringement respecting the four flux claims was proper, and
with the other ingredients, and the function which it is intended to perform.
we adhere to our prior decision on this aspect of the case.
An important factor is whether persons reasonably skilled in the art would
have known of the interchangeability of an ingredient not contained in the
patent with one that was.
BLACK, J. DISSENT:
5. The doctrine operates not only in favor of the patentee of a pioneer or
primary invention, but also for the patentee of a secondary invention
1. An applicant shall claim, whether particularly point out and distinctly claim
 that part, improvement, or combination which he claims as his invention or applications are referred. When the terms of a claim in a patent are clear and
discovery. The function of the claims is to exclude from the patent distinct (as they always should be), the patentee, in a suit brought upon the
monopoly field all that is not specifically claimed, whatever may appear in patent, is bound by it
the specifications. To give the patentee the benefit of a grant that it because
did not precisely claim is no less “unjust to the public” and no less than an
evasion of the law merely because done in the name of the “doctrine of DOUGLAS, J. DISSENT: The claims of the patent are limited to a flux "containing
equivalents.” a major proportion of alkaline earth metal silicate." Manganese silicate, the flux
2. Prefers the remedy provided under the law, which authorizes reissuance of which is held to infringe, is not an alkaline earth metal silicate. It was disclosed in
patents where the patent is “wholly or partly inoperative” due to certain the application and then excluded from the claims. It therefore became public
errors arising from “inadvertence, accident, or mistake” of the patentee. property. The Court now allows the doctrine of equivalents to erase those time-
And while the section does not expressly permit a patentee to expand his honored rules. Moreover, a doctrine which is said to protect against practicing "a
claim, this Court has reluctantly interpreted it to justify doing so. fraud on a patent" is used to extend a patent to a composition which could not be
3. This congressional plan adequately protects patentees from "fraud," patented. For manganese silicate had been covered by prior patents, now expired.
"piracy," and "stealing." Unlike the Court's opinion, it also protects Thus, we end with a strange anomaly: a monopoly is obtained on an unpatented and
businessmen from retroactive infringement suits and judicial expansion of a unpatentable article.
monopoly sphere beyond that which a patent expressly authorizes. The plan
is just, fair, and reasonable. In effect, it is nullified by this decision
undercutting what the Court has heretofore recognized as wise safeguards.
4. The doctrine of equivalents will be in direct contravention of the law
and would make enlargement of patent claims the “rule”, rather than
the “exception”.
5. Whatever the merits of the "doctrine of equivalents" where differences
between the claims of a patent and the allegedly infringing product are de
minimis, colorable only, and without substance, that doctrine should have
no application to the facts of this case. For the differences between
respondent's welding substance and petitioner's claimed flux were not
nearly so slight. The claims relied upon here did not involve any mechanical
structure or process where invention lay in the construction or method,
rather than in the materials used. Rather, they were based wholly on using
particular materials for a particular purpose. Respondent's assignors
experimented with several metallic silicates, including that of manganese.
According to the specifications (if these are to be considered), they
concluded that, while several were "more or less efficacious in our process,
we prefer to use silicates of the alkaline earth metals." Several of their
claims which this Court found too broad to be valid encompassed
manganese silicate; the only claims found valid did not. Yet today the Court
disregards that crucial deficiency, holding those claims infringed by a
composition of which 88.49% by weight is manganese silicate.
6. The 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
 012 FESTO CORPORATION v. SHOKETSU KONZOKU KOGYO
(NAGUIAT)
May 28, 2002 |Kennedy, J. | Doctrine of Equivalents | Prosection History Estoppel
PLAINTIFFS-APPELLANTS: Festo Corporation (Festo)
DEFENDANT-APPELLEE: Shoketsu Kinzoku Kogyo Kabushuki Com (Shoketsu)
SUMMARY: Festo owned two patents for for an improved magnetic rodless cylinder, a
piston-driven device for moving objects that has many industrial uses. The patent
examiner rejected at first so the applications were amended. Shoketsu made a device
similar to Festo's, except that Shoketsu employed a single sealing ring with a two-way lip
and it did not use a magnetizable sleeve. Festo claims that Shoketsu infringed its patents
under doctrine of equivalents. The district court ruled in favor of Festo. Shokstsu
appealed. The Appellate Court reversed; it held that Festo could not argue the  Doctrine of
Equivalents because of Prosecution History Estoppel. Prosecution History Estoppel says
that if you added a new limitation to get your claim approved, then you can't go back later
and make an equivalents argument later. Festo appealed.
ISSUE: WON any narrowing amendment made to satisfy any requirement of the Patent
Act gives rise to estoppel- NO-not comlplete bar. It depends
HELD: SC vacated and remanded this case back to the lower courts. Initially the
prosecution history estoppel barred Festo from asserting that the accused device infringed
its patents under the doctrine of equivalents. Estoppel arises from any amendment that
narrows a claim to comply with the Patent Act, not only from amendments made to avoid
prior art. While the SC acknowledged the importance of certainty and clarity in defining
the boundary of patent rights, it also recognized the impreciseness of language in fully
describing an invention. Since a narrowing amendment may demonstrate what the
claim is not, but may still fail to capture precisely what the claim is, the Court
concluded that the original basis for adopting the doctrine of equivalents still inheres
in amended claims.
The Court also found no precedent supporting the sweeping "complete bar" approach
adopted by the Federal Circuit and was mindful of the settled expectations of the
inventing community. Since inventors who amended their claims under the previous
regime had no reason to believe they were conceding all equivalents, the Court
found "no justification for applying a new and more robust estoppel or those who
relied on prior doctrine. Following Warner-Jenkinson,the Court retained the limited
version of the "complete bar" in situations where the patentee is unable to explain the
reason for an amendment. In addition, when prosecution history estoppel applies to an
amended element, the Court placed the burden on the patentee to show that the
amendment does not surrender the particular equivalent in question.
The Court provided three scenarios where the patentee can satisfy that burden: 1 ) the
equivalent was unforeseeable at the time of the application; 2) the rationale
underlying the amendment bears no more than a tangential relationship to the
equivalent in question; or 3) the patentee could not reasonably be expected to have
described the insubstantial substitution in question. The Court determined that the
amendments were made for a reason relating to patentability. It held that the question is
not whether estoppel applies, but what territory the amendments had surrendered.
It therefore remanded the case to the Federal Circuit for further proceedings.
DOCTRINE: Prosecution history estoppel may apply to any claim amendment made to
satisfy the Patent Act’s requirements, not just to amendments made to avoid the prior art,
but estoppel need not bar suit against every equivalent to the amended claim element.
FACTS:
1. Petitioner Festo Corporation(Festo) owns two patents: the caroll patent and
the stoll patent for an improved magnetic rodless cylinder, a piston-driven
device for moving objects that has many industrial uses.
2. Patent Examiner rejected the initial applications of Festo. Festo amended its
patents. The Carroll patent added a requirement of a pair of sealing rings to
his claims during a reexamination proceeding, to more specifically define
his invention and to distinguish it from the prior art references.
3. The Stoll patent added, in addition to a pair of sealing rings, a second
requirement that the cylindrical sleeve be made of magnetizable material,
after the examiner rejected the original claims for indefiniteness.
4. Shoketsu Kinzoku Kogyo Kabushiki Co. (Shoketsu) made a device similar
to Festo's, except that Shoketsu employed a single sealing ring with a two-
way lip and it did not use a magnetizable sleeve.
5. Shoketsu's device fell outside of the literal claims of the two Festo patents,
but the question at issue is whether Shoketsu infringed the patents under
the doctrine of equivalents. Festo contends that it is so similar that it
infringes under the doctrine of equivalents.
6. Shoketsu contends that Festo is estopped from making this argument
because of the prosecution history of its patents. The sealing rings and the
magnetized alloy in the Festo product were both disclosed for the first time
in the amended applications.
 7. In Shoketsu’s view, these amendments narrowed the earlier applications,
surrendering alternatives that are the very points of difference in the
competing devices—the sealing rings and the type of alloy used to make the
sleeve. Shiketsu claoms that as Festo narrowed its claims in these ways in
order to obtain the patents, Festo is now estopped from saying that these
features are immaterial and that Shoketsu’s device is an equivalent of its
own.
8. The district court ruled in favor of Festo. Festo's amendments were not
related to the examiner's rejections, and were not made to avoid prior art.
Therefore, the court declined to apply prosecution history estoppel, and
granted Festo summary judgment of infringement of the Carroll patent
under the doctrine of equivalents.
9. Also the district court also held that when estoppel applies, it stands as a
"com- plete bar" against any claim of equivalence for the element that was
amended. A jury also found Shoketsu infringed the Stoll patent under the
doctrine of equivalents.
10. Shoketsu appealed. The Appellate Court reversed; it held that Festo could not
argue the Doctrine of Equivalents becauseof Prosecution History Estoppel.
Prosecution History Estoppel says that if you added a new limitation to get your
claim approved, then you can't go back later and make an equivalents argument
later. Festo appealed
ISSUE/s:
1. WON any narrowing amendment made to satisfy any requirement of the Patent
Act gives rise to estoppel- NO – Not complete bar – It depends.
RULING: The Supreme Court granted certiorari,vacated and remanded the case to
the Federal Circuit for further consideration in light of the Court's intervening
Warner-Jenkinsondecision. After a decision by the same Federal Circuit panel as in
Festo I on remand (Festo 1), the Federal Circuit ordered a rehearing en banc (Festo
III) and reversed the district court's ruling.
The judgment of the Federal Circuit is vacated, and the case is remanded for further
proceedings consistent with this opinion.
RATIO:
Prosection History Estoppel
1. Prosecution history estoppel requires that patent claims be interpreted in
light of the proceedings before the Patent and Trademark Office (PTO).
When the patentee originally claimed the subject matter alleged to infringe
but then narrowed the claim in response to a rejection, he may not argue that
the surrendered territory comprised an unforeseen equivalent.
2. A rejection indicates that the patent examiner does not believe the original
claim could be patented. While the patentee has the right to appeal, his
decision to forgo an appeal and submit an amended claim is taken as a
concession that the invention as patented does not reach as far as the original
claim.
3. Prosecution history estoppel ensures that the doctrine of equivalents remains
tied to its underlying purpose. Where the original application once embraced
the purported equivalent but the patentee narrowed his claims to obtain the
pat- ent or to protect its validity, the patentee cannot assert that he lacked the
words to describe the subject matter in ques- tion. The doctrine of
equivalents is premised on language’s inability to capture the essence of
innovation, but a prior application describing the precise element at issue
undercuts that premise.
4. In that instance the prosecution history has established that the inventor
turned his attention to the subject matter in question, knew the words for
both the broader and narrower claim, and affirmatively chose the latter.
First Question: What kinds of claim amendment trigger prosecution history
estoppel
5. In Warner- Jenkinson the court recognized that prosecution history estoppel
does not arise in every instance when a patent application is amended. “Prior
cases have consistently applied prosecution history estoppel only where
claims have been amended for a limited set of reasons,” such as “to avoid the
prior art, or otherwise to address a specific concern—such as obviousness—
that arguably would have rendered the claimed subject matter unpatentable.”
Even if the amendment’s purpose were unrelated to patentability, the court
might consider whether it was the kind of reason that nonetheless might
 require resort to the estoppel doctrine.
6. Prosecution history may rebut the inference that a thing not described was
indescribable. That rationale does not cease simply because the narrowing
amendment, submitted to secure a patent, was for some purpose other than
avoiding prior art.
7. What is claimed by the patent application must be the same as what is
disclosed in the specification; otherwise the patent should not issue. The
patent also should not issue if the other requirements of §112 are not
satisfied, and an applicant’s failure to meet these requirements could lead to
the issued patent being held invalid in later litigation.
8. A patentee who narrows a claim as a condition for obtaining a patent
disavows his claim to the broader subject matter, whether the amendment
was made to avoid the prior art or to comply with §112. We must regard the
patentee as having conceded an inability to claim the broader subject matter
or at least as having abandoned his right to appeal a rejection. In either case
estoppel may apply
Second Question:If prosecution history estoppel applies to an amended claim
element, what is the range of equivalents available to that claim element?
9. The Supreme Court's approach can be called a "presumptive bar."
According to the Court, a patentee's narrowing amendment may be presumed
to be a general disclaimer of the territory between the original claim and the
amended claim, therefore barring a claim of equivalence to anything falling
within that territory. In contrast to the Federal Circuit's "complete bar"
approach, the Supreme Court allowed the patentee to rebut this presumption
of estoppel by showing that the amendment does not surrender the particular
equivalent in question. The Court of Appeals ignored the guidance of
Warner- Jenkinson, which instructed that courts must be cautious before
adopting changes that disrupt the settled expecta- tions of the inventing
community. In that case the doctrine of equivalents and the rule of
prosecution history estoppel are settled law. The responsibility for changing
them rests with Conress. Fundamental alterations in these rules risk
destroying the legitimate expectations of inventors in their property.
10. When the patentee is unable to explain the reason for amend- ment, estoppel
not only applies but also “bar[s] the application of the doctrine of equivalents
as to that element.” These words do not mandate a complete bar; they are
limited to the circumstance where “no explanation is established.” They do
provide, however, that when the court is unable to determine the purpose
underlying a narrowing amend- ment—and hence a rationale for limiting the
estoppel to the surrender of particular equivalents—the court should pre-
sume that the patentee surrendered all subject matter be- tween the broader
and the narrower language.
11. Just as Warner-Jenkinson held that the patentee bears the burden of proving
that an amendment was not made for a reason that would give rise to
estoppel, we hold here that the patentee should bear the burden of showing
that the amendment does not surrender the particular equivalent in question.
12. The SC therefore reopened the door to the doctrine of equivalents to
amended claim elements. the Court's guiding tests -the foreseeability,
tangential relationship and reasonableness tests
13. The Court provided three scenarios where the patentee can satisfy that
burden:
a. the equivalent was unforeseeable at the time of the application;
b. the rationale underlying the amendment bears no more than a tangential
relationship to the equivalent in question; or
c. the patentee could not reasonably be expected to have described the
insubstantial substitution in question.
Conclusion
14. The court cannot say petitioner has rebutted the presumptions that estoppel
applies and that the equivalents at issue have been surrendered. Petitioner
con- cedes that the limitations at issue—the sealing rings and the
composition of the sleeve—were made in response to a rejection for reasons
under §112, if not also because of the prior art references.
15. As the amendments were made for a reason relating to patentability, the
question is not whether estoppel applies but what territory the amendments
surrendered. While estoppel does not effect a complete bar, the question
remains whether petitioner can demonstrate that the narrowing amendments
did not surrender the particular equivalents at issue. On these questions,
Shoketsu may well prevail, for the sealing rings and the composition of the
sleeve both were noted expressly in the prosecution history. These matters,
however, should be determined in the first instance by further proceedings in
 the CAor the District Court.

16. The judgment of the Federal Circuit is vacated, and the case is
remanded for further proceedings consistent with this opinion.
 013 WARNER-JENKINSON CO. v. HILTON DAVIS (OCAMPO)
1997 | USA Fedral Court of Appeals | Sapalo Syllabus
PLAINTIFFS-APPELLANTS: Warner-Jenkinson Co.
DEFENDANT-APPELLEE: Hilton Davis Chemical Co.
SUMMARY: Warner-Jenkinson and Hilton Davis both make dyes. HD has a
process patent for ultrafiltration at pH level 6.0-9.0. The 9.0 upper limit was
made to distinguish from Booth patent. Nobody knows for sure why 6.0 lower
limit is there. WJ has a process at pH 5.0-9.0. HD is saying the 5.0 lower limit is
infringing their patent via doctrine of equivalents. WJ is saying it’s not and the
doctrine of equivalents has been abandoned. The Court here said that doctrine of
equivalents has not been abandoned by the courts or Congress. The amendment
to the provision merely addresses a different problem. More importantly one
must look at each element of a patent separately to see what doctrine will apply.
An element added to distinguish can have prosecution history estoppel. Other
elements however may still fall under doctrine of equivalents. In this case we
don’t know why 6.0 lower limit is there, so the Court remanded the case to
determine why it’s there and to determine what doctrine to apply.
DOCTRINE: In determining whether to use doctrine of equivalents or
prosecution history estoppel one must look at every element of the patent. Some
elements may have been added to distinguish the patent which would justify
prosecution estoppel, but this does not mean doctrine of equivalents is barred.
ISSUE:
FACTS:
● Warner-Jenkinson (WJ) and Hilton Davis (HD) both manufacture dyes.
● Manufacture of dyes involves ultrafiltration which involves filtering impure
dyes at certain pH levels.
● HD owns the ‘746 patent to a certain process specifying “at a pH from 6.0
to 9.0” to distinguish from Booth patent. Specifically the 9.0 upper limit.
● Nobody knows for sure why the bottom limit for 6.0 was added, but HD
says that it’s because their process doesn’t work below pH 6.0.
● WJ was using their own process with pH at 5.0, they didn’t know about
HD’s process or patent.
● HD filed for infringement, but conceded that it was only on doctrine of
equivalents not a literal infringement.
● Jury ruled in favor of HD but only for 20% of the damages saying it’s not
literal infringement nor was it intentional.
● Trial judges also granted saying that the real test is whether there are
substantial differences in the process itself.
○ Cited Graver Tank which says that patent is not a prisoner to
formula. You have to appreciate the facts and the role of each
ingredient.
● WJ is saying doctrine of equivalents is not actually consistent with the law
on patents.
○ In patent law a patentee must “claim” the invention under s112.
○ The doctrine circumvents the patent reissue process designed to
correct mistakes.
○ Inconsistent with primacy of Patent and Trademark Office setting
the scope of a patent through patent prosecution process.
○ Implicitly rejected by Congress when they did not include it.
● Barring that, WJ says that at the very least doctrine of equivalents should be
restricted.
○ Doctrine of equivalents does not supersede prosecution history
estoppel.
○ Even if doctrine of equivalents is to be kept, intent must be
appreciated in order to stop piracy.
● WON the WJ process infringes HD’s patent via doctrine of equivalents? -
UNSURE, CASE REMANDED BUT DOCTRINE OF EQUIVALENTS
STILL VALID. The element in question is the lower limit of the pH levels.
Unfortunately nobody knows why the ‘746 patent has that lower limit so
Court cannot determine for sure what doctrine to use.
RULING: “...we reverse its judgment and remand the case for further proceedings ● However we don’t know for sure why the 6.0 limit is there, so the case was
consistent with this opinion. remanded to determine why and to see what doctrine applies.
● Intent of why the element was added plays no real role as it could have been
It is so ordered.” added as a result of experimentation, or even a way to infringe the patent.
○ Better to just look at the invention as it is to see if there’s
infringement.
RATIO:

On abandonment of Doctrine of Equivalents (DOE)

● The doctrine of equivalents has not been abandoned by US jurisdiction, nor

has Congress removed it.
● WJ’s argument isn’t actually new, and has been rejected before.
● Congress enacted a new provision providing:

"An element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof"

● This means that a patentee can describe the invention by describing the
results, which encompasses equivalents.
○ This was to address the problem of rejected patents that described
the function at the exact point of novelty instead of describing the
invention itself.
● Congress expressly allows means claims with the provision, IT DOES
NOT DISPOSE OF DOCTRINE OF EQUIVALENTS.
○ If Congress wanted to do that they could have done so explicitly.

On whether to apply DoE or prosecution history estoppel (PHE)

● WJ argued on prosecution history estoppel because HD specified the pH

levels, which supposedly drew a line on what it can claim as infringement.
● The Court said that you should look at every element when determining
whether DoE or PHE applies.
● While the 9.0 upper limit was definitely added to pass the patenting process
nobody knows for sure why the 6.0 limit was added.
● It was not to distinguish from the Booth patent, but nonetheless the 6.0
element became material to the patent.
○ As it was not made to survive the patent process, PHE probably
doesn’t apply so DoE can be applied.
● The reason for the change was not to avoid prior art, so PHE doesn’t apply.