Graver Tank & Manufacturing Company v. Linde Air Products Company/Dissent Black
Mr. Justice BLACK, with whom Mr. Justice DOUGLAS concurs, dissenting.

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

The only patent claims involved here describe respondent's product as a flux 'containing a major proportion of alkaline earth metal silicate.' The trial court found that petitioners used a flux 'composed principally of manganese silicate.' Finding also that 'manganese is not an alkaline earth metal,' the trial court admitted that petitioners' flux did not 'literally infringe' respondent's patent. Nevertheless it invoked the judicial 'doctrine of equivalents' to broaden the claim for 'alkaline earth metals' so as to embrace 'manganese.' On the ground that 'the fact that manganese is a proper substitute * * * is fully disclosed in the specification' of respondent's patent, it concluded that 'no determination need be made whether it is a known chemical fact outside the teachings of the patent that manganese is an equivalent * * *.' Since today's affirmance unquestioningly follows the findings of the trial court, this Court necessarily relies on what the specifications revealed.  In so doing, it violates a direct mandate of Congress without even discussing that mandate.

R.S. § 4888, as amended, 35 U.S.C. § 33, 35 U.S.C.A. § 33, provides that an applicant 'shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.' We have held in this very case that this statute precludes invoking the specifications to alter a claim free from ambiguous language, since 'it is the claim which measures the grant to the patentee.'  Graver Mfg. Co. v. Linde Co., 336 U.S. 271, 277, 69 S.Ct. 535, 538, 93 L.Ed. 672. What is not specifically claimed is dedicated to the public. See, e.g., Miller v. Brass Co., 104 U.S. 350, 352, 26 L.Ed. 783. For the function of claims under R.S. § 4888, as we have frequently reiterated, is to exclude from the patent monopoly field all that is not specifically claimed, whatever may appear in the specifications. See, e.g., Marconi Wireless Co. v. United States, 320 U.S. 1, 23, 63 S.Ct. 1393, 1403, 87 L.Ed. 1731, and cases there cited. Today the Court tacitly rejects those cases. It departs from the underlying principle which, as the Court pointed out in White v. Dunbar, 119 U.S. 47, 51, 7 S.Ct. 72, 74, 30 L.Ed. 303, forbids treating a patent claim 'like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. * * * The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.' Giving this patentee the benefit of a grant that it did not precisely claim is no less 'unjust to the public' and no less an evasion of R.S. § 4888 merely because done in the name of the 'doctrine of equivalents.'

In seeking to justify its emasculation of R.S. § 4888 by parading potential hardships which literal enforcement might conceivably impose on patentees who had for some reason failed to claim complete protection for their discoveries, the Court fails even to mention the program for alleviation of such hardships which Congress itself has provided. 35 U.S.C. § 64, 35 U.S.C.A. § 64, authorizes reissue of patents where a patent is 'wholly or partly inoperative' due to certain errors arising from 'inadvertence, accident, or mistake' of the patentee. And while the section does not expressly permit a patentee to expand his claim, this Court has reluctantly interpreted it to justify doing so. Miller v. Brass Co., 104 U.S. 350, 353-354, 26 L.Ed. 783. That interpretation, however, was accompanied by a warning that 'Reissues for the enlargement of claims should be the exception and not the rule.' 104 U.S. at page 355, 26 L.Ed. 783. And Congress was careful to hedge the privilege of reissue by exacting conditions It also entrusted the Patent Office, not the courts, with initial authority to determine whether expansion of a claim was justified,  and barred suits for retroactive infringement based on such expansion. Like the Court's opinion, this congressional plan adequately protects patentees from 'fraud,' 'piracy,' and 'stealing.' Unlike the Court's opinion, it also protects business men from retroactive infringement suits and judicial expansion of a 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. See Milcor Steel Co. v. Fuller Co., 316 U.S. 143, 148, 62 S.Ct. 969, 972, 86 L.Ed. 1332. One need not be a prophet to suggest that today's rhapsody on the virtue of the 'doctrine of equivalents' will, in direct contravention of the Miller case supra, make enlargement of patent claims the 'rule' rather than the 'exception.'

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.

In view of the intense study and experimentation of respondent's assignors with manganese silicate, it would be frivolous to contend that failure specifically to include that substance in a precise claim was unintentional. Nor does respondent attempt to give that or any other explanation for its omission. But the similar use of manganese in prior expired patents, referred to in the Court's opinion, raises far more than a suspicion that its elimination from the valid claims stemmed from fear that its inclusion by name might result in denial or subsequent invalidation of respondent's patent.

Under these circumstances I think petitioner had a right to act on the belief that this Court would follow the plain mandates of Congress that a patent's precise claims mark its monopoly boundaries, and that expansion of those claims to include manganese could be obtained only in a statutory reissue proceeding. The Court's ruling today sets the stage for more patent 'fraud' and 'piracy' against business than could be expected from faithful observance of the congressionally enacted plan to protect business against judicial expansion of precise patent claims. Hereafter a manufacturer cannot rely on what the language of a patent claims. He must be able, at the peril of heavy infringement damages, to forecast how far a court relatively inversed in a particular technological field will expand the claim's language after considering the testimony of technical experts in that field. To burden business enterprise on the assumption that men possess such a prescience bodes ill for the kind of competitive economy that is our professed goal.

The way specific problems are approached naturally has much to do with the decisions reached. A host of prior cases, to some of which I have referred, have treated the 17-year monopoly authorized by valid patents as a narrow exception to our competitive enterprise system. For that reason, they have emphasized the importance of leaving business men free to utilize all knowledge not preempted by the precise language of a patent claim. E.g., Sontag Stores Co. v. Nut Co., 310 U.S. 281, 60 S.Ct. 961, 84 L.Ed. 1204, and cases there cited. In the Sontag case Mr. Justice McReynolds, speaking for a unanimous Court, said in part: 'In the case under consideration the patentee might have included in the application for the original patent, claims broad enough to embrace petitioner's accused machine, but did not. This 'gave the public to understand' that whatever was not claimed 'did not come within his patent and might rightfully be made by anyone." 310 U.S. at page 293, 60 S.Ct. at page 966, 967, 84 L.Ed. 1204.

The Court's contrary approach today causes it to retreat from this sound principle. The damages retroactively assessed against petitioner for what was authorized until today are but the initial installment on the cost of that retreat. 

Notes