339 U.S. 605 (1950), 2, Graver Tank & Mfg. Co. v. Linde Air Products Co.

Docket Nº:No. 2
Citation:339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097
Party Name:Graver Tank & Mfg. Co. v. Linde Air Products Co.
Case Date:May 29, 1950
Court:United States Supreme Court

Page 605

339 U.S. 605 (1950)

70 S.Ct. 854, 94 L.Ed. 1097

Graver Tank & Mfg. Co.

v.

Linde Air Products Co.

No. 2

United States Supreme Court

May 29, 1950

Argued March 30, 1950

ON REHEARING

Syllabus

1. This Court affirms the finding of the two courts below that, under the doctrine of equivalents, certain flux claims of Jones patent No. 2,043,960, for an electric welding process and for fluxes, or compositions, to be used therewith were infringed. Pp. 606-612.

2. The essence of the doctrine of equivalents is that one may not practice a fraud on a patent. P. 608.

3. 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. Pp. 608-609.

4. 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. P. 609.

5. A finding of equivalence is a determination of fact to be made by the trial court, and the trial court's decision should not be disturbed unless clearly erroneous. Pp. 609-610.

6. On the record in this case, involving a claim of a combination of alkaline earth metal silicate and calcium fluoride, the trial court was justified in finding that the substitution in the accused composition of manganese silicate (which is not an alkaline earth metal

Page 606

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. Pp. 610-612.

The history of the case is summarized in the first paragraph of the opinion. On the aspect of the case involved in the rehearing, the prior decision of this Court is adhered to, p. 612.

JACKSON, J., lead opinion

MR. JUSTICE JACKSON delivered the opinion of the Court.

Linde Air Products Co., owner of the Jones patent for an electric welding process and for fluxes to be used therewith, 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. 86 F.Supp. 191. The Court of Appeals affirmed findings of validity and infringement as to the four flux claims, but reversed the trial court and held valid the process claims and the remaining contested flux claims. 167 F.2d 531. We granted certiorari, 335 U.S. 810, and reversed the judgment of the Court of Appeals insofar as it reversed that of the trial court, and reinstated the District Court decree. 336 U.S. 271. Rehearing was granted, limited to the question of infringement of the four valid flux claims and to the applicability of the doctrine of equivalents to findings of fact in this case.

Page 607

At the outset it should be noted that the single issue before us is whether the trial court's holding that the four flux claims have been infringed will be sustained. Any issue as to the validity of these claims was unanimously determined by the previous decision in this Court, and attack on their validity cannot be renewed now by reason of limitation on grant of rehearing. The disclosure, the claims, and the prior art have been adequately described in our former opinion and in the opinions of the courts below.

In determining whether an accused device or composition infringes a valid patent, resort must be had in the first instance to the words of the claim. If accused matter falls clearly within the claim, infringement is made out, and that is the end of it.

[70 S.Ct. 856] But courts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for -- indeed, encourage -- the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law. One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication is a dull and very rare type of infringement. To prohibit no other would place the inventor at the mercy of verbalism, and would be subordinating substance to form. It would deprive him of the benefit of his invention, and would foster concealment, rather than disclosure, of inventions, which is one of the primary purposes of the patent system.

Page 608

The doctrine of equivalents evolved in response to this experience. The essence of the doctrine is that one may not practice a fraud on a patent. Originating almost a century ago in the case of Winans v. Denmead, 15 How. 330, it has been consistently applied by this Court and the lower federal courts, and continues today ready and available for utilization when the proper circumstances for its application arise. "To temper unsparing logic and prevent an infringer from stealing the benefit of the invention,"1 a patentee may invoke this doctrine to proceed against the producer of a device "if it performs substantially the same function in substantially the same way to obtain the same result." Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42. The theory on which it is founded is 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.

Union Paper-Bag Machine Co. v. Murphy, 97 U.S. 120, 125. 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 consisting of a combination of old ingredients which produce new and useful results, Imhaeuser v. Buerk, 101 U.S. 647, 655, although the area of equivalence may vary under the circumstances. See Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 414-415, and cases cited; Seymour v. Osborne, 11 Wall. 516, 556; Gould v. Rees, 15 Wall. 187, 192. The wholesome realism of this doctrine is not always applied in favor of a patentee, but is sometimes used against him. Thus, where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the

Page 609

literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee's action for infringement. Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 568. In its early development, the doctrine was usually applied in cases involving devices where there was equivalence in mechanical components. Subsequently, however, the same principles were also applied to compositions, where there was equivalence between chemical ingredients. Today the doctrine is applied to mechanical or chemical equivalents in compositions or devices. See discussions and cases collected in 3 Walker on Patents (Deller's ed.1937) §§ 489-492; Ellis, Patent Claims (1949) §§ 59-60.

What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula, and is not an absolute to be considered [70 S.Ct. 857] in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other, and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. 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.

A finding of equivalence is a determination of fact. Proof can be made in any form: through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art. Like any other issue of fact, final determination requires a balancing of credibility,

Page 610

persuasiveness, and weight of evidence. It is to be decided by the trial court, and that court's decision, under general principles of appellate review, should not be disturbed unless clearly erroneous. Particularly is this so in a field where so much depends upon familiarity with specific scientific problems and principles not usually contained in the general storehouse of knowledge and experience.

In the case before us, we have two electric welding compositions or fluxes: the patented composition, Unionmelt Grade 20, and the accused composition, Lincolnweld 660. The patent under which Unionmelt is 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. Lincolnweld's composition 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...

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1590 practice notes
  • 139 F.Supp.2d 364 (W.D.N.Y. 2001), 98-V-485, Moore U.S.A., Inc. v. Standard Register Co.
    • United States
    • Federal Cases United States District Courts 2nd Circuit Western District of New York
    • March 22, 2001
    ...same way to obtain substantially the same result as the claimed element. See Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). However, this function-way-result test is "not the sole test for equivalency." Texas Inst......
  • 15 F.Supp.2d 166 (D.Mass. 1998), Civ. A. 93-11882, Wang Laboratories, Inc. v. Oki Electric Industry Co., Ltd.
    • United States
    • Federal Cases United States District Courts 1st Circuit District of Massachusetts
    • July 31, 1998
    ...of how a person familiar with this technology would understand the patents. See Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950) ("An important factor [in determining equivalence] is whether one skilled in the art would have known o......
  • 269 F.2d 255 (2nd Cir. 1959), 16, American Safety Table Co. v. Schreiber
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Second Circuit
    • June 19, 1959
    ...maintaining the upper shoes in place-- and they do so in an identical manner. Graver Tank & Mfg. Co. v. Linde Air Products, 1950, 339 U.S. 605, 607, 70 S.Ct. 854, 94 L.Ed. 1097; Sanitary Refrigerator Co. v. Winters, 1929, 280 U.S. 30, 42, 50 S.Ct. 9, 74 L.Ed. 147; Priebe & Sons, Inc......
  • 27 F.Supp.3d 654 (E.D.Va. 2013), C. A. 2:12cv452, Baby Jogger, LLC v. Britax Child Safety, Inc.
    • United States
    • Federal Cases United States District Courts 4th Circuit Eastern District of Virginia
    • November 19, 2013
    ...Davis Chem. Co., 520 U.S. 17, 21, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997) (citing Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609, 70 S.Ct. 854, 94 L.Ed. 1097, 1950 Dec. Comm'r Pat. 597 (1950)); Abbott Labs., Inc. v. Novopharm Ltd., 323 F.3d 1324, 1329 (Fed. Cir. 2003......
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1515 cases
  • 139 F.Supp.2d 364 (W.D.N.Y. 2001), 98-V-485, Moore U.S.A., Inc. v. Standard Register Co.
    • United States
    • Federal Cases United States District Courts 2nd Circuit Western District of New York
    • March 22, 2001
    ...same way to obtain substantially the same result as the claimed element. See Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). However, this function-way-result test is "not the sole test for equivalency." Texas Inst......
  • 15 F.Supp.2d 166 (D.Mass. 1998), Civ. A. 93-11882, Wang Laboratories, Inc. v. Oki Electric Industry Co., Ltd.
    • United States
    • Federal Cases United States District Courts 1st Circuit District of Massachusetts
    • July 31, 1998
    ...of how a person familiar with this technology would understand the patents. See Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950) ("An important factor [in determining equivalence] is whether one skilled in the art would have known o......
  • 269 F.2d 255 (2nd Cir. 1959), 16, American Safety Table Co. v. Schreiber
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Second Circuit
    • June 19, 1959
    ...maintaining the upper shoes in place-- and they do so in an identical manner. Graver Tank & Mfg. Co. v. Linde Air Products, 1950, 339 U.S. 605, 607, 70 S.Ct. 854, 94 L.Ed. 1097; Sanitary Refrigerator Co. v. Winters, 1929, 280 U.S. 30, 42, 50 S.Ct. 9, 74 L.Ed. 147; Priebe & Sons, Inc......
  • 27 F.Supp.3d 654 (E.D.Va. 2013), C. A. 2:12cv452, Baby Jogger, LLC v. Britax Child Safety, Inc.
    • United States
    • Federal Cases United States District Courts 4th Circuit Eastern District of Virginia
    • November 19, 2013
    ...Davis Chem. Co., 520 U.S. 17, 21, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997) (citing Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609, 70 S.Ct. 854, 94 L.Ed. 1097, 1950 Dec. Comm'r Pat. 597 (1950)); Abbott Labs., Inc. v. Novopharm Ltd., 323 F.3d 1324, 1329 (Fed. Cir. 2003......
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22 firm's commentaries
  • DOE Infringers Petition for Certiorari over PHE "Tangential Relationship" Test
    • United States
    • JD Supra United States
    • March 21, 2020
    ...It will be recalled, by way of background, that the DOE arose in the modern era in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950), wherein the Supreme Court recognized that an "unscrupulous copyist" could practice a claimed invention without literal infr......
  • Patent Federal Circuit Update
    • United States
    • Mondaq United States
    • May 16, 2002
    ...but did not claim use of a steel substrate. The district court denied the motion. In Graver Tank & Mfg. v. Linde Air Prods. Co., 339 U.S. 605 (1950), the Supreme Court rejected the dissent's argument that inclusion of manganese in the specification constituted a dedication to the public......
  • Federal Circuit Issues Order Clarifying Status of Doctrine of Equivalents
    • United States
    • JD Supra United States
    • September 6, 2019
    ...so, in Winans v. Denmead, 56 U.S. 330 (1854); Seymour v. Osbourne, 78 U.S. 516 (1870); Graver Tank & Mfg. Co. v. Linde Air Prod. Co. 339 U.S. 605 (1950); Warner-Jenkinson v. Hilton Davis Chemical Co., 520 U.S. 17 (1997); and Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. ......
  • Summary Judgment Denied On Reverse Doctrine Of Equivalents Defense
    • United States
    • Mondaq United States
    • May 11, 2017
    ...different way, but nevertheless falls within the literal words of the claim." Graver Tank & Mfg. Co. v. Linde Air Prod. Co., 339 U.S. 605, 608-09 (1950). It "is an equitable doctrine designed 'to prevent unwarranted extension of the claims beyond a fair scope of the patentee's......
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53 books & journal articles
  • Copying copyright's willful infringement standard: a comparison of enhanced damages in patent law and copyright law.
    • United States
    • Suffolk University Law Review Vol. 42 Nbr. 1, December 2008
    • December 22, 2008
    ...between accused and patented invention "insubstantial"); see also Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950) (establishing test for determining whether accused device infringes under doctrine of equivalents). If a substituted element or limitation......
  • Risk aversion and rights accretion in intellectual property law.
    • United States
    • Yale Law Journal Vol. 116 Nbr. 5, March 2007
    • March 1, 2007
    ...Id. (177.) See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). (178.) See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). (179.) See Festo, 535 U.S. at 731-33. (180.) See Christian A. Chu, Empirical Analysis of the Federal Circuit's Claim Construct......
  • Scope.
    • United States
    • William and Mary Law Review Vol. 57 Nbr. 6, May 2016
    • May 1, 2016
    ...Kogyo Kabushiki Co., 535 U.S. 722, 731-34 (2002); Warner-Jenkinson, 520 U.S. at 21; Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607-09 (1950). (297.) See Wilson Sporting Goods, 904 F.2d at 684. (298.) See id. at 685. (299.) Some have expressed to us the concern that di......
  • Progress in the Useful Arts: Foundations of Patent Law in Growth Economics.
    • United States
    • Yale Journal of Law & Technology Vol. 22 Nbr. 1, January 2020
    • January 1, 2020
    ...56 U.S. (15 How.) 330 (1853), but since then, it has been significantly refined. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607-08 (1950). The reverse doctrine of equivalence dates back to the Supreme Court decision in Westinghouse v. Boyden Power Brake Co., 170 U......
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