A Break From Your Regularly Scheduled Blogging

In part to remind myself that most of the blather over the judicial nomination wars is just that -- blather -- I've been re-reading Roger K. Newman's remarkable biography of Justice Hugo Black.  Justice Black, as some may know, nearly had his 1937 nomination to the Supreme Court derailed by rumors that he had been a member of the KKK (rumors that were, in fact, true). 

But the story of how a former Klansman became one of the great Supreme Court Justices of all time is old hat.  What strikes my fancy today is a gem hidden in the book's footnotes regarding the Roosevelt administration's apparent obliviousness to (then, Senator) Black's past in the Klan.  (The more things change ....)  As the dirt on Black came out, a reporter expressed shock to Joe Kennedy that Black had not informed FDR tha the had been a Klansman (p. 251): 

Kennedy's reply (cleaned up for publication) was "If Marlene Dietrich asked you to make love to her, would you tell her you weren't much good at making love?"

(Another gem:  Right after Justice Black was confirmed, a reporter remarked to Mrs. Black about a large family gathering that the Black's had held over the holidays.  "Yes.  Quite a gathering of the clan," she said before realizing.)

By the bye, my favorite Black dissent (for every lawyer must have a favorite Black dissent) is from Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605 (1950), a case that upheld what has been called the "doctrine of equivalents" in patent law -- the notion that an article that does not "literally" infringe a patent may nonetheless be its "equivalent" and infringe.  (Note that this is why it's the "doctrine of equivalents," not the "doctrine of equivalence.")

Black, as you might expect, would have nothing of this extra-textual mumbo-jumbo:

I heartily agree with the Court that "fraud" is bad, "piracy" is evil, and "stealing" is reprehensible. But in [339 U.S. 605, 613] 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. 1 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, 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 [339 U.S. 605, 614]   to the patentee." 2 Graver Mfg. Co. v. Linde Co., 336 U.S. 271, 277 . What is not specifically claimed is dedicated to the public. See, e. g., Miller v. Brass Co., 104 U.S. 350, 352 . 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 , 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 , 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."

.....

Comments

[John Thullen]

"If Marlene Dietrich asked you to make love to her, would you..etc?"

This is a wonderful story which has as its bookend many years later (I think I read this in a review of a Dietrich (auto)biography several years ago) the story that the ripening middle-aged but still seductive Dietrich actually did offer herself to John F. Kennedy at the White House. I can't remember Kennedy's reply, but I'm sure it was as witty as his father's.

Plus, I have a feeling that if you weren't much good at making love, your prowess would have improved after wrestling with Marlene. Either that, or your ego would be forever deflated.

This is one more thing about the Bush dynasty that is, well, boring. Nobody wants to sleep with them.

[Don Quijote]

This is one more thing about the Bush dynasty that is, well, boring. Nobody wants to sleep with them.

Not Quite true, apparently Neil does not have that problem.

[John Thullen]

Well, yeah, but didn't he pay for that service? Don't get me wrong. If Bush were philandering, I might be able to get through the next 3 1/2 years.

I like my lies to be entertaining, not lethal.

[Gary Farber]

Of course, it was alleged that President G. H. W. Bush did have an affair.

[Dantheman]

"If Bush were philandering, I might be able to get through the next 3 1/2 years."

Under Mel Brooks's theory that those who don't do it to women who are not their spouses, do it to the country?

[M. Scott Eiland]

Of course, it was alleged that President G. H. W. Bush did have an affair.

[Scott notes the name "Conason" in the temporarily non-functional link, snickers, and moves on]

[Gary Farber]

Just for the record, Scott, I'm not claiming anything about Bush 41; I merely thought it was worth noting that such an allegation was made, and some support provided for it, and that's all.