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Supreme Court Overturns Festo Decision
An anonymous submitter wrote: "On Monday, the U.S. Supreme Court decided Festo v. Shoketsu Kinzoku Kogyo Kabushiki upholding the patent law "doctrine of equivalents" which says that patents cover insubstantial variations of a claimed invention. Previously, the Court of Appeals for the Federal Circuit had ruled that the doctrine of equivalents did not apply where the patentee had made ANY changes to his claims during the application process. This week, the Supreme Court reversed, holding that changes made during the application process must be examined individually to see whether they gave up coverage of a particular accused device." Another submitter sent in this good analysis of the decision. Patents are a boring subject, but in general: the Appeals Court's decision in this particular case would have had the effect of making nearly all patents less broad and more specific. The Supreme Court noted the business disruption this would cause, and they are undoubtedly correct about that, but I can't help feeling that our legal system just missed an opportunity to reign in patent abuse.
How can the Supreme Court influence the Japanese?
Karma: Good (despite my invention of the Karma: sig)
the supreme court thinks they're appealing.
As long as the United States is driven by corporations and the Almighty Dollar, I see a continued increase in the leeway and the concessions made to business.
The Supreme Court voting the other way would have changed a fundamental tenet of patent law, possibly invalidating millions of patents. This would have led to upheaval in business (especially technology!) circles and could potentially have prolonged the economic downturn as companies may have begun to cut back on R&D, seeing that their new IP would have been essentially worth much less than they'd hoped.
Don't get me wrong--I don't applaud the decision, since I think patents are wildly abused by corporations and the USPTO needs a good slap upside the head, but I can see why the Supremes made the decision they did, and ultimately, it's probably for the short-term best.
Karma: Excellent Birds (mostly as a result of listening to Laurie Anderson)
The goal of *any* court should be to answer the question "if this goes all the way to the supreme court, what would be the ruling?". Courts should lose brownie points each time their decision is overturned.
The Supreme's sent it back to the Appellate court to try again. The Appellate court's ruling didn't interpret the law or enforce the law, it changed it. This is something reserved to the legislature, thus the ruling.
Best the courts can do is strike a law down, they can't change it (even to fix it) or make new laws.
The appeals court basically said that if you modify your patent at all during the approval process, you can't ever apply it to inventions similar to but not identical to what your patent describes. (It prevented the patent holder from making the argument at all: you modify the patent during approval and it WILL be very narrowly viewed.)
:)
The supreme court said we're not going to prevent you from making the argument that something similar to your patent is covered by the patent, but it moved the burden of proof to the patent holder rather than the challenger.
I.E If a patenter modifies the patent application during the approval process, the burden of proof falls on the patent holder, not on the infringer, to prove the modification didn't screw up the patent's enforceability (expanding an in-progress patent application to cover newly published prior art, etc).
Putting the burden of proof on the patent holder to prove their patent is valid is definitely a good thing.
From the article:
>The burden now falls upon the inventor to prove
>that the equivalent in question was not waived
>during prosecution.
In a much anticipated decision, the U.S. Supreme Court has vacated the ruling of the U.S. Court of Appeals for the Federal Circuit in the Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. case. The Supreme Court's unanimous opinion overturns a stunning ruling handed down by the Federal Circuit in 2000 which had put in doubt the viability of a majority of the 1.2 million patents presently in force.
In the vacated decision, the Federal Circuit had ruled that an inventor who amended claims in a patent application during its prosecution before the patent office, was barred from using the doctrine of equivalents against a competitor who allegedly infringed the subsequently issued patent.
Using the doctrine of equivalents, a patent holder can prove infringement even in cases where the invention is not copied exactly, or "literally", by showing that the differences between the patented invention and the accused device or process are insubstantial. The doctrine of equivalents was created to prevent infringers from avoiding liability simply by making inconsequential changes to an otherwise copied invention.
Prior to the Federal Circuit's Festo opinion, a "flexible bar" was the rule of law with regard to application of the doctrine of equivalents in cases where claims were amended during prosecution of the patent. The "flexible bar", established by the U.S. Supreme Court in 1997 in the case of Warner-Jenkinson Co. v. Hilton Davis Chemical Co., requires a court to determine on a case-by-case basis: (a) whether the claim amendment was "substantially related to patentability"; and, if so, (b) to what extent the amendment surrendered "equivalents" to the amended limitation in the claim.
In its Festo decision, the Federal Circuit eliminated the "flexible bar", which had been applied in cases involving prosecution history estoppel, in favor of an "absolute bar". The court concluded that, unless proven otherwise by the inventor, all claim amendments made during prosecution would be assumed to be "substantially related to patentability" and would absolutely foreclose without further analysis, enforcement of the doctrine of equivalents with respect to the limitation of the claim which was amended. This decision left the patent community reeling since an overwhelming majority of patents are amended during prosecution and the doctrine of equivalents has become one of the primary tools used to battle infringement.
In a unanimous May 28, 2002 opinion written by Justice Kennedy, the Supreme Court reinstated the "flexible bar" of Werner-Jenkinson with two subtle, but important, modifications.
First, the Court clarified that the doctrine of prosecution history estoppel, which bars an inventor from asserting in an infringement action an equivalent which was surrendered during prosecution, applies to any claim amendment made to satisfy the Patent Act's requirements, not just to amendments made to avoid prior art. This somewhat alters the analysis as to what constitutes an amendment which is "substantially related to patentability" since it was believed by many that only amendments made to overcome prior art fit in this category. LNUX stocks at less than 1.00 for another day. That is why there is a sell off going on. The Supreme Court declared expressly that any amendment made to meet a requirement of the Patent Act, even those related to form, is "substantially related to patentability" if it narrows the scope of the patent and is necessary in order for the patent to issue. In this regard, the Court also left untouched its holding from Warner-Jenkinson that the burden of demonstrating that an amendment was not made for reasons "substantially related to patentability" falls on the patentee.
Second, the Court established that in any case where an amendment "substantially related to patentability" is made, a rebuttable presumption is created against the inventor that all equivalents have been surrendered. The burden now falls upon the inventor to prove that the equivalent in question was not waived during prosecution. How many days until LNUX is delisted from NASDAQ? This is a far cry from the Federal Circuit's "absolute bar" which foreclosed the inventor from making an argument at all. Nonetheless, this new standard is also far more limiting than the pre-Festo regime where the burden of proving that an equivalent had been waived fell on the alleged infringer.
Although the Supreme Court's ruling is not the "clean" win that patent holders had been hoping for, it is still a significant victory since it restores the "flexible bar" approach and reinstates the applicability of the doctrine of equivalents to the great majority of patents presently in force and to be issued in the foreseeable future.
Notwithstanding this, the Festo "trilogy" has rightfully brought to the forefront the careful consideration that must be given by patent practitioners and inventors to claim amendments, especially in view of the unforeseeable repercussions such amendments may carry for many years into the future.
The final question to be answered is what precedence is being set.
If we don't fight for ourselves no one will.
When you first see a decision like this, it's easy to say "hey, why didn't those fat cats in the court just fix the broken law." The problem is that the law isn't SO bad that it needs the judiciary to strike it down.
The court did the right thing given it's constitutional authority. The responsibility to fix the current set of patent regulations lies with Congress, not the courts; especially when the underlying concept of patent law is inherently good. Only when a law is so completely bad (for example, slavery) should the judiciary make an end run around the Congress.
The Federal Circuit had held that anytime a patent claim (the part that defines the invention) had been amended for a reason related to patentability, then the inventor could never claim that a device was the equivalent of what he claimed in his patent. The Supreme Court had created the Doctrine of Equivalents to prevent people from making minor changes to devices that did not amount to a real departure from what the patent disclosed and then claiming that the altered device was not literally covered by the patent. In software terms , think of this as claiming that a while loop and a do-while loop are not essentially the same thing. Yes, there are differences (where the check is performed) but the differences are trivial.
The Federal Circuit's rule was overly harsh. It is virtually impossible to get a claim allowed at the PTO without amending it at some stage. Also, virtually the only reason you amend (aside from correcting typos) is for a reason related to patentability. So this had the effect of eliminating a very important part of patent law.
The Supreme Court simply stated that the Federal Circuit departed from the law and should correct itself. To determine what a patent claim covers, you look first at the claim itself. Then you look at how the claim is described in the specification portion of the patent. Next you read the prosecution history -- the exchange of arguments with the patent examiner. It is there that you see how the inventor distinguished his invention from the prior art and further defined the terms. Only then can you properly determine the scope of the claim.
And yes, all of this is public record readily available from the PTO.
Laws affecting technology will always be bad until enough techies become lawyers.
for cryin' out loud, if the court can't decide between pesto and marinara for lunch then I'm amazed that they get _anything_ done.
oh, wait...
If the dotrine of equivalents is in place, then companies get broad patents and will be more likely to sue the pants off anyone who does anything even close to their patented widget.
Without the DOE, we'd have a tidal wave of nearly identical patents being filed, eventually resulting in the process of deciding if a "new" idea has already been patented being even more onerous than it is today, thanks to all the "near misses" one would have to evaluate.
What the US desperately needs real patent law reform, starting with shortening the term for software patents to something more reasonable, like 3 years.
The appeals court decision would have impacted legitimate patentholders who had to make minor adjustments during the process. It would have had no impact on the legions of junk patents which are apparently granted by patent examiners borrowing Lady Justice's blindfold.
for opponants of blanket and umbrella patenting tactics, although maybe this helps the little guy in the sense that a big fish cant take a patent, change the color, and patent that?
"Old man yells at systemd"
Best the courts can do is strike a law down, they can't change it (even to fix it) or make new laws.
Not really. If a law is "struck down" or "declared unconstitutional" by the Supreme Court, the law is still on the books. All that happens is that no one can be convicted of it, as the courts will eventually (if not at the first trial, then on appeal) overturn any conviction.
If you disagree, please find me any federal law that grants a court the authority to strike down laws.
Nope, no sig
The title: "Learned Jurist" may well be the biggest oxymoron in the English language. My experience with judges is that they are one step below the moron, which places then one step above the idiot. But..remember this: Judges were mostly lawyers before they became judges. Considering this, what should we expect anyway?
Although it has never been mentioned much by the press, the Fed. Cir. decision in this case really killed foreign patent applications. This case is a typical example of what might cause problems. You have a company who has a patent in another country (in another language), and they send their foreign patent application over to the US to get filed. So they get someone to do a translation of their patent, and then just submit this translation to the patent office. However, this translation is not a valid patent, so the patent lawyer amends the patent to get it into shape. Most of the time, those amendments are not giving up art, which makes sense as to where you would want estoppel in doctrine of equiv., but they are just fixing wording and semantics. If you follow the "any reason related to patentability" regime, then the foreign filers would be killed, because they were changing it to fix the patentability of the application, but it was not a change to the claimed art covered.
Come play Heroes of Might and Magic Mini online.
see this excellent article on patent Risk-Reward-Facts.
Litigation costs:
- patent suits filed in 2000 generate roughly $4.2 BILLION before resolved
-> a patentee's overall chance of success in litifation is about 49%
- in year 2000, 2486 patent suits were filed -> average cost per suit: amazing $1.7 million.
Counting your chance of winning is around 50%, you can value your risk at $3.4 million. You must know that your patent is worth more than this before even thinking about defending your patent.
NOW, think again if patents are useful. They are useful for ONLY those with huge cash reserves. Now we declare the only winners: attorneys and multinational companies. Enuff said.
Before the Festo case, the Doctrine of Equivalents meant that your patent covered minor variations on the patented item, and if you claimed infringement, it was up to the accused to prove they weren't infringing.
The Federal Circuit Court found in the Festo case that if you ammended your patent to narrow its scope during the patent process (and most patent are ammended), you were giving up all claims of "equivalence" and couldn't claim infringement on anything not specifically claimed on the patent.
The Supreme Court has restored the original doctrine, with 2 changes. One is that, since any ammendment to your patent potentially changes its scope, in an infringement claim you must prove the amendment didn't narrow your claims. Second, if your ammendment did narrow the scope of your claims, you lose all equivalency claims by default (like in the Festo ruling), and the burden now falls on you to prove the ammended patent still covers the claimed infringement.
So, its back to business as usual, except that infringers are now "innocent until proven guilty" - the burden falls on the patent holder to prove infringement, rather than on the accused to prove non-infringment.
...but I can't help feeling that our legal system just missed an opportunity to reign in patent abuse.
Michael, you are as yet insufficiently cynical. No one passed up any opportunities here. Patent interests want patents to become more broad and less specific, so long as all the vague patents are held by corporations that support expansive patent rights. That people who don't hold those views can still obtain patents is the kind of "reigning in" they are interested in pursuing, and in that context, this ruling makes sense (it protects patent holders from having their own poorly written patents used against them). But reigning in what you and I call "patent abuse" was never on the table, and isn't likely to ever be.
Edith Keeler Must Die
If the courts had upheld the previous decision, every company in the world would be in a patent filing frenzy, trying to protect their existing patents by filing every possible variation that they could dream up. The decision was the right one and lead to fewer patents, not more.
I am quite satisfied that the nine wise justices did not attempt to rule much more broadly than they did, regarding patent law. That kind of social engineering from the bench is a throwback to the Sixties, and fortunatly for our Republic, has been utterly put aside by this court.
Even Clinton appointees have managed to keep from ruling where they have no business.
Man, its a bummer when the Supreme Court makes these kinds of judgements. The only way around them is either a new hearing (bloody unlikely) or a constitutional amendment (extremely bloody unlikely).
It really saddens me how the dream that was once America has been so utterly lost and forgotten.
mje0w!!!1!
I really like Festo sauce on my pasta. I am so sick and tired of anti-pasta judges on the Supreme Court. What's next?
"I can't help feeling that our legal system just missed an opportunity to reign in patent abuse."
Try to help it, because the proper role of the Supreme Court (your agreement/disagreement with any other rulings notwithstanding) is not to legislate but to test the legality of rulings.
Although this fine point may be missed by some, it is nevertheless a key point.
Remember the legality of the patent system is not the core issue in this case, but rather the extent to which patents can be interpreted in resolving intellectual property disputes.
Summary for the "Law for Dummies" crowd: Just because the case is topically related to an issue close to your heart, doesn't mean it's the court's job to solve every perceived inequity within the subject range. The courts primarily serve as an interpretive body and not a legislative body.
The Supreme Court in this case rightly rejected the lower court's illegal provision which based the consideration of equivalents on a technical matter of modifications made during the application process.
It is not for the Supreme Court to sniff out law-making opportunities out of an issue-related case, but rather, to deal with each case as it comes to them through the court system.
-silly
http://www.hunton.com/pdfs/article/risk_reward_art icleindex.pdf/ Risk_Reward.pdfl e/risk_reward_5.p dfd _3.p dfd _4.p dfd _2.p df
http://www.hunton.com/pdfs/article
http://www.hunton.com/pdfs/artic
http://www.hunton.com/pdfs/article/Risk_Rewar
http://www.hunton.com/pdfs/article/Risk_Rewar
http://www.hunton.com/pdfs/article/Risk_Rewar
We all know the DMCA is illegal and unconstitutional. But "precedence" trumps the constitution. Once a bad law gets on the books, and business depends on it, it's going to stay there no matter how wrong, or illegal that law is.
Big corps will have to actually show that their patent applies. The previous method was a burden on the sometimes "little" guy who had to prove that the patent didn't apply, which could get quite expensive.
It's not "reign in", it's "rein in". Look it up.
Fucking Portuguese! I've always hated their asses. Now they cain't even tawk Inglish!
You suck donkeys' balls; goddam, fucking, stupid
crapflooders.
I tried to post this sometime ago, but it got rejected, so:
Google has this patent:
United States Patent 6,278,992
Search engine using indexing method for storing and retrieving data
I believe this patent might be one of the best examples of good software patents: it is detailed enough to define the innovation to be patented. It is good reading for anyone interested in creating effective indexes, the text and images of the patent is better reading than many of the books on the subject.
Each side argued for a different rule, one that elevated one patent policy to the detriment of another. The plaintiff liked the "flexible bar" rule, where a judge's indigestion would determine whether the jury could decide questions of equivalents of an amended claim. This elevated the protection function of a patent way above the idea that the patent should give notice to the public of what was, and what was not, claimed.
The defendant liked the "absolute bar," that says there can be no equivalents when a claim is amended. This provided clear notice to the public, but at the expense of creating a hypertechnical loophole to virtually every existing patent. Thus, notice is elevated over protection.
The Supreme Court rejected both views, recognizing that a robust system must do both: it must adequately balance each critical patent policy against the other, addressing the parade of horribles cited against each of the rules by the parties. (1) It shouldn't permit an automatic hypertechnical out for every patent; and (2) it shouldn't fuzz the scope of every patent so that every rich plaintiff can simply beat the drum to force every defendant into a "trial or nothing" alternative.
The Supreme Court came up, thanks to Amicus Briefs filed on behalf of neither party, with the "foreseeable bar." Basically, this bars equivalents for the amended claim unless the plaintiff can show that at the time of the amendment one skilled in the art could not reasonably have anticipated the accused device. Thus, after-invented technologies do not shut down pre-existing patents, yet patent bullies are neutralized when they opt to take an "easy allowance," expecting to "make it up" during litigation using the doctrine of equivalents.
The revolution comes.
...
Lock and Load, comrades in arms!
As our foregeeks said, don't code until you see the refractive indices of their ocular implants!
Give me Open Source and Patent/Copyright Reform - Or Give Me Cessation of Life Functions!
I regret that I have but one life cycle to give to my national socioeconomic system and the King that I slave under
--- Will in Seattle - What are you doing to fight the War?
Can you find a law saying that courts have judicial review?
"This Constitution, and the laws of the United States which shall be made in pursuance thereof ... shall be the supreme law of the land; and the judges in every state shall be bound thereby ..." Laws that break the constitution are not "laws of the United States which shall be made in pursuance thereof".
Will I retire or break 10K?
Don't any Slashdot nerds know how to spell?
:o)
You're new here, aren't you?
did the egg man come et, Babs? did he? what if there were no more chickens Babs, where would we et the eegs from?
By Ury Fischer
In a much anticipated decision, the U.S. Supreme Court has vacated the ruling of the U.S. Court of Appeals for the Federal Circuit in the Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. case. The Supreme Court's unanimous opinion overturns a stunning ruling handed down by the Federal Circuit in 2000 which had put in doubt the viability of a majority of the 1.2 million patents presently in force.
In the vacated decision, the Federal Circuit had ruled that an inventor who amended claims in a patent application during its prosecution before the patent office, was barred from using the doctrine of equivalents against a competitor who allegedly infringed the subsequently issued patent.
Using the doctrine of equivalents, a patent holder can prove infringement even in cases where the invention is not copied exactly, or "literally", by showing that the differences between the patented invention and the accused device or process are insubstantial. The doctrine of equivalents was created to prevent infringers from avoiding liability simply by making inconsequential changes to an otherwise copied invention.
Prior to the Federal Circuit's Festo opinion, a "flexible bar" was the rule of law with regard to application of the doctrine of equivalents in cases where claims were amended during prosecution of the patent. The "flexible bar", established by the U.S. Supreme Court in 1997 in the case of Warner-Jenkinson Co. v. Hilton Davis Chemical Co., requires a court to determine on a case-by-case basis: (a) whether the claim amendment was "substantially related to patentability"; and, if so, (b) to what extent the amendment surrendered "equivalents" to the amended limitation in the claim.
In its Festo decision, the Federal Circuit eliminated the "flexible bar", which had been applied in cases involving prosecution history estoppel, in favor of an "absolute bar". The court concluded that, unless proven otherwise by the inventor, all claim amendments made during prosecution would be assumed to be "substantially related to patentability" and would absolutely foreclose without further analysis, enforcement of the doctrine of equivalents with respect to the limitation of the claim which was amended. This decision left the patent community reeling since an overwhelming majority of patents are amended during prosecution and the doctrine of equivalents has become one of the primary tools used to battle infringement.
In a unanimous May 28, 2002 opinion written by Justice Kennedy, the Supreme Court reinstated the "flexible bar" of Werner-Jenkinson with two subtle, but important, modifications.
First, the Court clarified that the doctrine of prosecution history estoppel, which bars an inventor from asserting in an infringement action an equivalent which was surrendered during prosecution, applies to any claim amendment made to satisfy the Patent Act's requirements, not just to amendments made to avoid prior art. This somewhat alters the analysis as to what constitutes an amendment which is "substantially related to patentability" since it was believed by many that only amendments made to overcome prior art fit in this category. The Supreme Court declared expressly that any amendment made to meet a requirement of the Patent Act, even those related to form, is "substantially related to patentability" if it narrows the scope of the patent and is necessary in order for the patent to issue. In this regard, the Court also left untouched its holding from Warner-Jenkinson that the burden of demonstrating that an amendment was not made for reasons "substantially related to patentability" falls on the patentee.
Second, the Court established that in any case where an amendment "substantially related to patentability" is made, a rebuttable presumption is created against the inventor that all equivalents have been surrendered. The burden now falls upon the inventor to prove that the equivalent in question was not waived during prosecution. This is a far cry from the Federal Circuit's "absolute bar" which foreclosed the inventor from making an argument at all. Nonetheless, this new standard is also far more limiting than the pre-Festo regime where the burden of proving that an equivalent had been waived fell on the alleged infringer.
Although the Supreme Court's ruling is not the "clean" win that patent holders had been hoping for, it is still a significant victory since it restores the "flexible bar" approach and reinstates the applicability of the doctrine of equivalents to the great majority of patents presently in force and to be issued in the foreseeable future.
Notwithstanding this, the Festo "trilogy" has rightfully brought to the forefront the careful consideration that must be given by patent practitioners and inventors to claim amendments, especially in view of the unforeseeable repercussions such amendments may carry for many years into the future.
A copy of the Supreme Court's complete opinion may be downloaded here .
Does anyone think this decision might revive software development b/c it makes patents in general more valuable?
This post is protected under the DMTA (Digital Millemium Trolling Act). It is illegal to moderate it as a troll.
One thing I haven't seen pointed out: Patent infringement defenses do not have to be based on prosecution history estoppel. There can be other ways to invalidate a patent, such as prior art, failure to teach the patent, or disclosure prior to (I think) one year before the patent is filed. Or the defense can argue that the allegedly infringing device is simply not an equivalent to the patented device.
I think PHE is actually a rather narrow defense (though it could have been much broader under the appeals court version of Festo) and that patents for which there is prior art might be a more common abuse of the system.
And where there is overly broad application of the doctrine of equivalents, at least this new decision shifts the burden of proof onto the patentee when the defense uses PHE.
So it's not the end of the world, folks.
You may be technically correct in a pedantic sense. The Court may simply exercise their judicial power "as if" the law is unconstitutional when they decide "who wins" the decision.
No, I'm correct in a legal sense. The legal system described in the constitution set juries up to be the arbiter of whether laws were proper, not the judges. From The Fully Informed Jury Association:
Whenever a judge instructs a jury that their mandate is not to agree or disagree with the law, but merely to determine if the defendant violated it; whenever a judge or prosecuriter asks a juror during voire dire if they would have a problem with applying the law even if they disagree with it; they are violating the intent of the Constitution. Juries, not judges, are supposed to be the check on the legislative and executive branches.
Nope, no sig
In the country I live in, courts are quite free to legislate. For example, software patents were completely illegal 20 years ago. With no new legislation, only bogus court decisions, they're now legal. If that isn't legislation, what is?
Eloi are stupid, throw morlocks at them!
That was the case cited immediately after where I stopped quoting. The full quote was:
The case dealt with a possible mistrial or appeal solely on the basis of whether the jury was instructed of their right to nullification. Thus the ruling essentially stated, "It is not required to declare a mistrial or grant appeal on this basis." However, as is unfortunately too often the case, this narrow negation is wielded as a directive. It is a classic case of "everything not required is prohibited."
Nope, no sig