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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.
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 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.
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.
Because Japanese inventors have to get patents here if they want patent protection in the U.S. It's not automatic like copyright.
"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
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?
That would be the literal meaning of "judicial power" (the power to judge, ie to say "what the law is" as explained in Marbury v Madison) granted to the Supreme Court by the People via the US Constitution:
Article. III.
Section. 1.
The judicial Power of the United States, shall be vested in one supreme Court, and in such inferior Courts as the Congress may from time to time ordain and establish. The Judges, both of the supreme and inferior Courts, shall hold their Offices during good Behaviour, and shall, at stated Times, receive for their Services, a Compensation, which shall not be diminished during their Continuance in Office.
Section. 2.
Clause 1: The judicial Power shall extend to all Cases, in Law and Equity, arising under this Constitution, the Laws of the United States, and Treaties made, or which shall be made, under their Authority;--to all Cases affecting Ambassadors, other public Ministers and Consuls;--to all Cases of admiralty and maritime Jurisdiction;--to Controversies to which the United States shall be a Party;--to Controversies between two or more States;--between a State and Citizens of another State; (See Note 10)--between Citizens of different States, --between Citizens of the same State claiming Lands under Grants of different States, and between a State, or the Citizens thereof, and foreign States, Citizens or Subjects.
----
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. If you wish to view this as somehow different from "actually declaring a law unconstitutional", then please go ahead. I won't be joinging you, however, nor will anybody who deals with the law on a day to day basis.
IANAL, but I hope this explanation helps:
The original theory of prosecution history estoppel was that, if a patent claim had to be modified by the inventor in order for the patent to be granted (because the original claim was too broad), then the modification intentionally narrowed the scope of the patent. The inventor was seen as surrendering that part of his claim in order to gain patentability. So anything that falls into the scope of the original claim but not in the scope of the amended (and then patented) claim, could not be considered an infringement by invoking the doctrine of equivalents.
The Warner-Jenkinson decision weakened the estoppel, giving the courts more latitude in applying the doctrine of equivalents in favor of patentees. Festo went the other direction (in the Appeals Court decision): where there was any modification of a claim for patentability, the doctrine of equivalents could not be applied.
This Supreme Court decision on Festo seems to be hitting the middle ground, in which there is a presumption of estoppel (i.e., a presumption against applying equivalency), but the patentee is now allowed to argue against this presumption -- and now the patentee has the burden of proving that the claim modification did not trigger the surrender of equivalents.
Just what the standard for such proof is under this new decision, the article does not seem to say, unless I missed something.
There are several reasons why a patent is ammended in process. One of them is Lemelson type manipulation of the process (he is now a stiff and so the truth can be said of him without fear of libel).
Another common reason is to add to a patent ideas that have been published by others after the original application. Under the US patent office rules such ammendments get the advantage of the original priority date. So if you design a blue widget in January, I read of your design and propose that the same task could be done by a red widget and publish the idea in May, you can go back and ammend your application to cover both Red and Blue widgets even though you didn't think of the Blue widget idea.
And before patent lawyers claim the opposite, I know of many cases in which such patents have issued. They may not be enforceable, but it currently costs about $2 million to defend a patent case while the plantif's case is typically brought on a contingency basis.
If it was possible to recover costs from the people who file perjurous patents and the leeches who act for them I would have more sympathy for those who claim the USPTO is not a racketeing influenced corrupt organization.
The risk for the US is that historically no one country has remained the dominant economic power for all that long. If the US economy has a spell when it is not doing as well as it is currently relative to the world economy the focus of research and development dollars may move overseas again, at which point the dollars extorted from the economy by patent trolls may cease being a minor irritant and may become a major consideration when deciding where to do business. This afternoon I presented some of my work to an F50 company who is one of our partners, during the presentation someone asked what was new since the basic approaches I was using were all well established, only the application domain had changed, "hopefully nothing", I replied, "If there was anything new here, someone would tack it onto a submarine patent and claim to own it". The sad part being that everyone agreed that the strategy is sound. The patent system is not encouraging innovation, it is allowing leeches to collect undeserved taxes.
I would rather deal with Europe's labor laws that the US patent laws.
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The best reply in this thread is the AC's. On a very superficial level, the doctrines of prosecution history estoppel and the doctrine of equivalents seem to be at odds. However, they really aren't.
PHE prevents an inventor from recapturing subject matter the inventor forfeited in his exchange with the patent examiner. For example, if a claim literally "reads on," i.e., describes, covers, etc. prior art, then it is invalid and will be rejected by the examiner. The inventor has 2 choices at that stage: 1. add more elements or limitations to the claim so that the claim does not completely describe prior art; or 2. Make arguments to the examiner that the claim does not describe prior art because the prior art lacks certain features described by the claim as it is currently worded.
In choice (1), this is an amendment related to patentability (an attempt to get an allowable claim). The Fed. Cir. Festo opinion held that in this case the inventor could not claim that ANY equivalents of the elements of an amended claim would infringe. This is a VERY harsh result, albeit an easy rule to enforce, because then trivial changes could be used to defeat patent protection. Preventing trivial design changes for this purpose was exactly what the US Supreme Court wanted to address in the Warner-Jenkinson case with the doctrine of equivalents.
Option 2, arguing that the claim does not cover certain devices or subjects, creates a prosecution history estoppel. If an inventor argues that his patent claims do not cover certain subjects, he cannot later claim in an infringement suit that the same subject matter he argued to the PTO was not covered is in fact now covered by his claim (the "recapture rule").
The two concepts are related and sometimes overlap, but are distinct. The US Supreme Court reaffirmed that the desire for a bright-line rule of easy application cannot outweigh the policy of the Patent Statute - to give inventors real protections, not ones that can be circumvented by trivial changes. There is a proper way to analyze patent claims - read the claim, read the specification, then read the prosecution history. This concept has been reaffirmed in many many cases. Lawyers filing infringement suits have a duty to make sure that at least one claim in a patent completely describes a device that will be claimed infringes and they can (and should!) be sanctioned for not so doing prior to filing the suit.
Laws affecting technology will always be bad until enough techies become lawyers.