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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.
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.
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?
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.