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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 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.
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.
Because Japanese inventors have to get patents here if they want patent protection in the U.S. It's not automatic like copyright.
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.
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.
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.
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.