A student-run resource for reliable reports on the latest law and technology news

Federal Circuit Further Circumscribes Doctrine of Equivalents

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (“SMC”)
Federal Circuit, No. 05-1492, July 5, 2007
Slip Opinion

On July 5, in the latest decision in a nearly-twenty-year saga which has cumulatively proven enormously important in defining the scope of the doctrine of equivalents, the Federal Circuit (Dyk, J.) held that an existing equivalent can be foreseeable at the time of a patentee’s amendment, even if it would have been impossible for an observer of ordinary skill in the art to foresee at the time of amendment that the equivalent would ultimately satisfy the tests for equivalence.

Commentary:
Dewey Ballantine: Federal Circuit Elucidates ‘Foreseeability’ Component of Equivalents Test
Sutherland Asbill & Brennan: Making the Unforeseeable, Foreseeable

In the court’s words:

An equivalent is foreseeable if one skilled in the art would have known that the alternative existed in the field of art as defined by the original claim scope, even if the suitability of the alternative for the particular purposes defined by the amended claim scope were unknown.

Slip Op. at 21.

Newman, J. dissented, arguing that:

[the] foreseeable result [of the majority opinion] is to deprive amended claims of access to the doctrine of equivalents.

Slip Op. at 2 (Newman, J., dissenting).

The doctrine of equivalents allows a patentee to prove infringement even when there are minor differences between the patented apparatus and the allegedly infringing apparatus. A patentee may prospectively deprive herself of access to the doctrine of equivalents through a doctrine known as prosecution history estoppel, by amending her patent claims during the prosecution of her patent application to narrow the scope of her claims in such a way as to exclude the infringing apparatus. In turn, there are three exceptions to prosecution history estoppel:

(1) the equivalent was “unforeseeable at the time of the application,” (2) “the rationale underlying the amendment [bears] no more than a tangential relation to the equivalent in question,” or (3) . . . “some other reason suggest[s] that the patentee could not reasonably be expected to have described the insubstantial substitute in question.”

Slip Op. at 9 (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740-41 (2001)).

Festo XIII covers the foreseeability exception; specifically, it addresses the question of whether an equivalent known at the time of the application, but not known to be used as an equivalent to the patented apparatus, was foreseeable.

Posted On Jul - 22 - 2007 Comments Off

Related Posts

  • No related posts found

Comments are closed.

  • RSS
  • Facebook
  • Twitter
  • GooglePlay
invisalign-braces

ITC’s review of an

On appeal, the Federal Circuit first stated that the “arbitrary, ...

Photo By: mkhmarketing - CC BY 2.0

Facebook’s experim

While the experiment lasted only for a week and used ...

Icon-news

Flash Digest: News i

By Ken Winterbottom Access to nude photos is a ‘perk’ of ...

pic01

SDNY Holds Bitcoins

The money laundering charge, Count Four of the indictment, has ...

aereo_antenna_array1

Aereo Struggles as S

In Justice Breyer’s majority opinion, despite acknowledging that Aereo does ...