The Supreme Court is reviewing the en banc decision of the Court of Appeals for the Federal Circuit, concerning the scope of the doctrine of equivalents in view of the doctrine of prosecution history estoppel. The case has been much discussed in the legal community, n2 with over 20 amici briefs filed by August 2001, and has received some publicity in the popular press. n3
In the "summary of argument," Robert Bork, writing for petitioner Festo states: "The Federal Circuit has deformed the traditional functions of prosecution history estoppel and the doctrine of equivalents . . . Copyists may now proceed by making insignificant changes in any amended claim element, safe in the knowledge that the patentee cannot win an infringement action. The result is to render virtually valueless almost all existing and future patents."
n4 Mr. Bork concluded with the text:
Any patent or copyright system involves a trade-off between rewards to stimulate creativity and the costs of exclusivity. The traditional rules of prosecution history estoppel and this Court's cases, culminating in Warner-Jenkinson, have recognized the trade-off and achieved a balance between costs and benefits. Congress has acquiesced in that balance by leaving the doctrines of estoppel and equivalence undisturbed for well over a century. No reason appears why the Federal Circuit should be permitted to make its own public policy by dictating a dramatically different cost-benefit decision. n5
DISCUSSION OF SOME BRIEFS ALIGNED AGAINST THE EN BANC HOLDING
Petitioner's brief
Petitioner's brief
The brief for petitioner Festo presented three main points.
1. That the Supreme Court had a traditional understanding of the reach of prosecution history estoppel, which limited the doctrine of equivalents only when subject matter has been surrendered to make the claimed subject matter patentable. Petitioner pointed out that the Federal Circuit's decision was inconsistent with what the Supreme Court had done and that the Federal Circuit had unjustifiably expanded the presumption of Warner-Jenkinson.2. That the Federal Circuit's rule accomplishes nothing useful but will complicate patent prosecution and litigation.3. That the Federal Circuit's rule would seriously damage the patent system and enact harmful public policy.
Amicus Brief of AIPLA
These three points were echoed within the amicus brief of the American Intellectual Property Association.
1. The complete bar of the Federal Circuit contravenes the Supreme Court's jurisprudence on the doctrine of equivalents, which has made a touchstone that estoppel arises when there has been a clear and unmistakable surrender of otherwise patentable subject matter. The complete bar discourages patent applicants from clarifying the language of the claims and thus thwarts a better public understanding of the true reach.2. The complete bar of the Federal Circuit has met with criticism from members of the judiciary, the PTO, the legal academy, and the business community. Specifically, the legal academy and the business community have criticized the complete bar as upsetting the previously fair balance between the scope of exclusive rights of the patentee and the reliable notice to competitors.3. The retroactive application of the complete bar of Festo leads to unjust results against which the Supreme Court warned in Warner-Jenkinson.
Amicus brief of the United States by Solicitor General Theodore B. Olson
Solicitor General Olson argued that the Federal Circuit correctly ruled that a patent claim amendment that narrows the scope of a claim gives rise to prosecution history estoppel. However, Solicitor General Olson argued that the Federal Circuit was wrong in holding that prosecution history estoppel completely precludes application of the doctrine of equivalents. The brief stated: "Patent applicants should not be deterred by the specter of prosecution history estoppel from making amendments that preserve the claimed subject matter but state their claims more precisely and thereby enhance the notice function of the patent claims. Thus, even if a patent claim is amended for reasons of patentability, a court should apply prosecution history estoppel only if the particular terms of the amendment narrow the relevant claim."
The brief proposed, as an alternative to the absolute bar of the en banc Festo decision, an evidentiary burden on the patent holder to demonstrate that the applicant's narrowing amendments preserved a range of equivalents that provide a basis for asserting infringement. Two particular situations were identified.
1. A patent holder should be allowed to assert that an accused device infringes under the doctrine of equivalents if the court finds that the assertedly equivalent element is itself an innovation that was not known to persons of ordinary skill in the art at the time the applicant amended his claim.2. A patent holder should be entitled to assert that an accused device infringes under the doctrine of equivalents if the court concludes that, owing to the nature of the subject matter at issue, it was not possible for one of ordinary skill in the art to draft a claim amendment that literally encompassed the allegedly equivalent element while disclaiming the surrendered subject
matter.
The brief went on to say that if the Supreme Court determined the complete bar was in error, then there should be vacatur and remand, ultimately to the district court. If it were found that there narrowing amendments related to patentability, then Festo would have to show that the allegedly equivalent elements are later-developed technologies that were not known to persons of ordinary skill or by demonstrating that persons of ordinary skill in the art could not reasonably have drafted a patent claim that literally encompassed the allegedly equivalent elements.
The facts of the Festo case itself illustrate the difficulties with this approach. Of the amendment during the prosecution of the asserted Stoll patent, wherein claim I was "amended" n6 to include a new limitation "a cylindrical sleeve made of magnetizable material," the problem concerns the meaning of the word "magnetizable" and possibly of the words "made of."
Of the issue with magnetizable, the world of "cylindrical sleeves" is divided into those which are magnetizable and those which are not magnetizable. The mere act of writing "a cylindrical sleeve made of magnetizable material" presupposes the existence of cylindrical sleeves made of non-magnetizable material. The patent applicant told one of ordinary skill: in the world of cylindrical sleeves, select from those which are made of magnetizable material. Whether the use of sleeves made of non-magnetizable material was a later-developed technology, or not, is not the right question to be asking in this context. That is, if it were the accused infringer who discovered that non-magnetizable materials would work, and not the patent applicant/patentee, who should society reward and who should society punish? n7 Whether the "later-developed technology" test of the brief would achieve a fair result here is not clear.
Of the issue with "made of," patent attorneys are familiar with the terms "consisting of," "consisting essentially of," and "comprising." To first order, "made of" looks like "consisting of" or "consisting essentially of." What apparently happened in the Festo case was that the accused infringer, whether advertently or inadvertently, practiced with an aluminum sleeve which comprised some ferromagnetic material, which amount was not sufficient to render the sleeve "magnetizable" as would be understood by a third grader with a bar magnet but which was sufficient to achieve some benefits. Whether the function of the magnetizable sleeve or the benefits therefrom are part of the claim language is a separate question. n8 Although Festo might not be able to show that persons of ordinary skill could not reasonably have drafted a claim element "a cylindrical sleeve comprising a magnetizable material," it's not clear that that reason alone should foreclose the doctrine of equivalents.
Amicus brief by Institute of Electrical and Electronics Engineers (IEEE)
Amicus brief by Institute of Electrical and Electronics Engineers (IEEE)
The brief of IEEE opposed the absolute bar of Festo and proposed a bar based on foreseeability. This would hold that, notwithstanding a patentability-related amendment to a patent's claims during prosecution, the doctrine equivalents will be applied UNLESS the limiting effect of the amended language with respect to the accused device would have been foreseeable at the time of the amendment to a reasonable person skilled in the art. The brief further stated: "a foreseeable bar asks the trial judge only whether the limiting effect of an amendment's language as applied to exclude an accused device from literal infringement was foreseeable at the time of the amendment."
The brief of IEEE did not apply its "foreseeable bar" to the facts of the Festo case. As noted above, an issue in Festo as to the Stoll patent is the meaning of the word "magnetizable." The claim element "a cylindrical sleeve made of magnetizable material" would seem to indicate that the patentee said not to use "a cylindrical sleeve made of non-magnetizable material." Would it be foreseeable that a cylindrical sleeve made of aluminum (a non-magnetizable material) which contained some ferromagnets was given up by the patent applicant? Festo does not think so, and the jury that decided this question (earlier) probably would not think so. SMC certainly does think so. The foreseeable bar does not advance resolution of this case.
Separately, the foreseeable bar might be in conflict with Graver Tank. Therein, manganese ion was found to be an equivalent of magnesium ion, even though manganese ion was taught in the prior art, and thus its use was clearly foreseeable. In Graver Tank, the majority wrote: "It is difficult to conceive of a case more appropriate for application of the doctrine of equivalents. The disclosures of the prior art made clear that manganese silicate was a useful ingredient in welding compositions." Graver Tank, 85 USPQ 328, 332 (1950). Justice Black, in dissent, wrote: "But the similar use of manganese in prior expired patents, referred to in the Court's opinion, raises far more than a suspicion that its elimination from the valid claims stemmed from fear that its inclusion by name might result in denial or subsequent invalidation of respondent's patent." 85 USPQ at 333.
Brief of Intellectual Property Creators
Brief of Intellectual Property Creators
Steven Winter argued that "reliance on the literal language of the patent is misplaced," and further stated:
Because science and technology are human endeavors, they are subject to the laws of human language and thought. Self-declaring literal meaning is no more available in science and technology than elsewhere . . .
While there can be limits in the use of language, one should note that a lot of shadings of meanings are deliberately introduced into patent claims. For example, claim 1 of US 4,818,542 contains text "a relatively homogenous essentially spherical" and "confined essentially completely." There has been a recent litigation over the text "amorphous form essentially free from crystalline material" in US 4,562,181 (see Glaxo v. Ranbaxy, 59 USPQ2d 1950 (CAFC 2001)). In Durel v. Osram, 59 USPQ2d 1238 (CAFC 2001), one effectively debated whether metal hydroxides could be considered metal oxides. Who's kidding whom here? n9
In Exxon Research and Engineering Co. v. United States 54 USPQ2d 1519, 1530 (Ct. Cl. 2000) [see also recent CAFC decision, 00-5077, Sept. 19, 2001], one has the text:
Two leading cases on the use of imprecise terms in patent claims are Modine Manufacturing Co. v. United States International Trade Commission, 75 F.3d 1545, 37 USPQ2d 1609 (Fed. Cir. 1996) and Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed. Cir. 1984). In these cases, the Federal Circuit discusses how definite a term must be to avoid being indefinite. One principle from Modine and Seattle Box is that "[mathematical] precision should not be imposed for its own sake; a patentee has the right to claim the invention in terms that would be understood by persons of skill in the field of invention." Modine, 75 F.3d at 1557, 37 USPQ2d at 1617 Modine and Seattle Box permit imprecise words when they are used to describe an objective point that is explained by the claim, the specification, or the prosecution history. In Modine, the Federal Circuit explained that "relatively small" in the context of a tube in automobile air conditioners was not indefinite. First, the specification used the term "about 0.015-0.040" inches. Second, the diameter of the tube was necessary to distinguish the patent from the prior art. See Modine, 75 F.3d at 1557, 37 USPQ2d at 1617.
If ambiguous terms show up in a narrowing amendment related either to patentability or simply unexplained, who should bear the risk of the uncertainty? In the realm of a cutback in original claim scope made by the applicant, one infers that the applicant is in the best position to exhaust the limits of the available. If too conservative, re-issue is available. Beyond that, the public is best served by competition. The tools ultimately belong to the person who can use them. [See Justice Jackson, quoting Napoleon, in Youngstown Sheet and Tube v. Sawyer, 343 U.S. 579 (1952)].
IN PASSING
IN PASSING
The patent aspect of stem cells has gained much publicity. n10 Some relevant stem cell patents include US 5,843,780; US 6,200,806, and US 5,453,507. With the expiry of the fundamental PRILOSEC patent on Oct. 5, and subsequent
wrangling, the popular press is picking up on the drug/patent interface. n11
wrangling, the popular press is picking up on the drug/patent interface. n11
ENDNOTES
n1 The opinions expressed here are to foster scholarly debate and are those of only the author and not of any employer, past, present or future. The author may be reached at Lebert@Reed Smith.com, ebert@lawyer.com, ebert@email.com or at 609-514-5951. Additional articles by the author are available at www.ReedSmith.com.
n2 Separately, note the following legal commentary: William M. Atkinson, et al., "Was Festo Really Necessary?" 83 JPTOS 111 (2001); Peter J. Ayers, "Federal Circuit's Festo is Unfriendly Toward Patent Rights," 163 NJLJ 29 (2001); Lawrence B. Ebert, "Festo: Sea Change in Patent Law?", Intellectual Property Today (IPT), pp. 34-35 (Jan. 2001); Lawrence B. Ebert, "Heads up on Festo Changes," National Law Journal, p. A21 (Feb. 5, 2001); Lawrence B. Ebert, "Insituform: Festo for the Festophile?", IPT, pp. 48-49 (May 2001); "Festo Decision is Condemned at Meetings of ABA and AIPLA," 61 PTCJ (BNA) 414 (2001); William James, "Ensuring Broad Claim Coverage after Festo," 18 Computer & Internet Lawyer 13 (2001); Steven E. Koffs, "What's Left of the Doctrine of Equivalents?", 224 Legal Intelligencer 5 (2001).
n3 The popular press did not really take note of the November 2000 decision until spring 2001, and even then manifested confusion about what the case concerned. For example, both Forbes and Scientific American led readers to believe that the case concerned obtaining patents on trivial discoveries. The Festo case concerns the manner in which alleged copyists can evade infringement under the doctrine of equivalents and is not concerned with copyists obtaining "me too" patents. See, Nathan Vardi, "Me-Too Patents; Forget Napster. The biggest intellectual property case going could make copycat products perfectly legal," Forbes, pp. 58-59 (April 16, 2001). Similarly, see Gary Stix, "A license for copycats" in the June 2001 issue of Scientific American which begins with the sentence: "Should someone be able to patent an invention that blatently duplicates a previously patented creation except for some minor alterations -- changing a bolt, for instance? The Court of Appeals for the Federal Circuit, the judiciary that handles appeals in patent cases, has effectively said yes."
n4 "Brief for Petitioner," No. 00-1543, filed August 31, 2001, page 15.
n5 "Brief for Petitioner," No. 00-1543, filed August 31, 2001, page 45.
n6 The initial, as-filed claim 1 was apparently canceled and a new independent claim, incorporating limitations of several, as-filed, dependent claims was presented. Certain text in the en banc Festo decision, which states that claim 1 was amended, is apparently wrong. (For example, "In response, Stoll amended some claims, including claim 1, and canceled others, including 4 and 8." Festo, 234 F.3d at 583). Text in later decisions which mentions cancellation, such as Insituform v. Cat Contracting, 58 USPQ2d 1392, 1398 (CAFC 2001) and Monsanto v. Mycogen, 58 USPQ2d 1891 (CAFC 2001), appears to be correct. The aspect of Festo of applying an absolute bar to equivalents of an as-filed element (e.g., the cup in Insituform), wherein the narrowing of the claim occurred by combining different elements, rather than by narrowing a given element, is problematic. Although the applicant is giving up scope by requiring more elements, the applicant, in not altering a given as-filed element, is not manifesting a surrender of equivalent scope as to that given element and should not be per se barred from such equivalent scope.
n7 The buckminsterfullerene story illustrates how the Nobel Prize committee views the question. The second group of researchers who published the correct structure in 1985 won the prize, and the first group of researchers who described the C60 compound, and a way to make it, in 1984 [published in J. Chem. Phys. 1984, 81, 3322], went home empty handed [see also, L. B. Ebert, "Written Description: Circumscribing Possession to Prevent Overreaching," IPT, pp. 78-79 (Oct. 2000)]. It is separately true that the "later-developed technologies" query of the brief of the Solicitor General presumes that the patentee should control the unknown zone around the literal scope of a patent claim and therein runs afoul of policy inferences given by Robert P. Merges and Richard R. Nelson, 90 Colum. L. Rev. 839 (1990) on underfishing and separately the findings within footnote 353 of Merges/Nelson.
n8 In this vein, see Toro Co. v. White Consolidated Industries, No. 00-1561 (functions "do not become part of the claimed structure unless claimed as such.")
n9 The same question could be made as to the proposal, in several quarters, that the en banc Festo decision will promote the use of "trade secrets" over patents. On the facts of Festo, or of Warner-Jenkinson, there would be no possibility that trade secrets were an alternative. Separately, the concern about computer/business method patents pertains to the asserted triviality of invention, and trade secrets would be of no relevance.
n10 Paul Recer, "Bush Challenged on Stem Cells," AP (Aug. 17, 2001) ["But the [Wisconsin Alumni] Foundation also holds patents that may affect all 60 of the cell lines mentioned by President Bush."]; Brenda Sandburg, "The Hard Cell," The
Recorder (August 28, 2001); Paul Recer, "Some Stem Cell Lines May be Unusable," AP (August 29, 2001); [some stem lines "are mired in patenting and licensing issues."]; "Congress Challenges Bush on Stem Cells", AP (Sept. 5, 2001)
["Without an agreement, scientists outside of the University of Wisconsin, where the first embryonic stem cells were produced, cannot conduct their own research, with or without federal funding."]; "University Expands Stem Cell Lawsuit," AP (Sept. 25, 2001) [concerning lawsuit of University of Wisconsin/Geron Corp.]; R. C. Scheinfeld and P. H. Bagley, NYLJ (Sept. 27, 2001).
Recorder (August 28, 2001); Paul Recer, "Some Stem Cell Lines May be Unusable," AP (August 29, 2001); [some stem lines "are mired in patenting and licensing issues."]; "Congress Challenges Bush on Stem Cells", AP (Sept. 5, 2001)
["Without an agreement, scientists outside of the University of Wisconsin, where the first embryonic stem cells were produced, cannot conduct their own research, with or without federal funding."]; "University Expands Stem Cell Lawsuit," AP (Sept. 25, 2001) [concerning lawsuit of University of Wisconsin/Geron Corp.]; R. C. Scheinfeld and P. H. Bagley, NYLJ (Sept. 27, 2001).
n11 From the internet/Reuters: Wall Street analysts expect branded drugs with combined annual sales of more than $ 45 billion to lose U.S. patent protection between 2001 and 2005, joining Eli Lilly's antide-pressant PROZAC, which lost its U.S. patent protection in August. Reuters is running a package of stories on the threat of generic drugs to the makers of popular prescription medicines, and the potential benefits to consumers.