In Insituform Technologies v. Cat Contracting, 2001 U.S. App. LEXIS 4570 (nonprecedential), the Federal Circuit applied the law of Festo to reverse a determination of infringement under the doctrine of equivalents. The court found that there was an applicable exception to the law of the case doctrine, in that "controlling authority has since made a contrary decision of the law applicable to the issues," citing to Gould, 67 F.3d at 930 and ultimately relying on Harper, 509 U.S. at 94-97 and James B. Beam, 501 U.S. at 541-544. The analysis of the estoppel against claim 1 of Insituform's patent offers prospective guidance to patent applicants to avoid the reach of Festo.
The technology at issue concerns methods for "in situ" repair of underground pipes, such as sewage pipes, involving the use of a thermosetting resin, a liner, and, most importantly here, a vacuum source. The prior art cited against Insituform was US Patent 4,182,262 ("Everson"), which taught the use of a vacuum pump at the far end of the pipe (i.e., downstream), with the lowered pressure created by the vacuum causing the fluid resin to flow within the tube. The court, in an earlier part of the case, found that "Everson teaches attaching the vacuum to the tube in only one place and applying the vacuum continuously throughout the [resin] impregnation process." 99 F.3d at 1102. The advance by Insituform was in allowing the opening of the vacuum to move, rather than to be stationary, as in Everson. The opening of the vacuum was a cup connected via a tube to a device such as a vacuum pump.
As filed, there were nine claims of the Insituform application, of which the analysis revolved around independent claim 1 and dependent claims 2 (depending from 1), 3 and 4 depending from claim 2. Of the first four claims, only claim 4 mentioned a cup, with the pertinent text being "wherein the vacuum is applied through a window in the film in the wall of the tube by means of a cup applied to said window and connected to a source of vacuum by means of a flexible hose, whereby the cup can move with the tube . . . " Claims 1-6 were rejected as obvious in view of Everson.
In response, applicant canceled claims 1-6, and created three new claims, of which the first (application claim 10 = issued patent claim 1), a method claim with eight steps, was the subject of the litigation. Step 3 of this first claim recited " . . . by disposing over the window a cup connected by a flexible hose to a vacuum source . . . " The revised claims were allowed without further comment. [A review of the file history is needed for full understanding of the amendment.]
The accused process used from four to six cups, moving one cup at a time, specifically the cup closest to the advancing resin.
In the earlier case, the Federal Circuit construed the language "a cup" to be limited to one cup. Insituform, 99 F.3d at 1105. The court stated: "we conclude the only correct and indeed reasonable interpretation of claim 1 limits the scope of that claim to a process using only one vacuum cup which inherently creates a discontinuous vacuum." Insituform, 99 F.3d at 1106. Insituform argued that adding something [more than one cup] to an infringement [one cup] does not avoid infringement. The court repeated the "one cup" construction and observed that adding more than one cup destroyed an inherent feature of the one cup system (discontinuous vacuum). A discontinuous or continuous vacuum was not a claim element.
Nevertheless, in the earlier case, the court found there could be infringement under the doctrine of equivalents that was not barred by prosecution history estoppel. The Federal Circuit made the following observations:
It is true that, in explaining its amendments, Insituform discusses the use of a single vacuum source which was to be moved along the tube . . . This suggests that Insituform envisioned the use of a discontinuous vacuum created sequentially by only one vacuum source. However, this statement alone is too equivocal to be read as a statement that would estop Insituform from equivalently covering a number of small compressors spread along the tube creating a continuous vacuum. 99 F.3d at 1108.
At no point did Insituform indicate that the Everson problem could be solved only in the manner used by Insituform, i.e., Insituform never stated that the problem could not be solved by using more than one vacuum source or a continuous
vacuum. Rather, the only express limitation put on the invention by Insituform was the use of a vacuum source close to the resin. 99 F.3d at 1109.
However, the case was remanded because of the incorrect claim construction by the lower court.
In the March 26 decision, the Federal Circuit found that Festo barred a finding of infringement under the doctrine of equivalents. The court found that Insituform "replaced original independent claim 1 with a new independent claim," and that "the original claim and the original claim as amended, the new claim, must be compared." The new claim spoke of "a cup connected by a flexible hose," but the initial claim did not even speak of a cup. The Insituform court found that Festo imposed a bar as to equivalents encompassing more than one cup. This is so even though the prior art had nothing to do with "how many" cups there were, but rather with "where" the opening to the vacuum was located.
The Insituform cases offer some guidance. Don't use the article "a" unless you mean it to be synonymous with "one." Describe your preferred embodiment cleanly in a separate group of claims, rather than tucking it away in a claim depending from a broad claim. Have separate and independent claim groups, so that when the Festo "comparison" is made, its scope may be limited. If one is forced to amend, make clear what elements are, and are not, at stake, and which amended claims are related to which initial claims. If justified, continue to fight for the claims of broader scope. (In re Clement, 131 F.3d 1464 (CAFC 1997))
PUBLIC MANI-FESTO
Although in April 2001, the popular media is beginning to notice the Festo decision of November 2000, some of the statements are a bit scary. Forbes managed to give the impression the doctrine of equivalents had been "gutted," without actually giving any details of what had happened. n2 Electronic Engineering Times published a letter which suggested that Festo was about written description/enablement issues. n3 A Ziff-Davis publication suggested that most coverage for a patent claim had been eliminated. n4 Crain's Cleveland Business suggested the doctrine of equivalents was gone. n5 The Corporate Legal Times at least obtained cross-sectional viewpoints of both Festophiles and Festophobes. n6
TRAFFIX DEVICES
In the meantime, the Supreme Court explored the patent/trade dress boundary in TrafFix Devices v. Marketing Displays, 58 USPQ2d 1001, 2001 U.S. LEXIS 2457, 69 U.S.LW. 4172, and found that "where the expired patent claimed the [trade dress] features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional." "A utility patent is strong evidence that the features therein claimed are functional." The idea that a necessary test for functionality is "whether the particular product configuration is a competitive necessity" was rejected as a comprehensive definition. n7
IN PASSING
The headline on a story in The Industry Standard n8 was a sign of the new times: Blinded with Science; a leaner Lucent Technologies is relying on the greatest R&D facility in the world to reclaim the telecom market. But does Bell Labs matter anymore? [emphasis added] Within the story was a quote by Marek Wernik of Nortel: "Traditional research has its place, but it's much smaller now. We prefer to look to partnerships with VCs or other relationships for partners or potential companies to acquire. That's a much more reliable route to get new technology." However, a headline in The Industry Standard the next week was a sign of the old times: The Solar Solution, which in part could have been written 25 years ago. n9 One sentence was right out of the movie The Formula: "Wary of offending powerful and entrenched energy interests, Slawson is careful to say that solar should be developed to augment power supplies, not replace fossil fuel, nuclear and hydropower sources."
The case related to BuSpar (buspirone; see U.S. Patent 5,150,365), Mylan Pharmaceuticals v. Thompson, 2001 U.S. Dist. LEXIS 2662 (D. D. C. March 13, 2001), is important on patent claims as between a prodrug (here, buspirone) and the metabolite thereof (here, BMY 28674 or 6-hydroxy-buspirone). Citing to Gerber, 916 F.2d 683, 687 (CAFC 1990), Judge Urbina found that Bristol could not recover prodrug subject matter surrendered as a result of a restriction requirement. Footnote 16, on the apple analogy, is worth a look.
Of the cars of Hamilton Township, the New York Times did not publish my letter, n10 although they did publish a different letter, which criticized Hamilton Township. n11 Of the response I had received from local attorneys, there might be a message for us as patent lawyers. The response of the local attorneys to my request was tailored to their interests, rather than to mine.
They had a nice repeat business defending victims of car towing, and it was not in their interest to see the practice of car towing declared unconstitutional or otherwise inhibited. Could this be in some way analogous to the response of a number of IP attorneys to the Festo decision? Separately, I received responses from a lot of "regular" people. The issue of "out of control" municipal fines is a big one in New Jersey. n12 A lot of people could not believe that I won my case. At least, until they determined I was a lawyer. Then, there was more of a view, "well, of course," with the unspoken words, "lawyers are sneaky devils who exploit technicalities." In my world view, taking private property off of private property without notice or opportunity to be heard is a constitutional violation, not a technicality. Fortunately, at least one person agreed.
ENDNOTES
n1 The views expressed are those only of the author and should not be imputed to any employer, past, present, or future. The author may be reached by phone at 609-514-5951 or by email at ebert@prodigy.net, ebert@lawyer.com, or Lebert@ReedSmith.com.
n2 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). Festo is not about "me-too patents" and the en banc case is reported at 234 F.3d 558, not at 72 F.3d 857. The equivalents doctrine originated with Winans v. Denmead, not with Graver Tank. Whether the fuzzy doctrine is a big company/small company dispute is not clear.
n3 J. B. Marc von Grabe, "Festo ruling a boon if it makes patent holders disclose how-to," Electronic Engineering Times, p. 88 (March 12, 2001). "The current situation is untenable: Any moron without a clue and without ever having worked one hour on the 'invention' can file a patent application for no more than a vague idea."
n4 Jason B. Meyer, "Law and Order -- Five Intellectual Property Issues You Can't Ignore," Ziff-Davis Smart Business for the New Economy, p. 88 (April 1, 2001). "But [Professor Janice] Mueller, who spent two years as a law clerk in the Federal Circuit, says now that if you did any giving in the process of getting a patent, her old bosses have now taken away most of what you thought your patents covered."
n5 David Prizinsky, "Second Trial Awaits Molten Metal," Crain's Cleveland Business, Vol. 22(13), p. 16 (March 26, 2001). "It also overturned a longstanding doctrine designed to stop companies from avoiding infringement judgments by slightly modifying the products in question."
n6 Cliston Brown, "Festo Decision Narrows Doctrine of Equivalents," Corporate Legal Times, p. 70 (March 2001). Therein, Charles R. Hoffman is quoted: "The Court is legislating on its own to create a law that hasn't been fully thought out in terms of the ramifications." The doctrine of equivalents is, and has been, judge-made law, not statutory law.
n7 The court discussed text in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995). A law review article by the resent author is cited in Qualitex.
n8 Jason Krause, The Industry Standard, p. 38 (March 26, 2001).
n9 Could one say that solar is the energy of the future, and always will be?
n10 Part of my letter to the New York Times of March 5, 2001 is reproduced in "You can't know it when you can't see it," ntellectual Property Today, pp. 22-23 (April 2001). Another part of the letter attempted to correct factual inaccuracies in the Times article of March 4, 2001 (Section 14NJ, p. 5), wherein the Times reported that Hamilton "fined them $ 3,000 for three other infractions," and that we "refuse to pay." We were not fined anything, and, consequently, we haven't refused to pay. Other "spinning" that occurred pertained to the "four years vs. three years" remark [the real point being that when the stickering supposedly occurred, the cars weren't there] and "junkyards for automobiles" remark. In the past, certain "spinning" by the New York Times occurred with Wen Ho Lee [see for example "Patents at the Millennium," IPT, Dec. 2000], David Baltimore [see for example "The Life and Weird Times of Scientific Evidence, in the Courtroom and Elsewhere," IPT, Sept. 1999], and DNA profiling [see for example endnote 2 of "Making the Right Selection: Dealing with Daubert," IPT, Oct. 1998]. As a separate matter, the Times, several local newspapers, and the ACLU were aware of trial testimony by a Hamilton officer that Bromley [a poor section of Hamilton] was "targeted" for enforcement in the so-called "Neighborhood Improvement Program," but did nothing about it. As this IPT article goes to press, New Jersey is embroiled in the Verniero/"racial profiling" matter ["DiFrancesco tells Verniero: Resign," Newark Star-Ledger, p. 1 (April 6, 2001); "DiFrancesco Urges Justice to Resign in Profiling Furor," New York Times, p. 1 (April 6, 2001).]
n11 Joseph C. Scanlon, "Mean-Spirited Politics in Case of Backyard Cars," New York Times, Section 14NJ, p. 15 (March 11, 2001).
n12 Jeff Whelan, "Town purses grow fat at the sound of the gavel; municipal courts are fine-collecting factories, the way locals like it," Newark Star-Ledger, pp. 1, 12 (Feb. 25, 2001). The article reported that $ 300 million flowed through local courts in 1999, with municipalities keeping about 3/5. The proposed fine against me of 5.8 million dollars would be right up there. See "5.8 Million Dollar Parking Fine," The Trentonian, pp. 1, 3 (Feb. 20, 2001) and New York Times, Section 14NJ, p. 5 (March 4, 2001).