In an August 2002 article, legal commentators observed: "Intellectual property owners may have cause to celebrate: The U.S. Supreme Court has partly lifted the cloud of uncertainty that was cast over the IP community by the U.S. Court of Appeals for the Federal Circuit's closely watched Festo decision of 2000." n2 Arguably, this is somewhat backwards. The U.S. Supreme Court vacated the clear, but draconian, rule of the en banc Federal Circuit and replaced it with a rebuttable presumption of surrender which presumption can be overcome by satisfying one of at least three tests; the tests were never before used and indeed bear no citations to previous legal authority. n3 The review of initial district court decisions given below suggests that the Supreme Court decision has created a cloud of uncertainty.

One district court n4 laid out the tests in the following way: "In Festo, the Supreme Court held that a narrowing amendment does not relinquish equivalents: (1) unforeseeable at the time of the amendment; (2) for aspects of the invention that have only a peripheral relation to the reason the amendment was submitted; or (3) where there is some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. 122 S. Ct. at 1841-42. The patentee must show that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent. Id. at 1842."

Arguably the most interesting is test (1), wherein the patentee argues for protection under the doctrine of equivalents for embodiments that were unforeseeable to the inventor. In MLMC v. Airtouch, n5 the plaintiff argued "the patent inventor could not have foreseen the equivalent plaintiff seeks to claim." n6 The court disposed of the "unforeseeability" argument by reference to the claim construction: "In other words, the averment that the inventor could not have foreseen the fact that nonsecret, publicly available codes would be used in the signaling communications, even if true, is irrelevant under the court's claim construction requiring that "unenciphered" transmissions be uncoded. To allow an equivalent under these circumstances would nullify the court's claim construction."

Similarly, in SmithKlineBeecham v. Excel, n7 plaintiff argued "that PVA's use in combination with bupropion hydrochloride was unforeseeable at the time of the claim amendments and, therefore, it was impossible for one skilled in the art to have drafted a claim that would have literally encompassed PVA." The gist of the court's response was contained in footnote 23, which stated: "Based on the examiner's statements in rejecting the original claims, it is unlikely that the patentee could have redrafted the claims any more broadly than they were. However, the issue before this court is whether the patentee had the scientific ability to redraft the claims more broadly, not whether the examiner would have accepted the hypothetical amendments."

 

The court in Glaxo v. Impax n8 acknowledged the confusion among courts over the foreseeability issue: "The court is aware that several recent opinions address the applicability of prosecution history estoppel to the '798 patent. In Glaxo Wellcome v. Eon Labs Mfg., Inc., 2002 U.S. Dist. LEXIS 14923, 00-C iv.-9089 (S.D.N.Y. Aug. 13, 2002), the Southern District of New York concluded that prosecution history estoppel does not apply, finding a triable issue of fact as to the foreseeability of HPC as a sustained-release agent. This court does not find the same ambiguity in the record before it. The court respectfully disagrees with that decision. The Eastern District of Virginia considered similar issues in SmithKline Beecham Corp. v. Excel Pharm., Inc., 2002 U.S. Dist. LEXIS 14524, No. 2:02CV51 (E.D. Va. Aug. 2, 2002)."

 

Telling It Like It Is
 

Text in Festo suggested that an amendment to a claim might more clearly demonstrate what a claim is not, rather than what a claim is. The court wrote: "The narrowing amendment may demonstrate what the claim is not; but it may still fail to capture precisely what the claim is. There is no reason why a narrowing amendment should be deemed to relinquish equivalents unforeseeable at the time of the amendment and beyond a fair interpretation of what was surrendered." n9 In fact, in claiming and in amending claims, the general goal is to capture what the invention is by reciting affirmative limitations. Defining an invention by "what it is not" is strongly discouraged. n10

In the amendment in the Stoll patent in the Festo case, the applicant added the affirmative limitation of a magnetizable sleeve, and thus demonstrated what the invention was (something that required a magnetizable sleeve). It was the accused infringer who argued that such an affirmative requirement of a magnetizable sleeve relinquished rights to a sleeve made of a non-magnetizable material (aluminum). A sleeve made of a non-magnetizable material was outside the scope of the claim because of the positive recitation concerning a magnetizable sleeve.

Along this line, the Supreme Court also wrote: "The amendment does not show that the inventor suddenly had more foresight in the drafting of claims than an inventor whose application was granted without amendments having been submitted. It shows only that he was familiar with the broader text and with the difference between the two." In Festo itself, the applicant should have been familiar with the broader text (no limitation as to magnetizable) and the difference between the narrower text and the broader text (a requirement of a magnetizable sleeve). But, is this the right inquiry? Did the applicant surrender a non-magnetizable sleeve containing a significant amount of magnetizable impurities?

Some district courts have addressed the language issue. In Shen Wei v. Kimberly-Clark, n11 the court said: "Often language within patent claims does not capture every nuance of an invention nor describe with complete precision the range of its novelty." In Turbocare v. General Electric, n12 there is text: As the Supreme Court has recently noted, this doctrine recognizes that "the nature of language makes it impossible to capture the essence of a thing in a patent application.

The Supreme Court text, "There is no reason why a narrowing amendment should be deemed to relinquish equivalents unforeseeable at the time of the amendment and beyond a fair interpretation of what was surrendered" seems to combine the concept of "unforeseeable" equivalents [arguably a fact issue] with an estoppel concept ["beyond a fair interpretation of what was surrendered," arguably a legal issue]. As noted previously, n13 Supreme Court decisions through Graver Tank had required that an embodiment, to be an equivalent, had to be known at the time of the invention, and thus had to be foreseeable. Although it is definitely true that Festo concerns the issue of equivalents as to amended claim elements, it is also true that previous Supreme Court decisions, in mandating that equivalents be known, were addressing a required characteristic of an equivalent, whether of an amended or of an unamended claim element. This requirement is related to the basic quid pro quo of the patent system, that limited protection is given for full disclosure.

The case BT v. Prodigy, a "big deal" case on the internet, n14 has the text:

"A device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim.". Similar text appears in BIONX IMPLANTS, INC v LINVATEC CORPORATION (CAFC, August 15, 2002). n15 There has been some discussion of recent developments of molecular grids for use in chips. n16 Some decision on the Lucent/Schon investigation may be reached in September. n17 The Wall Street Journal erred in a discussion of PRILOSEC/NEXIUM. n18 Kansas State University is making a commercial go of a patent donated by Procter & Gamble with a drink called Cal-C.

 

n1 The opinions are those only of the author, and not of any employer, past, present, or future. The author may be reached at ebert@email.com or at c8asf5@yahoo.com. The title is a parody on words of the song "Master Jack," performed by Four Jacks and a Jill. An article by the author on the Festo case appears in the July 16 issue of the Pittsburgh Post-Gazette, available on their website under post-gazette.com/business-news/20020715letts0716bnp6.asp.

n2 Tony Mauro and Evan P. Schultz, Corporate Counsel, IN THE LAW; Vol. 02; No. 8; Pg. 103 (August 15, 2002).

n3 There has been some discussion of whether or not the foreseeability test of the Festo decision is that proposed within the IEEE amicus brief and further discussed in the article "Foreseeability in Patent Law," 16 Berkeley Technology Law Journal 1045 (2001). Given that the IEEE test is about the foreseeability of the effect of the amendment and the Supreme Court test, as written, and as construed by district courts, is about the foreseeability of the proposed equivalent, it might seem that the U.S. Supreme Court did not adopt the proposed IEEE test. Separately, we have discussed the "transistor only for hearing aid" text of the BTLJ article in IPT in July and June 2002. Also on the transistor, the text -- the terms "cathode" and "anode" for vacuum-tube instruments gave way to "collectors" and "emitters" after the invention of the transistor -- perhaps does not fully consider that charge carriers in transistors can be n-type or p-type, but the carriers of tubes are electrons. The initial transistor was p-type (germanium).

n4 Glaxo v. Eon, 2002 U.S. Dist. LEXIS 14923

n5 MLMC v. Airtouch Communications, 2002 U.S. Dist. LEXIS 16643

n6 The inventor presented a declaration stating: At the time I amended the claims in my application to add the term "unenciphered" to describe the signaling communications, it was not foreseeable that someone might use a scrambling code that was known or easily obtained and not intended to provide secrecy to the signaling communications.

n7 SmithKlineBeecham v. Excel Pharmaceuticals, 2002 U.S. Dist. LEXIS 14524

n8 Glaxo v. Impax, 2002 U.S. Dist. LEXIS 15966

n9 FESTO CORPORATION v. SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD., ET AL., 122 S. Ct. 1831; 1841, 152 L. Ed. 2d 944; 2002 U.S. LEXIS 3818; 62 U.S.P.Q.2D (BNA) 1705 (2002).

n10 Landis, 3rd edition, º 17, "Avoid negative limitations except in unusual cases." See also MPEP 706.03(d).

n11 Shen Wei v. Kimberly-Clark, 2002 U.S. Dist. LEXIS 16561

n12 Turbocare v. General Electric, 2002 U.S. Dist. LEXIS 15274

n13 L. B. Ebert, Litera Scripta Manet?, Intellectual Property Today, pp. 24-25 (August 2002).

n14 British Telecommunications v. Prodigy Communications, 2002 U.S. Dist. LEXIS 15521. The district court cited to the district court decision of Bionx Implants, Inc. v. Linvatec Corp., 99 F. Supp. 2d 396, 396-99 (S.D.N.Y. 2000). Of the facts of the BT case, the court noted: However, in order to raise a disputed issue of material fact, BT must identify at least one web page other than one it invented for the purposes of this lawsuit. It has not done so. Other than BT's general assertion that blocks of information as defined in the Sargent patent exist on the Internet, BT has not presented any other evidence of an infringing Web page, on Prodigy's system or anywhere else on the Internet. Since the one example that Dr. Wah identified as an infringing Web page ( other than the ones he created) does not literally infringe the Sargent patent, BT's expert's conclusory statement that there are infringing HTML files on the Internet does not raise a genuine issue of material fact precluding summary judgment.

n15 The law firm Kenyon & Kenyon was involved in both cases, representing BT in one case and plaintiff-appellant Bionx in the other (2002 US App LEXIS 16708). In Bionx, the district court concluded that a certain demonstration was insufficient to defeat summary judgment because it ran afoul of "the well-established rule that a device does not infringe merely because it can be altered to make it infringe." The Federal Circuit disagreed: -- For that reason, the fact that Bionx used an "insertion rod" in its videotaped demonstration presented to the district court does not, by itself, constitute an impermissible alteration of the accused device that renders the videotaped demonstration an invalid test of whether the accused device is "rigid." Accordingly, we conclude that the district court erred by granting summary judgment to Linvatec.

n16 See US 6,198,655 and US 6,314,109, and note inventor affiliation, assignment, and federal funding.

n17 M. Stroh, "A cold eye on a hot young physicist; Parent of Bell    Labs names team to review research to check suspect results," Baltimore Sun, p. 1A (June 9, 2002).

n18 The discussion of optical isomers contained in the article on AstraZeneca ["For AstraZeneca, Ruling on Patents Will Be Critical," WSJ, C1, C3 (10 Sept. 02)], which is critical to the understanding of the disputes over PRILOSEC/NEXIUM and PLAVIX, is in error.  An optical isomer is not "one-half of a mirror image of the original molecule." Certain molecules are related to one another in the same way as a right hand is to a left hand: they are mirror images which are nevertheless distinguishable.  The molecules in NEXIUM and PLAVIX are analogous to collections of "right hands," while the corresponding racemates are analogous to collections of equal amounts of "right hands" and "left hands." Patent law has a relatively straightforward approach to analyze patentability distinctions between optical isomers and the corresponding racemate.  A larger error appears concerning the drug fexofenadine at page 469 of the article FDA POLICY AND REGULATION OF STEREOISOMERS by M. Strong. 54 Food & Drug L.J. 463 (1999). Fexofenadine is not an enantiomer of the racemate terfenadine.  Separately, the Federal Circuit criticized attorneys for "excessive emphasis on their roles as zealous advocates"    in Allen Engineering v. Bartell Industries, 63 USPQ2d 1769, 1781 (CAFC 2002) and observed that the record was "replete with obfuscation, deflection, and mischaracterization."

 

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