The Supreme Court in Festo chastised the Federal Circuit for ignoring the warning in Warner-Jenkinson not to disrupt the settled expectations of the patent community:
The Federal Circuit ignored Warner-Jenkinson's instruction that courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community. See 520 U.S., at 28. Inventors who amended their claims under the previous case law had no reason to believe they were conceding all equivalents. Had they known, they might have appealed the rejection instead. Warner-Jenkinson struck the appropriate balance by placing the burden on the patentee to prove that an amendment was not made for a reason that would give rise to estoppel. Id., at 33. Similarly, the patentee should bear the burden of showing that the amendment does not surrender the particular equivalent in question. n2
The policy theme is that patent applicants should be able to rely on the law staying pretty much the same. Ironically, it may be that it is the Supreme Court, rather than the Federal Circuit, which has done more to alter settled expectations of the patent community. Specifically, through Graver Tank, the scope of equivalents embraced substitutes known to one of ordinary skill at the time of issuance, and did not extend to embodiments discovered after issuance. n3 Warner-Jenkinson altered the latter, and Festo may have altered the former.
Warner-Jenkinson Created After Arising Equivalents
The Supreme Court recognized the conflict between the appearance that the doctrine of equivalents expanded claim scope and the requirement that courts not enlarge the scope of the claim from that which was granted:
We do, however, share the concern of the dissenters below that the doctrine of equivalents, as it has come to be applied since Graver Tank, has taken on a life of its own, unbounded by the patent claims. There can be no denying that the doctrine of equivalents, when applied broadly, conflicts with the definitional and public-notice functions of the statutory claiming requirement. Judge Nies identified one means of avoiding this conflict:
"[A] distinction can be drawn that is not too esoteric between substitution of an equivalent for a component in an invention and enlarging the metes and bounds of the invention beyond what is claimed.
"Where a claim to an invention is expressed as a combination of elements, as here, 'equivalents' in the sobriquet 'Doctrine of Equivalents' refers to the equivalency of an element or part of the invention with one that is substituted in the accused product or process.
"This view that the accused device or process must be more than 'equivalent' overall reconciles the Supreme Court's position on infringement by equivalents with its concurrent statements that 'the courts have no right to enlarge a patent beyond the scope of its claims as allowed by the Patent Office.' [Citations omitted.] The 'scope' is not enlarged if courts do not go beyond the substitution of equivalent elements." 62 F.3d at 1573-1574 (Nies, J., dissenting).
We concur with this apt reconciliation of our two lines of precedent. Warner-Jenkinson, 520 U.S. at 28-29 [end quote].
Although the Supreme Court concurred with the apt reconciliation of Judge Nies, the court departed from this "apt reconciliation" later in the opinion:
Finally, petitioner proposes that in order to minimize conflict with the notice function of patent claims, the doctrine of equivalents should be limited to equivalents that are disclosed within the patent itself. A milder version of this argument, which found favor with the dissenters below, is that the doctrine should be limited to equivalents that were known at the time the patent was issued, and should not extend to after-arising equivalents. Warner-Jenkinson, 520 U.S. at 37 [end quote].
Judge Nies did not present the idea that equivalents had to be known at the time of patent issuance as an argument; rather, she listed a number of Supreme Court cases n4 which relied upon the idea that an embodiment, to be equivalent, had to be known at the time of issuance. This requirement that an equivalent had to be known was a necessary part of her "apt reconciliation." Nevertheless, the court wrote:
As we have noted, supra, at 17, with regard to the objective nature of the doctrine, a skilled practitioner's knowledge of the interchangeability between claimed and accused elements is not relevant for its own sake, but rather for what it tells the fact-finder about the similarities or differences between those elements. Much as the perspective of the hypothetical "reasonable person" gives content to concepts such as "negligent" behavior, the perspective of a skilled practitioner provides content to, and limits on, the concept of "equivalence." Insofar as the question under the doctrine of equivalents is whether an accused element is equivalent to a claimed element, the proper time for evaluating equivalency -- and thus knowledge of interchangeability between elements -- is at the time of infringement, not at the time the patent was issued. And rejecting the milder version of petitioner's argument necessarily rejects the more severe proposition that equivalents must not only be known, but must also be actually disclosed in the patent in order for such equivalents to infringe upon the patent 520 U.S. at 37 [end quote].
In some sense this might be considered dicta. The facts of Warner-Jenkinson pertained to an already-known equivalent, not an after-discovered one. [operation at a pH below 6] The law of Warner-Jenkinson pertained to a rebuttable presumption of surrender, not an alteration of the scope of an equivalent. However, because the argument "the doctrine should be limited to equivalents that were known at the time the patent was issued, and should not extend to after-arising equivalents," was rejected ["And rejecting the milder version of petitioner's argument"], one might infer that equivalents are not limited to embodiments known at the time of issuance. This of course does not say that equivalents cannot include embodiments known at the time of issuance, it merely says that equivalents can include embodiments not known at the time of issuance.
Festo May Foreclose Foreseeable Equivalents
The second alteration in the scope of doctrine of equivalents may have occurred in Festo, in the form of the test for foreseeability. Therein, in defining tests to rebut the presumption of surrender, the Supreme Court notes that the presence of an unforeseeable equivalent would rebut the presumption of surrender of the scope of an amended element between the initial broader element and the amended narrower element.
The underlying policy might be questioned. Of expectation interests, with known equivalents, patent law had given to the patentee equivalent protection for that which was objectively understood to be a counterpart of a claim element at the time of issuance, but which for some reason was not within the literal scope of the element. This viewpoint was consistent with the basic quid pro quo of patent law: limited protection in exchange for full disclosure. Known equivalents are objectively disclosed. One of ordinary skill understands them to be substitutes at the time of filing. In contrast, by requiring unforeseeable equivalents (at least in the context of amended claim elements), patent law would deny protection to embodiments which were known, and which presumptively were foreseeable. If this interpretation is correct, then the combination of Warner-Jenkinson and Festo might have turned the nature of equivalents "inside out," and, in so doing, negated the reliance interests of patent holders, and of competitors, alike. n5
As a separate matter, one might suggest that the new variation does not promote innovation. The denial of patent protection for foreseeable variations produces perverse incentives. The competitor is encouraged to make variations which are foreseeable and trivial, because the doctrine of equivalents would not cover such variations. To secure protection, the patentee is placed in the odd position of proving a negative (that the embodiment was not foreseeable) and arguing that the patentee should enjoy protection because no one, including patentee, could foresee the embodiment. n6 The grant of protection for unforeseeable (and unpredictable) embodiments does not offer much incentive to the patentee, but the loss of protection for foreseeable embodiments would seem to be a disincentive, relative to the previous law.
In Passing
Stephen B. Maebius and Harold C. Wegner discussed the impact of the Madey v. Duke case [307 F.3d 1351 (CAFC 2002)] on universities. n7 Within, there is text that is more appropriate to the 1960's than to the post-1980 world of Bayh-Dole. n8 ["First, unlike their university counterparts who are prone to publish their scientific results immediately and to disclose them to their peers at frequent academic conferences, the commercial researchers of a Merck or Pfizer will have a widespread internal knowledge pool under a veil of secrecy until well after the scientific-exploration stage has been finished."] As a direct counterpoint, one remembers the history of the buckyball, which is the opposite of the story depicted by Maebius and Wegner. Therein, it was the commercial researchers at Exxon Research and Engineering Company who published their scientific results immediately. n9 The university counterparts duplicated and expanded the research, winning both a Nobel Prize and various patents. Similarly, Georg Bednorz and K. Alex Muller of IBM Zurich promptly published their discovery on superconductivity (leading to a Nobel Prize), which work was advanced by a number of academics, including Paul Chu at the University of Houston, although the commercial applications are not yet as large as initially forecast. n10 For a more recent counterpoint, recall the rapid publications of J. Hendrik Schon of Lucent, which immediate disclosure led to numerous academic researchers attempting to follow up on his work. n11 On the flip side, the academic researchers Stanley Pons and Martin Fleischmann who introduced so-called "cold fusion" initially withheld details of their experiment for patent-related reasons. n12 Separately, one also recalls the words of Ed Southern of "Southern Blotting" fame, who earlier failed to patent a significant discovery: "I'm learning from my mistakes." n13 Without commenting on the merits of the experimental use exception, one has to engage in the debate with a firm footing in the present day realities of the Bayh-Dole Act and changes since 1980 in the way research is funded and carried out both in academia and in the private sector.
As this article goes to press, there is discussion that the Federal Trade Commission may move to block Unocal from enforcing its patents on cleaner burning gasoline. n14
End Notes:
n1 The opinions are those only of the author (email: C8AsF5@yahoo.com) and should not be imputed to any employer, past, present, or future. An alternative title of the article is "Don't Forget about the Classic Doctrine of Equivalents as We Walk on by," a parody of "Don't you (forget about me)" by Simple Minds.
n2 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Syllabus, 535 U.S. 722; 122 S. Ct. 1831; 152 L. Ed. 2d 944; 2002; U.S. LEXIS 3818; 70 U.S.L.W. 4458; 62 U.S.P.Q.2D 1705 (2002). The text in the opinion body states: The Court of Appeals ignored the guidance of Warner-Jenkinson, which instructed that courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community. See 520 U.S. 17, 28. In that case we made it clear that the doctrine of equivalents and the rule of prosecution history estoppel are settled law. The responsibility for changing them rests with Congress. Ibid. Fundamental alterations in these rules risk destroying the legitimate expectations of inventors in their property. The petitioner in Warner-Jenkinson requested another bright-line rule that would have provided more certainty in determining when estoppel applies but at the cost of disrupting the expectations of countless existing patent holders. We rejected that approach: "To change so substantially the rules of the game now could very well subvert the various balances the PTO sought to strike when issuing the numerous patents which have not yet expired and which would be affected by our decision." Id., at 32, n. 6; see also id., at 41 ( GINSBURG, J., concurring) ("The new presumption, if applied woodenly, might in some instances unfairly discount the expectations of a patentee who had no notice at the time of patent prosecution that such a presumption would apply"). As Warner-Jenkinson recognized, patent prosecution occurs in the light of our case law. Inventors who amended their claims under the previous regime had no reason to believe they were conceding all equivalents. If they had known, they might have appealed the rejection instead. There is no justification for applying a new and more robust estoppel to those who relied on prior doctrine. 122 S. Ct. at 1841.
n3 See Gould v. Rees, cited with approval in Graver Tank. The court in Gould v. Rees said:
" . . . if the ingredient substituted for the one withdrawn was a newly discovered one, or even an old one performing some new function, and was not known at the date of the plaintiff's patent, as a proper substitute for the ingredient withdrawn, it would avoid the infringement, as a new combination or a newly-discovered ingredient substituted for the one omitted, or even an old one performing a new function not known at the date of the plaintiff's patent as a proper substitute for the one withdrawn, would not be an equivalent for the ingredient omitted within the meaning of the patent law."
n4 Judge Nies mentioned the case of Gould v. Rees, 82 U.S. (15 Wall.) 187, 21 L. Ed. 39 (1872), which is on all fours for the proposition that known substitutes may be equivalents, and substitutes not invented at the time may not be equivalents. She also mentioned Fuller v. Yentzer, 94 U.S. 288; 24 L. Ed. 103, 106-107 (1876); Rowell v. Lindsay, 113 U.S. 97, 102 (1885); and Goodyear Vulcanite v. Davis, 102 U.S. 222 (1880) which stated: "If, when the patent was granted, there were known substances, other than rubber or caoutchouc, gutta-percha, or gums, that could be vulcanized by the Goodyear process, and converted from a soft into a hard, elastic material, any use of that material for a dental plate might have been an equivalent for the Cummings material, and an infringement of his patent." 102 U.S. at 227. The Goodyear case is cited by the Supreme Court in Festo. Although there is an implication therein that the Goodyear case reflects the limitation of prosecution history estoppel on equivalents [see "We have considered what equivalents were surrendered during the prosecution of the patent, rather than imposing a complete bar that resorts to the very literalism the equivalents rule is designed to overcome." 122 S. Ct. at 1841], one notes "the question of infringement [in Goodyear Vulcanite] turned on whether the defendant's use of celluloid in a process which did not use the patented rubber vulcanization steps was equivalent to what was claimed. The Supreme Court determined that celluloid was not equivalent to vulcanized rubber because celluloid was not manipulated by the vulcanization process. It is important to note that the Court's analysis turned on whether celluloid and vulcanized rubber were equivalent and not on the disclaimer of gutta-per-cha or like materials, which was unrelated to the equivalence issue." See Jay I. Alexander, 51 Am. U.L. Rev. 553 (April 2002) and see also L. B. Ebert, The Patent Journal, (January 2002).
n5 To borrow from chemistry [Robert L. Weber, Science With a Smile (1992)], it is amazing, to note the number of law students who failed exams for not recognizing what is now known to be untrue. Here, if equivalents cover unforeseeable embodiments and don't cover foreseeable embodiments, one cannot say that the doctrine of equivalents does not expand claim scope.
n6 Both Warner-Jenkinson and Festo involve embodiments that were foreseeable and could have been claimed in an appropriate manner, suggesting that equivalents should not be available. However, from a policy standpoint, isn't there a better question: if the competitor made something work that the patentee could not get to work, why reward the patentee? Curiously, in 716 PLI/Pat 147 (2002), Kenneth Adamo argued that the foreseeability test of Festo was subjective, rather than objective. (p. 185: "Foreseeability . . . arguably should be measured against a subjective standard.") This, and other points, will be discussed elsewhere.
n7 Stephen B. Maebius and Harold C. Wegner, Ruling on research exemption roils universities, NLJ, p. C3 (December 16, 2002). There is no doubt that some academics publish their work quickly, and that the Madey decision is both significant and potentially troublesome. However, it is also true that some industrial scientists publish their work quickly and that some academics are concerned with patents. Even in pre-Bayh-Dole days, Glenn Seaborg patented the elements curium and americium (U.S. 3,156,523 and 3,161,462).
n8 As discussed by many commentators, federal policy since 1980 has reflected the presumption that patenting discoveries made in the course of government-sponsored research is the most effective way to effect technology transfer. Although policy makers of prior generations thought the best way to achieve widespread use was to make them freely available, the advocates of the pro-patent policy have stressed the need for exclusive rights. See Rebecca S. Eisenberg, "Technology Transfer and the Genome Project: Problems with Patenting Research Tools," and Lawrence B. Ebert, "The Bayh-Dole Act in the Age of Proteomics," Pa. Bar Assoc. IP Newsletter, Vol. 4, pp. 1-9 (Fall 2000). As a separate, but not unrelated matter, the increased links between academics and the private sector (such as the Novartis interaction with UC/Berkeley) were analyzed in L. B. Ebert, "Implicitly Zurko," Int. Prop. Today, p. 22 (July 1999). [As an update on the July 1999 article, note the discussion about funding at UC/Riverside in "UCR Again Digging for Genomics Funds: Officials hope more private-sector money keeps alive the proposed agricultural research center," The Press-Enterprise (Riverside), Dec. 26, 2000.] Separately, Prof. Allen Bard wrote that there is a trend in scientific writing in which applications are implied to be just around the corner, and, generally, the tone is more appropriate to Madison Avenue than to sober science. C & E News, Sept. 6, 1999, quoted by L. B. Ebert, Int. Prop. Today, (Nov. 1999).
n9 E. A. Rohlfing, D. M. Cox, and A. Kaldor, "Production and characterization of supersonic carbon cluster beams", 81 J. Chem. Phys. 3322 (1984), which is cited in H. W. Kroto, J. R. Heath, S. C. O'Brien, R. F. Curl, 318 Nature 162 (1985). For more of the story, see L. B. Ebert, 33 Carbon 1007 (1995).
n10 See for example S. Foner, Physics Today, p. 83 (March 1998) and discussion in L. B. Ebert, The Pfaff Case And Evaluating Technology, Int. Prop. Today, p. 8 (May 1998). As a separate point, the commercial applications of buckminsterfullerene have also been far less than predicted (for example, "Whatever Happened to the Buckyball?", Wall St. Journal, May 4, 1998). As such, it was curious that Nano/Bio Convergence News (Dec. 2002) expressed some concern over filling the world "with tons of virtually indestructible fullerene nanoparticles." First, no one is buying tons of fullerene nanoparticles. Second, the fullerenes are hardly "indestructible," since they readily oxidize, even under ambient conditions. See J. Phys. Chem., 1994, 98, 3921-3923 and L. B. Ebert, "Inherent Difficulties," Int. Prop. Today, p. 28 (Nov. 1999). As an aside, although the article asserts that Michael Crichton's book Prey launches nanotech into the mainstream, one recalls that Arthur C. Clarke's "The Fountains of Paradise," published in 1978, accurately foresaw carbon nanotubes.
n11 The uncritical acceptance of the (fraudulent) work of Schon leads one to question different text of the Maebius/Wegner article: "A principal object of high-technology research at the major universities is to push the needle on the state of the art, to pinch, touch, poke and feel the latest innovations, to measure their worth, to compare them against other, parallel state-of-the-art improvements and-above all-to understand and tinker with the very latest and now often patent-protected technology to develop yet further new developments. In other words, pushing the needle on raising the level of the state of the art is the epitome of what the would-be Nobel laureate is all about." In the post Bayh-Dole world, universities are themselves in the business of obtaining patent-protected technology.
n12 See, for example, "Bad Science -- The Short Life and Weird Times of Cold Fusion" by Gary Taubes, although be a bit skeptical about all the reported "facts."
n13 In context, this is Southern's response when queried about his involvement in DNA chip patents. From Nature, 1997, 387, 221, as quoted in L. B. Ebert, "Rosalind Reprised," Int. Prop. Today, p. 5 (July, 1997).
n14 "US May Block Unocal from Enforcing Patents," Reuters, Jan. 8, 2003. "FTC may block Unocal Patents on clean-fuel formulation," US Today, Jan. 7, 2003. See also, L. B. Ebert, "Written Description," Int. Prop. Today, p. 8 (Oct. 2000). Separately, of our case wherein the unresponded/unobjected requests for admission were not deemed admitted, there was an additional development. An amendment of right, made prior to any answer, of a second complaint was denied on the basis that the case was consolidated. See, however, In re TMI Litigation, 193 F.3d 613 (CA3 1999) citing Johnson v. Manhattan, 289 U.S. 479, 497 (1933), In re Prudential Securities, 158 FRD 562 (SDNY 1994), and Cowen v. Merriam, 745 F. Supp. 945 (SDNY 1990) on the interaction of FRCP 15(a) with consolidation. On January 15, the Supreme Court in Eldred v. Ashcroft, 123 S. Ct. 769, 2003 U.S. LEXIS 751, upheld the constitutionality of the Sonny Bono Copyright Term Extension Act of 1998 (CTEA), with petitioner Eldred and advocate Lessig losing by a 7-2 vote.