Breaking and associated brands will be offline for scheduled maintenance Friday Feb. 26 9 PM US EST to Saturday Feb. 27 6 AM EST. We apologize for the inconvenience.


Thank you for sharing!

Your article was successfully shared with the contacts you provided.
One of the longest and most controversial patent battles may have come to an end with a court’s ruling that the SMC Corp. (aka Shoketsu Kinzoku Kogyo Kabushiki) did not infringe the Festo Corp.’s rodless cylinder. Because the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit had established the law in the case�specifying when a patent owner could claim infringement under the doctrine of equivalents�the decision itself is rather anticlimactic. But unless Festo appeals, the decision marks the end of a 17-year drama. “This was an opportunity for Festo to give an explanation of why it shouldn’t be held to the definitions in its claims,” says SMC’s attorney, Arthur Neustadt of Oblon, Spivak, McClelland, Maier & Neustadt in Alexandria, Va. Neustadt says the court rightly limited Festo to the claims it specified in its application. “We believe [the judge] was wrong legally and factually,” says Festo’s attorney, Charles Hoffmann of Syosset, N.Y.-based Hoffmann & Baron. “This case is not over yet, but it may be.” Festo sued SMC in 1988 under the doctrine of equivalents, which holds that if someone makes merely insubstantial changes to a patented invention, the new product still infringes. SMC’s rodless cylinder uses one two-way sealing ring, while Festo’s uses two. And Festo’s product includes magnetized material, while SMC uses a non-magnetized alloy. In 1994 a federal jury found SMC had infringed Festo’s patents, and awarded Festo $4 million. But the Federal Circuit subsequently ruled that a patent holder could not use the doctrine of equivalents if it had narrowed the scope of the patent before the patent was issued. The Supreme Court in 2002 found that the Federal Circuit had been too strict and that patent holders should be able to use the doctrine if they could show that what they didn’t include in an amended claim was “unforeseeable at the time” to someone of ordinary skill in the art. The Supreme Court left it to the District Court to decide if SMC’s single sealing ring and non-magnetizable sleeve would have been foreseeable at the time Festo amended and limited its patent claims in 1981. U.S. District Judge Patti Saris of Massachusetts, in an order dated June 10 in Festo v. Shoketsu Kinzoku Kogyo Kabushiki, found that both elements would have been foreseeable to someone of ordinary skill in the art. “Because Festo has not rebutted the presumption of surrender for these asserted equivalents, it has not proven patent infringement under the doctrine of equivalents,” Saris wrote. Patent lawyers say the decision was not surprising. The Supreme Court’s exception was so narrow, “I don’t think anyone expected the patent owner to succeed,” says Harold McElhinny of the San Francisco office of Morrison & Foerster. “In hindsight most things seem foreseeable.” Michael Barclay of the Palo Alto, Calif., office of Wilson Sonsini Goodrich & Rosati agrees that Festo faced an uphill battle. “It was always going to be a difficult case for the patent owner to win, based on what the appellate courts said the law was,” says Barclay. “There were things in the prosecution history [of Festo's patent] that could be a problem.”
Brenda Sandburg is a reporter for The Recorder , an ALM publication based in San Francisco. This article first appeared in The Recorder.

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Not a Lexis Advance® Subscriber?
Subscribe Now

Not a Bloomberg Law Subscriber?
Subscribe Now

Why am I seeing this?

LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.

For questions call 1-877-256-2472 or contact us at [email protected]


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2021 ALM Media Properties, LLC. All Rights Reserved.