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A controversial federal appeals court ruling that made it harder for patent holders to fight competitors who market similar inventions “goes too far,” Solicitor General Theodore Olson announced Aug. 31. In an amicus brief filed with the U.S. Supreme Court, Olson asked the justices to vacate last year’s decision by the U.S. Court of Appeals for the Federal Circuit in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., which has split the loyalties of corporations and patent holders. The Federal Circuit judges voted 8-4 last November to limit the circumstances when patent holders may invoke the “doctrine of equivalents.” That’s the legal argument used to prove that a competing inventor infringed a patent by making only insubstantial changes to the patented invention. The Federal Circuit did not throw out the doctrine. But the court put a “complete bar” against using the doctrine to protect revised portions of a patent application. The Federal Circuit’s “complete bar” rule swept away a more flexible approach, which the majority said was “unworkable” because it was too vague. The Supreme Court will hear the case in the upcoming term. In the brief, Olson notes that the government has suffered at the hands of the flexible approach, having been subjected to a $100 million judgment in 1999 for infringing on a patent owned by Hughes Aircraft. But while that flexible approach “did not sufficiently confine the doctrine of equivalents,” Olson wrote, “the court’s adoption of a complete-bar rule fails to strike the right balance between the public’s interest in certainty of patent scope and the patent holder’s interest in the fair protection of the patent right.” While asking the Supreme Court to abandon the “complete bar” against the doctrine of equivalents, Olson’s brief says “the patent holder rightly should bear the burden” of proving that the doctrine protects the patent in question. The case has dragged on for 10 years. Festo sued the Shoketsu firm, also known as the SMC Corp., over an invention called the “magnetic rodless cylinder.” It won in District Court and before a three-judge Federal Circuit panel, but was reversed by the en banc Federal Circuit last year. Corporations and other groups that focus on patent litigation have filed amicus briefs on both sides of the case. Festo’s supporters include Minnesota Mining and Manufacturing Co., the Massachusetts Institute of Technology, and the U.S. Chamber of Commerce. The IBM Corp. and the Applera Corp. — the parent of genome sequencer Celera Genomics — support SMC.

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