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The recent decision by the U.S. Circuit Court of Appeals for the Federal Circuit in Festodid not spark the attention of the popular media. But it certainly should have, because it will have a ripple effect that will affect the public at large. In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 56 U.S.P.Q.2d 1865 (Fed. Cir. 2000), the en banc decision significantly narrowed the reach of the “doctrine of equivalents,” a concept familiar to patent lawyers. It is a judge-made law arising from Benjamin Curtis’ decision in Winans v. Denmead(56 U.S. 330 (1854)) that was designed to give the patent holder a cushion of protection from copyists who make trivial changes to the invention as described in the words of the patent. Effectively, Festohas transferred vast tracts of intellectual property from private ownership into the public domain and has virtually provided instructions to copyists on how to avoid infringement under the doctrine of equivalents. It has altered strategies both for obtaining and for litigating patents. NOT ALWAYS EVIDENT Patents are not always as easily made watertight as one could wish. If an accused object clearly falls within the description of the words of a patent claim, infringement can be deemed self-evident. Long ago, however, competitors fought over situations wherein the accused object, although not exactly falling within the description of the claim, was arguably close. To address this close situation, the courts fashioned the doctrine of equivalents, which allowed the patent holder to assert infringement for situations in which only insubstantial changes had been made. Unfortunately, there is no clear separation between close copying and advancement. Because Festowill prevent patent holders from asserting the doctrine of equivalents in certain frequently occurring contexts, its impact will be great. In this case, the court confronted the situation of a patent applicant who narrowed his claims by amendment during prosecution before the PatentOffice to establish patentability. Although previous judicial interpretations had allowed the doctrine of equivalents to be applied to such amended claims, the Festocourt held that there can be no range of equivalents for the amended claim element. The doctrine of equivalents will continue to exist for unamended claim elements. But there are vast numbers of patents containing claims with amended elements, for which there is no longer any doctrine of equivalents. This now makes them readily available for copying. CHANGED GAME As a result of the Festodecision, the patent applicant will have to either fight for the initial, broader claims in order to retain equivalent protection, or accept the amended, narrowed claims without equivalents and their related protections. In litigation, the present patent holder cannot rely on the doctrine of equivalents as to amended claim elements, and is stuck with the claim scope exactly as imparted by the words. This decision brings greater certainty when it comes to determining infringement for amended claims. A lawyer can now tell a client with some confidence that a certain product does not infringe, either literally or equivalently. As a matter of underlying policy, the Festocourt suggested that opening up the unknown, undefined zone around the literal scope of an amended claim would stimulate investment in improvements by removing uncertainty. Overall, this is a step forward. Although courts could expend the resources necessary to micromanage all equivalents cases, the greater harm lies in the myriad changes not taken by competitors simply because of fear of equivalents litigation. These improvements will now be made. If Festoremains the law, there will be injustices to patent holders. But this is because courts apply the law at the time of their decision ( U.S. v. Schooner Peggy, 5 U.S. 103 (1801)), not because of deficiencies in Festoper se. As unsettling as this case is to both patent holders and patent lawyers, it may be that it will prove good for advancing technology. Interconnectedness is a given. Isaac Newton wrote, “If I see further than others, it’s because I stand on the shoulders of giants.” The Festocase places some of these shoulders in the intellectual commons. Lawrence B. Ebert is of counsel to the Princeton, N.J., office of Reed Smith.

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