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In May the U.S. Supreme Court decided the famous Festo case in a unanimous decision that has inspired anything but unanimity among the IP bar. The Court overturned the 2000 ruling by the U.S. Court of Appeals for the Federal Circuit, which curtailed the doctrine of equivalents. The circuit court ruling was unpopular with the IP bar because it made it more difficult for patent owners to go after competitors that make only minor changes in a patented invention. The Supreme Court ruling, on the other hand, is somewhat unfathomable — at least until courts begin to interpret it. The Court threw out the circuit’s “absolute bar” banning a patent owner from invoking the doctrine for any claim that had been modified. Yet the Court seemed to accept the notion that the doctrine should only be applied sparingly when claims are amended. It threw the case back to the circuit for more work. In the meantime, IP Worldwide asked more than 20 IP lawyers and professors four questions about Festo. We limited answers to two sentences. Below, some of their short-winded answers. Ultimately, who will win the Festo case itself?

No one. Like Dickens’s Jarndyce and Jarndyce, the Festo case will go on forever. — Donald Ware, litigator at Foley Hoag (Boston) Too close to call. — J. D. Harriman, prosecutor at Coudert Brothers (Los Angeles) If I were a betting man, I’d be putting my chips on Shoketsu. — Gregory Castanias, litigator at Jones, Day, Reavis & Pogue (Washington, D.C.)

The lawyers. — Ramsey Al-Salam, litigator at Perkins Coie (Seattle)

Who “won” Markman? — James Pooley, litigator at Milbank, Tweed, Hadley & McCloy (Palo Alto, Calif.)

The last I heard, Vegas had not yet given a line on it. — John Allcock, litigator at Gray Cary Ware & Freidenrich (San Diego) Where does the pendulum now fall as far as the doctrine of equivalents is concerned? In the middle. The chicken faces the risk of a claim that it’s really a duck, but the guy with the duck patent has to prove that he never could have imagined a chicken. — James Pooley, Milbank Tweed If you stand just about where it was before Festo, the pendulum will hit you in the head. — J.D. Harriman, Coudert Brothers With uncertainty restored, patent holders have the edge. — Donald Ware, Foley Hoag

After the decision by the Supreme Court, the doctrine was taken off the critical list. The remaining vitality of the doctrine will be established by the Federal Circuit’s interpretation of Festo. — Charles De La Garza, litigator at Fulbright & Jaworski (Minneapolis)

The pendulum has swung back significantly toward patent owners, but look for the Federal Circuit to find different ways of swinging the pendulum again the other way. — Perry Goldberg, litigator at Irell & Manella (Los Angeles) How much of a rebuke to the Federal Circuit is the Supreme Court’s Festo opinion? No more than past cases, and the Federal Circuit is getting used to it anyway. — Ramsey Al-Salam, Perkins Coie What part of “We’re in charge here” did you not understand? — James Pooley, Milbank Tweed

The Supreme Court’s rebuke was polite but clear and unmistakable. The failure of the Federal Circuit to even mention controlling Supreme Court authority was clearly an inexcusable omission. — Douglas Olson, litigator at Brobeck, Phleger & Harrison (San Diego)

I do not see it as a rebuke. Because Federal Circuit cases rarely involve a conflict between circuits, the Supreme Court has little reason to take a case where it expects to agree with the Federal Circuit, and there inherently will be a high reversal rate. — Don Martens, Knobbe, Martens, Olson & Bear (Newport Beach, Calif.)

The days of total deference by the Supreme Court to the Federal Circuit are over. If Festo didn’t make that clear, the Court’s decision in Holmes v. Vornado cutting back on the Federal Circuit’s jurisdiction hammers home the point. — Mark Lemley, professor at the University of California, Berkeley’s Boalt Hall School of Law Does Robert Bork have a future as a patent litigator?

No. — Martin Andelman, professor at George Washington University Law School Patent litigation is an extremely complex area of practice requiring multidisciplinary skills. Should Robert Bork set that as a goal, I think with dedication, study and more experience he could become a patent litigator. — Charles de la Garza, Fulbright & Jaworski I hope not, but I’m just glad he’s not on the bench. — Perry Goldberg, Irell & Manella

Robert Bork is a talented attorney, but during his oral argument before the Supreme Court, he was confused on several occasions regarding various intricacies of the patent law. As a result, some of the answers he gave to the Court were inaccurate. — John McNelis, Fenwick & West (Palo Alto, Calif.) Although he obviously is not familiar with the patent law, neither are the justices. One doesn’t need a pocket protector to comprehend the issue in Festo. — Robert Morrill, managing partner at Skjerven Morrill (San Jose, Calif.)

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