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The U.S. Court of Appeals for the Federal Circuit on Friday ruled that judges, not juries, are to decide whether a patent holder can use a key intellectual property protection in patent disputes. The court decided in 2000 that a patent holder could not use the so-called “doctrine of equivalents” in infringement cases if he or she had narrowed the scope of a patent before it was issued. The doctrine holds that a product that is not substantially different from a patented invention is considered to be infringing. But the U.S. Supreme Court ruled in May 2002 that the Federal Circuit had been too strict and that patent holders should still be able to use the doctrine if their amended applications met one of a trio of exceptions. Patent lawyers say the Federal Circuit’s latest ruling does not dramatically alter patent law, but does shift the balance more to the defense side in patent disputes. “The Federal Circuit in 2000 took a strong position on one side, and the Supreme Court moved it a bit back to the other side,” said University of California, Berkeley’s Boalt Hall School of Law professor Mark Lemley. “This opinion moves the decision a little closer to the defendants’ side. The exceptions will be construed narrowly, and it will be judges and not juries doing the construing.” The Supreme Court specified that patent holders who revise their applications should still be able to use the doctrine of equivalents if they are able to show that an amendment involved a feature that was “unforeseeable at the time of the application”; involved only a tangential relation to the equivalent invention; or for some other reason could not be included in the original claim. The court is “talking about an exception to an exception to an exception,” said Michael Barclay, a partner at Wilson Sonsini Goodrich & Rosati. “It’s very esoteric and confusing.” But, he said, “It’s relatively negative for the patent holder because the judge and not the jury will decide” whether the exceptions apply as a matter of law. In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 95-1066, Festo claimed its patents for “rodless cylinders” used in robotics had been infringed since the aluminum in the defendant’s product was equivalent to its magnetizable material. The Federal Circuit concluded that Festo did not meet the first two exceptions for use of the doctrine of equivalents. But the Federal Circuit left it to the district court to decide if someone of ordinary skill in the art could have foreseen the interchangeability of an aluminum alloy sleeve and a magnetizable alloy sleeve at the time Festo amended its patent application. Two of the 13 judges — Pauline Newman and H. Robert Mayer — dissented in part, arguing that the district court should determine the applicability of all three exceptions and not just whether the disputed feature of the invention was foreseeable. Edward Reines, a partner at Weil, Gotshal & Manges, said he was pleased the court did not set out definitive rules as to when the exceptions would apply. The U.S. solicitor general and the Federal Circuit Bar Association had submitted amicus curiae briefs advocating against such rules.

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