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One of the longest and most controversial patent battles may have come to an end with a federal court’s ruling that SMC Corp. did not infringe 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, which the company’s attorney did not rule out, 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,” said SMC’s attorney, Arthur Neustadt, of Oblon, Spivak, McClelland, Maier & Neustadt in Alexandria, Va. He said the court rightly limited Festo to the claims it specified in its application. Festo attorney Charles Hoffmann said his client had not decided whether to appeal. “We believe [the judge] was wrong legally and factually,” said 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 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 such rings. And Festo’s product includes magnetized material, while SMC uses a nonmagnetized alloy. In 1994, a federal jury found SMC 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 he or she had narrowed the scope of the patent before it 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 Festo’s single sealing ring and nonmagnetizable sleeve would have been foreseeable at the time the company amended and limited its patent claims in 1981 to these two characteristics. U.S. District Judge Patti Saris of the District of Massachusetts 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 said the decision was not surprising. The Supreme Court’s exception was so narrow, “I don’t think anyone expected the patent owner to succeed,” said Morrison & Foerster partner Harold McElhinny. “In hindsight most things seem foreseeable.” Michael Barclay, a partner at Wilson Sonsini Goodrich & Rosati, said Festo had 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,” Barclay said. “There were things in the prosecution history [of Festo's patent] that could be a problem.” The decision is Festo v. Shoketsu Kinzoku Kogyo Kabushik, 88-1814.

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