WASHINGTON Engineers, inventors, electronics executives and patent attorneys breathed a collective sigh of relief this week when the U.S. Supreme Court, in a unanimous decision, partially reversed a lower-court ruling that restricted the scope of patents and their inventor's ability to defend them against infringement.
The ruling in the case of Festo Corp. vs. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd. partially restores an inventor's right to use the "doctrine of equivalents," a concept that allows broad interpretation of patents, to defend against infringement as long as the inventor can prove that he or she could not have foreseen the development of a competing technology.
The Supreme Court sent the case back to the U.S. Court of Appeals for the Federal Circuit, which in effect overthrew the doctrine-of-equivalents concept in a November 2000 decision.
The doctrine lets patent holders amend their patents after filing to guard them against competing inventions that save for small changes are substantially the same as the patented one. Doing so is standard operating procedure for most technology companies.
The Supreme Court's Festo ruling "is a positive decision" for the high-tech industry, said Michael Kirk, executive director of the American Intellectual Property Law Association. He said narrowing amendments to patent claims would now mark the outer limit of patent protections.
The case stems from Festo's 1988 suit claiming that pneumatics manufacturer Shoketsu Kinzoku Kogyo Kabushiki had infringed two of its patents for magnetically coupled rodless pistons. Following the doctrine of equivalents, Festo had amended its original patents to cover the differences between the Japanese company's equipment and its own.
The Supreme Court rejected the "absolute bar" standard against such amendments set by the Appeals Court. At the same time, the justices gave Festo's proposal of a "flexible bar" standard a thumbs-down, opting instead for the "foreseeable bar" proposed by IEEE-USA in an amicus curiae (friend-of-the-court) brief.
The IEEE-USA brief maintains that "the doctrine of equivalents should be permitted to apply unless the limiting effect of the amended language with respect to an accused device would have been foreseeable at the time of the amendment. Applied objectively, from the perspective of a reasonable person skilled in the art, this 'foreseeable bar' applies principles that are readily, if not commonly, understood by both the public and the judiciary."
Justice Anthony M. Kennedy, writing for the court, said, "The patentee must show that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent."
Alexander Poltorak, chairman and chief executive officer of General Patent Corp. (Suffern, N.Y.), called the Supreme Court decision "a mixed bag," adding that it will have "profound consequences for all technologies, all existing and future patent cases, and all existing patents."
Though the decision does not abolish the doctrine of equivalents, as the Appeals Court ruling had done, Poltorak termed it a "new reading of patent law" that will narrow the scope of some patents. In the past, he said, the doctrine of equivalents sometimes led to a lack of clarity about patent rights and a monopoly situation in particular industries.
Industry observers termed the decision a victory for inventors because it effectively prevents patent holders from using their monopoly to close off entire areas of technology innovation. Critics have argued that some software patents have blunted innovation in that field.
Attorneys involved in the case said the high-court ruling balanced competing standards vital to continuing innovation in the electronics industry. "We have a new set of rules [on the scope of patent protections that] is clearer than ever before," said Andrew Greenberg, a member of the IEEE-USA's Intellectual Property Committee who helped prepare its friend-of-the-court brief in the Festo case.
Patent examiners often require inventors to file amended applications that narrow their claims. Under the court's new guidelines, holders of amended patents give up protection for only that which is foreseeable by others familiar with the technology.
An inventor's "decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim," Justice Kennedy wrote.
Intellectual-property experts said the ruling places the burden of proof on patent applicants to show that their amended claims do not surrender broader patent protections against equivalent claims. They also noted that lower courts ignored a 1997 Supreme Court decision instructing courts to think twice before adopting changes in the patent system that disrupt the expectations of inventors.
The court struck a balance between pioneering inventions and incremental improvements to technologies that make inventions more practical, said Greenberg.
A key example, he said, is the Internet, where refinements in network technology have made the Internet ubiquitous.
"The new ruling helps protect the patent rights of inventors, many of whom are IEEE members," said John W. Steadman, IEEE-USA's vice president for career activities and head of the University of Wyoming's electrical and computer engineering department. "Had Festo been allowed to stand as it was, the very process in which a person is required to amend the patent during the patent process would have significantly restricted what courts called the doctrine of equivalents."
Steadman explained that the decision means an inventor has a right to say, "If I could have foreseen the invention or method or technique employed by the infringing device to create much the same function in much the same way to get the same result, then I give up my right to it. But if the development was not foreseeable, then I couldn't give up my right to it."
Engineers take heed
Meanwhile, patent experts this week advised engineers to take care in drafting their applications.
"What this decision means for engineers and inventors is that they must be very diligent in researching the patent history of previous developments," said Edward A. Suominen, an engineer who is a patent agent with Louis Hoffman P.C., a law firm of in Scottsdale, Ariz.
He advised EEs to "keep up with developments in the field of technology they are working in, work with someone who knows how to write a patent and be consistent about what they claim in a patent."
George Leopold contributed to this story.