| Q Todd Dickinson is co-chair of Howrey Simon Arnold & White's intellectual property group, based in Washington DC. He was until last year Commissioner of the US Patent and Trademark Office. Allen Jensen is a partner of Finnegan Henderson Farabow Garrett & Dunner, in the Palo Alto office. Judge Rod McKelvie was, until this summer, a federal district court judge in Delaware. In the autumn he joins Fish & Neave as head of their Washington DC office. David Manspeizer is vice-president ? intellectual property and associate general counsel at pharmaceutical company Wyeth in Madison, New Jersey. James Nurton is editor of Managing Intellectual Property. Roger W Parkhurst is a partner of Parkhurst & Wendel in Washington DC and president of the American Intellectual Property Law Association. Professor Jay Thomas is a professor at Georgetown University Law Center in Washington DC. |
James Nurton: Todd, could you summarise the issues at stake in the Festo case?
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Todd Dickinson |
Todd Dickinson: The Festo case concerns the doctrine of equivalents and an exception to the doctrine ? it's an exception to an exception. The general rule is that claim language determines what the patent itself covers for a particular invention, but there is an acknowledgement that language is uncertain. Because of that, there needs to be flexibility to take account of the fact that there are situations where people might avoid or get around a claim by tricky use of language or an after-developed technology, that is equivalents. However there need to be limits to that doctrine of equivalents.
Festo is, interestingly, only the third doctrine of equivalents ruling by the Supreme Court in 50 years but the second in five years. The previous one (Warner-Jenkinson) also spoke to prosecution history estoppel like this one. Estoppel says if you amend your claims during prosecution then you have given up your right to any equivalence protection, and you can't later go back and say that it is broader than it is.
In Festo, the CAFC held that Warner-Jenkinson meant what it literally said: if there was a bar created by prosecution history estoppel, then that bar was absolute and if you amended your case for any reason at the point of that amendment you got no equivalence. It was very controversial, to put it mildly.
In overturning the CAFC, the Supreme Court ruled 9-0 that there was a doctrine of equivalents: the uncertainties of language demand it. But when you make an amendment during prosecution, and you don't explain it, then there is a complete bar unless there are three circumstances, which we'll probably talk about today.
Many people were very relieved because it was a relief from the absolute bar of the CAFC. But it was not a lot of relief. It was perhaps a middling position on the issue, despite the Supreme Court's language.
JN: Allen, were you relieved?
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Allen Jensen |
Allen Jensen: From the patent applicant's point-of-view, I don't think it really changed anything. Before, anyone who had been reading what the Federal Circuit were doing could see they were limiting the doctrine of equivalents and the Supreme Court decision isn't going to affect their continuing to limit the application of it. From a litigation perspective, there are cases where it may work. From the patent drafter's point of view, you have to assume there is no doctrine of equivalents, and look at the ways the Federal Circuit has been getting around it and counter those in your application.
JN: How would you advise patent applicants now? How should they change their practice?
AJ: We're entering an era of definitions. The CAFC for the last four or five years has said claims should provide definiteness. Every claim term has to be either explicitly or implicitly defined from the specification. If it's not, if it's subject to multiple constructions ? and there are very few words that aren't ? then the court is going to pick the narrowest, which will be against the patentee.
JN: David, as someone in industry this must be of great concern to you. Do you agree?
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David |
David Manspeizer: I think Allen is right. The way we draft claims now should not change from before. However there is a greater focus now on the words we use. The Federal Circuit is a very literal court. In Moore Business Forms for example they held as a matter of law that something that was 48.6% could not be equivalent to 50.1% because someone used the term "minority" versus some other term they could have used. That has put a real premium on drafting claims. It's an interesting contrast to the Supreme Court decision which talks about the uncertainty of language, and how language is variable and unpredictable. It sets up a real tension I think between those decisions.
JN: How will that tension be resolved?
DM: That will be the most interesting question over the next several years. I think the Federal Circuit will look at these patents. They have some guidance here from the Supreme Court but I don't see them moving away from the line of cases in which they have continually contracted the doctrine of equivalents. The Supreme Court says there is a doctrine of equivalents but it remains to be seen how much the Federal Circuit will continue to contract that.
JN: If there is this tension between the courts, doesn't that leave patentees in a difficult situation?
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Roger Parkhurst |
Roger Parkhurst: I'd like to take the opposite view to that. I don't think there is much tension now between what the Supreme Court says and what the Federal Circuit has said. I think the big winner in this case was the Federal Circuit, even though the Supreme Court was quite pointed in saying that the Federal Circuit didn't follow its directives in Warner-Jenkinson. As a practical matter, the Supreme Court turned the absolute bar into a presumed absolute bar, and left three very small slits through which you might, if you're lucky in a given case, shoot the arrow of the patentee. The huge majority of doctrine of equivalents cases will be rejected by the courts. In effect, we still have as a practical matter a presumed absolute bar. The interesting thing will be to see which fact patterns qualify as exceptions to that rule and rebut the presumption.
The straw man of estoppel
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Rod McKelvie |
Rod McKelvie: What we're really talking about is a litigation rule. Estoppel is an affirmative defence and these disputes will be resolved at the trial level initially. The nice thing about the Supreme Court decision was they suggested we should go back to looking at what is a fair interpretation of what is surrendered. It's a question of fact about what was surrendered which will be resolved in the first instance at the trial level. To me, Festo is a case about litigation, affirmative defence and dispute resolution. People may take some information from that about planning and patent prosecution. There's going to be factual disputes as we see in almost every case where there's a question of claim construction.
JN: How will the district courts cope? In particular, the question of foreseeability: is that a question for the judge or jury?
RM: Let's talk about it in the context of the procedure. Because the door is open to a claim of infringement by doctrine of equivalents, that is going to come up and estoppel is an affirmative defence. I expect what will happen is the issue will come up prior to trial on a motion for summary judgment. There is some language in the Supreme Court opinion that suggests that estoppel may fall under the cover of claim interpretation that will be a question for the court and will be reviewed de novo by the Federal Circuit. I expect some lawyers will argue it is for the court to decide without a jury prior to trial.
But the foreseeability test, which is borrowed from common law, is a question of fact: I would expect parties to offer testimony on what is foreseeable; ask what is a fair interpretation of what is surrendered; ask the trial judge to make determinations. Most trial judges will be comfortable trying to review those issues prior to trial with a written opinion. I expect the Federal Circuit may review it de novo depending on how they handle the issue.
RP: I agree. Procedurally, the Festo decision now clearly puts the burden on the patentee to show that he did not surrender the particular equivalent in question. The focus seems to be very much on the particular equivalent and how that relates to the prosecution history. So, procedurally, are we in a different situation from before this decision? Is the patentee now burdened with the affirmative duty not only of pleading infringement by the doctrine of equivalents but also setting-up the straw man of the estoppel, and demonstrating his exception to the estoppel? I'm wondering about that procedurally. Probably different judges will handle it differently for a while.
RM: Most district court judges will recognize that estoppel is an affirmative defence but through Warner-Jenkinson and Festo the Supreme Court has said there's a presumption and the patent owner has the burden of proof. I'll be surprised if a judge holds a patent owner to pleading that they're not barred by estoppel. On the other hand, I expect a lot of lawyers will plead it.
RP: The other point is whether the ultimate decision on the estoppel as a matter of law is based upon findings of fact that are the province of a jury. That will be an interesting area of how this develops ? what the test for foreseeability and the testimony will be.
The three exceptions
TD: We should talk about the three exceptions. The first, which we've discussed a fair amount already, is whether the equivalent was foreseeable. The second is whether the rationale underlying the amendment was tangential to the equivalent, and you've got to focus on the rationale. Most see that as a clean-up issue, such as a typographical error. Third, there is a catch-all: "some other reason suggesting that the patentee could not have been expected to describe the substitute." There will be a lot of fighting over all that language.
RM: Isn't the issue about foreseeability regarding infringement under equivalents? One zone of protection is where you couldn't be expected to foresee the equivalents that have now popped up.
| Decisions referred to in the discussion Supreme Court Warner-Jenkinson v Hilton Davis (520 US 17 (1997)) Festo Corporation v Shoketsu Kinzoku Kogyo Kabushiki Co Ltd (No 00-1543, May 28 2002) Holmes Group, Inc v Vornado Air Circulation Systems, Inc (No 01-408, June 3 2002) Available at www.supremecourtus.gov Federal Circuit Johnson & Johnston v RE Service Co & Mark Frater (March 28 2002) Enzo Biochem Inc v Gen-Probe Inc and others (July 15 2002) Available at www.fedcir.gov |
TD: Several circumstances of foreseeability will have to be played out. Justice Rader in his Festo dissent gives the example of after-developed technology. If you got a patent on a vacuum tube radio in 1935, it's not likely you could have predicted the development of transistors. If someone later makes the same radio using transistors, are they now infringing? Judge Rader says no: that technology was unforeseeable. Yet another question is whether the range of foreeseability could have been predicted. That's a much harder case.
Jay Thomas: My view is that Festo is not a very interesting or important decision. The Supreme Court tried to say as little as possible and succeeded ? the Court for the large part simply reiterated Warner-Jenkinson. Importantly, the Supreme Court did not define the term "patentability-related reason" ? the trigger for when an amendment leads to prosecution history estoppel. That failure leaves the Federal Circuit with a lot of room to continue its trend of eliminating the doctrine of equivalents.
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Jay Thomas |
What's also important to note is how distinct the US doctrine of prosecution history estoppel is from non-textual infringement analyses elsewhere. A proposed amendment to the protocol of Article 69 of the EPC would have caused the prosecution history to play a role in European equivalency law. That amendment was rejected two years ago. So the EPC does not appear to include prosecution histories as a permissible input to claim interpretation. About three months ago, the German Federal Supreme Court expressly rejected prosecution history as a limitation on the doctrine of equivalents. That view comports with those of the English, Dutch, Italian and Commonwealth courts. Japanese courts sometimes look at prosecution history, but they tend to look at prior art limitations upon the doctrine of equivalents first. In sum, the United States is moving in a very different direction from other jurisdictions.
TD: But aren't we moving in the same direction? The majority of the CAFC does not like the doctrine of equivalents. When it comes to interpreting what foreseeability is, it's likely that they are going to be as narrow as they can in their interpretation.
JT: Of all major patent-granting states, the United States seems the least likely to apply the doctrine of equivalents at this point. We've moved towards the traditional Japanese system: lots of narrow patents with a limited scope of doctrine of equivalents. The US government has convinced other patent-granting states to be aggressive about the doctrine of equivalents, but this doctrine is now retreating in the courts.
AJ: It is interesting that you said it will result in a lot more narrower patents. That will happen unless people prepare applications with that in mind. We have to prepare the application in terms of literal infringement.
An obviousness test
DM: I want to talk about the skill in the art of those prosecuting applications. Looking at this question of what is foreseeable, will we move in the direction of importing an obviousness-type test? In other words, would it reasonably have been expected at the time? Will we have a new expert witness, and will we look at the level of skill of those drafting, what was the sophistication of the scientists involved, what would reasonably have been expected to have succeeded?
RP: I think the definition of what is meant by foreseeability is a big question left by this case. On page 15 the slip opinion says: "The patentee, as the author of the claim language, may be expected to draft claims encompassing readily known equivalents." Focus on the word "known": are we importing the standard of obviousness? I don't know.
DM: That goes back to Warner-Jenkinson where the standard was known interchangeability for infringement under the doctrine of equivalents. We're talking about essentially the same thing now, but in two different standpoints ? one when drafting and one when the infringement occurred. There will be a tension between them.
RP: Some things are going to change. This case and Johnson & Johnston reaffirm that if you disclose it and don't claim it, you're going to lose it. The scenario will be more patents with lesser and definitive scope. If you look at what's going on administratively in the PTO and the Under Secretary's strategic plan, practical and economic forces will drive patents in that direction too.
| Festo in a nutshell The Supreme Court heard oral argument in Festo on January 8 2002. Robert H Bork (the former US solicitor general) argued for Festo. Arthur I Neustadt, of Oblon Spivak McClelland Maier & Neustadt in Arlington, VA argued for SMC. Lawrence G Wallace, deputy solicitor general at the Department of Justice, argued on behalf of the United States as amicus curiae. The Supreme Court's unanimous opinion was delivered by Justice Kennedy on May 28. Some of the key passages, which are referred to in the discussion, are included below: "If patents were always interpreted by their literal terms, their value would be greatly diminished" (page 6). "...when the court is unable to determine the purpose underlying a narrowing amendment ? and hence a rationale for limiting the estoppel to the surrender of particular equivalents ? the court should presume that the patentee surrendered all subject matter between the broader and the narrower language" (page 15). "... the patentee should bear the burden of showing that the amendment does not surrender the particular equivalent in question ... The patentee, as the author of the claim language, may be expected to draft claims encompassing readily known equivalents" (page 15). "There are some cases, however, where the amendment cannot reasonably be viewed as surrendering a particular equivalent. The equivalent may have been unforeseeable at the time of the application; the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; or there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. In those cases the patentee can overcome the presumption that prosecution history estoppel bars finding of equivalence" (page 16). "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" (page 16). |
If you can think of it, put it in
RP: I want to raise the question of this idea that one skilled in the art could not reasonably be expected to have drafted a claim that would have literally covered the alleged infringement. How does disclosure relate to that? In other words, if you're dealing with a patent that has disclosure and you want to assert it against an equivalent, you're certainly not dealing with a situation where the claim could have been drafted to explicitly (narrowly) cover that non-disclosed equivalent, but a situation of how skilled the patent draftsman was in drafting more generic or sub-generic claims. Does the limitation of the disclosure, its written description and enablement, does that come into play here in what one skilled in the art could have drafted?
AJ: The Federal Circuit has certainly applied it that way in many recent decisions and taken this scope very literally. Can you assume the knowledge of one of ordinary skill in the art any more? Or, do you have to specifically put it in the application? I think if you can think of it, you had better put it in the application. The court is strictly construing that language.
TD: Under Johnson & Johnston you had better be careful to claim it. Otherwise you've lost it. In biotech for example (under the new Enzo decision and Festo) you have a real conundrum, if you have deposited your sample, and not claimed everything in it, you have no equivalence at all.
JN: Doesn't that put a big burden on patent applicants to put things in the claims?
TD: There's always a burden on the applicant to write a clear and definitive application. That can be very difficult. You're held more and more to what you write, just like when you write a will or a contract.
AJ: Many people make the mistake of little inconsistencies. The Federal Circuit in its recent decisions has picked up on those inconsistencies. You may say something one way five times, but then one time you say it differently and the court says it must mean something different.
We've noticed two things since the CAFC Festo ruling. One, applications are longer ? because of wanting to put in more detail, you put into the application the knowledge of one skilled in the art rather than just assuming it. You have more explicit definitions. Second, the number of claims and claim sets is greater, even filing sometimes two different applications for the same invention.
RM: To what extent do disputes between parties that start with literal infringement end up with equivalents in the case? Are patent cases now going to trial with equivalents only?
AJ: In 2000, there were 62 cases at the Federal Circuit that dealt with the doctrine of equivalents.
The issue of language
AJ: Isn't the effect going to be somewhat technologically driven too? In chemistry, I don't see the doctrine of equivalents that often. In mechanical cases, it's almost always going to be an issue.
TD: It gets to the issue of language ? there are so many different ways to describe a physical element. In chemical cases you see it more in ranges ? look at Warner-Jenkinson ? and whether you're inside or outside the range.
DM: We see it in biological cases too. There will be a focus on doctrine of equivalents because of the ability to shift elements around and use different kinds of elements. For example, with a plasmid there are all different kinds of things you can do, and they'll want this explicitly set forth and claimed. There is perhaps a greater need for the doctrine of equivalents.
| Patents, policy and the PTO AJ: Thirty years ago, obviousness was the big issue. Every patent seemed to be obvious. Infringement was not controversial. The CAFC has brought a great deal of uniformity. Nowadays, obviousness is not against the patentee like it used to be; on the other hand, infringement is a big issue. With Festo affirming the constriction of the doctrine of equivalents, are we going to see that have an effect on the value of patent portfolios? TD: As people have pointed out, if you draft a patent application intending to rely on the doctrine of equivalents you're probably not doing a very good job for your client. It's an escape hatch. RM: Maybe we hear more about infringement cases coming up because of the de novo review of claim construction, because of the procedure we have in place. Infringement is renewed de novo whereas obviousness is protected by the burden of proof. As a trial judge, I see cases being driven by infringement because of the standards of review; obviousness is a much harder case to get up to the Federal Circuit. TD: Have the CAFC and the cases we're discussing resulted in a better quality, better written patent application? I wonder if for important technologies there's not more care being taken, even if it's more costly. AJ: I've certainly seen among my clients the necessity of making value judgements when it comes to patenting. We know for an important technology if we're going to do it right, it will cost two or three times as much. We're asked to spend whatever's necessary in some cases if it's the crown jewels. What are you seeing David? DM: We're certainly not cutting down. In our industry, we're filing very early on a lot of compounds. Your portfolio really comes to a pyramid in our industry, you file on 400 or 4000 applications to get one that is worth something. You have to assume everything is a crown jewel. TD: Is that a contrast with the idea that we'll see a lot of narrower patents? We might see a few blockbuster patent applications plus a lot of pilot fish cases stringing out behind them. JN: Doesn't that present a problem for the USPTO? JT: It does present extreme problems for the PTO, which currently employs an Enron-style accounting technique to disguise its generous grant rate. The PTO grant rate is just south of 70% ? which really means that about 30% of cases received a so-called "final rejection". But all those cases can be re-filed as continuation applications, and perhaps next year they may be in the 70% that are granted. TD: The belief that the Office is letting everything through is belied by the number of people complaining that they can't get patents issued. But should we look at rules that tighten up allowance rates? I think that's a fair question to ask. JT: Obviousness is a much more lenient standard than it used to be. Federal Circuit case law has made it much more difficult for the PTO to reject applications. The Federal Circuit's requirement that the PTO issue fulsome, detailed rejections stepping through the precise manner in which prior art references can be combined creates a tremendous burden. I believe the trend towards larger numbers of improvidently granted patents will continue. TD: With the resources it has the Office does a great job. We've talked about post-grant processes to allow for clarification or correction. One of the things in Director Rogan's strategic plan is for an enhanced post-grant opposition or cancellation similar to the European-style. Others have suggested something five years out for example, or reducing the standard (for finding infringement) from "clear and convincing" to "preponderance of the evidence". RM: Is it heading in the opposite direction of the Federal Circuit? We trial lawyers and judges like the idea of shifting some review to the district courts because it creates much less uncertainty. TD: Why is there not more staying of infringement and validity actions, and sending the validity question back to PTO for re-examination? That would relieve the burden on the judges and accelerate it, and make the litigation process less expensive. That's what happens in Japan. RP: Historically it's been the imperfect nature of the process in the PTO. TD: The current inter-partes re-examination is being used very little, but it goes to a very high level of official in the Petitions and Policy Office. |
Jurisdictional gymnastics
JN: Will the Supreme Court take up another case?
TD: The Supreme Court is more eager to get into the field now than in the past. There is also a suggestion that the Court is not so pleased with the CAFC as it could be. You can read into Holmes v Vornado that the CAFC is to be reined in a bit.
RP: I've heard people say that of all the Federal Circuit patent cases in which certiorari was granted by the Supreme Court, only one was fully affirmed ? the Pioneer case.
AJ: When Festo came out, most people said: "It's still alive, we're ok." But the CAFC sees Festo affirming its policy of limiting the doctrine of equivalents. Only these three exceptions are going to be available.
RP: The Federal Circuit may have done what a lot of lawyers do ? over-reach in the hope of getting the Supreme Court back to where they want to be.
JN: A point that people have picked up on is that the Supreme Court opinion in Festo seems to criticise the CAFC. Is it also correct to see Holmes v Vornado as reining in the CAFC?
TD: It's a fairly narrow interpretation by the Supreme Court. If the plaintiff doesn't plead a patent in its original pleading, then it can't be brought to the Federal Circuit by counterclaim. We may get to a circumstance where regional circuit courts may decide patent issues again. It may send a bit of a chill down everyone's spine, but the Stevens concurrence invites that.
JN: It's already happened in one case.
TD: That's right. The CAFC sent a case back from whence it came. And the Indiana State Supreme Court in the last week has taken back a case involving a copyright claim. They said they didn't think they had jurisdiction but now they do.
JN: How do patent owners feel about that do you think?
DM: It certainly sets up the spectre, going back to the 1960s and 1970s, of forum-shopping. Some courts found all patents valid and others all patents invalid, some found all patents infringed and some none infringed. From the perspective of industry, that's the kind of uncertainty you want to avoid. From a litigation standpoint, you can pick your battles very well and find courts which are favourable to you. You have to be very careful about where you're filing.
JT: Plainly Vornado sends a signal that antitrust enforcement is back in the patent field. There's no question that the Federal Circuit has a very narrow view of antitrust laws. Other courts, in particular the Court of Appeals for the Ninth Circuit, have a more robust antitrust jurisprudence. If you can get your antitrust claim out of the Federal Circuit, and into one of the regional courts of appeal, you've got a much better chance of success.
TD: Will any of the regional circuits defer to the patent jurisprudence of the CAFC? I hope they will.
RP: Another question is: if you're the patent owner, can't you assert your patent as an affirmative defence as a shield, and start another suit on your own complaint, even in the same court?
RM: My impression of Holmes is it's a procedural issue, a reminder to the Federal Circuit that they should be aware of the settled body of case law. The issues won't get resolved differently but it will end up that patent issues will go to the Federal Circuit and antitrust will go elsewhere.
JT: We've had some of these ploys before concerning disputes over the licensing of intellectual property. If the plaintiff characterizes the matter as a contract dispute, the case will likely go to a state court or a regional federal appeals court; if the case is instead couched as a patent matter, it would go to the Federal Circuit. Vornado opens the door a bit more to these jurisdictional gymnastics.
AJ: There are many cases in a licensing context where the state courts have construed what the claims mean.
RM: But based on what the Federal Circuit says earlier.
Battleground on Capitol Hill
RP: The battleground may be on Capitol Hill rather than in the courtroom. I haven't heard anybody say that Congress did not intend the Federal Circuit to have this type of case. No-one's doubted that. This is the kind of issue that might get attached to any bill you name as a legislative clean-up. It's understandable to many congressmen and has a high likelihood of going straight through.
TD: To alert Congress to the concern, you can rely on Stevens language. Is he suggesting that the CAFC is showing an institutional bias?
RM: Part of our system of civil justice includes the idea that we have decisions percolate up through the system, and there's not uniformity within the circuits or the district courts or even between judges in the same building. You may get more mistakes but it's more creative.
This issue of the relationship between the Federal Circuit, the other circuits and the Supreme Court is a difficult problem of a specialised court as it may reduce the number of decisions percolating up. For example, look at how the Federal Circuit has been handling claim construction and Markman hearings: it has allowed district courts to handle claim construction and develop their own procedures. That's worked well and courts have experimented with different approaches. That may be what's behind Justice Stevens's comment. It's a difficult tension between the benefit of a specialized court and one that may not present as many views to the Supreme Court.
RP: In the context of the Federal Circuit that is being curtailed by so many decisions being designated non-precedential. The fact patterns are not available as precedent and the discussion is not available. That's particularly detrimental in the context of the doctrine of equivalents where every case is ultimately rooted in the fact pattern.
TD: Despite everything we say about it, the CAFC over 20 years has been an extraordinary success. It has brought clarity and value: patents are worth much more than 20 years ago.
RM: Roger's suggestion of a statutory change is a good idea. If the rules don't get us where we want to go, maybe we should go to Congress and correct it, tweak the statute to get all of the patent disputes before the court.
Very little doctrine of equivalents left
JN: Patentees say: what we want is certainty. We've talked about where the doctrine of equivalents lies, whether the role of the CAFC should be looked at by Congress and changes at the patent office. With all that, there's potential for a lot of change and uncertainty in the next five or ten years.
AJ: We've emphasized some of the changes that might be considered, but there's more certainty in the system now than in the last 30 years. The case law on validity is settled. We've all concluded there's very little doctrine of equivalents left. Most of the controversies are really procedural trial matters. That's after you've got a successful invention and you're making money on it.
JT: I would add that having a specialized Federal Circuit means the pace of common law development is extremely rapid. The percolation period is much shorter than if courts in different circuits had to speak to each other.
RP: I think we've discussed the cycle of the last 20 years in the context of the Federal Circuit. We first saw consolidation on the patent validity side. I saw a lot of patent owners over-reaching what most people would say are the scope of their rights, and that was driven by the Federal Circuit's willingness to enforce patents more readily.
That overshoot has now caused the Federal Circuit effectively to say we need to move back to middle ground on infringement, and the judicial activity in the context of the doctrine of equivalents is part of that, and so is the strict construction of claims.
JN: You're suggesting there's been a drift one way and now it's being redressed. Is there still some way to go?
RP: I have problems with reading limitations from specifications into claims. Some district courts have gone overboard in what their impression has been of certain Federal Circuit decisions which have been trying to limit the construction of claims to the true nature of the disclosure. They have said they've used this word in this context so I'm going to import the whole sentence rather than the word. I have problems with that trend.
Sometimes I've thought this reflected the influx of lawyers litigating these cases who don't have a patent prosecution background. I'd like to see that problem brought into a more realistic focus. I think the swing back is a realistic reaction to a real problem.
JN: I want to look ahead a bit. I understand it's exceptional for the Supreme Court to tackle two cases in one term. It seems to be very interested in patent law at the moment. Looking ahead, do you think it will take on more patent cases and what will the implications be?
TD: I think it will remain to be seen. I understand the impulse that the Supreme Court wants to get in the game. I'm not sure they always find the interesting policy issues they want there, however. A lot of these cases get sifted through by their clerks and a lot of law school graduates are very interested in IP law. I would guess you're going to see a few more.
AJ: Because there are so few cases going to be taken by the Supreme Court, unless the Supreme Court makes a major announcement it won't have much effect on the Federal Circuit in practice. I would argue that Festo will have practically no effect on how the Federal Circuit operates and the results it will obtain.
RP: In a recent Federal Circuit case, they said they are not going to defer to the PTO's construction of its own rules. With the dissent that Judge Dyk authored where he listed several cases to which the decision is contrary, that's the kind of system management issue in which the Supreme Court will be interested.
JT: We are seeing more Federal Circuit dissents that attempt to solicit Supreme Court review. Another interesting thing to look out for is a copyright case next term in which the Court will examine whether the recent 20-year augmentation of the copyright term is valid. That could say some interesting things about congressional authority to promote intellectual property rights.
Thanks to Ed Good and the staff at Finnegan Henderson for hosting this discussion
