Ambivalence in Equivalents: Problems and Solutions for Patent Law s Doctrine of Equivalents

Summary

---

Introduction I. Patent Law-;An Overview A. The Patent Process B. Patent Rights as Property Rights C. The Doctrine of Equivalents D. Prosecution History Estoppel-;Protection Versus Notice II. Festo Illustrates The Problem A. Facts of Festo B. Prosecution History of Festo's Patents C. Procedural History 1. Lower Court Decisions-;Festo Wins the First Three Rounds 2. The En Banc Decision-;Festo Loses Round Four D. The Supreme Court Steps In E. Back to the CAFC III. Solution-;It's Time For Congress To Step In A. Rationale for This Legislation B. Alternative to the Doctrine of Equivalents C.Festo and Warner-Jenkinson Could Have Had Better Results Without a Doctrine of Equivalents. Conclusion

See the full content of this document

Extract

---

Ambivalence in Equivalents: Problems and Solutions for Patent Law s Doctrine of Equivalents

I would like to thank Russel O. Primeaux and Warner J. Delaune for graciously sharing their knowledge of patent law with me.

Introduction

In 1988, Horst Saalbach began a lawsuit involving the infringement of two patents owned by his Long Island robotics company, Festo Corporation. Today, after 15 years of continual litigation, including two trips to the United States Supreme Court, his case is still not resolved. In May of 2002, the Supreme Court issued its decision in Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Company, Limited1(known as SMC2), vacating a controversial Court of Appeals decision and remanding the case once again for further proceedings. Saalbach, a naturalized U.S. citizen who escaped communist East Germany when he was seventeen, continues this fight because of his belief in the principles of the Constitution.3 He has the resources to persist because Festo Corporation is a $1.5 billion company with 10,000 employees worldwide.4

However, Festo represents perfectly a serious flaw in the patent system today. The policy of patent law involved, the Doctrine of Equivalents, has caused at least as many problems in the last twenty years as it has solved. Applying the doctrine is problematical for courts because, as Festo itself demonstrates, it does not allow for precise boundaries. The Supreme Court has described problems with the doctrine,5 and the Court of Appeals for the Federal Circuit has gone so far as to call application of the doctrine "unworkable."6 This policy is also costly for litigants as the cases involved tend to be closely contested and, like Festo, are sometimes appealed for years.7 Since relatively few patent holders can afford the one million dollar average cost of patent litigation,8 the rights of many patent holders are effectively diminished.

This note argues that a solution to this problem is for Congress to eliminate the Doctrine of Equivalents. Such legislation may seem at first to be controversial, and it may not have been an optimal solution twenty years ago, but it is feasible today. The doctrine was considered an important equitable solution when first introduced by the Supreme Court some 150 years ago,9 but it has since become outdated and unnecessary. The sheer volume of patent applications makes reform of the system especially desirable. In late 1999, the six-millionth patent was granted in the United States. At the present rate of filing this number will double in only sixteen years.10 Eliminating the doctrine of equivalents is therefore needed to increase judicial efficiency by clarifying claim interpretation, thus bringing certainty and predictability to the patent process. Since a patent is a contract, the doctrine can be replaced with traditional common law rules of contract interpretation. This proposed legislation would not be ap...

See the full content of this document

---