IP News Re: Festo

Antoun Nabhan anabhan@attglobal.net
Tue, 28 May 2002 22:59:47 -0700

Incidentally, this wire article is (surprise) not entirely accurate about 
the biotech industry "blasting" the Festo decision. Amicus briefs in favor 
of the Festo rule were filed by Genentech, Celera, and Medimmune. Amicus 
briefs urging that Festo be overturned came from Chiron and Celltech. In a 
related note, Affymetrix has taken a public stand urging narrower 
patentability for genes and proteins.

The Supreme Court also preserved a significant portion of the lower court's 
Festo ruling. Festo said equivalent inventions may be allowed when the 
relevant patent claim was narrowed to exclude such an equivalent for any 
reason related to patentability, not just when it was narrowed to avoid 
prior art. Other reasons are most commonly that the original claim language 
didn't provide an adequate written description of the invention, meaning 
not enough detail to allow another practitioner in the art to reproduce the 
inventor's work.

For the full opinion check out: 

NEW YORK, May 28--The U.S. Supreme Court today overturned an Appeals Court 
ruling that had been blasted by the biotechnology industry as a major blow 
to patent protection and intellectual property integrity.

Today, the highest court ruled unanimously to restore the "doctrine of 
equivalents" in patent law. Broadly, the decision makes it easier to 
protect patents and harder to challenge them.

Festo v. Shoketsu Kinzoku Kogyo Kabushiki began in 1988, when the machine 
part manufacturer Festo filed suit against the Japanese firm and its U.S. 
subsidiary, claiming that Shoketsu's subisidiary had copied its piston design.

The U.S. District Court for Massachusetts agreed, based on the principle of 
the  "doctrine of equivalents." That legal concept holds that a process or 
invention that uses slightly different technology to achieve the same 
results as a patented invention is in violation of that patent, as long as 
the technology is "equivalent."

For decades, this doctrine of equivalents strengthened patent protection by 
preventing potential infringers from tweaking a few technical details of an 
existing invention and then claiming the technology as their own.

In November 2000, however, the U.S. Court of Appeals for the Federal 
Circuit ruled against Festo, crippling the doctrine of equivalents as a 
legal tool by holding that any modifications or refinements made to a 
patent during the back-and-forth of the application process would be exempt 
from the doctrine. Since this back-and-forth process tends to be lengthy 
and broad, the ruling effectively gutted the doctrine.

Industries like genomics that rely on strong intellectual property 
protection were devastated by the 2000 ruling. A broad coalition of 
high-tech backers supported a Supreme Court appeal, including the 
Massachusetts Institute of Technology and Cold Spring Harbor Laboratory.

Today's ruling will send the case back to the lower courts.

Antoun Nabhan, Esq.
Miller | Porter Group

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