Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

SCOTUSCase
Litigants=Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.
ArgueDate=January 8
ArgueYear=2002
DecideDate=May 28
DecideYear=2002
FullName=Festo Corporation, Petitioner v. Shoketsu Kinzoku Kogyo Kabushiki Company, Ltd., et al.
USVol=535
USPage=722
Citation=122 S. Ct. 1831; 152 L. Ed. 2d 944; 2002 U.S. LEXIS 3818; 70 U.S.L.W. 4458; 62 U.S.P.Q.2D (BNA) 1705; 2002 Cal. Daily Op. Service 4539; 2002 Daily Journal DAR 5803; 15 Fla. L. Weekly Fed. S 320
Prior=On writ of certiorari to the United States Court of Appeals for the Federal Circuit. "Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.", 234 F.3d 558, 2000 U.S. App. LEXIS 29979 (Fed. Cir., 2000)
Subsequent=On remand at "Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.", 304 F.3d 1289, 2002 U.S. App. LEXIS 19734 (Fed. Cir., 2002). On remand at "Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.", 344 F.3d 1359, 2003 U.S. App. LEXIS 19867 (Fed. Cir., 2003)
Holding=
SCOTUS=1994-2005
Majority=Kennedy
JoinMajority="unanimous"
LawsApplied=U.S. Const.

"Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co.", 535 U.S. 722 (2002)ref|citation, was a United States Supreme Court decision in the area of patent law that examined the relationship between the doctrine of equivalents (which holds that a patent can be infringed by something that is not literally falling within the scope of the claims because a somewhat insubstantial feature or element has been substituted) and the doctrine of prosecution history estoppel (which holds that a party who makes a change to a patent application to accommodate the requirements of patent law cannot claim indirect infringement of an element that was narrowed by that change).

Background

Festo Corporation (petitioner) owned two patents for an industrial device. An initial patent application was rejected by the patent examiner due to deficiencies in the description of device in the first patent, as a result of which the applications were amended to add two limitations: that "its outer sleeve would be made of a magnetizable material" (first patent) and that the device would contain "a pair of one-way sealing rings" (both patents). After Festo began selling its device, Shoketsu Kinzoku Kogyo Kabushiki Co. (SMC, respondents) entered the market with a similar device that used "one two-way sealing ring" and a "nonmagnetizable sleeve". Festo filed suit, claiming that SMC's device was sufficiently similar that it infringed Festo's patents under the doctrine of equivalents.

Case history

The United States Court of Appeals for the Federal Circuit had ruled that any amendment to a patent application that narrowed a patent claim to comply with the Patent Act created an absolute bar to equivalents for the particular claim limitation that was narrowed by the amendment. In other words, the patentee would not be able to contend that a product or process infringed the amended patent claim if the narrowed claim did not literally read on the infringing product or process.

For example, suppose that a patent applicant originally presents a claim to a particular device in her application. Suppose that the claim recites "a fastener" that connects two particular components of the device. If the patent applicant later amends her claim to replace the recitation "a fastener" to "a screw" (thereby narrowing the limitation) in order to comply with the Patent Act, then she cannot afterward contend that someone else's product infringes the claim if it does not use a screw to connect the two particular components. She would not be able to establish infringement even if the accused machine employed an equivalent to a screw, e.g., a nail or a nut-and-bolt.

The Supreme Court reversed, holding that such amendments do "not" create an absolute bar, but instead must be examined in light of the reason for the change. If the change was made to clarify a translation, for example, the inventor should suffer no reduction in rights. But if the change was made to keep the patent from overlapping with another patent, then the patent applicant will be presumed to have given up the right to complain about anything broader than the patent claim itself.

In particular, the Court held that patentee's decision to narrow her claims through amendment in order to comply with the Patent Act creates a presumption that she surrendered the territory between the original claim and the amended claim, i.e., a presumption that she surrendered all equivalents for the particular claim limitation that she narrowed by the amendment. The Court acknowledged, however, that there are some cases 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 a finding of equivalence."

ee also

* List of United States Supreme Court cases, volume 535

External links

* [http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=US&vol=000&invol=00-1543 Text of the opinion on Findlaw.com]
* [http://www.usdoj.gov/atr/public/speeches/218316.htm Address citing the case] by Thomas O. Barnett, Assistant Attorney General, Antitrust Division, U.S. Department of Justice