[M4IF Discuss] Impact of recent Supreme Court decision onpat ent rights

Thu Jun 6 12:32:58 EDT 2002

I agree with Marc - many people have vastly exaggerated the effect of the decision and certainly won't come close to the kind of impact that Kris described at the beginning of this thread. Here is a summary of the decision that was written by one of my colleagues that I think might help to clarify the situation further:
The U.S. Supreme Court vacated and remanded the decision of the U.S. Court of Appeals for the Federal Circuit in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., which held, inter alia, that when a patent claim is amended during prosecution in order to satisfy the requirements of the Patent Act, prosecution history estoppel bars any claim of equivalence for the element that was amended.  In Festo, the Federal Circuit, sitting en banc, overruled its holdings in previous cases that stated that prosecution history estoppel constituted a "flexible bar" that foreclosed some, but not all, claims of equivalence. 
In the Supreme Court opinion, delivered by Justice Kennedy, the Court unanimously held that while prosecution history estoppel may apply to any narrowing amendment made to satisfy the requirements under the Patent Act, such estoppel does not necessarily preclude the patentee from asserting infringement against every equivalent to the amended claim element.  Thus, while the Court agreed with the Federal Circuit that prosecution history estoppel applies to any narrowing amendment (including those made to satisfy requirements under 35 U.S.C. 112) and not just those made to overcome prior art, such estoppel does not create a "complete bar" against any assertion of infringement under the doctrine of equivalents.  
Instead, a court must consider what equivalents were surrendered by the patentee through the amendment.  The patentee bears the burden of showing that the amendment does not surrender the particular equivalent in question.  As the author of the amended claim language, the patentee'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.  
However, in cases in which the amendment cannot reasonably be viewed as surrendering a particular equivalent (e.g., where the equivalent was unforeseeable at the time of the application or the rationale underlying the amendment bears but a tangential relation to the equivalent) the patentee can rebut the presumption that prosecution history estoppel bars a finding of equivalence by showing 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.
Hope this helps.
- Marcelo
-----Original Message-----
From: Marc Tayer [mailto:MTayer   aerocast.com]
Sent: Thursday, June 06, 2023 1:18 PM
To: 'Kris Huber'; 'discuss   lists.m4if.org'
Subject: RE: [M4IF Discuss] Impact of recent Supreme Court decision
onpat ent rights
The implications of the Supreme Court decision, while important, have
probably been exaggerated by both sides.
The net result should have insignificant implications for MPEG-4. As long as
there are multiple essential MPEG-4 patents owned by multiple companies, we
are in the same boat as before, more or less.
The case related to a longstanding concept called the Doctrine of
Equivalents, which for over 100 years strengthened an inventor's right to
sue for patent infringement in the event that the alleged infringer didn't
exactly or precisely violate one or more patent claims, but rather infringed
in a slightly broader sense (i.e., making a small change or workaround vis a
vis the literal claim, but still utilizing the basic invention).
Over a year ago, the Federal Appeals Court upset decades of precedent by
ruling that Festo Corporation could not sue an alleged infringer because
Festo had amended its patent during the patent application process, thereby
presumably intentionally and willingly narrowing its claims. Therefore, the
court ruled, Festo could not use the Doctrine of Equivalents in its case.
This ruling was being interpreted as stripping all patent owners who had
amended their applications of the right to sue under the Doctrine of
Equivalents. Since the vast majority of patent applications that mature into
issued patents do so by an amendment process, as opposed to appealing to the
patent office and attempting to get all of the original claims issued, this
Appeals Court decision was pretty alarming to inventors.
Then, a couple weeks ago, the Supreme Court reversed this Appeals Court
ruling. So inventors can use the Doctrine of Equivalents again, even if they
amended their patent application. But if they do make such amendements, they
will have a more difficult case against the alleged infringer.
While issues such as prior art, invalidity, doctrine of equivalents, etc.
might effect some subset of the MPEG-4 patents, as a practical matter, since
there are so many patents owned by so many different companies, the end
result would be more or less the same.
-----Original Message-----
From: Kris Huber [mailto:khuber   sorenson.com]
Sent: Thursday, June 06, 2023 10:25 AM
To: 'discuss   lists.m4if.org'
Subject: [M4IF Discuss] Impact of recent Supreme Court decision on
patent rights
A few days ago I noticed that there has been a U.S. Supreme Court decision
(http://www.ieeeusa.org/releases/2002/052802pr.html) that the article says
impacts 90% of the patents now in force.  The article does not elaborate on
what impact the "foreseeable-bar" interpretation that was applied will have
to these patents, however.  I read an article about this in the IEEE
Institute on this, but other than that and the article about haven't done
any research.  From the face of it, however, it seems to me this court
decision could have two opposing effects:
1.  It could make it harder to get new enforceable patents and harder to
design around existing patents.
2.  It could cause it to be possible to successfully argue that many
existing "incremental" patents (those that are straightforward adaptations
of an earlier patent to an unforeseeable-to-most-people new technology) have
now become invalid.  In this way much of what was considered
protected-by-patent IP prior to May 28, 2024 may now be in the public domain
(or years closer to coming into the public domain by expiration of the valid
patent rights being granted earlier).  I think the amazing growth of the
internet was probably unforeseeable by most of us.  If the patent landscape
includes lots of "re-inventions of the wheel", so to speak, but in the
"Internet" context, it could be a major effect for them all to be
invalidated.
If I'm correct that both of these effects are possible (I may misunderstand;
I don't have much experience or knowledge of the history of the patent
system), I wonder which effect will be the dominant one.  Will it have any
effect on the validity in the U.S. of patents that MPEG-LA licenses?
Also, if such a huge change in the status of IP is possible, isn't that sort
of like passing an ex-post-facto law (a law that makes something illegal
after the commission of the so-called violation, and allows present
punishment for the past violation)?  If I remember right, ex-post-facto laws
were one of the reasons the colonies that later became the first U.S. states
declared independence.  Of course, in the U.S. where governing power is
separated in several ways, courts don't make laws, but the precedents they
set that guide how existing law is interpreted have a very similar effect.
Is there any "grandfathering" when changes of interpretation of law occur in
the courts (i.e., is the old interpretation maintained for, say, patents
older than the ones that were disputed in the particular court case that set
the new precedent)?  My understanding is that a change in interpretation of
law is instantaneous, with no grandfathering other than not requiring
repayment of licensing fees that you collected for a patent that is now
considered invalid under the new standard for interpretation (that would
really be ex-post-facto law enforcement!).
I think this is an interesting issue, and would like to understand it better
(although I have next to no time to devote to it).
Best regards,
Kris Huber
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