[M4IF Discuss] Impact of recent Supreme Court decision on patent rights

[William J. Fulco]

Kris,
As I understand it - what happened was the Appeals court upset the cart big
time and the Supremes put it back - almost the way it was..  As Marc noted:
> 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.

What the Supremes did was overturn the Appeals "absolute bar" to
amendments - there is now no ABSOLUTE bar on amendments causing you not to
be able to sue for an "equivalent" device... However, the Supremes also
rejected Festo's attempt to create a "Flexible bar" that would have allowed
the courts to decide on a case-by-case basis at the trial (as I understand
what they wanted). This would have created a BIG mess.
What the Supremes decided was they liked what the IEEE (USA) proposed - a
"Foreseeable bar" on amendments. What this means is that the limiting
actions of an amendment do not prevent you from suing an infringing party
UNLESS the limiting actions of the amendment could FORSEEABLY have excluded
the infringing device by someone generally skilled in the art at the time.
In short - when you file a amendments to limit your patent's breadth (so you
can get the USPTO to award the patent) ... if these limiting amendments
could have been foreseen at the time to excluded the device you now claim
infringes - then you can't claim "the doctrine of equivalents" applies.
Say you patent a wheelbarrow as "any device with wheels and a handle to
carry heavy loads" - and the patent office says - WAY too broad, we're not
going to issue. So you amend the application and say "a device with ONE
wheel and a handle to carry heavy loads" and you get the patent. Then along
comes FredCo - and they build a device with TWO wheels and a handle - and
you try to sue under "the doctrine of equivalents" - saying their
wheelbarrow infringes. FredCo can say under this new ruling - NOPE - your
amendment restricted the patent because anyone skilled in the arts could
have foreseen a 2-wheel version as a possibility - and your amendment
specifically restricted your patent application to ONE wheel. Therefore,
your patent meant ONE WHEEL CARRYING DEVICE - not the general case of an ANY
NUMBER OF WHEELS CARRYING DEVICE...
Basically the ruling is a mixed bag - it's not back to the old way
("equivalent" devices are covered regardless of amendments to patent
application) but it's not as bad as the way the Appeals Court had made it
(any limiting amendment kills equivalence)
But then again, I'm not a patent lawyer - so this description and all its
equivalents - come with appropriate caveats.
++Bill
---------------------
William J. Fulco
wjf   NetworkXXIII.com
310-927-4263 (Cell)
Ne cede malis sed contra audientor ito!