The impact of the May 28 Festo n2 decision arrived quickly. Cases to be reviewed in light of Festo include Insituform Techs., Inc. v. CAT Contr., Inc., n3 PTI Techs., Inc. v. Pall Corp. Techs., Inc., Lockheed Martin Corp. v. Space Sys./Loral, Inc., Pioneer Magnetics, Inc. v. Micro Linear Corp., Creo Prods. v. Dainippon Screen Mfg. Co., Semitool, Inc. v. Novellus Sys., AccuScan, Inc. v. Xerox Corp., Mycogen Plant Sci., Inc. v. Monsanto Co., and Senior Techs., Inc. v. R. F. Techs., Inc. n4

In Gentile v. Franklin Sports, n5 the Massachusetts district court addressed a Festo/Markman question: which party bears the burden of proving that a patent claim has been narrowed by representations made in the prosecution history? Franklin argued, based on Festo, that the burden is on the patentee to show that statements made by him during the prosecution of his patent do not limit a more expansive construction of his claim that would otherwise spring from the plain, ordinary meaning of the language of the claim. In this view, the baseline is the plain, ordinary language, and Franklin was concerned about an expansion from the plain language. The court's view was more that the accused device was within the scope of the plain, ordinary language, and that the defendant bore the burden of moving the baseline to a less expansive point. The court noted: "However, a defendant seeking to narrow the claim by arguing that the patentee has relinquished a potential claim construction based on the plain, ordinary meaning of the language of the claim bears the burden of overcoming a heavy presumption in the patentee's favor. He must prove that the patentee made clear representations during the prosecution history which limit the scope of his claim." The rule stated by the district court was as follows: "In the claim construction context, where a party seeks to limit the reach of the otherwise plain meaning of the claim language, the burden is on him to prove that the prosecution history limits the claim language. Similarly, in the doctrine of equivalents context, where a patentee seeks to broaden the scope of the patent's protection beyond that which would be otherwise granted by the plain meaning of the claim language, the burden is on him to prove that an amendment made during the patent's prosecution should not limit the scope of the patent's protection."

To simplify, if the claim construction of the amended claim literally encompasses the accused device, it will be defendant's burden to narrow claim scope, and this will be difficult to meet. On the other hand, if the claim construction of the amended claim does not literally encompass the accused device, it will be patentee's burden to "broaden" claim scope, and this will be difficult to meet. Does Festo raise the stakes of a Markman hearing? Appears to be so. In Festo itself, only equivalent infringement was at issue. In the future, equivalent issues may be transported by the patentee into claim construction issues.
 

In Jungersen v. Ostby & Barton Co., 335 U.S. 560, 572 (1949), Justice Jackson observed (in dissent) that the Supreme Court's tendency to invalidate patents might lead observers to conclude that "the only patent that is valid is one which this Court has not been able to get its hands on." One year later, in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 94 L. Ed. 1097, 70 S. Ct. 854, Justices Black and Douglas dissented in a doctrine of equivalents case.

Fast forward to the year 2002. On March 28, an en banc Federal Circuit voted 12-1 in Johnson & Johnston Associates, Inc. v. R. E. Service Co., Inc. n6 basically to adopt Justice Black's dissent in Graver Tank that if an inventor discloses an embodiment of an invention in a patent, but fails to claim (or attempt to claim) that embodiment, then the embodiment is dedicated to the public. On May 28, the Supreme Court in Festo suggested a position that foreseeable embodiments of amended claim elements were excluded from equivalent protection, a position in harmony with the dissent of Justices Black and Douglas and inconsistent with the Graver Tank majority. The (dissenting) position of two of the most anti-patent justices of the 1950's has become the rule of law in the new millennium.

To overcome the rebuttable presumption of surrender generated by the Supreme Court, the patentee apparently can make a showing under any one of at least three different prongs:

If the patentee merely had to meet one prong, the "tangential relation" test looks as if it might be easier to meet than either of the other two in most cases. Further, if we were writing on a blank slate, if a patentee made a showing under "tangential relation" even if the defendant prevailed on [not] "unforeseeable," the patentee would have met his burden to rebut surrender, [a parallel model of the prongs] We are not writing on a blank slate. Foreseeability is further analyzed in terms of Sage Prods. Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425, 44 USPQ2d 1103 (CAFC 1997). As elaborated within Johnson and Johnston, 285 F3d at 1056 (J. Rader, concurring): "the doctrine of equivalents does not capture subject matter that the patent drafter reasonably could have foreseen during the application process and included in the claims." The foreseeability test is not "friendly" to the patentee; as stated in Sage and re-stated in Johnson and Johnson: "it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure." 126 F.3d at 1425; 285 F.3d at 1057. In this, it is possible that the "foreseeability" test might become a necessary first test [in series, rather than in parallel]. It is likely that litigation may be necessary to unravel the interrelation between the Supreme Court's tests to rebut surrender and the Federal Circuit's foreseeability standard in Sage. n8

As noted elsewhere, n9 the Graver Tank case found that manganese was an equivalent of alkaline earth metals (such as magnesium), even though manganese was disclosed as a substitute both in the specification and in the prior art. Its substitution for the claimed materials was clearly foreseeable. This analysis of "equivalent as known substitute" was consistent with Supreme Court decisional law at the time; text within Graver Tank, 339 U.S. at 608, states:

The doctrine [of equivalents] operates not only in favor of the patentee of a pioneer or primary invention, but also for the patentee of a secondary invention consisting of a combination of old ingredients which produce new and useful results, Imhaeuser v. Buerk, 101 U.S. 647, 655, although the area of equivalence may vary under the circumstances. See Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 414-415, and cases cited; Seymour v. Osborne, 11 Wall. 516, 556; Gould v. Rees, 15 Wall. 187, 192.

The case, cited with approval by Graver Tank, of Gould v. Rees, 82 U.S. (15 Wall.) 187, 21 L. Ed. 39 (1872), is on all fours for the proposition that known substitutes may be equivalents, and substitutes not invented at the time may not be equivalents. See also FULLER v. YENTZER, 94 U.S. 288; 24 L. Ed. 103, 106-107 (1876); Rowell v. Lindsay, 113 U.S. 97, 102 (1885); THE RISDON IRON and LOCOMOTIVE WORKS COMPANY v. ALEXANDER YOUNG, 9 Haw. 156, 1893 Haw. LEXIS 1 (Hawaii 1893).

The issue of foreseeable vs. unforeseeable equivalents is not new. It appears in Micro Motion v. Exac, 741 F. Supp. 1426, 16 U.S.P.Q.2D 1001 (ND Ca 1990), wherein the court, while citing to Graver Tank for the proposition that the patent itself may disclose the equivalent (accepting (then) that known and foreseeable embodiments may be equivalents), referred to Gould v. Rees and Gill v. Wells as old cases, while failing to mention that Gould was cited in Graver Tank. It found that previously unknown embodiments could be equivalents. The issue came up again in the dissent of Judge Nies in Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 35 U.S.P.Q.2d 641 (Fed. Cir. 1995)

Furthermore, the Supreme Court in Festo cited to the case Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 230 to establish "The [Supreme] Court has consistently applied the doctrine in a flexible way, considering what equivalents were surrendered during a patent's prosecution, rather than imposing a complete bar that resorts to the very literalism the equivalents rule is designed to overcome" and "We have considered what equivalents were surrendered during the prosecution of the patent, rather than imposing a complete bar that resorts to the very literalism the equivalents rule is designed to overcome." n10 However, although not mentioned in Festo, it is separately true that the Goodyear court endorsed the concept of known (foreseeable) equivalents: "If, when the patent was granted, there were known substances, other than rubber or caoutchouc, gutta-percha, or gums, that could be vulcanized by the Goodyear process, and converted from a soft into a hard, elastic material, any use of that material for a dental plate might have been an equivalent for the Cummings material, and an infringement of his patent." 102 U.S. at 227. n11
 

The proposed reforms at the PTO, and correlative changes in fees, have engendered some discussion. [See, for example, article by Scott J. Fields, available law.com] William Z. Ripley's 1927 Main Street and Wall Street is staging a resurgence; within, one can find that high valuations for intellectual property are not a new phenomenon. A paper by workers at Lawrence Berkeley Labs in Physical Review Letters in 1999 was retracted because of questions about the data. n12 The July 12 issue of PTCJ [Vol. 64, No. 1580] contained some discussion of unpublished or nonprecedential opinions. It quoted Kenneth J. Schmier about the issue of fostering indifference about injustices or error. Returning to my previously discussed case involving, among other things, unanswered requests for admissions, n13 I note that although neither answered nor objected to, the requests were not deemed admitted, even though such admission would have been dispositive as to a summary judgment motion; there was no discussion of Rule 36 or of the existence of unanswered requests in the unpublished opinion. Separately, a holding within the unpublished opinion was directly in conflict with controlling precedent, which precedent simply was not mentioned in the unpublished opinion. A different aspect was a quote in one unpublished opinion from a case on an issue involving the interplay of Rule 16 (scheduling orders) and Rule 15 (amendments) which took the form: " . . . and the Third Circuit having also held that FED.R.CIV.P.16 "scheduling orders are at the heart of case management [and cannot] be flouted" (Turner v. Schering-Plough Corp., 901 F.2d 335, 341 n.4 (3d Cir. 1990)(quoting Koplove v. Ford Motor Co., 795 F.2d 15, 18 (3d Cir. 1986)) . . . " One can investigate the actual text in Koplove, as well as text in Reilly v. Taylor, 62 F.3d 86, 91 (CA3 1995) and Alvin v. Suzuki, 227 F.3d 107, 121-122 (CA3 2000) to assess the factual and legal accuracy of the quote. n14

n1 The opinions are those only of the author and should not be imputed to any employer, past, present or future. The author may be reached at ebert@email.com or ebert@lawyer.com. The author's article "Meet the New Festo; Same as the Old Festo?" is available at www.nyipla.org; the title is a play on words within the song by The Who, Won't Get Fooled Again. The author was interviewed by a certain newspaper about Festo; the purported quotes are disclaimed and the author did attempt a correction. The author reiterates that a number of major corporations, including IBM, Kodak, Ford, Applera, DuPont, Genentech, Applied Materials, Cisco, Micron Technology, and Oracle, preferred the certainty of the en banc decision (234 F.3d 558) to the prospect of litigation over equivalents. The quest for predictability was derailed by the Supreme Court. Of the issue of timing in Festo, the author notes the relevance of an opinion (authored by Justice Kennedy), Amoco Production v. Southern Ute Indian Tribe, 526 U.S. 865 (1999), wherein the relevant time was found to be an earlier time, even though at that instant, incomplete scientific understanding may have existed. Separately, the true issue in that case may not have been one of a difference of understanding, but rather one of definition (the coal formation in the ground (with methane) is not equal to as-mined coal on the surface (typically without methane), whether in 1908 or in 1999). The author has performed research on coal: e.g., "The interrelationship of graphite intercalation compounds, ions of aromatic hydrocarbons, and coal conversion," Mater. Res. Bull., 1980, 15, 251 and ACS Symposium Series Number 169, Ch. 5, and has studied "guest" molecules in coal: ACS Advances in Chemistry Series Number 192, pp. 23-35.

n2 FESTO CORPORATION v. SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD., ET AL. 122 S. Ct. 1831; 152 L. Ed. 2d 944; 2002 U.S. LEXIS 3818, 62 USPQ2d 1705 (2002). Note that the Supreme Court decision was handed down on the 22nd anniversary of the filing of the Stoll patent, May 28, 1980. A number of law firms have posted text about the decision. David Gross of Faegre noted that the court provided no guidance on how to conduct the "tangential" inquiry. McDermott Will noted that as to unforeseeability, the alleged equivalent would need to be either unknown or not recognized as equivalent at the time of prosecution.

n3 As a minor note, shepardizing the May 28 Festo decision (at least to July 12) does not yield Insituform because there is an erroneous cite at 122 S. Ct. 2322; 153 L. Ed. 2d 151 to 122 S. Ct. 642 (2002) instead of to 122 S. Ct. 1831 (2002).

n4 See 153 L. Ed. 2d 151-152

n5 2002 U.S. Dist. LEXIS 11952

n6 Johnson & Johnston Associates, Inc. v. R. E. Service Co., Inc., 285 F.3d 1046 (CAFC 2002). See also, L. B. Ebert, "Equivalents at the Crossroads," Intellectual Property Today (IPT), p. 27 (March 2001). Note that Tate Access Floors, 61 USPQ2d 1647 (CAFC 2002) refers to the mention of the reverse doctrine of equivalents in the Graver Tank majority opinion as an "anachronistic" infringement exception.
 

n7 Of the issue of "when" the foreseeability test is imposed, note separately the text: There is no reason why a narrowing amendment should be deemed to relinquish equivalents unforeseeable at the time of the amendment and beyond a fair interpretation of what was surrendered. 122 S. Ct. at 1841. Note the discrepancy between the text at page 1841 (time of amendment) and page 1842 (time of application).

n8 The IEEE amicus brief was concerned with the foreseeability of the limiting effect of the amended language, and is more concerned with estoppel. The Sage case might be viewed more as the foreseeability of the proposed equivalents themselves. Separately, of later statements by IEEE about its brief, see Joseph F. Breimayer, "Article on Festo case confuses legal concepts, ignores facts," Electronic Engineering Times, p. 52 (July 8, 2002).
 

n9 L. B. Ebert, "Pioneering, Innovation and Festo Last Looks," Int. Prop. Today, pp. 12-14 (June 2002); "Supreme Court Festo: Equivalents Still Limited," IPT, pp. 10-13 (July 2002).

n10 Although the Goodyear Vulcanite case involves estoppel, it is estoppel to limit literal claim scope, as in Southwall Technologies v. Cardinal, 54 F.3d 1570, 1578 (CAFC 1995), rather than to limit equivalents. See L. B. Ebert, Festo: Carving out the Direction of 21st Century Patent Law," The Patent Journal, pp. 8-12 (Jan. 2002).

n11 By the inclusion of the word "known," one might infer that the Vulcanite court was excluding materials that were -- unknown --. If so, then the Vulcanite court acknowledged the same law as Gould v. Rees, which said " . . . if the ingredient substituted for the one withdrawn was a newly discovered one, or even an old one performing some new function, and was not known at the date of the plaintiff's patent, as a proper substitute for the ingredient withdrawn, it would avoid the infringement, as a new combination or a newly-discovered ingredient substituted for the one omitted, or even an old one performing a new function not known at the date of the plaintiff's patent as a proper substitute for the one withdrawn, would not be an equivalent for the ingredient omitted within the meaning of the patent law."
 

n12 George Johnson, "Lab reports misconduct in claim of new element," NY Times (July 14, 2002). Ron Harris, "Lab: Scientist Fabricated Research," AP (July 15, 2002). Bob Park's July 12 WN noted an expansion of the misconduct inquiry at Bell Labs into the superconductivity work (see also endnote 12 of IPT, 44-46 (Oct. 2001) and endnote 1 of IPT, 10-13 (July 2002) discussing the superconductivity work on the oxidized buckyballs). Park has been a frequent critic of the science in certain patents, such as those of Blacklight. On July 12, Park wrote: "This is a trip into unfamiliar territory for physicists, who have seen few cases of outright fabrication." He also noted more prevalent forms of misconduct as "automatic co-authorship of someone who has made no substantive contribution." Patent law is more effective than editors of scientific journals in discouraging gratuitous authorship. (See IPT, 12-14 (June 2002) on the transistor saga).

n13 IPT, pp. 12-14 (June 2002).

n14 The Rule 15 amendment in the case was filed three months after the deadline in the Rule 16 order. A request to extend discovery had been denied, and outstanding discovery requests remained at the close of discovery, including interrogatories to which no response was made.