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[Aaron]

New en banc decision by the Feds re: Festo issues.  What do you think?

[Isaac]

The result is what I would have expected.  What it pretty much says is that drafting tricks to avoid Festo problems during prosecution probably will not work.

To me that seems infinitely logical.  That's completely separate from the question of whether Festo itself is a good idea.

[Isaac]

The dissenting judge in the case complains that the ruling will only encourage the use of more expensive and error prone independent claims in place of dependent claims.  This theory assumes that the cancellation of an independent claim could not have the same result as simply cancelling an independent claim and promoting a dependent claim.

I don't see anything in the logic of the main opinion that would suggest that if the original dependent claim had been written in independent format that cancelling a 2nd independent claim would not produce the same result.
My question may be unclear, so I'll present an example.

claim sequence 1
1. An independent claim
2. A dependent claim.

claim sequence 2.
1. An independent claim
2. An independent claim

Assuming that both sets of claims cover the same subject matter, why should the Festo result be different if in case one, the independent claim is cancelled during prosecution and the dependent claim is rewritten in independent format, and in situation two if Claim 1 is simply cancelled?

Newman's dissent assumes that the result should be different, but I think such a result would be silly.

[BillyBob]

The reason for the dissent is because there is a difference between an independent and then a dependent, and 2 independent claims.

The reasoning of the majority and its "support" by Festo was due to the fact that the Dependent Claims were AMENDED and the Independent claim was CANCELED.  Once the dependent claims were amended to allow them to be patented, then Festo took effect.  

However, if all the claims were written as independent claims, then the issued claims would never have been AMENDED, and thus Festo would never become an issue.

The majority ruling states that is the act of amending the claim (even though as the dissenting judge points out that the dependent claims were never actually amended) that triggers Festo.

I think this ruling will go to the Supremes because the reasoning of the court does not make sense in light of 112.

[JimIvey]

I have not yet read as much about this particular case as I'd like to, but I'd have to agree with the dissent at this point.

From what I understand, the amendment to the claim was not narrowing in any way.  If that's true, the Supreme Court said that there is no prosecution history estoppel.  Remember, the amendment must (i) narrow the claim and (ii) be made for a reason related to patentability.  I don't see where the Fed Circuit has any room to say otherwise, but apparently the Fed Circuit doesn't see it that way.  I want to go back over the majority opinion's rationalization on this point, so my post here is a bit premature.

Here's why I don't think the dependent claim was narrowed.  It was amended only to make the implicit limitations inherited from the parent claim explicit.  Here's an example:

Claim 1: A ball.
Claim 2: The ball of claim 1 wherein the ball is red.

Claim 2b: A ball wherein the ball is red.

What's the difference (in terms of what's covered) between Claims 2 and 2b?  Absolutely nothing.  So, would amending Claim 2 to be in the form of Claim 2b be a narrowing of Claim 2?  Nope.  Festo shouldn't apply.

I certainly hope the majority didn't engage in circular reasoning by saying that, by operation of Festo, all claim amendments affect the doctrine of equivalents and are therefore narrowing, making Festo applicable.

Like I've said before, the Fed Circuit hates the doctrine of equivalents and will do whatever it can to get rid of it.  We should all be drafting and prosecuting applications with this in mind.  Be perfect.  Be clairvoyant.

Regards.

[eric stasik]

Here is a link to the decision

http://www.fedcir.gov/opinions/02-1005.doc

“Sundstrand further pointed out that all of the asserted claims were originally dependent on other claims in Honeywell’s patent applications (application claims 16 and 32 of the ’893 patent and application claims 48 and 49 of the ’194 patent) that did not contain the inlet guide vane limitation.  These claims were rejected as obvious in light of the prior art during the prosecution of Honeywell’s patents.  Application claims 17 and 35 of the ’893 patent and application claim 51 of the ’194 patent, which further included the inlet guide vane limitation, were not allowed only because they were dependent on the rejected independent application claims.

The examiner indicated that application claims 17, 35 and 51 would be allowable if rewritten into independent form.  In response, the rejected independent claims were cancelled and application claims 17, 35 and 51 were amended to expressly incorporate the limitations of the rejected independent claims.  The amended application claims issued respectively as claims 8 and 19 of the ’893 patent and claim 4 of the ’194 patent, which are the only independent claims found to be infringed by the jury and at issue in this dispute.  Claims 10, 11 and 23 of the ’893 patent, also found to be infringed, are dependent on claims 8 and 19 and thus include the inlet guide vane limitation.  

Before the district court, Sundstrand urged that claims 8 and 19 of the ’893 patent and claim 4 of the ’194 patent were narrowed by amendment and that prosecution history estoppel barred all equivalents for the inlet guide vane limitation under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000) (en banc).”

Notice that the claim which issued wasn’t narrowed per se – a claim of the exact same scope WAS included in the original application – but it seems that the Federal Circuit is saying that the simple step of re-drafting the claim in independent form is technically making a narrowing amendment to the independent claim (which I guess it is) and this is enough to invoke Festo.

"At the outset, this case requires us to determine first whether a narrowing amendment to a patent claim that adds an additional claim limitation creates a presumptive surrender of equivalents under the Supreme Court’s decisions in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), and Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) (“Festo”), and under our recent decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003) (en banc) (“Festo II”), following the Supreme Court’s remand. We hold that it does."

In other words, claim drafting just got harder and US patents have suffered another judicial reduction in their market value.

Regards,

Eric Stasik

[JimIvey]

Notice that the claim which issued wasn’t narrowed per se – a claim of the exact same scope WAS included in the original application – but it seems that the Federal Circuit is saying that the simple step of re-drafting the claim in independent form is technically making a narrowing amendment to the independent claim (which I guess it is) and this is enough to invoke Festo.

I agree with this, but I think the decision is wrong.  In essence, it's saying that any narrowing of the coverage of the claims *collectively* bars application of the doctrine of equivalents to any of the claims.  This is not was the Supreme Court said.  

Yes, the applicant could have amended the independent claim to be the same scope of the allowable dependent claim (and I've done that pre-Festo), but the applicant chose not to.  The bottom line is this:  the claims at issue were in the original application and the effective language of the claim was not changed at all during prosecution.  This is bad law.

The bottom line is this:  the doctrine of equivalents exists.  I'm not saying it *should* exist, but that it *does* exist.  And it will continue to exist until the Supremes or Congress says otherwise.  Normally, I like what the Fed Cir does with patent law, but on this issue the Fed Cir needs a severe spanking from the Supremes, in my humble opinion.  Or, as it just occurred to me, I wonder if the Fed Cir is subtly lobbying for banishment of the DoE by the Supreme Court and are simply sending it up over and over in hopes of tiring the SCt.  Interesting....

I don't think you can get rid of the DoE entirely until you get rid of S112p6 -- "means plus function" claiming which statutorily mandates equivalents analysis.

Regards.

[eric stasik]

Mr. Ivey,

You wrote:

"The bottom line is this:  the doctrine of equivalents exists."

Not if you narrow a claim by amendment that adds an additional claim limitation. This is what the Federal Circuit just held.
I'm not so sure it's bad law. Honeywell amended a independent claim by adding an additional claim ement which narrowed the scope of the claim for a reason related to patentability... the same mechanism that triggered the Festo decision. What the Federal Circuit seems to be saying is that it is not necessary to dig into the reasons why the amendment was made - once you make the amendment you surrender DoE.

It doesn't seem very equitable, but at least it is predictable.

It's not necessarily bad law. It creates a disincentive for the applicant to present overly broad claims in the application which improves the focus of the search and subsequent prosecution.

Overly broad patents have also caused a great deal of concern and if Festo is a reaction/correction to this then maybe it is even good law.

Your point about section 112 paragraph 6 is very interesting for it is apparent that the scope of Festo is at the point where it may create tension with the statute. What happens when one narrows a means plus function claim?

Cheers,

Eric Stasik

P.S. (I have not had a chance to dig out my copy of Landis, but as soon as I've confirmed that I've got it here in Stockholm, I'll let you know.)

[JimIvey]

Dear Mr. Stasik,

The problem I have with the whole Festo line is its arbitrariness.  You can no longer determine whether the doctrine of equivalents (DoE) applies to a claim by simply looking at it.  

The whole process of prosecution of an application is one of negotiation.  Why would you have a rule that your rights depend on the manner in which negotiation is conducted?  Imagine that your vehicle registration fee varied depending on whether you wavered from your original offer to the seller.  If you stick to your first offer, you vehicle license fee is less (e.g., lower percentage of the purchase price).  If the seller gets you to agree to pay more, you pay a higher fee.  Why?  It makes no sense unless you simply don't want people to be flexible.

You mention that people shouldn't file for overly broad claims.  What's overly broad?  The declaration the inventor signs states, under penalty of perjury, that he/she believes that they are entitled to the subject matter claimed.  So, in theory, no one claims more than they think they can at filing.  I certainly have a good faith belief that I've claimed novel and non-obvious subject matter in every application I file.  Should I just arbitrarily drop potentially allowable subject matter to avoid claiming "overly broadly?"  I don't know how to do that.  It's like the king in that movie about Mozart complaining that a piece had "too many notes."  It's just too vague a criticism to take seriously.

One point you mentioned is one that I'll have to look for when I have time to go over the decision in more detail.  You said that the independent claim was amended prior to the incorporation of the independent claim into the previously dependent claim.  If this is true, then the amendment to the originally independent claim should be imputed into all related dependent claims.  If that's what happened, then the majority's decision makes sense.  I've been putting out fires for over a week now, so I hope to review the decision in great detail soon.

The reason I say the Fed Cir's decision is bad law is that the logic is poor at best.  I don't have any strong opinions one way or the other about the DoE.  It has its good points and it has its bad points.  However, as long as it exists, it should be applied with some rational basis.  I see no rational basis for Festo.  What I see in Festo and its progeny is that the DoE is bad and the Fed Cir will not apply it whenever the court has an opportunity not to.  The problem is that the DoE comes from the SCt and Congress (in the form of S112p6) -- and the Fed Cir can't really touch those.  So, in the meantime, what we're left with is this convoluted, nested if-then-else construct for applicaiton of the DoE.  I see that as problematic.  

For what it's worth, the Fed Cir is equally adamant that claim language is not overly influenced by spec language (limitations described in the specification are not to be imputed to the claims).  It seems consistent, resisting both deviation from the claim language for purposes of broadening coverage (DoE) and deviation from the claim language for purposes of narrowing coverage (imputation of limitations from the specification).  If the Fed Cir were to eventually succeed in both fronts, the costs of patent litigation in the US would probably be significantly less than it currently is and it would probably be fair in most cases.  

Regards.