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Festo: The Tip of the Iceberg

Article By Bryan C. Diner, C. Gregory Gramenopoulos, and Anthony C. Tridico, Ph.D.

Introduction

The decision so many people in the patent community waited for finally arrived on 28 May 2002. The Supreme Court of the United States, in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002), vacated the judgment of the United States Court of Appeals for the Federal Circuit ("Federal Circuit") that adopted a "complete bar" rule for prosecution history estoppel and, by doing so, arguably breathed life back into an ailing doctrine of equivalents. Or did it? And does the doctrine of equivalents lie beyond salvation, despite the Supreme Court's decision?

True, the Supreme Court reversed the Federal Circuit's earlier ruling that completely barred the application of the doctrine of equivalents to a claim limitation narrowed during prosecution for reasons related to patentability. But it also affirmed the part of the Federal Circuit's decision holding that a narrowing amendment made for any reason of patentability (e.g., prior art, written description, enablement, clarity, etc.) could trigger an estoppel.

So a crucial question remains: If an estoppel arises, to what extent will it limit application of the doctrine of equivalents? The Supreme Court's decision answers this question to some extent. But it creates additional questions in the process and leaves much to the Federal Circuit to sort out later.

Despite the frenzy of attention given to the Supreme Court's decision, in reality, Festo is only the tip of the iceber...

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