U.S. Supreme Court Decides Landmark Patent Law Case

Syosset, New York

The Supreme Court of the United States issued an opinion yesterday regarding one of the most significant legal doctrines protecting inventors against patent infringers, the Doctrine of Equivalents.

The case, Festo Corporation (“Festo”) v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., a/k/a SMC Corporation, and SMC Pneumatics, Inc. (collectively “SMC”), is noted to be the most significant case in patent law history according to legal communities worldwide.

Yesterday, the high court unanimously decided to vacate and remand the ruling rendered by United States Court of Appeals for the Federal Circuit (CAFC). The Supreme Court overturned the CAFC’s decision (November 29, 2000) that bars a patent holder from using the Doctrine of Equivalents in infringement cases if the patent owner made amendments to the claims in the patent application process, substantially limiting the Doctrine of Equivalents. Even though Festo changed its patent claims in the course of prosecution, yesterday’s high court ruling gives Festo the opportunity to enforce its patent against SMC’s copy of the product under the Doctrine of Equivalents. The Supreme Court remanded (sent) this case back to the CAFC for further action consistent with the high court’s opinion.

The law firm of Hoffmann & Baron, LLP has represented Festo since the case commenced in 1988. Robert H. Bork, former Solicitor General, argued the case for Festo (with Charles R. Hoffmann, senior partner of Hoffmann & Baron, LLP, in support) before the high court on January 8, 2002.

Justice Anthony M. Kennedy, writing for the Supreme Court, stated:

The Court of Appeals ignored the guidance of Warner-Jenkinson,  which instructed that courts must be cautious before adopting changes that disrupt the settled expectation of the inventing community. See 520 U.S., at 28. In that case we made it clear that the doctrine of equivalents and the rule of prosecution history estoppel are settled law. The responsibility for changing them rests with Congress. Ibid.

About Hoffmann & Baron

Hoffmann & Baron, LLP is a leading full-service intellectual property law firm which specializes in all aspects of patent, trademark, unfair competition, copyright, and international trade law. The firm’s practice includes prosecution, counseling, licensing, and litigation of patent, trademark, and copyright-related issues worldwide. Based in Syosset, New York with offices in Parsippany, New Jersey, Hoffmann & Baron, LLP provides national and international clients with a distinguished level of service due to the strong legal experience, technical and academic credentials of the partners and associates. The firm serves clients in a wide range of fields, including chemical, electrical, mechanical, biotechnology, pharmaceutical, medical, petroleum processing, electro-mechanical, consumer products, waste disposal and treatment, nuclear, computer, superconductivity, optics, lasers, and e-commerce.

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