Patent Pending ... Pending ... Pending The Evolution of Equivalents: Festo Corp. v. Shoketsu Kinzoku Kabushiki Co.

Authors

• Karly Stoehr

Abstract

Information is rapidly becoming many firms' most valuable resource and the patents protecting inventions have become critical strategic assets. In May of 2002, the Supreme Court unanimously issued a ruling on the doctrine of equivalents that will likely trigger inconsistent results in future patent protection cases. Patent holders acquire a limited monopoly of twenty years to generate profits. Patent protection is critical because there is a strong need to provide firms with sufficient incentives to create and invest in new technologies. It is important, therefore, to provide clear guidelines for patent procedures so that inventors may rely on future protection. In the past, courts have struggled to provide unambiguous equivalents guidance.

The Court's most recent decision, Festo v. Shoketsu, reinvigorates the security provided by the doctrine of equivalents but leaves further definition to the lower courts. The Festo case investigated the broad concept of patent protection, while examining a narrower issue - is an amended patent claim a complete bar to the doctrine of equivalents under prosecution history estoppel?  The Court held in Festo that: (1) prosecution history estoppel may apply to any claim amendment made to satisfy the Patent Act's requirements; (2) claim amendment is not an absolute bar to a claim of infringement under the doctrine of equivalents; and (3) the patentee has the burden of proving that the amendment did not surrender the particular equivalent in question.

Recommended Citation

Karly Stoehr, Patent Pending ... Pending ... Pending The Evolution of Equivalents: Festo Corp. v. Shoketsu Kinzoku Kabushiki Co., 7 Computer L. Rev. & Tech. J. 321 (2003)