Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

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Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

Argued January 8, 2002
Decided May 28, 2002

Full case name:	Festo Corporation, Petitioner v. Shoketsu Kinzoku Kogyo Kabushiki Company, Ltd., et al.

Citations:	535 U.S. 722; 122 S. Ct. 1831; 152 L. Ed. 2d 944; 2002 U.S. LEXIS 3818; 70 U.S.L.W. 4458; 62 U.S.P.Q.2D (BNA) 1705; 2002 Cal. Daily Op. Service 4539; 2002 Daily Journal DAR 5803; 15 Fla. L. Weekly Fed. S 320

Prior history:	On writ of certiorari to the United States Court of Appeals for the Federal Circuit. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 2000 U.S. App. LEXIS 29979 (Fed. Cir., 2000)

Subsequent history:	On remand at Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 304 F.3d 1289, 2002 U.S. App. LEXIS 19734 (Fed. Cir., 2002). On remand at Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 2003 U.S. App. LEXIS 19867 (Fed. Cir., 2003)

Holding

Court membership

Chief Justice: William Rehnquist
Associate Justices: John Paul Stevens, Sandra Day O'Connor, Antonin Scalia, Anthony Kennedy, David Souter, Clarence Thomas, Ruth Bader Ginsburg, Stephen Breyer

Case opinions

Majority by: Kennedy
Joined by: unanimous

Laws applied

U.S. Const.

Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002)^[1], was a United States Supreme Court decision in the area of patent law that examined the relationship between the doctrine of equivalents (which holds that a patent can be infringed by something that is not literally falling within the scope of the claims because a somewhat insubstantial feature or element has been substituted) and the doctrine of prosecution history estoppel (which holds that a party who makes a change to a patent application to accommodate the requirements of patent law cannot claim indirect infringement of an element that was narrowed by that change).

1 Background
2 Case history
3 See also
4 External links

[edit] Background

Festo Corporation (petitioner) owned two patents for an industrial device. An initial patent application was rejected by the patent examiner due to deficiencies in the description of device in the first patent, as a result of which the applications were amended to add two limitations: that its outer sleeve would be made of a magnetizable material (first patent) and that the device would contain a pair of one-way sealing rings (both patents). After Festo began selling its device, Shoketsu Kinzoku Kogyo Kabushiki Co. (SMC, respondents) entered the market with a similar device that used one two-way sealing ring and a nonmagnetizable sleeve. Festo filed suit, claiming that SMC's device was sufficiently similar that it infringed Festo's patents under the doctrine of equivalents.

[edit] Case history

The United States Court of Appeals for the Federal Circuit had ruled that any amendment to a patent application that narrowed a patent claim to comply with the Patent Act created an absolute bar to equivalents for the particular claim limitation that was narrowed by the amendment. In other words, the patentee would not be able to contend that a product or process infringed the amended patent claim if the narrowed claim did not literally read on the infringing product or process.

For example, suppose that a patent applicant originally presents a claim to a particular device in her application. Suppose that the claim recites "a fastener" that connects two particular components of the device. If the patent applicant later amends her claim to replace the recitation "a fastener" to "a screw" (thereby narrowing the limitation) in order to comply with the Patent Act, then she cannot afterward contend that someone else's product infringes the claim if it does not use a screw to connect the two particular components. She would not be able to establish infringement even if the accused machine employed an equivalent to a screw, e.g., a nail or a nut-and-bolt.

The Supreme Court reversed, holding that such amendments do not create an absolute bar, but instead must be examined in light of the reason for the change. If the change was made to clarify a translation, for example, the inventor should suffer no reduction in rights. But if the change was made to keep the patent from overlapping with another patent, then the patent applicant will be presumed to have given up the right to complain about anything broader than the patent claim itself.

In particular, the Court held that patentee's decision to narrow her claims through amendment in order to comply with the Patent Act creates a presumption that she surrendered the territory between the original claim and the amended claim, i.e., a presumption that she surrendered all equivalents for the particular claim limitation that she narrowed by the amendment. The Court acknowledged, however, that there are some cases where the amendment cannot reasonably be viewed as surrendering a particular equivalent. "The equivalent may have been unforeseeable at the time of the application; the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; or there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. In those cases the patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence."