Originally Published MX November/December 2003
BUSINESS NEWS
Federal Circuit Revisits Festo |
| Hoffman |
With market share and millions of dollars potentially hanging in the balance, medtech executives are keeping a wary eye on strategies for defending their companies' IP portfolios. According to experts in the field, some companies may have received a helping hand from a decision issued recently by the U.S. Court of Appeals for the Federal Circuit.
The September ruling modifies slightly the Federal Circuit's infamous Festo decision, which restricts the use of an intellectual property protection in patent disputes.
Until 2000, patent holders could defend their IP through the use of the doctrine of equivalents, which offered protection beyond the literal language in the patent. But in deciding the case of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd., the Federal Circuit decreed that the doctrine of equivalents is severely limited if a firm amends a claim during the prosecution of its patent application.
Some relief came from the U.S. Supreme Court in 2002, when it outlined three exceptions that allow for use of the doctrine of equivalents. The latest Federal Circuit decision fleshes out those exceptions. Most prominently, it mandates that judges—not juries—must decide whether the doctrine of equivalents can be used. Patent holders, some experts say, can more easily sway juries than judges.
After the recent court decision, "the doctrine of equivalents has a little more life in it than it did, but it is still pretty weak," says Perry Hoffman, a patent attorney with Michael Best & Friedrich (Chicago). "It's rather difficult to identify technology that was not foreseeable at the time of amendment. But at least now there's a basis for arguing; previously it was foreclosed altogether. It is possible to prove equivalence, but the burden is on the inventor to show it factually."
What device companies must understand about the new Festo landscape, says Mark Barrish, practice group leader for medical devices at Townsend and Townsend and Crew (San Francisco), is that "ignorance is not bliss. Some used to say they didn't want to know what was out there. But now it is helpful to know the field."
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