The U.S. Supreme Court recently rendered a decision that has the nation's patent lawyers all excited.
The gist is that the Court reaffirmed that patents cover more than their actual words describe. Stated differently, inventions slightly different from, but equivalent to, the original invention as that is literally described in the "claims," those single sentence descriptions of the invention that appear at the end of a patent, may be covered by the patent after all. This makes fuzzier the boundaries around patent coverage, generally to the benefit of the patent holder, not those who compete with the patent.
Patent law, for all its importance to company success and
innovation, too often induces yawns in the industry and others in business. Not
good, I say, since most of those in business need at least a rudimentary
understanding of patents, in order to protect their inventions, and also to
avoid stepping on competitive toes.
Credit Supreme Court Justice Anthony Kennedy with a
well-explained decision in this recent case, Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co. Ltd., decided on May 28, 02, a case involving patents
covering magnetic rodless cylinders used for industrial applications. First,
Justice Kennedy reminds us that patents are all about rewarding innovation with
a temporary monopoly. The patent holder gives up the secrecy of his invention
you've got to thoroughly describe your invention in the patent, which is open to
the public-in exchange for the monopoly. Why are patents public? Precisely so
the progress in arts and sciences can continue as competitors work on changes
and improvements to what you did that work better but don't infringe the patent.
"The monopoly is a property right," says Justice
Kennedy, and as with any other right to property, clarity in describing what the
patent holder owns is key: "A patent holder should know what he owns, and
the public should know what he does not," says Justice Kennedy, so others
can make what he calls an "efficient investment in innovation."
Alas, describing inventions in words is a difficult proposition at best. (Read any patent application for excellent evidence of this.) Justice Kennedy says the "conversion of machine to words allows for unintended idea gaps that cannot be satisfactorily filled. Often the invention is novel, and words do not exist to describe it." The reason, says Justice Kennedy, is that "things are not made for the sake of words, but words for things."
Now enters a controversial result of this difficulty in
describing inventions in words: There will be later inventions that, while
different in some details from the patented invention, are
"equivalent" to the patented one. And, despite all the good reasons to
keep the coverage of patents limited to their literal language, interpreted
strictly, courts have long decided that it was acceptable to have patents also
cover these "equivalent" inventions. Why? Because if they didn't,
sneaky competitors could take your invention, tweak it slightly by changing a
minor detail about it, then claim their "new" invention wasn't covered
by your patent. The change would be so minor, that it wouldn't be fair for your
protection not to cover the new item as well.
Yes, Justice Kennedy acknowledges, this so-called
"doctrine of equivalents" has the effect of rendering "the scope
of patents less certain." As a result, competitors "may be deterred
from engaging in legitimate manufactures" outside the patent limits,
"or they may invest by mistake in competing products that the patent
secures." After all, the whole idea of patents is to contain descriptions
of the invention with fullness, clearness, exactness, preciseness and
particularity, the Supreme Court itself has noted since back in the 1850s. On
balance, though, the Supreme Court said, "Hey man," or words to that
effect, "yeah, precision in the patent description is key, but it's also
pretty important to keep sneaky, snaky types from making "unimportant and
insubstantial changes and substitutions in the patent, which, though adding
nothing, would be enough to take the copied matter outside the claim, and hence
outside the reach of the law. So we'd better declare that these
not-quite-identical inventions are also covered by the patent, provided they are
'equivalent' to the patented invention." That's why they call it the
"doctrine of equivalents." (Having trouble figuring out what exactly
would be considered "equivalent" and what wouldn't? Me too. Judges,
too. That's why we have lawsuits.)
The rest of the Festo case, only a lawyer could love. It deals with the decidedly more turgid issues relating to the nature of the changes in the claims the patent applicant made during the application process. The gist of which was, if he changed the description of his invention to deliberately exclude certain features, he can't very well argue that a competitor using those features now is infringing the patent. The Court of Appeals, which had heard this case before, had decided that a patent holder could never assert that a competitor was infringing the patent if the competitor's invention had different but equivalent features that the patent holder had originally claimed were part of the invention.
Yeah but, said the Supreme Court, sometimes the
competitor's equivalent features might not have been foreseeable to the patent
holder when he amended his claims, or the amendment itself might have nothing to
do with the competitor's equivalent product. Also, it's just too harsh to
completely bar patent holders from asserting a competitor is infringing the
patent by making a not-quite identical but darn close approximation of the
patented invention. So, said the Supreme Court, let the patent holder assert the
competitor's invention is equivalent and infringing. Sometimes he'll be right,
and sometimes he'll be wrong, but that's the way the system has worked before,
and there's no good reason to change now.
The patent application process is a tug-of-war, with the
applicant trying to gain broad coverage for his patent, and the examiners in the
U.S. Patent and Trademark Office often trying to narrow the patent. Applications
are more often than not submitted, rejected, then amended and resubmitted before
being granted. Well, this Supreme Court decision was greeted by the nation's
usually reticent patent attorneys with a hearty "Whew!" which for them
is like dancing naked on a table.
Most were relieved to see the familiar, and quite useful,
doctrine of equivalents resurrected by the Supreme Court. Says Chicago patent
attorney Jack Fassnacht, the appellate decision in Festo was "extremely
troubling," forcing patent writers to try to describe things perfectly the
first time and, at the same time, try to anticipate every possible equivalent
feature of an invention.
If they didn't, the old Festo case said, anything they remove from their patent claims was definitively outside the scope of their patent, regardless of how minor or trivial its differences are from the patented invention. Now, though, "The pressure to draft perfect claims to cover even unforeseeable equivalents is greatly lessened," Fassnacht says. "It makes doing my job a little easier. And the decision also makes things more fair for inventors."
Fassnacht notes that extra care in drafting is still a good idea, since the Supreme Court decision made clear that the patent holder bears the burden to prove that an amendment was not related to the point of equivalence between the two inventions. Patent lawyers and inventors can now operate under generally similar rules to those in place before the appellate decision in Festo. The advantage, overall, again lies with the patent holders.
By Eric Greenberg, Attorney-at-Law
Ungaretti & Harris