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Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

Supreme Court of the United States

January 8, 2002, Argued ; May 28, 2002, Decided

No. 00-1543


 [1708]  [**1835]  [***952]  [*726]     JUSTICE KENNEDY delivered the opinion of the Court.

 This case requires us to address once again the relation between two patent law concepts, the doctrine of equivalents and the rule of prosecution history estoppel. The [****10]  Court considered the same concepts in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 137 L. Ed. 2d 146, 117 S. Ct. 1040 (1997), and reaffirmed  [*727]  that ] a patent protects its holder against efforts of copyists to evade liability for infringement by making only insubstantial changes to a patented invention. At the same time, we appreciated that by extending protection beyond the literal terms in a patent the doctrine of equivalents can create substantial uncertainty about where the patent monopoly ends. Id., at 29.If the range of equivalents is unclear, competitors may be unable to determine what is a permitted alternative to a patented invention and what is an infringing equivalent.

 To reduce the uncertainty, Warner-Jenkinson acknowledged that ] competitors may rely on the prosecution history, the public record of the patent proceedings. In some cases the Patent and Trademark Office (PTO) may have rejected an earlier version of the patent application on the ground that a claim does [****11]  not meet a statutory requirement for patentability. 35 U.S.C. § 132 (1994 ed., Supp. V). When the patentee responds to the rejection by narrowing his claims, this prosecution history estops him from later arguing that the subject matter covered by the original, broader claim was nothing more than an equivalent. Competitors may rely on the estoppel to ensure that their own devices will not be found to infringe by equivalence.

In the decision now under review the Court of Appeals for the Federal Circuit held that by narrowing a claim to obtain a patent, the patentee surrenders all equivalents to the amended claim element. Petitioner asserts this holding departs from past precedent in two respects. First, it applies estoppel to every amendment made to satisfy the requirements of the Patent Act and not just to amendments made to avoid pre-emption  [***953]  by an earlier invention, i.e., the prior art. Second, it holds that when estoppel arises, it bars suit against every equivalent to the amended claim element. The Court of Appeals acknowledged that this holding departed from its own cases, which applied a flexible bar when considering what claims of equivalence were [****12]  estopped by the  [*728]  prosecution history. Petitioner argues that by replacing the flexible bar with a complete bar the Court of Appeals cast doubt on many existing patents that were amended during the application process when the law, as it then stood, did not apply so rigorous a standard.

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


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, Remanded by Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 2003 U.S. App. LEXIS 19867 (Fed. Cir., 2003)


Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 2000 U.S. App. LEXIS 29979 (Fed. Cir., 2000)

Disposition: Vacated and remanded.


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Patent Law, Infringement Actions, Doctrine of Equivalents, Equivalence Limits, General Overview, Infringing Acts, Prosecution History Estoppel, Specifications, Description Requirement, Claim Broadening, US Patent & Trademark Office Proceedings, Examinations, Office Actions, Reissue Proceedings, Claims, Claim Language, Definiteness, Standards & Tests, Exclusive Rights, Fact & Law Issues, Abandonment & Amendment, Utility Patents, Product Patents, Manufactures, Invention Date & Priority, Nonobviousness, Elements & Tests, Prior Art, Jurisdiction & Review, Subject Matter Jurisdiction, Appeals, Anticipation & Novelty, Description in Prior Patents, Statutory Bars, Abandonment & Forfeiture Bar, Abandonment, Elements, Equivalence, Defenses, Inequitable Conduct