Northern District of California Local Rules for Patent Cases
Roderick M. Thompson of Pillsbury Winthrop Shaw Pittman LLP
The United States District Court for the Northern District of California adopted new Local Rules 16-6 through 16-.
Avoiding a Jury Trial on the Issue of Infringement Under the Doctrine of Equivalents
Alex Chartove of Akin Gump Strauss Hauer & Feld LLP
This article provides a detailed discussion of the Sage Products case and the CAFC's decision. It also describes some of the issues which companies should consider when evaluating the potential risks of a jury trial on the issue of infringement under the doctrine of equivalents.
Supreme Court Upholds Doctrine of Equivalents
G. Paul Edgell of Pillsbury Winthrop Shaw Pittman LLP
The Supreme Court of the United States, in the eagerly awaited decision in Warner-Jenkinson Co., Inc. v. Hilton Da.
The Supreme Court's Decision in Festo Corp.: An Important New Development Regarding the Scope of Patent Protection
Scott W. Burt and Gregory A. Castanias of Jones Day
On May 28, a unanimous Supreme Court addressed the conditions under which prosecution-history estoppel bars a patent owner from using the doctrine of equivalents in Festo. Unquestionably, this decision is important for future patent litigation, as well as for patent prosecution before the U.S. Patent and Trademark Office (PTO), and should be studied carefully by any business having a significant intellectual-property component.
An Overview of Section 337 Actions in the ITC
Bryan Farney of Brobeck Phleger & Harrison LLP
This paper includes a brief overview of the procedures involved in instituting and prosecuting an ITC investigation, followed by a discussion of the relative merits of bringing a Section 337 action in the ITC instead of the federal district courts. A review of recent case law developments related to ITC practice is then presented. Finally, key changes wrought by the 1994 Amendments to Section 337 are revisited.
Supreme Court to Speak to Scope of Patent Claims
Dykema Gossett PLLC
Does a patent mean more than it says, or more accurately, does the protection afforded by a patent exceed the liter.
The Doctrine of Equivalents Lives On in Supreme Court Patent Decision
C. Fred Rosenbaum of Woods Rogers PLC
On March 3, 1997, the United States Supreme Court rendered its anxiously awaited patent law opinion in Warner-Jenki.
The Imperfection of Language: Festo Sets a Foreseeability Bar for Prosecution History Estoppel
David B. Walker* of The Federalist Society
In its recent decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd, the United States Supreme Court established a new balance between two significant and competing doctrines in patent law, the doctrine of equivalents and prosecution history estoppel.
The Preclusive Effect of the Connecticut Product Liability Act on Connecticut Unfair Trade Practice Act Claims
James H. Rotondo of Day Pitney LLP
Connecticut created a unitary form of product liability action by statute in 1979. A central principle of Connecti.
Doctrine of Equivalents Revitalized by Federal Circuit En Banc
G. Paul Edgell of Pillsbury Winthrop Shaw Pittman LLP
The Court of Appeals for the Federal Circuit announced in Hilton Davis Chemical Co. v. Warner-Jenkinson Co., Inc.,.
Federal Circuit Applies Rebuttable Presumption of Surrender Established by Supreme Court in Festo
Goodwin Procter LLP
The opinion of the United States Court of Appeals for the Federal Circuit in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 95-1066 (Fed. Cir. Sept. 26, 2003), is the most recent in a case that has spent the better part of a decade in the courts. It comes almost a year and a half after the United States Supreme Court reversed an earlier en banc Federal Circuit decision holding that no range of equivalents for an amended claim limitation is available under the doctrine of equivalents when prosecution history estoppel applies.
Patent Foreseeability in the Wake of Festo
Michael P. Sandonato and Ralph A. Dengler of Fitzpatrick, Cella, Harper & Scinto
On remand from the Supreme Court, the Court of Appeals for the Federal Circuit recently revisited the issue as to whether prosecution history estoppel barred a patent owner from relying on the doctrine of equivalents in a patent infringement suit. In this highly anticipated decision, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., the court concluded that the doctrine of equivalents might still be available to the patentee and remanded the case to the district court to make the determination. In reaching this conclusion, the Federal Circuit addressed whether any of three mechanisms for rebutting the presumption that prosecution history estoppel applies were available to the plaintiff and determined that one of them ÃÂ unforeseeability ÃÂ might be.
Festo Revisited
Townsend and Townsend and Crew LLP
In a continuing drama concerning the rights of inventors to protect their creations by employing the doctrine of equivalents, the Federal Circuit applied the flexible standard mandated by the U. S. Supreme Court last year. This is our first opportunity to see the application of the Supreme Court's newly created rebuttal criteria governing how patent holders can use the doctrine of equivalents as a method of finding patent infringement.
The U.S. Supreme Court Vacates Festo Reaffirming the Importance of Equitable Patent Protection
Ryan L. Marshall of Parsons Behle & Latimer
Contrary to rampant speculation in the legal community that the doctrine of equivalents for patent claims was dead or nearly so, the U.S. Supreme Court unanimously reasserted the legal vitality of equitable patent rights in the case of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.. The Court vacated the judgment of the Court of Appeals for the Federal Circuit on May 28, 2002.