{
  "id": "RL31156",
  "type": "CRS Report",
  "typeId": "REPORTS",
  "number": "RL31156",
  "active": false,
  "source": "EveryCRSReport.com",
  "versions": [
    {
      "source": "EveryCRSReport.com",
      "id": 100982,
      "date": "2002-07-25",
      "retrieved": "2016-05-24T20:06:38.155941",
      "title": "Patent Law: The Festo Case and the Doctrine of Equivalents",
      "summary": "On May 28, 2002, the U.S. Supreme Court handed down its unanimous decision in  Festo\nCorp. v.\nShoketsu Kinzoku Kogyo Kabushiki Co., Ltd. , 535 U.S. ___, 122 S. Ct. 1831, 152 L. Ed. 2d\n944\n[hereinafter  Festo ], reversing the most controversial of the holdings in the case by the\nU.S. Court of\nAppeals for the Federal Circuit (CAFC), vacating the decision, and remanding the case for further\nproceedings. The CAFC decision had been criticized as upsetting well-settled expectations and\nunderstandings concerning the operation of certain legal principles, namely, the doctrine of\nequivalents and prosecution history estoppel. The doctrine of equivalents provides that a product\nor process that does not literally infringe a patent can still be found to be infringing if the differences\nbetween the allegedly infringing product or process and the patented invention are minimal and\ninsubstantial, that is, if the allegedly infringing product or process is substantially equivalent to the\npatented invention. The doctrine of equivalents is limited by prosecution history estoppel. \nProsecution history estoppel provides that, as a patent applicant surrenders subject matter during\nprosecution to avoid rejection,  i.e. , amends claims to narrow them for reasons related\nto patentability,\nthe patentee also surrenders that subject matter for purposes of any infringement suit based on the\ndoctrine of equivalents. For example, an applicant applies to patent a plastic-top table with metal\nlegs. The examiner rejects the claim for metal legs because prior art includes a plastic-top table with\nrigid metal legs, so the applicant narrows the claim to distinguish it from prior art by amending it to\ncover a plastic-top table with collapsible metal legs folding into two parts; the patent is granted. The\npatentee cannot now claim that a plastic-top table with rigid metal legs is equivalent and should be\nfound infringing, because the patentee surrendered rigid metal legs in the narrowing amendment. \nIn the past the CAFC had applied a \"flexible bar\" rule which meant that, out of a range of possible\nequivalents,  e.g. , a plastic-topped metal-legged table that folds differently from the\npatented table,\nprosecution history estoppel did not necessarily bar a finding of infringement under the doctrine of\nequivalents for the entire range. In  Festo , the CAFC established a new \"complete bar\"\nrule which\nmeant prosecution history estoppel would completely bar the application of the doctrine of\nequivalents.\n  The Supreme Court reversed this holding, reinstating and affirming the \"flexible bar\" rule as\nthe appropriate rule and the one more consistent with the spirit of the doctrine of equivalents. At the\nsame time, the Court affirmed the holding of the CAFC that prosecution history estoppel applies to\nan amendment which narrowed claims in order to satisfy any patent requirement, rejecting the\npetitioner's argument that such estoppel only applies to an amendment which narrowed claims to\navoid prior art. The Court remanded the case for further proceedings to decide whether the\namendments made by the Festo Corporation surrendered the particular equivalents at issue in the\ncase under the \"flexible bar\" rule. It noted that the concerns of those who desired a clearer, \"bright\nline\" rule with regard to estoppel and equivalents would be best directed to Congress which could\nalter the doctrine legislatively. In the wake of its  Festo  decision, on June 3, 2002, the\nSupreme Court\ngranted certiorari in nine patent cases, then vacated prior rulings in those cases and remanded them\nfor further proceedings taking into consideration the rules announced in  Festo .",
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      "typeId": "REPORTS",
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      "topics": []
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  ],
  "topics": [
    "American Law"
  ]
}