The dispute stems from a decision that essentially reduces the scope of many future and existing patents. The case has attracted the interest of tech heavyweights including Hewlett-Packard and IBM, which have filed briefs in support of the decision. And Festo, which makes robotics and automation systems and is one of the major players in the suit, has hired former special prosecutor Kenneth Starr to help it appeal the case to the U.S. Supreme Court.
If the decision stands, some legal experts predict it will significantly weaken patents by forcing extremely literal interpretations of protected claims. Although backers of the decision say that could help head off litigation down the road, critics say it could throw thousands of already issued patents into doubt.
"The effect upon previously issued but unexpired patents may be dramatic," Judge Paul Michel of the U.S. Court of Appeals for the Federal Circuit wrote in a partial dissent to the Nov. 29, 2000, ruling. "While I cannot predict all the consequences that may flow from (the) decision, I think it is safe to say that the majority's rule will reduce the effective scope, and thus, the value of most of the 1,200,000 patents that are unexpired and enforceable."
The decision in Festo v. Shoketsu Kinzoku Koygo Kabushiki trims a legal principle that once let patent holders assert rights broader than the span of the original claim. Known as the "doctrine of equivalents," the principle let inventors claim rights to ideas beyond the scope of their patents because, under the theory, any product that performed an equivalent function of the patented product could be found to violate the patent. As a result of the decision, however, any changes or additions to the initial filing would not be protected under the doctrine of equivalents.
For example, if company specified in its amended patent claim that it has the right to a certain product that uses a copper wire, a competitor who creates a similar product performing an equivalent function could insert an aluminum wire in place of the copper wire and not infringe the patent.
