Charles P. Baker
Section Chair, 2001-2002

Several recent developments are providing interesting work for the Section and its committees.

U.S. Patent and Trademark Office "21st Century Strategic Plan". In response to demands from Congress that the USPTO examine itself from top to bottom, the USPTO has announced a "21st Century Strategic Plan", and related fee legislation, with the objectives of improving quality, reducing pendency and implementing electronic processing systems. While many parts of the plan remain to be announced, we have already heard about possible out-sourcing of prior art searches, establishing a separate fee for examination with discretion in the Director of the Office to adjust the fee in different circumstances, use of "paralegals" within the Office, deferred examination, and many other possibilities. If you would like to help the Section formulate positions and comments on the 21st Century Strategic Plan (and at the same time educate yourself about the Plan), you will want to join the Section’s Patent Legislation Committee, PTO Affairs-Patents Committee, Federal Trademark Legislation Committee, or PTO Affairs-Trademarks Committee. To join, go to the Section’s Website at http://www.abanet.org/intelprop/committee_registration.html.

Federal Circuit Jurisdiction. The Supreme Court’s decision in Holmes Group, Inc. v. Vornado Air Circ. Systems, Inc. (June 3, 2002), changed what many had expected was the law about counterclaims based on the patent law, and whether a case is appealed to the Court of Appeals of the Federal Circuit or to a regional Court of Appeals. Some lawyers are predicting more forum shopping and decisions on patent matters made by regional circuit courts of appeals. These matters fall within the scope of the Section’s Federal Trial Practice and Procedure Committee.

Copyright Term Extension Act. The Section’s Copyright Legislation Committee and our Authors Committee are watching for the Supreme Court’s decision in Eldred v. Ashcroft, which has challenged the Copyright Term Extension Act. The Section testified in support of that law before its enactment. The Court's decision may create legislative work for those committees.

International Patent Harmonization. The WIPO Standing Committee on the Law of Patents (SCP) is holding a series of meetings to consider substantive patent law harmonization. Our committees are studying additional or alternative resolutions and policy statements, with the objective of reaching a consensus that will guide our representatives at SCP meetings and thereby help shape the eventual treaty language. People active in our International Patent Treaties and Laws Committee will contribute to that.

Doctrine of Equivalents. The Supreme Court’s May 28, 2002 decision in Festo Corporation v. SMC Corp. reaffirmed the principles of the doctrine of equivalents, but its discussion of the foreseeability of those equivalents will be considered and studied by a number of Section committees, including Patent System Policy Planning Committee.

Trademark Dilution Issues in the Supreme Court. In Moseley v. V. Secrets Catalogue, Inc., the Supreme Court will resolve a split between the circuits regarding proofs necessary to come within the Federal Trademark Dilution Act. Our Amicus Committee and the Section’s trademark experts are working on an amicus brief for submission on behalf of the ABA.

Antitrust/Intellectual Property Law Interface. FTC/DOJ hearings, which began in January 2002, and will continue into July, represent only one example of the variety of issues considered by our Antitrust Matters Committee. The Section has also joined with the Antitrust Section in submitting comments to the EU on proposed antitrust regulations and in preparing a CLE program on the IP/Antitrust interface.

Again, anyone who participates in these activities will not only educate him/herself but also help shape Section policies. A form to join committees may be found at http://www.abanet.org/intelprop/committee_registration.html.

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Section to Testify on IP/Antitrust Law Interface

By Hayden W. Gregory
IP Legislative Consultant

The Section will be testifying at a July 11 hearing conducted jointly by the Federal Trade Commission and the Antitrust Section of the Department of Justice. The hearings, which are being held to examine the interface between intellectual property law and antitrust law, began in February. Nineteen hearings have been held to date.

In a November 2001 speech announcing the hearings, FTC Chairman Timothy J. Muris noted that, in the 1970's, the balance between IP and antitrust laws in the United States tipped unfavorably against intellectual property, and had to be corrected. Muris further noted that many "observers," including his predecessor as FTC Chairman, think that the balance has now tipped too far in the direction of strong patent rights, and may need correction. Given this framework, the Section leadership determined that it was important to participate in the hearings.

Each hearing is organized around a specific IP-antitrust issue or topic. The July 11 hearing will focus on the jurisdiction and jurisprudence of the U.S. Court of Appeals for the Federal Circuit in matters relating to IP and antitrust law. Several commentators have questioned efforts by the Federal Circuit to define its own jurisdiction and to bring uniformity to the legal issues that affect patent cases. A related concern is whether the Federal Circuit acts appropriately in creating its own jurisprudence, rather than relying on the jurisprudence of the regional circuits, in deciding legal issues where antitrust law intersects Title 35.

The Section testimony will express the view that the Federal Circuit’s efforts on both these fronts have been largely consistent with its Congressional mandate to bring uniformity to the process by which patent rights are defined and enforced.

The Section's testimony, which will be delivered by Chair-Elect Mark Banner, was prepared by a team headed by Division I Chair Don Martens. Special thanks are owed to Bob Taylor of Menlo Park, California and David Ryan of New York, New York, who provided invaluable subject matter expertise and did the heavy lifting in drafting the Section's statement.

 

Jenkins, Kirk Appointed to ABA Standing Committees

Marylee Jenkins, New York, New York, and John Kirk of Houston, Texas were appointed to American Bar Association Standing Committees by A.P. Carlton, President-Elect of the Association, during his appointment process in advance of his elevation to the President of the ABA in August. They will serve during the 2002-03 ABA year.

Ms. Jenkins was appointed to the Standing Committee on Technology and Information Systems (SCOTIS). She currently serves as a member of the IP Law Section Council.

Mr. Kirk has been appointed to the ABA Standing Committee on Specialization. He is a past Chair of the Section (1996-97), and currently chairs the Section's Committee on Specialization.

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Supreme Court in Festo Establishes More Flexible Rules for Determining Infringment in Patent Cases

by Michael P. Sandonato and Carl B. Wischhusen, New York, NY

In its recent decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., No. 00-1543 (May 28, 2002), the Supreme Court addressed the doctrine of equivalents and, in particular, the "absolute bar" adopted by the Court of Appeals for the Federal Circuit, under which any narrowing amendment made to a claim element bars completely the application of the doctrine of equivalents to that element. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd., 234 F.3d 558, 569 (Fed. Cir. 2000). As was expected, the Supreme Court agreed with the Federal Circuit that a narrowing amendment made to satisfy any requirement of the Patent Act, including 35 U.S.C. '112, may give rise to an estoppel. But in the more anticipated aspect of the case, the Supreme Court vacated the Federal Circuit’s en banc decision and held that while making a narrowing amendment to a claim element creates a presumption that the doctrine of equivalents cannot be applied, this presumption can be rebutted with a showing that the equivalent at issue was not in fact surrendered. Festo, slip op. at 16.

The Supreme Court held that the presumption may be rebutted by the patentee’s showing that "at the time of amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent." Festo, slip op. at 16. The Court offered three more specific instances in which this presumption might be overcome: when the equivalent in question was unforeseeable at the time of application, when the rationale for the amendment bears no more than a tangential relation to the equivalent, or where there is some other reason suggests that the patentee could not reasonably be expected to have described the equivalent. Id. at 16.

The foreseeability component of the Supreme Court’s decision is extremely important, and it will likely be that arguing that an accused equivalent would have been unforeseeable will become the most common way of rebutting a presumption that there is a prosecution history estoppel. Indeed, we may even see the Federal Circuit extend the Supreme Court’s opinion to establish a new legal limitation to the doctrine of equivalents, which would bar applying the doctrine to cover equivalents that were foreseeable, even outside the context of prosecution history estoppel. The Supreme Court’s statement that "[t]he patentee, as the author of the claim language, may be expected to draft claim encompassing readily know equivalents", Festo, slip op. at 15, will likely be seized upon to support this.

The development of such a foreseeability limitation would not be at all inconsistent with observable trends in other Federal Circuit decisions. For example, in its most recent en banc decision, Johnson & Johnston Assoc. Inc. v. R.E. Service Co., Inc., 285 F.3d 1046 (Fed. Cir. 2002), the Federal Circuit held that subject matter disclosed but not claimed in the patent B perhaps the ultimate example of subject matter that is foreseeable B is dedicated to the public, and may not be recaptured through the doctrine of equivalents. Id. at 1054.

Thus, the foreseeability of an accused equivalent was already an important factor in an infringement analysis, and will likely become even more so in the wake of this recent Supreme Court decision.

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Michael P. Sandonato is a partner at Fitzpatrick, Cella, Harper & Scinto and is active in all aspects of the Firm's patent practice, including litigation, licensing and transactions, patent prosecution and client counseling. (msandonato@fchs.com)

Carl B. Wischhusen is an associate at Fitzpatrick, Cella and specializes in patent prosecution and the preparation of patent applications in the electrical and mechanical fields. (cwischhusen@fchs.com)

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Section Seeks Assistance Maintaining E-Mail List

The recent U.S. Supreme Court decicions in the Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. case was sent to the Section-wide Listserv® e-mail list on the morning it was announced (Tuesday, May 28). If you are a Section member who did not receive this e-mail from the Section, and you would like to be included in future such e-mails (approximately once a month), please send your current e-mail address to intelprop@abanet.org. Providing your full name and 8-digit ABA membership number will help to expedite updating your records in the ABA central database.

Helfgott Represents Section on PCT Reform Efforts

Samson Helfgott of New York, NY, International Activities Coordinator for the Section, will represent the Section at a meeting of the Working Group on Reform of the PCT in Geneva, to be held in July. Revised language proposals will be submitted to the PCT Committee at the meeting.

At the last Working Group, recommendations were made for PCT reform in the short term. Included was a proposal that there be a written opinion in Chapter 1, automatic pre-designation of all possible countries under the PCT, a flat international filing fee, elimination of the need for signature requirements, and creation of an electronic library to reduce paper flow. Other changes proposed relate to conformity with the recently adopted Patent Law Treaty (PLT).

Since its inception, the PCT has been used increasingly by applicants throughout the world. Presently, over 50% of applications that are foreign-filed use the PCT route. U.S. applicants use the PCT route more than applicants of any other country.

Section of Intellectual Property Law Office/Hospitality Suite
Algonquin Room and Foyer
Four Seasons Hotel
August 9-11

Business Meeting with Elections
Saturday, August 10
9:00 - 10:00 a.m.
Ballroom Salon B
Four Seasons Hotel

Section Reception
Saturday, August 10
5:30 - 7:30 p.m.
Dumbarton Room
Four Seasons Hotel
Washington, DC
co-sponsored by Banner & Witcoff, Ltd.

CLE Program: China- IP Issues of Olympic Proportions
Sunday, August 11, 2:00 - 5:00 p.m., ABA Presidential CLE Center- Cotillion Ballroom North, Mezzanine Level, Marriott Wardman Park Hotel, Washington, DC.