Supreme Court Overturns Festo Decision 123
An anonymous submitter wrote: "On Monday, the U.S. Supreme Court decided Festo v. Shoketsu Kinzoku Kogyo Kabushiki upholding the patent law "doctrine of equivalents" which says that patents cover insubstantial variations of a claimed invention. Previously, the Court of Appeals for the Federal Circuit had ruled that the doctrine of equivalents did not apply where the patentee had made ANY changes to his claims during the application process. This week, the Supreme Court reversed, holding that changes made during the application process must be examined individually to see whether they gave up coverage of a particular accused device." Another submitter sent in this good analysis of the decision. Patents are a boring subject, but in general: the Appeals Court's decision in this particular case would have had the effect of making nearly all patents less broad and more specific. The Supreme Court noted the business disruption this would cause, and they are undoubtedly correct about that, but I can't help feeling that our legal system just missed an opportunity to reign in patent abuse.
beyond our jurisdiction? (Score:2, Interesting)
Re:beyond our jurisdiction? (Score:3, Informative)
Re:beyond our jurisdiction? (Score:2)
The decision saved the economy (Score:3, Informative)
The Supreme Court voting the other way would have changed a fundamental tenet of patent law, possibly invalidating millions of patents. This would have led to upheaval in business (especially technology!) circles and could potentially have prolonged the economic downturn as companies may have begun to cut back on R&D, seeing that their new IP would have been essentially worth much less than they'd hoped.
Don't get me wrong--I don't applaud the decision, since I think patents are wildly abused by corporations and the USPTO needs a good slap upside the head, but I can see why the Supremes made the decision they did, and ultimately, it's probably for the short-term best.
Re:The decision saved the economy (Score:1)
Re:The decision saved the economy (Score:2)
Re:The decision saved the economy (Score:2)
To finish the thought... (Score:2)
Too many overturned decisions... (Score:5, Interesting)
Re:Too many overturned decisions... (Score:1, Interesting)
It would be crazy to try to predict what the future supreme court would decide on any given case. We have a system of courts that can overturn each other without prejudice and I believe it is a good system, for the most part.
Punishing courts for untainted decisions is not a solution to any problem.
Re:Too many overturned decisions... (Score:3, Insightful)
As an aside, though, our court system is not structured such that all decisions result in the decision that Supreme Court would have made, either because they're made "correctly" or because they're "fixed" on appeal. The barrier to overturn a decision on appeal is higher than just "I would have done it differently", so, in practice, lower courts _do_ get to "make precendent" often-times if they get a case first. The Supreme court typically only intervenes in cases of conflicting precedent (so we can have a uniform law of the land) or if the lower court made a sufficiently "wrong" decision.
Not as bad as all that... (Score:4, Informative)
Best the courts can do is strike a law down, they can't change it (even to fix it) or make new laws.
Actually, courts don't have that authority (Score:2)
Not really. If a law is "struck down" or "declared unconstitutional" by the Supreme Court, the law is still on the books. All that happens is that no one can be convicted of it, as the courts will eventually (if not at the first trial, then on appeal) overturn any conviction.
If you disagree, please find me any federal law that grants a court the authority to strike down laws.
Re:Actually, courts don't have that authority (Score:2)
(and I said a law, not a precedent, because precedents exist for almost anything, somewhere)
Supremacy Clause (Score:5, Informative)
Can you find a law saying that courts have judicial review?
"This Constitution, and the laws of the United States which shall be made in pursuance thereof ... shall be the supreme law of the land; and the judges in every state shall be bound thereby ..." Laws that break the constitution are not "laws of the United States which shall be made in pursuance thereof".
Re:Supremacy Clause (Score:1)
Re:Actually, courts don't have that authority (Score:3, Informative)
Article. III.
Section. 1.
The judicial Power of the United States, shall be vested in one supreme Court, and in such inferior Courts as the Congress may from time to time ordain and establish. The Judges, both of the supreme and inferior Courts, shall hold their Offices during good Behaviour, and shall, at stated Times, receive for their Services, a Compensation, which shall not be diminished during their Continuance in Office.
Section. 2.
Clause 1: The judicial Power shall extend to all Cases, in Law and Equity, arising under this Constitution, the Laws of the United States, and Treaties made, or which shall be made, under their Authority;--to all Cases affecting Ambassadors, other public Ministers and Consuls;--to all Cases of admiralty and maritime Jurisdiction;--to Controversies to which the United States shall be a Party;--to Controversies between two or more States;--between a State and Citizens of another State; (See Note 10)--between Citizens of different States, --between Citizens of the same State claiming Lands under Grants of different States, and between a State, or the Citizens thereof, and foreign States, Citizens or Subjects.
----
You may be technically correct in a pedantic sense. The Court may simply exercise their judicial power "as if" the law is unconstitutional when they decide "who wins" the decision. If you wish to view this as somehow different from "actually declaring a law unconstitutional", then please go ahead. I won't be joinging you, however, nor will anybody who deals with the law on a day to day basis.
Re:Actually, courts don't have that authority (Score:2)
Re:Actually, courts don't have that authority (Score:2)
The court decides a case in a certain way, based on its interpretation that the law is unconstitutional. Assuming you are correct, the law is not overturned, and all that happened was that a case was decided.
Let's say another case is later brought. The lower court, knowing that it must either decide the same way as the Supreme Court earlier did, or get overturned on appeal, decides the way that the Supreme Court earlier did. If they don't, they get overturned on appeal (possibly not until they get to the Supreme Court, but at least when the case gets there).
Given that this is known in advance, after the first decision, people generally stop bringing similar cases. In effect, the law is unenforcable.
-jeff
That was not the intent (Score:2)
You may be technically correct in a pedantic sense. The Court may simply exercise their judicial power "as if" the law is unconstitutional when they decide "who wins" the decision.
No, I'm correct in a legal sense. The legal system described in the constitution set juries up to be the arbiter of whether laws were proper, not the judges. From The Fully Informed Jury Association [fija.org]:
Whenever a judge instructs a jury that their mandate is not to agree or disagree with the law, but merely to determine if the defendant violated it; whenever a judge or prosecuriter asks a juror during voire dire if they would have a problem with applying the law even if they disagree with it; they are violating the intent of the Constitution. Juries, not judges, are supposed to be the check on the legislative and executive branches.
Re:That was not the intent (Score:2)
Um, no. Again the Constitution says: "The judicial Power of the United States, shall be vested in one supreme Court, and in such inferior Courts as the Congress may from time to time ordain and establish."
The quotes that you cite refer to the fact that in criminal procedings, a "not guilty" verdict by a jury is final, regardless of how they reached it. No one is disputing that, and generally criminal matters arise in state court anyway.
In civil matters, however, especially the ones described in Article 3, Section 2, there is no right to a jury trial, and even when a jury is used their decision, even including findings of fact, can be reversed by the trial judge or a higher court. Nothing you quoted contradicts this.
Your thesis is that ONLY juries can strike down unconstitutional laws. That is not supported by any legal precedent. In fact, per Sparf & Hansen v. U S, 156 U.S. 51 (1895), the prefered method is clearly not jury nullification, since the judiciary is not obliged to even inform juries of their veto power.
Even most people who support a wider awareness of the jury veto do not argue it is the sole method for striking down laws:
"There are five separate tribunals to veto laws: representative,senate, executive, judicial and jury." - Lysander Spooner "An Essay On the Trial by Jury" 1852
In fact, there are six, the public itself can revolt, of course.
Funny you should mention Sparf & Hansen (Score:2)
That was the case cited immediately after where I stopped quoting. The full quote [fija.org] was:
The case dealt with a possible mistrial or appeal solely on the basis of whether the jury was instructed of their right to nullification. Thus the ruling essentially stated, "It is not required to declare a mistrial or grant appeal on this basis." However, as is unfortunately too often the case, this narrow negation is wielded as a directive. It is a classic case of "everything not required is prohibited."
Re:Actually, courts don't have that authority (Score:2)
Re:Not as bad as all that... (Score:1)
Whatever the courts say, goes. If the y wantto do it they can, there was simply not enough support among the justices to do so.
In fact the Most important aspect of almost every major court decision since the beginning of the 19th century (in Marbury v. Madison)is the increasing tendency towards the courts having increasing power. This change has acclerated recently, and in the 1960's, the Federal courts began to impose remedies that required action of the executive branch odf the government, and even earlier than this, the court stuck down portions of laws and forced legislatures to change whatever parts of laws the courts says.
More generally, the court is almost unaccountable for decisions that it makes, since the other portions of the government are constrained from reigning in the court (both practically and legally.) Basically, the senate has to pass an amendment to the constitution to change what the courts can do. This will not happen for a LONG time, if ever, since there is a huge hesitation about the idea of changing the rules that the founding fathers created.
the government has he curruption of absolute power, and the people who complain are too lazy to do anything about it.
Re:Not as bad as all that... (Score:2, Funny)
Re:Not as bad as all that... (Score:1, Interesting)
Given that sillyness, it's probably not a bad thing that the courts have an undue amount of authority in such matters.
Re:Not as bad as all that... (Score:1, Offtopic)
The ability to amend the Constitution *is* a constraint on Judicial power.
Impeachment is another restraint.
FDR threatened to increase the size of the court (the number of justices on the Supreme Court is not specified in the Constitution.) if they didn't stop interfering with his efforts to end the Depression. Over the long run, the power to name justices can and does influence the decisions of SCOTUS. Reagan & Bush has a huge effect on the Court and its direction through the power of nomination.
In another message you asked for a justification in law of the Judiciary's ability to declare a law unconstitutional. That justification is found in the precedent you cite above -- Marbury v. Madison. If Congress and/or the President disagreed with this ruling, they can nominate and confirm justices who don't hold that position or they can pass an Amendment.
The Constitution have been amended 26 times. That this issue hasn't been addressed means that people are comfortable with this power of the Judiciary.
Re:Not as bad as all that... (Score:1)
Sheesh, where do you live? (Score:2)
Actually, it may still be a win for us. (Score:3, Interesting)
The supreme court said we're not going to prevent you from making the argument that something similar to your patent is covered by the patent, but it moved the burden of proof to the patent holder rather than the challenger.
I.E If a patenter modifies the patent application during the approval process, the burden of proof falls on the patent holder, not on the infringer, to prove the modification didn't screw up the patent's enforceability (expanding an in-progress patent application to cover newly published prior art, etc).
Putting the burden of proof on the patent holder to prove their patent is valid is definitely a good thing.
From the article:
>The burden now falls upon the inventor to prove
>that the equivalent in question was not waived
>during prosecution.
SupCourt Vacates Festo: Thanks to Uri for this (Score:1, Informative)
In the vacated decision, the Federal Circuit had ruled that an inventor who amended claims in a patent application during its prosecution before the patent office, was barred from using the doctrine of equivalents against a competitor who allegedly infringed the subsequently issued patent.
Using the doctrine of equivalents, a patent holder can prove infringement even in cases where the invention is not copied exactly, or "literally", by showing that the differences between the patented invention and the accused device or process are insubstantial. The doctrine of equivalents was created to prevent infringers from avoiding liability simply by making inconsequential changes to an otherwise copied invention.
Prior to the Federal Circuit's Festo opinion, a "flexible bar" was the rule of law with regard to application of the doctrine of equivalents in cases where claims were amended during prosecution of the patent. The "flexible bar", established by the U.S. Supreme Court in 1997 in the case of Warner-Jenkinson Co. v. Hilton Davis Chemical Co., requires a court to determine on a case-by-case basis: (a) whether the claim amendment was "substantially related to patentability"; and, if so, (b) to what extent the amendment surrendered "equivalents" to the amended limitation in the claim.
In its Festo decision, the Federal Circuit eliminated the "flexible bar", which had been applied in cases involving prosecution history estoppel, in favor of an "absolute bar". The court concluded that, unless proven otherwise by the inventor, all claim amendments made during prosecution would be assumed to be "substantially related to patentability" and would absolutely foreclose without further analysis, enforcement of the doctrine of equivalents with respect to the limitation of the claim which was amended. This decision left the patent community reeling since an overwhelming majority of patents are amended during prosecution and the doctrine of equivalents has become one of the primary tools used to battle infringement.
In a unanimous May 28, 2002 opinion written by Justice Kennedy, the Supreme Court reinstated the "flexible bar" of Werner-Jenkinson with two subtle, but important, modifications.
First, the Court clarified that the doctrine of prosecution history estoppel, which bars an inventor from asserting in an infringement action an equivalent which was surrendered during prosecution, applies to any claim amendment made to satisfy the Patent Act's requirements, not just to amendments made to avoid prior art. This somewhat alters the analysis as to what constitutes an amendment which is "substantially related to patentability" since it was believed by many that only amendments made to overcome prior art fit in this category. LNUX stocks at less than 1.00 for another day. That is why there is a sell off going on. The Supreme Court declared expressly that any amendment made to meet a requirement of the Patent Act, even those related to form, is "substantially related to patentability" if it narrows the scope of the patent and is necessary in order for the patent to issue. In this regard, the Court also left untouched its holding from Warner-Jenkinson that the burden of demonstrating that an amendment was not made for reasons "substantially related to patentability" falls on the patentee.
Second, the Court established that in any case where an amendment "substantially related to patentability" is made, a rebuttable presumption is created against the inventor that all equivalents have been surrendered. The burden now falls upon the inventor to prove that the equivalent in question was not waived during prosecution. How many days until LNUX is delisted from NASDAQ? This is a far cry from the Federal Circuit's "absolute bar" which foreclosed the inventor from making an argument at all. Nonetheless, this new standard is also far more limiting than the pre-Festo regime where the burden of proving that an equivalent had been waived fell on the alleged infringer.
Although the Supreme Court's ruling is not the "clean" win that patent holders had been hoping for, it is still a significant victory since it restores the "flexible bar" approach and reinstates the applicability of the doctrine of equivalents to the great majority of patents presently in force and to be issued in the foreseeable future.
Notwithstanding this, the Festo "trilogy" has rightfully brought to the forefront the careful consideration that must be given by patent practitioners and inventors to claim amendments, especially in view of the unforeseeable repercussions such amendments may carry for many years into the future.
The final question to be answered is what precedence is being set.
Re:SupCourt Vacates Festo: Thanks to Uri for this (Score:2)
The only difference is the poster has done some trolling. Let's expose it:
From the 7th paragraph, inserted after "fit in this category.":
From the 8th paragraph, inserted after "not waived during prosecution.":
And finally, the poster replaced the final paragraph, which was:
with:Please mod the parent back down, and mod one of the responses to this post up (I will post as AC the actual text). Thanks.
Constitutional power assumption (Score:3, Insightful)
The court did the right thing given it's constitutional authority. The responsibility to fix the current set of patent regulations lies with Congress, not the courts; especially when the underlying concept of patent law is inherently good. Only when a law is so completely bad (for example, slavery) should the judiciary make an end run around the Congress.
Re:Constitutional power assumption (Score:2)
Re:Constitutional power assumption (Score:2)
Basically, you are espousing the moral "higher power" theory of judicial review, and that is not the justification that is currently used. The court may do as it wishes, and it does (who's our president?)
Could someone take government 101 before posting about the subject? Lawyers don't post about CS, so why should CS majors feel they have a grasp (that they lack) of a subject like public policy or government.
Re:Constitutional power assumption (Score:2)
Because we are citizens, and are required by that fact to take an active role in our own governance. I cannot imagine the horrors that would await if we turned the law over to lawyers and politicians without the moderating powers of judicial and jury nullification.
Re:Constitutional power assumption (Score:2)
PS. kudos for the jury nullification shot
Best Supreme Court Opinion in Years (Score:5, Insightful)
The Federal Circuit had held that anytime a patent claim (the part that defines the invention) had been amended for a reason related to patentability, then the inventor could never claim that a device was the equivalent of what he claimed in his patent. The Supreme Court had created the Doctrine of Equivalents to prevent people from making minor changes to devices that did not amount to a real departure from what the patent disclosed and then claiming that the altered device was not literally covered by the patent. In software terms , think of this as claiming that a while loop and a do-while loop are not essentially the same thing. Yes, there are differences (where the check is performed) but the differences are trivial.
The Federal Circuit's rule was overly harsh. It is virtually impossible to get a claim allowed at the PTO without amending it at some stage. Also, virtually the only reason you amend (aside from correcting typos) is for a reason related to patentability. So this had the effect of eliminating a very important part of patent law.
The Supreme Court simply stated that the Federal Circuit departed from the law and should correct itself. To determine what a patent claim covers, you look first at the claim itself. Then you look at how the claim is described in the specification portion of the patent. Next you read the prosecution history -- the exchange of arguments with the patent examiner. It is there that you see how the inventor distinguished his invention from the prior art and further defined the terms. Only then can you properly determine the scope of the claim.
And yes, all of this is public record readily available from the PTO.
Re:Best Supreme Court Opinion in Years (Score:2)
What was the reasoning behind the earlier Circuit Court decision? Why would the fact that amendments occured during the patent process have anything to do with the later scope of the patent, once issued?
It sounds analogous to saying that a contract which went through more than one draft during negotions would be enforced differently than one which happened to be signed in its original form. What difference does it make whether some revision was necessary during drafting, for either a contract or a patent? Why would that make a huge difference in how the final instrument is enforced?
Can anyone explain this seemingly bizarre distinction?
Re:Best Supreme Court Opinion in Years (Score:2, Informative)
The original theory of prosecution history estoppel was that, if a patent claim had to be modified by the inventor in order for the patent to be granted (because the original claim was too broad), then the modification intentionally narrowed the scope of the patent. The inventor was seen as surrendering that part of his claim in order to gain patentability. So anything that falls into the scope of the original claim but not in the scope of the amended (and then patented) claim, could not be considered an infringement by invoking the doctrine of equivalents.
The Warner-Jenkinson decision weakened the estoppel, giving the courts more latitude in applying the doctrine of equivalents in favor of patentees. Festo went the other direction (in the Appeals Court decision): where there was any modification of a claim for patentability, the doctrine of equivalents could not be applied.
This Supreme Court decision on Festo seems to be hitting the middle ground, in which there is a presumption of estoppel (i.e., a presumption against applying equivalency), but the patentee is now allowed to argue against this presumption -- and now the patentee has the burden of proving that the claim modification did not trigger the surrender of equivalents.
Just what the standard for such proof is under this new decision, the article does not seem to say, unless I missed something.
Re:Best Supreme Court Opinion in Years (Score:5, Informative)
There are several reasons why a patent is ammended in process. One of them is Lemelson type manipulation of the process (he is now a stiff and so the truth can be said of him without fear of libel).
Another common reason is to add to a patent ideas that have been published by others after the original application. Under the US patent office rules such ammendments get the advantage of the original priority date. So if you design a blue widget in January, I read of your design and propose that the same task could be done by a red widget and publish the idea in May, you can go back and ammend your application to cover both Red and Blue widgets even though you didn't think of the Blue widget idea.
And before patent lawyers claim the opposite, I know of many cases in which such patents have issued. They may not be enforceable, but it currently costs about $2 million to defend a patent case while the plantif's case is typically brought on a contingency basis.
If it was possible to recover costs from the people who file perjurous patents and the leeches who act for them I would have more sympathy for those who claim the USPTO is not a racketeing influenced corrupt organization.
The risk for the US is that historically no one country has remained the dominant economic power for all that long. If the US economy has a spell when it is not doing as well as it is currently relative to the world economy the focus of research and development dollars may move overseas again, at which point the dollars extorted from the economy by patent trolls may cease being a minor irritant and may become a major consideration when deciding where to do business. This afternoon I presented some of my work to an F50 company who is one of our partners, during the presentation someone asked what was new since the basic approaches I was using were all well established, only the application domain had changed, "hopefully nothing", I replied, "If there was anything new here, someone would tack it onto a submarine patent and claim to own it". The sad part being that everyone agreed that the strategy is sound. The patent system is not encouraging innovation, it is allowing leeches to collect undeserved taxes.
I would rather deal with Europe's labor laws that the US patent laws.
Re:Best Supreme Court Opinion in Years (Score:4, Informative)
The best reply in this thread is the AC's. On a very superficial level, the doctrines of prosecution history estoppel and the doctrine of equivalents seem to be at odds. However, they really aren't.
PHE prevents an inventor from recapturing subject matter the inventor forfeited in his exchange with the patent examiner. For example, if a claim literally "reads on," i.e., describes, covers, etc. prior art, then it is invalid and will be rejected by the examiner. The inventor has 2 choices at that stage: 1. add more elements or limitations to the claim so that the claim does not completely describe prior art; or 2. Make arguments to the examiner that the claim does not describe prior art because the prior art lacks certain features described by the claim as it is currently worded.
In choice (1), this is an amendment related to patentability (an attempt to get an allowable claim). The Fed. Cir. Festo opinion held that in this case the inventor could not claim that ANY equivalents of the elements of an amended claim would infringe. This is a VERY harsh result, albeit an easy rule to enforce, because then trivial changes could be used to defeat patent protection. Preventing trivial design changes for this purpose was exactly what the US Supreme Court wanted to address in the Warner-Jenkinson case with the doctrine of equivalents.
Option 2, arguing that the claim does not cover certain devices or subjects, creates a prosecution history estoppel. If an inventor argues that his patent claims do not cover certain subjects, he cannot later claim in an infringement suit that the same subject matter he argued to the PTO was not covered is in fact now covered by his claim (the "recapture rule").
The two concepts are related and sometimes overlap, but are distinct. The US Supreme Court reaffirmed that the desire for a bright-line rule of easy application cannot outweigh the policy of the Patent Statute - to give inventors real protections, not ones that can be circumvented by trivial changes. There is a proper way to analyze patent claims - read the claim, read the specification, then read the prosecution history. This concept has been reaffirmed in many many cases. Lawyers filing infringement suits have a duty to make sure that at least one claim in a patent completely describes a device that will be claimed infringes and they can (and should!) be sanctioned for not so doing prior to filing the suit.
the changed their minds _again_? (Score:2, Funny)
oh, wait...
Re:the changed their minds _again_? (Score:1)
It should have been moderated -1, Not Funny
Re:the changed their minds _again_? (Score:1)
...still, I'm amazed that the lameness filter wasn't set off by my joke.
Re:the changed their minds _again_? (Score:1)
-1, LAME joke.
No good answer here (Score:3, Insightful)
If the dotrine of equivalents is in place, then companies get broad patents and will be more likely to sue the pants off anyone who does anything even close to their patented widget.
Without the DOE, we'd have a tidal wave of nearly identical patents being filed, eventually resulting in the process of deciding if a "new" idea has already been patented being even more onerous than it is today, thanks to all the "near misses" one would have to evaluate.
What the US desperately needs real patent law reform, starting with shortening the term for software patents to something more reasonable, like 3 years.
Wouldn't have reigned in abuse (Score:1)
probably doesn't bode well (Score:2)
The title: "Learned jurist"... (Score:1)
This helps foreigners (Score:2)
Hard facts on US patents (Score:5, Interesting)
Litigation costs:
- patent suits filed in 2000 generate roughly $4.2 BILLION before resolved
-> a patentee's overall chance of success in litifation is about 49%
- in year 2000, 2486 patent suits were filed -> average cost per suit: amazing $1.7 million.
Counting your chance of winning is around 50%, you can value your risk at $3.4 million. You must know that your patent is worth more than this before even thinking about defending your patent.
NOW, think again if patents are useful. They are useful for ONLY those with huge cash reserves. Now we declare the only winners: attorneys and multinational companies. Enuff said.
Re:Hard facts on US patents (Score:4, Interesting)
I agree with you, although since most people tend to think much useful (or at least profitable) stuff wouldn't get done without companies, I suspect many people whould just shrug and tell any would-be small-time patent owner to start/join a company.
I think thats one of the mentalities we need to change
Re:Hard facts on US patents (Score:2)
Sorry. Wrong. Patents are useful because of the threat of liability. Large companies with more money are more at risk from Patent infringement cases, not less.
Typically patent cases that actually go to court are those in which a real question exists as to whether another invention infringes or not. In cases where the issue is clear cut, you get a settlement pretty quickly (or no product in the first case).
No. The real dirty secret of Patents is that most of them are little more than advertisements. Get our new Patented Mixedup egg beater! Never mind that the invention isn't any better than what already exists on the market. Look! It's Patented!
Re:Hard facts on US patents (Score:2)
But the threat of liability doesn't really exist if the patent holder doesn't have the resources to sue. If an average suit costs over $1 million, a little guy probably does not have the resources to make a credible threat to sue. Meanwhile, there are limits on damages in a patent infringement case. Damages are limited to profits for lost sales, plus a reasonable royalty on sales that the holder couldn't have made. Proof of a deliberate violation can give treble damages, but there aren't the kind of unlimited punative damages that exist in areas like personal injury. If a big company starts infringing before the little guy has the resources to produce much product, he may be able to run the little guy out of business and only be liable for three times a court named reasonable royalty- if the little guy can even bring a successful suit.
Re:Hard facts on US patents (Score:2)
Bzzzt....wrong again. You can find a patent firm who will accept the case on a contingency basis if you have a decent claim.
Damages are limited to profits for lost sales, plus a reasonable royalty on sales that the holder couldn't have made.
That is not necessarily true. There are quite a few ways to determine the monetary amount you should get for infringment. However, monetary rewards are almost never the killer part of an award. An injunction can kill a company. That is why companies never sue immediately when someone violates their patent. They make sure that the violator invests in the patented technology, and then they go for an injunction. Because the violator will have to (usually) spend a lot of money to reimplement around the injunction, the patent holder can extract a lot of money from the violator for a license to the patent.
Re:Hard facts on US patents (Score:1)
*rumble, rumble* What's that sound? Here come the statistics majors...
The other parts of the series (Score:1)
http://www.hunton.com/pdfs/article
http://www.hunton.com/pdfs/artic
http://www.hunton.com/pdfs/article/Risk_Rewar
http://www.hunton.com/pdfs/article/Risk_Rewar
http://www.hunton.com/pdfs/article/Risk_Rewar
Re:Hard facts on US patents (Score:2)
Much having to do with lawsuits occurs prior to the suit being filed, and 90% of lawsuits settle before going to trial, so it is highly likely that your suit count is much lower than it should be. Also, most of the costs are bourne by the defendent in a case, especially in the early parts. Juries generally favor the small guy, sometimes beyond reason, by the way.
Further, if someone infringes your patent, a plaintiff firm will take the case on a "contingency basis" if they feel it is a good business decision to do so, which isn't as unworkable as you say. To evaluate this, they weigh the liklihood of success, estimated damages (actual + statutory), and the contingency percentage (typically 40%). Plaintiffs lawyers are very good at controlling costs, since they are paying for them. They are also good at driving up defendents costs, since they know that defendants generally have to pay out of pocket for all legal services and that this effects their settlement calculations.
Are patents useful? Yes, absolutely, they encourage capital investment to create novel technologies. Can a small business benefit? Yes, absolutely. In fact, one of the factors that a VC will look at in evaluating whether to invest in a start-up is the potential IP assets, because these can be liquidated if the company's business model doesn't measure up.
Are patents useful for some guy at his house who has no real plans to bring a product to market. Probably not, unless you are interested in making sure that a technology you like isn't patentable by someone else. In this case, you can publish your idea and cc the PTO and let them do the rest. If you are not trying to get investment to bring your idea to market, then guess what: you aren't the person the patent law is trying to help, so don't act surprised when it doesn't do much for you. The economy is far better off when VC's can safely invest in startups. If you are employed at a company perhaps you should think about how life would be different for you if you company's investors calculations couldn't factor in the company's IP assets.
Re:Hard facts on US patents (Score:2)
Further, if someone infringes your patent, a plaintiff firm will take the case on a "contingency basis" if they feel it is a good business decision to do so, which isn't as unworkable as you say. To evaluate this, they weigh the liklihood of success, estimated damages (actual + statutory), and the contingency percentage (typically 40%). Plaintiffs lawyers are very good at controlling costs, since they are paying for them. They are also good at driving up defendents costs, since they know that defendants generally have to pay out of pocket for all legal services and that this effects their settlement calculations.
Are patents useful? Yes, absolutely, they encourage capital investment to create novel technologies. Can a small business benefit? Yes, absolutely. In fact, one of the factors that a VC will look at in evaluating whether to invest in a start-up is the potential IP assets, because these can be liquidated if the company's business model doesn't measure up.
I will certainly grant that an inventor outside of Big Business can profit from patents, and can even sue the big companies successfully. However, all too often the cases aren't as clean as what you describe. For example, a common scenario is company A (small company) sues company B (a big one) for patent infringement; company B looks through their patent portfolio and finds something vaguely reminiscent of something at company A and countersues. Now company A's lawyer won't work on contingency anymore because company B's lawyer is playing the "drive costs up" game.
An even more common scenario is Company A (small) comes up with something so obvious that they don't bother to look into patenting it. Company B (big) has a patent for it anyway and sues Company A out of existence before Company A (who is the defendant and dealing with the "drive up costs" tactic you describe) can prove that the patent is both obvious and has prior art.
My first scenario shows how it's less useful for small investors (large companies can often come up with cross-licensing arrangements, small inventors don't have the portfolio). The second shows how patents (particularly the abstract ones, software, business practices, etc) often hurt the little guy.
Back to the decision, I am happy with it. From the sound of it the Circuit court decision would have randomly rearranged the system rather than fixing any problem I have with it. The Supreme Court decision mostly keeps current practice, with a baby step in the right direction (i.e. more of the burden of proof is on the patent holders shoulders).
Re:Hard facts on US patents (Score:2)
This one is for you:
United States Patent 6,209,545 : Method for recovering peripheral nerves functionality
The method for recovering the peripheral nerve function includes a manual massage along with the nerve. In so doing, the palpation of a peripheral nerve is performed to determine its nerve condition, followed by applying a pressure deep into the soft tissues with a finger at least once and then moving the finger along the peripheral nerve towards the periphery.
In a nutshell (Score:3, Insightful)
Before the Festo case, the Doctrine of Equivalents meant that your patent covered minor variations on the patented item, and if you claimed infringement, it was up to the accused to prove they weren't infringing.
The Federal Circuit Court found in the Festo case that if you ammended your patent to narrow its scope during the patent process (and most patent are ammended), you were giving up all claims of "equivalence" and couldn't claim infringement on anything not specifically claimed on the patent.
The Supreme Court has restored the original doctrine, with 2 changes. One is that, since any ammendment to your patent potentially changes its scope, in an infringement claim you must prove the amendment didn't narrow your claims. Second, if your ammendment did narrow the scope of your claims, you lose all equivalency claims by default (like in the Festo ruling), and the burden now falls on you to prove the ammended patent still covers the claimed infringement.
So, its back to business as usual, except that infringers are now "innocent until proven guilty" - the burden falls on the patent holder to prove infringement, rather than on the accused to prove non-infringment.
Missed opportunities? (Score:2)
Michael, you are as yet insufficiently cynical. No one passed up any opportunities here. Patent interests want patents to become more broad and less specific, so long as all the vague patents are held by corporations that support expansive patent rights. That people who don't hold those views can still obtain patents is the kind of "reigning in" they are interested in pursuing, and in that context, this ruling makes sense (it protects patent holders from having their own poorly written patents used against them). But reigning in what you and I call "patent abuse" was never on the table, and isn't likely to ever be.
Re: (Score:2)
You don't want an activist court (Score:2)
I am quite satisfied that the nine wise justices did not attempt to rule much more broadly than they did, regarding patent law. That kind of social engineering from the bench is a throwback to the Sixties, and fortunatly for our Republic, has been utterly put aside by this court.
Even Clinton appointees have managed to keep from ruling where they have no business.
Re:You don't want an activist court (Score:2)
Roe vs Wade, and Doe vs Bolton. Those were activist court decisions.
You are also making a huge assumption about my race and my politics, for that matter. You are also making a huge assumption that only White Rupublicans have a problem with smut on the newsstand.
I know you are a troll, and I'm wasting my time.
This is sad news (Score:1)
It really saddens me how the dream that was once America has been so utterly lost and forgotten.
Law must be specific in its scope (Score:2, Informative)
Try to help it, because the proper role of the Supreme Court (your agreement/disagreement with any other rulings notwithstanding) is not to legislate but to test the legality of rulings.
Although this fine point may be missed by some, it is nevertheless a key point.
Remember the legality of the patent system is not the core issue in this case, but rather the extent to which patents can be interpreted in resolving intellectual property disputes.
Summary for the "Law for Dummies" crowd: Just because the case is topically related to an issue close to your heart, doesn't mean it's the court's job to solve every perceived inequity within the subject range. The courts primarily serve as an interpretive body and not a legislative body.
The Supreme Court in this case rightly rejected the lower court's illegal provision which based the consideration of equivalents on a technical matter of modifications made during the application process.
It is not for the Supreme Court to sniff out law-making opportunities out of an issue-related case, but rather, to deal with each case as it comes to them through the court system.
-silly
That's how the law works. (Score:1)
Re:That's how the law works. (Score:2)
1. Prohibition
2. Slavery
3. Poll Taxes
4. Segregation
I could go on and on...if you're going to be cynical, at least be good at it!
-h-
Re:That's how the law works. (Score:1)
One plus to the decision ... (Score:1)
Don't any Slashdot nerds know how to spell? (Score:1)
Let me guess... (Score:1)
You're new here, aren't you?
In related news, the Google patent (Score:3, Interesting)
Google has this patent:
United States Patent 6,278,992 [uspto.gov]
Search engine using indexing method for storing and retrieving data
I believe this patent might be one of the best examples of good software patents: it is detailed enough to define the innovation to be patented. It is good reading for anyone interested in creating effective indexes, the text and images of the patent is better reading than many of the books on the subject.
Its all about balance (Score:4, Insightful)
The defendant liked the "absolute bar," that says there can be no equivalents when a claim is amended. This provided clear notice to the public, but at the expense of creating a hypertechnical loophole to virtually every existing patent. Thus, notice is elevated over protection.
The Supreme Court rejected both views, recognizing that a robust system must do both: it must adequately balance each critical patent policy against the other, addressing the parade of horribles cited against each of the rules by the parties. (1) It shouldn't permit an automatic hypertechnical out for every patent; and (2) it shouldn't fuzz the scope of every patent so that every rich plaintiff can simply beat the drum to force every defendant into a "trial or nothing" alternative.
The Supreme Court came up, thanks to Amicus Briefs filed on behalf of neither party, with the "foreseeable bar." Basically, this bars equivalents for the amended claim unless the plaintiff can show that at the time of the amendment one skilled in the art could not reasonably have anticipated the accused device. Thus, after-invented technologies do not shut down pre-existing patents, yet patent bullies are neutralized when they opt to take an "easy allowance," expecting to "make it up" during litigation using the doctrine of equivalents.
There will be no patent system change until (Score:1)
Lock and Load, comrades in arms!
As our foregeeks said, don't code until you see the refractive indices of their ocular implants!
Give me Open Source and Patent/Copyright Reform - Or Give Me Cessation of Life Functions!
I regret that I have but one life cycle to give to my national socioeconomic system and the King that I slave under