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21 IPL Newsl. 1 (2002-2003)

handle is hein.journals/iprolane21 and id is 1 raw text is: A PUBLICATION OF THE AMERICAN BAR ASSOCIATION SECTION OF INTELLECTUAL PROPERTY LAW VOLUME 21, NUMBER 1 FALL 2002 The Future of the Doctrine of Equivalents BY JERRY A. RIEDINGER The doctrine of equivalents, says the Supreme Court, is settled law.' Few patent litigators would agree. ' Except for the widespread view that sthe doctrine is but a pale shadow of its former self, most patent litigators would, in fact, consider few things settled. Over the past decade, a Jerry A. Riedinger procession of Federal Circuit deci- sions has wreaked havoc with the doc- trine, raising innumerable concerns over its applicability and causing it to evolve from a powerful tool into a repeat- edly maligned theory. Yet the doctrine has survived, in one form or another, despite repeated efforts to procure its demise by forces of considerable magnitude. The recent decision in Festo was just the latest demonstration that, regardless of the doctrine's reduced value, it retains remark- able resilience. A swarm of questions surround the doctrine of equiva- lents in the first decade of the twenty-first century. The pri- mary question, of course, asks what form the doctrine will take. Related questions abound, some easy, some not: Will the Federal Circuit induce the doctrine's demise once and for all? Will the Supreme Court, yet again, reverse Federal Circuit equivalents precedent? Will patent owners grow tired of fighting uphill and abandon their efforts to assert equivalents? What defense to equivalents will become the favorite of accused infringers? Few of these questions can be answered easily, and not all answers are satisfactory. Nevertheless, this article attempts to peer into a crystal ball and predict the doctrine's future. I. Patent Owners Will Continue to Assert the Doctrine of Equivalents The first, and easiest, prediction is that patent owners will persist in asserting infringement by equivalents. Indeed, patent owners are likely to assert equivalents in vir- tually every case, despite the marked decline in the doc- Jerry Riedinger leads the patent litigation group at Perkins Cole, LLP, where he focuses his practice on patent infringement, trade secret and related complex intellectual property litigation. trine's value. This is so, not because of any broad belief that the doctrine likely will produce success, but because the benefits continue to dramatically outweigh the drawbacks. The doctrine's benefits are direct, uncomplicated, and so substantial that only the doctrine's outright abolition could halt its near universal assertion. As the Supreme Court explained in its first modem exposition of the doctrine's purpose, to permit imitation of a patented invention which does not copy every literal detail would be to convert the... patent grant into a hollow and useless thing.' Patent drafters are human and therefore imperfect; despite their best efforts, lawyers writing patents will never draft claims that capture perfectly all aspects of a development's inven- tive contribution. The doctrine has therefore been the tradi- tional bulwark against attempts to use linguistic gymnastics to justify an invention's appropriation. Regardless of the particular semantic incantation proposed to render the patent hollow and useless, the doctrine is often the only legal assertion that allows the plaintiff's infringement analysis to include common sense as an alternative to the (continued on page 4) Keeping Current with the Chair .................... 2 Assignability of Intellectual Property Licenses in Bankruptcy ............... ...... It The Extent of a Third-Party's Right to Modify Original Packaging under EU Law .......... 19 Needed: A Comprehensive Working Definition of Likelihood of Confusion........... 23 Patent Claims Can Be Broadened After Two Years ................................ 25 Recent Developments in Inteilectuol Propet Law ......................27 'ME FP Group Nevs..... .......................36 THE ABA INTELLECTUAL SECTION OF PROPERTY LAW 1 VISIT THE SECTION WEBSITE AT WWWABANEMORGANTELPROP

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