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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