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2003 Stan. Tech. L. Rev. 2 (2003)
The Doctrine of Equivalents after Festo: A Disparate Impact on Biotechnological Inventions

handle is hein.journals/stantlr2003 and id is 41 raw text is: 







          _Stanford Technology Law Review



  The Doctrine of Equivalents After Festo: A Disparate

              Impact on Biotechnological Inventions?


   EDWARD R. ERGENZINGERJR., J.D., PH.D.* AND W. MURRAY SPRUILL, J.D.,
                                            PH.D.**


                             CITE AS: 2003 STAN. TECH. L. REv. 2
                       http: //stlr.stanford.edu/STLR/Articles /03_STLR_2

                                      I. INTRODUCTION

    On May 28, 2002, the United States Supreme Court handed down its long awaited decision in
Festo Cwp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. (Festo IT').' Because the case goes to the heart of
patent law, it has occupied the limelight in intellectual property circles ever since the Federal Circuit
issued its en banc decision in 2000 (Festo P).2 At issue is the application of the doctrine of
equivalents (DOE) and the balance between a patent owner's right to pursue those who have made
minor changes to avoid infringement versus the public's right to certainty in determining what a
patent covers and what it does not.      For patent holders and practitioners in the field of
biotechnology, Festo I and II also present special problems for prosecuting claims to DNA and
proteins in the face of uncertain requirements for enablement.3
    This article will address the impact of Festo I and II on the DOE, with special emphasis on
biotechnological patent prosecution. First, a history of the DOE and prosecution history estoppel
will be provided. Second, an abbreviated history of the Festo case prior to the Supreme Court
decision will be described. Third, the implications raised by the Federal Circuit's opinion in Festo I
for the patenting of biotechnological inventions will be discussed. Fourth, the Supreme Court
opinion in Festo II will be described from the perspective of biotechnological patent holders. Finally,
predictions will be provided as to how the DOE will be applied in light of its history as well as recent
case law.

        II. HISTORICAL DEVELOPMENT OF THE DOCTRINE OF EQUIVALENTS

    The United States Supreme Court has long recognized that an accused product or process can
not escape infringement liability merely by incorporating insubstantial changes over the patented



    *J.D., Wake Forest University, 2002. Ph.D. neuroscience, Wake Forest University, 1999. B.A. biology & psychology, Wake
Forest University, 1994. Ed Ergenzinger is an associate in the Biotechnology Patent Group of Alston & Bird LLP.
    **J.D., George Washington University, 1992. Ph.D. genetics /molecular biology, North Carolina State University, 1981. B.S.
biology, East Carolina University, 1976. Murray Spnill is a partner and chair of the Biotechnology Patent Group at Alston & Bird
LLP. He served as senior attorney managing the biotechnology patent portfolio of Ciba-Geigy Corporation and practiced with
private firms in Washington, DC and Palo Alto, CA before joining Alston & Bird.
    535 U.S. 722, 122 S. Ct. 1831 (2002) (Festo II).
    2 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000) (en banc) (Festo I).
    See generaly Edward R Ergenzinger Jr. & W. Murray Spnill, Biotechnology Patent Holders Beware! A Supreme Court Ruling Ma
Sgnificantly Reduce the Value of YourPatent Portfolio, BIOPHARM, June 15, 2002, at 58; Edward R Ergenzinger Jr. & W. Murray Spruill,
Supreme Court Rules On Festo: Some Good News, Some Bad News For Biotechnology Patent Holders, BIOPHARM, July 15, 2002, at 66.

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