The U.S. Supreme Court has scaled back a controversial lower court ruling that some feared would have opened the door to wholesale copying of patented inventions. Research universities and some technology firms are applauding yesterday's unanimous decision, saying it will help protect valuable discoveries. But others say the ruling will do little to reduce the growing number of costly patent fights.
The high-profile court battle focused on a 150-year-old legal concept--the "doctrine of equivalents"--designed to defeat claims of a new invention based on minor changes to a patented technology. Companies that have patented proteins, for instance, have invoked the doctrine to prevent competitors from marketing molecules with slightly different amino acid sequences that perform the same biological function.
Two years ago, however, a federal appeals court stunned many experts by ruling that the doctrine doesn't apply to patent claims that were narrowed during their review by the government. It's a step most patents go through. The original suit was brought by Festo Corp. in Hauppauge, New York, which charged that the SMC Co. in Japan had infringed on a Festo patent for a mechanical cylinder that has been used in everything from sewing machines to amusement park rides. Festo challenged the appellate decision in a case that attracted widespread attention (Science, 21 December 2001, p. 2460).
In a 17-page opinion, Justice Anthony Kennedy handed Festo a partial victory by deciding that the lower court had gone too far. Because "language remains an imperfect fit for [describing an] invention," Kennedy wrote, the holders of narrowed patents should still be able to go to court. At the same time, however, the justices said patent holders must work harder to prove infringement. In sending the case back to the lower court, the justices hinted that Festo might lose under the new rules.
The decision "enhances the economic value of patents," says attorney Edward W. Gray of Fitch, Even, Tabin & Flannery in Washington, D.C. But although "both sides can claim victory, the patent system as a whole may not be any better off," warns attorney Dan Bagatelle of Brown & Bain in Phoenix, Arizona. Continuing uncertainty about the doctrine of equivalents may slow innovation if companies avoid investing in disputed technologies, he says, and drive up costs if they choose to pay off legal challengers despite weak claims.