Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.
| Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. | |
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| Argued January 8, 2002 Decided May 28, 2002 |
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| Full case name | Festo Corporation, Petitioner v. Shoketsu Kinzoku Kogyo Kabushiki Company, Ltd., et al. |
| Citations | 535 U.S. 722 (more)
122 S. Ct. 1831; 152 L. Ed. 2d 944; 2002 U.S. LEXIS 3818; 70 U.S.L.W. 4458; 62 U.S.P.Q.2D (BNA) 1705; 2002 Cal. Daily Op. Service 4539; 2002 Daily Journal DAR 5803; 15 Fla. L. Weekly Fed. S 320
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| Prior history | On writ of certiorari to the United States Court of Appeals for the Federal Circuit. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 2000 U.S. App. LEXIS 29979 (Fed. Cir., 2000) |
| Subsequent history | On remand at Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 304 F.3d 1289, 2002 U.S. App. LEXIS 19734 (Fed. Cir., 2002). On remand at Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 2003 U.S. App. LEXIS 19867 (Fed. Cir., 2003). On remand to the district court, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 2005 WL 1398528 (D. Mass. June 10, 2005), motion to alter or amend denied Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 2006 WL 47695 (D. Mass. Jan. 19, 2006). On subsequent appeal, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 493 F.3d 1368 (Fed. Cir. 2007). |
| Holding | |
| Claim amendments must be examined in context of the prosecution history and do not necessarily bar assertions under the Doctrine of Equivalents due to prosecution history estoppel. Judgment of the Federal Circuit vacated and remanded. | |
| Court membership | |
| Case opinions | |
| Majority | Kennedy, joined by unanimous |
| Laws applied | |
| U. S. Const., Art. I, §8, cl. 8.; 35 U.S.C. §112 | |
Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), was a United States Supreme Court decision in the area of patent law that examined the relationship between the doctrine of equivalents (which holds that a patent can be infringed by something that is not literally falling within the scope of the claims because a somewhat insubstantial feature or element has been substituted) and the doctrine of prosecution history estoppel (which holds that a party who makes a change to a patent application to accommodate the requirements of patent law cannot claim indirect infringement of an element that was narrowed by that change).
Festo Corporation (petitioner) possessed patents for an industrial device. After Festo began marketing its device, Shoketsu Kinzoku Kogyo Kabushiki Co. (SMC, respondents) entered the market with a device that used one two-way sealing ring and a nonmagnetizable sleeve. Festo Corporation already owned two similar patents (although their initial patent application was rejected) for this industrial device. Festo filed suit, claiming that SMC's device was sufficiently similar that it infringed Festo's patents under the doctrine of equivalents. Festo's claim had been amended during prosecution for, at the very least, compliance with 35 U.S.C. §112, and thus Shoketsu claimed that prosecution history estoppel should bar Festo from asserting equivalents.
The United States District Court for the District of Massachusetts held that Festo's amendments were not made to avoid prior art, and therefore the amendments were not the kind that give rise to estoppel. A panel of the Federal Circuit affirmed. 72 F. 3d 857 (1995). The Supreme Court granted certiorari, vacated, and remanded in light of an intervening decision in Warner-Jenkinson v. Hilton Davis Chemical Co.. After a decision by the original panel on remand, 172 F. 3d 1361 (1999), the Federal Circuit ordered rehearing en banc, 187 F. 3d 1381 (1999). The court sitting en banc held that claim amendments made for compliance with the Patent Act presented a complete bar to claiming equivalents.
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