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• Festo Revisited ( November 2003 )
  Townsend and Townsend and Crew LLP

  In a continuing drama concerning the rights of inventors to protect their creations by employing the doctrine of equivalents, the Federal Circuit applied the flexible standard mandated by the U. S. Supreme Court last year. This is our first opportunity to see the application of the Supreme Court's newly created rebuttal criteria governing how patent holders can use the doctrine of equivalents as a method of finding patent infringement.

• Patent Foreseeability in the Wake of Festo ( October 2003 )
  Michael P. Sandonato and Ralph A. Dengler of Fitzpatrick, Cella, Harper & Scinto

  On remand from the Supreme Court, the Court of Appeals for the Federal Circuit recently revisited the issue as to whether prosecution history estoppel barred a patent owner from relying on the doctrine of equivalents in a patent infringement suit. In this highly anticipated decision, <i>Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.</i>, the court concluded that the doctrine of equivalents might still be available to the patentee and remanded the case to the district court to make the determination. In reaching this conclusion, the Federal Circuit addressed whether any of three mechanisms for rebutting the presumption that prosecution history estoppel applies were available to the plaintiff and determined that one of them – unforeseeability – might be.

• Proof of Equivalence After Festo ( December 2002 )
  Benjamin C. Hsing of Kaye Scholer LLP

  An accused product or process that does not literally infringe a claim may still infringe under the doctrine of equivalents if each limitation of the claim is met by the accused product or process either literally or equivalently. In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 122 S. Ct. 1831 (2002), the Supreme Court reaffirmed the vitality of the doctrine of equivalents, stating that "equivalents remain a firmly entrenched part of the settled rights protected by the patent."

• The U.S. Supreme Court Vacates Festo Reaffirming the Importance of Equitable Patent Protection ( November 2002 )
  Ryan L. Marshall of Parsons Behle & Latimer

  Contrary to rampant speculation in the legal community that the doctrine of equivalents for patent claims was dead or nearly so, the U.S. Supreme Court unanimously reasserted the legal vitality of equitable patent rights in the case of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.. The Court vacated the judgment of the Court of Appeals for the Federal Circuit on May 28, 2002.

• The Preclusive Effect of the Connecticut Product Liability Act on Connecticut Unfair Trade Practice Act Claims ( October 1999 )
  James H. Jim Rotondo of Day Pitney LLP

  Connecticut created a unitary form of product liability action by statute in 1979. A central principle of Connecti.

• An Overview of Section 337 Actions in the ITC ( August 1999 )
  Bryan  Farney of Brobeck Phleger & Harrison LLP

  This paper includes a brief overview of the procedures involved in instituting and prosecuting an ITC investigation, followed by a discussion of the relative merits of bringing a Section 337 action in the ITC instead of the federal district courts. A review of recent case law developments related to ITC practice is then presented. Finally, key changes wrought by the 1994 Amendments to Section 337 are revisited.

• Avoiding a Jury Trial on the Issue of Infringement Under the Doctrine of Equivalents ( September 1997 )
  Alex  Chartove of Akin Gump Strauss Hauer & Feld LLP

  This article provides a detailed discussion of the Sage Products case and the CAFC's decision. It also describes some of the issues which companies should consider when evaluating the potential risks of a jury trial on the issue of infringement under the doctrine of equivalents.

• Choose Your Words Carefully--Positions Taken When Applying for a Patent May Limit Your Future Patent Protection ( June 1998 )
  Alex  Chartove of Akin Gump Strauss Hauer & Feld LLP

  This article discusses the case of Litton Systems, Inc. v. Honeywell, Inc. as it pertains to the guidelines which companies should consider when evaluating the question of whether, and to what extent, the doctrine of prosecution history estoppel may prevent a patentee from asserting infringement under the doctrine of equivalents.

• U.S. Courts Continue to Struggle with the Concept of Infringement by "Equivalents" ( April 1998 )
  Alex  Chartove of Akin Gump Strauss Hauer & Feld LLP

  This article discusses the case of Dawn Equipment Company v. Kentucky Farms Incorporated as it pertains to the guidelines which companies should now consider when evaluating the issue of infringement, under the doctrine of equivalents, of a claim containing means-plus-function terminology.