Innovation and Its Discontents foggy on Festo?

Somewhat surprisingly, Jaffe and Lerner cited to a paper in Intellectual Property Today in their book, Innovation and Its Discontents. Within footnote 120, we have text:

>>The CAFC considerably narrowed the applicability of the doctrine [of equivalents] in Festo, 187 F3d 1381, but this decision was partially reversed by the Supreme Court in 2002. The general consensus today, however, is that patents are narrower than they were before this decision. See Int Prop Today, 10, page 6 (August 2002).<<

One might question whether the Supreme Court's action on the Federal Circuit decision was a "partial reversal." It is more interesting that two academic authors cited to Intellectual Property Today to obtain "the general consensus today" on Festo. Further, in the book's context "today" was 2004. One might question whether patents are narrower as a result of the Supreme Court decision, compared to the alternative world of the prior Federal Circuit decision.

Jaffe and Lerner cited the article "Festo Schmesto, Will the Federal Circuit Listen to the Supreme Court?" by ALLEN R. JENSEN. Early on in the Jensen article, one has the text: A unanimous 9-0 repudiation of the Federal Circuit's complete bar. n4 That's what the U.S. Supreme Court did on May 28, 2002, when it vacated the Federal Circuit's decision in Festo. Evidently, Jaffe and Lerner had not read the Jensen article when they discussed a partial reversal.

Jensen also wrote: These pitfalls can mean disaster for the unaware, but for those who know the intricacies of the Federal Circuit's approaches, there are
possibilities to skirt the dangers and end up with strong patents. This is not exactly a pronouncement of narrower patents.

Jensen made clear that the "narrow claim construction" approach of the CAFC was independent of Festo: Completely independent of Festo, the Federal Circuit has been on a course of construing claims narrowly. A sleeper case that provides a powerful
claim-limiting rule is Athletic Alternatives, Inc. v. Prince Mfg., Inc.

Jensen's conclusion included the text: The reversal in Festo will not bring to a screeching halt the judicially driven hearse that for some time has been hurtling towards the cemetery to bury the doctrine of equivalents. The Federal Circuit driver likely was not listening. In other words, even though Festo was overruled, the
Federal Circuit lost only one of many powerful tools it employs in its quest for
absolute certainty and notice to the public.

Whether Jensen's PREDICTIONS about the future (from 2002) are correct can be challenged, but his article does not establish the proposition: The general consensus today, however, is that patents are narrower than they were before this decision.

One notes that Jaffe and Lerner did NOT cite another paper on Festo which was published in the same August 2002 issue of Intellectual Property Today, Litera Scripta Manet? which appeared at page 24.

The Litera Scripta Manet article included the text:

In Jungersen v. Ostby & Barton Co., 335 U.S. 560, 572 (1949), Justice Jackson observed (in dissent) that the Supreme Court's tendency to invalidate patents might lead observers to conclude that "the only patent that is valid is one which this Court has not been able to get its hands on." One year later, in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 94 L. Ed. 1097, 70 S. Ct. 854, Justices Black and Douglas dissented in a doctrine of equivalents case.

Fast forward to the year 2002. On March 28, an en banc Federal
Circuit voted 12-1 in Johnson & Johnston Associates, Inc. v. R. E. Service Co., Inc.
n6 basically to adopt Justice Black's dissent in Graver Tank that if an
inventor discloses an embodiment of an invention in a patent, but fails to claim
(or attempt to claim) that embodiment, then the embodiment is dedicated to
the public. On May 28, the Supreme Court in Festo suggested a position
that foreseeable embodiments of amended claim elements were excluded from
equivalent protection, a position in harmony with the dissent of Justices Black
and Douglas and inconsistent with the Graver Tank majority. The (dissenting)
position of two of the most anti-patent justices of the 1950's has become the rule
of law in the new millennium.

This, and other text, in Litera Scripta Manet, which was in conflict with the Jaffe/Lerner conjecture was ignored, while a different article, published in the same month, was proclaimed by Jaffe and Lerner to represent "the general consensus." It's a strange, strange world.

The article Litera Scripta Manet would be later cited in Mark R. Hull, Festo: A Fog Between the Bars, 37 Akron L. Rev. 339 (2004).

Separately, Jaffe and Lerner ignored the extension of the doctrine of equivalents to after-discovered technology. For a discussion of this issue, see Festo, Foreseeability, and the Wright Brothers, Intellectual Property Today, p. 8 (February 2004). See also Pioneering, Innovation, and Festo Last Looks, Intellectual Property Today, p. 12 (June 2002).


**
Separately, Jason Rantanen in SLAYING THE TROLL: LITIGATION AS AN EFFECTIVE STRATEGY AGAINST PATENT THREATS, 23 Santa Clara Computer & High Tech. L.J. 159, wrote of Festo:

There are limitations on the scope of equivalents, most importantly whether
the claim was amended in such a manner as to specifically exclude the equivalent.

citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 344
F.3d 1359, 1368-69 (Fed. Cir. 2003).