Saturday, July 07, 2007

The July 2007 installment of Festo v. SMC

In the July 2007 installment of the Festo v. SMC saga, Judge Dyk authored an opinion concluding that SMC did NOT infringe under the doctrine of equivalents.

The opinion represents a look into the concept of "foreseeability", a doctrine newly minted by the Supreme Court in 535 US 722. The CAFC decision, a 2-1 vote (Newman dissenting), is a poster child illustrating why foreseeability is not a desirable analytical method for evaluating prosecution history estoppel. But, the Supreme Court created it, and the CAFC contemplated it in the July 5, 2007 decision.

The entire saga comes to us through a bad amendment by Festo, who introduced a limitation to a magnetizable sleeve, where the USPTO had identified no reason to create such a limitation. The first moral of the case is to think about your amendments, and don't create limitations for no reasons.

SMC learned that aluminum, a non-magnetizable metal, with ferromagnetic impurities within it, could do the job. You would not understand this basic fact from reading the July 2007 opinion. The entirety of SMC's sleeve, aluminum with a low level of ferromagnets, was not "magnetizable" as a third grader in elementary school would understand things. But it worked in the same "way" as Festo's sleeve. What to do?

In total distinction to KSR v. Teleflex, the courts reviewing Festo never got to the underlying science of the matter. Thus, if one has "complicated" technology, litigants should not expect the case to be resolved through an understanding of the technology. And, additionally, the Supreme Court created an unworkable doctrine out of thin air.

Further, contrary to the general theme of Jaffe and Lerner's Innovation and Its Discontents, the CAFC was ANTI-patentee in creating the absolute bar (later vacated by the PRO-patentee Supreme Court) and, based on the July 2007 decision, the CAFC promises to be anti-patentee in applying the foreseeability doctrine. You simply can't believe what Jaffe and Lerner are saying.

See also:

***For the record, claim 1 of US 4,354,125:

In an arrangement having a hollow cylindrical tube and driving and driven members movable thereon for conveying articles, the improvement comprising wherein said tube is made of a nonmagnetic material, wherein said driving member is a piston movably mounted on the inside of said tube, said piston having a piston body and plural axially spaced, first permanent annular magnets encircling said piston body, said piston further including first means spacing said first permanent magnets in said axial spaced relation, the radially peripheral surface of said magnets being oriented close to the internal wall surface of said tube, said piston further including plural guide ring means encircling said piston body and slidingly engaging said internal wall and first sealing rings located axially outside said guide rings for wiping said internal wall as said piston moves along said tube to thereby cause any impurities that may be present in said tube to be pushed along said tube so that said first annular magnets will be free of interference from said impurities, wherein said driven member includes a cylindrical sleeve made of a magnetizable material and encircles said tube, said sleeve having plural axially spaced second permanent annular magnets affixed thereto and in magnetically attracting relation to said first permanent annular magnets and second means spacing said second permanent annular magnets in said axially spaced relation, the radially inner surface of said magnets being oriented close to the external surface of said tube, said sleeve having end face means with second sealing rings located axially outside said second permanent annular magnets for wiping the external wall surface of said tube as said driven member is moved along said tube in response to a driving movement of said piston to thereby cause any impurities that may be present on said tube to be pushed along said tube so that said second permanent annular magnets will be free of interference from said impurities.

Within the specification-->

If the driven assembly is provided with a sleeve made of a magnetisable material, which encircles the hollow cylindrical assembly of the magnet arrangement, magnetic leakage fields in the vicinity of the driven assembly can be kept to a minimum. In this way, undesirable braking forces, which would otherwise be generated while piston and driven assembly pass magnetisable machine components, are avoided. By selecting a non-magnetisable material for the piston body, a more inhomogeneous magnetic field is generated in the space defined by the driven assembly, a favourable development in the interests of increasing the drive force.

Contrary to a report in a different blog, the term at issue was magnetizable, not magnetic (other blog: Patentees added the limitation that the sleeve was made of a "magnetic material," )

Magnetizable basically means "Capable of being magnetized". Although "magnetic" can have that meaning, it is NOT the primary meaning of magnetic.


Blogger Lawrence B. Ebert said...

From LBE, Festo: the coming storm?, Intellectual Property Today, p. 48 (August, 2001):

First, of the amendment during the prosecution of the asserted Stoll patent, wherein claim 1 was amended n6 to include a new limitation "a cylindrical sleeve made of magnetizable material," one probably has an unexplained amendment to which the Warner-Jenkinson presumption should attach. This amendment was not logically in response to the then-pending rejection under 35 USC 112, and might possibly have been related to the art disclosed by applicant at the time (German patents 2737924 and 1982379; Festo, 234 F.3d at 583). If the presumption were not rebutted, there would be no doctrine of equivalents pursuant to Warner-Jenkinson. n7 Separately, because the universe of cylindrical sleeves consists of those of magnetizable material and those of non-magnetizable material, which materials function in different ways, the use of a non-magnetizable material could not be an equivalent. n8

From LBE, Abstracting Festo: Which Line To Draw?, Intellectual Property Today, p. 44 (October 2001):

In response to the examiner's rejection under 112 which stated the "exact method of operation is unclear. Is [the] device a true motor or a magnetic clutch?", the applicant canceled the base claim 1 and presented a new independent claim 13, which comprised limitations from four dependent claims. n3 One of the limitations was "a cylindrical sleeve made of magnetizable material."

There is no explicit reason why the applicant added the limitation "a cylindrical sleeve made of magnetizable material."

The defendant SMC used a sleeve made of an aluminum alloy which apparently comprised some ferromagnetic material. Thus, although aluminum is not a magnetizable material, there were magnetic entities within the aluminum; whether that constitutes a "magnetizable material" is an interesting question. On this claim element, Festo asserted infringement under the doctrine of equivalents, and the matter was tried to a jury. The pertinent text is found in an earlier reported decision, Festo, 37 USPQ2d at 1164: "Festo's expert witness in the field of physics and magnetism, Dr. Schroeder, explained that because of the small gap, any magnetic flux leaking from the cylinder is very small. He showed that tests conducted on the SMC sleeve, and explained the evidence that a 300% reduction in magnetic leakage fields was produced by the SMC sleeve. Dr. Schroeder explained how he analyzed the composition of the SMC sleeve and compared it to the sleeve described in the patent. He testified that the SMC sleeve formed a magnetic circuit in substantially the same way as the sleeve of the patent, that it served the same function of shielding and minimizing leakage fields, and that it obtained substantially the same result of avoiding undesirable braking forces." The 1995 Federal Circuit panel went on to say: "Although the differing expert opinions reflect the closeness of the technologic facts, there was substantial evidence whereby a reasonable jury could have found infringement of the Stoll patent in terms of the doctrine of equivalents." n4

From LBE, Festo Briefs: Which Future for 21st Century Patent Law?, Intellectual Property Today, p. 20 (November 2001):

The facts of the Festo case itself illustrate the difficulties with this approach. Of the amendment during the prosecution of the asserted Stoll patent, wherein claim I was "amended" n6 to include a new limitation "a cylindrical sleeve made of magnetizable material," the problem concerns the meaning of the word "magnetizable" and possibly of the words "made of."

Of the issue with magnetizable, the world of "cylindrical sleeves" is divided into those which are magnetizable and those which are not magnetizable. The mere act of writing "a cylindrical sleeve made of magnetizable material" presupposes the existence of cylindrical sleeves made of non-magnetizable material. The patent applicant told one of ordinary skill: in the world of cylindrical sleeves, select from those which are made of magnetizable material. Whether the use of sleeves made of non-magnetizable material was a later-developed technology, or not, is not the right question to be asking in this context. That is, if it were the accused infringer who discovered that non-magnetizable materials would work, and not the patent applicant/patentee, who should society reward and who should society punish? n7 Whether the "later-developed technology" test of the brief would achieve a fair result here is not clear.

n7 The buckminsterfullerene story illustrates how the Nobel Prize committee views the question. The second group of researchers who published the correct structure in 1985 won the prize, and the first group of researchers who described the C60 compound, and a way to make it, in 1984 [published in J. Chem. Phys. 1984, 81, 3322], went home empty handed [see also, L. B. Ebert, "Written Description: Circumscribing Possession to Prevent Overreaching," IPT, pp. 78-79 (Oct. 2000)]. It is separately true that the "later-developed technologies" query of the brief of the Solicitor General presumes that the patentee should control the unknown zone around the literal scope of a patent claim and therein runs afoul of policy inferences given by Robert P. Merges and Richard R. Nelson, 90 Colum. L. Rev. 839 (1990) on underfishing and separately the findings within footnote 353 of Merges/Nelson.

Of the issue with "made of," patent attorneys are familiar with the terms "consisting of," "consisting essentially of," and "comprising." To first order, "made of" looks like "consisting of" or "consisting essentially of." What apparently happened in the Festo case was that the accused infringer, whether advertently or inadvertently, practiced with an aluminum sleeve which comprised some ferromagnetic material, which amount was not sufficient to render the sleeve "magnetizable" as would be understood by a third grader with a bar magnet but which was sufficient to achieve some benefits. Whether the function of the magnetizable sleeve or the benefits therefrom are part of the claim language is a separate question. n8 Although Festo might not be able to show that persons of ordinary skill could not reasonably have drafted a claim element "a cylindrical sleeve comprising a magnetizable material," it's not clear that that reason alone should foreclose the doctrine of equivalents.

From LBE, Festo: A Time to Cast Away Stones?, Intellectual Property Today, p. 15 (January 2002):

This comment from the IBM brief perhaps does not give full recognition to both economic and time limitations in prosecuting applications. In the Festo case itself, there may have been a pass-through of a poor translation from the German as to "magnetizable sleeve," which translation has created much of the issue as to the Stoll patent. Even large corporations sometimes allocate only minimal amounts, such as $ 3,000, to the drafting of applications, which amount does not provide for detailed analysis. Separately, it may sometimes be that patent attorneys, who typically possess only B.S. level degrees, do not fully appreciate the technology. In Festo, the actual phenomenon/process sought to be protected in the claim far transcended the concept of "magnetizable." Separately, this author was recently involved in a discussion about ionization of matter via radiation, which turned on an understanding of the principles of Einstein's analysis of the photoelectric effect (which analysis was the basis of Einstein's Nobel Prize). Although Einstein did the work in 1905, and it forms the basis for undergraduate texts in physics and chemistry, its somewhat counterintuitive result remains elusive to some, especially in a situation wherein decisions must be made quickly. To put it differently, if Milliken, who himself won a Nobel Prize, didn't believe the result for ten years, should we be surprised that a patent attorney in 2001, doesn't believe the result on ten minutes reflection?

From LBE, Pioneering, Innovation, and Festo Last Looks, Intellectual Property Today, p. 12 (June 2002):

These suggestions are not helpful in applying DOE to the facts of Festo. Of the first suggestion, as to the Stoll patent, the mention of the claim element "magnetizable sleeve" both implies that a non-magnetizable sleeve was known and that it was not part of the invention. The problem confronting us is whether the claim encompasses through DOE a non-magnetizable sleeve that comprises ferromagnetic impurities insufficient to render the sleeve magnetizable (in the commonly-understood meaning of the term n4) but which provides some of the functional benefits of the magnetizable sleeve. n5 Of the second suggestion, I believe it was possible for one of ordinary skill to draft a claim or amendment that literally encompassed the allegedly equivalent element; in the Festo case as to this claim, there was no need to disclaim anything. n6 As to the claim of the Stoll patent, wherein the patentee combined elements from several dependent claims to form a new independent claim, it is doubtful that the patent applicant intended to surrender any equivalent scope as to any individual claim element; the applicant was requiring the presence of each of the added elements.


However, although that report mentions that the Festo expert "analyzed the composition of the SMC sleeve and compared it to the sleeve described in the patent," the report does not mention the result of the comparison, and the independent claim at issue in the present Festo case does not include a composition limitation. The limitation is magnetizable. As to the possibility that the element may have been claimed in the wrong way, the case is reminiscent of claim 1 of the wheelbarrow in Radio Steel v. MTD, 221 USPQ 657 (CAFC 1984) [patentee's request to "read the claim in light of the remainder of the patent disclosure"]

From LBE, Just The Facts, Ma'am, p. 9 (January 2003):

As a odd "update" on the Festo case itself, n16 the Federal Circuit in Nikken v. Robinsons-May n17 propounded on the word magnetizable (the key word at issue with the Stoll patent in Festo): "Thus, we conclude that the phrase "magnetizable flexible sheet" requires that "the flexible sheet itself must be capable of being made a magnet." One recalls that the aluminum sleeve of the accused
infringer in Festo was not capable of being made a magnet.

5:58 AM  

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