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I
t is a great pleasure and honor for me to
share a podium with Judge Rader, who is Unfortunately, you may learn very little to change the case law developed by the Federal
recognized as a patent scholar by United from U.S. experiences because in my view, U.S. Circuit. Second, the Supreme Court was so
States patent academics and is reknowned as the case law in these three areas is also unclear and happy and confident with the Federal Circuits
patent judge by United States patent profession- U.S. judges and patent professionals find it diffi- ability that the Court did not worry about any
als. I would like to thank Mr. Yoshida and his staff cult to give straight answers to many of the ques- uncertainty and non-uniformity that may result
for putting together this wonderful conference. tions you posed. For example, you have asked from a jurys determination of equivalents be-
how the insubstantial difference test for equiva- cause the Court was confident that the Federal
Japan has always been eager to learn from Circuit could develop a procedure to remedy such
experiences in foreign countries, particularly the lence is refined through the orderly course of case-
by-case determination after Warner-Jenkinson, as problems.11 The Supreme Court also refused to
United States and Germany. When the Japanese micromanage the Federal Circuits task of refin-
government looked for measures to spur the the Supreme Court expected the Federal Circuit to
do.8 In my view, the Federal Circuit sabotages the ing the test for equivalents.12 This is because the
economy out of its prolonged deep recession, it Court had no particular objection to the past per-
naturally looked to the experiences of the United expectations of the Supreme Court because it re-
fuses to examine the test of equivalence, and in- formance of the Federal Circuit and trusted the
States in the 1980s and the 1990s.1 Convinced Federal Circuit to continue to refine the test.
that a pro-patent policy and legislation encour- stead has developed doctrines to limit the doctrine
aging technology transfer were primary reasons of equivalents and thus created an impossible hurdle The only major disapproval was in regard
for the United States recovery from recession, for patentees to overcome to prove infringement to the way that the Federal Circuit handled the
Japans Ministry of Economy, Trade and Indus- under the doctrine of equivalents. Regarding application of prosecution history estoppel. By
try ( METI) and its agency, Japan Patent Of- means-plus-function claims, the Federal Circuit rejecting the application of prosecution history
fice ( JPO), led an extensive campaign to re- introduced much confusion, leading the patent com- estoppel when no record is produced indicating
structure the Japanese intellectual property sys- munity to question whether patent applicants why an amendment to the disputed element was
tem to give swift and strong protection to new should use such claims at all. Finally, two panel made, the Federal Circuit placed the burden for
technologies.2 These efforts by METI and JPO decisions of the Federal Circuit are in direct con- triggering the doctrine of equivalents on the ac-
persuaded the Supreme Court of Japan to re- flict with respect to the literal scope of product- cused infringer. 13 The Supreme Court consid-
structure the court system with respect to juris- by-process claims. Obviously, lower courts do ered a balance of conflicting interests, i.e. inter-
diction over intellectual property cases.3 not know which ruling to follow. I will explain ests of inventors and interests of the patent of-
these confusions and problems. fice and public, and decided that placing the bur-
These efforts also led to a significant devel- den on the accused infringer unfairly pits the in-
opment in the case law. In the1998 Ball-Spline II. Tests for Equivalence terests of inventors against the interests of the
case, 4 the Supreme Court of Japan, for the first patent office and the public. Thus, the Court
time, found infringement under the doctrine of a. Was the Supreme Court Happy shifted the balance by introducing the presump-
equivalents, emphasizing the difficulty of drafting
claims to cover future infringing embodiments and with the Federal Circuit? tion of placing the burden on the patentee, in-
stead of the infringer. 14
the necessity of maintaining incentives for inven- As far as the doctrine of equivalents is con-
tions. Prior to the Ball-Spline case, Japanese courts cerned, my main concern is that the Federal Cir- Another disapproval was minor. The Su-
consistently refused to apply the doctrine, stress- cuit paid little attention to the main point of the preme Court emphasized that lower courts should
ing the importance of legal certainty.5 Supreme Courts message in Warner-Jenkinson. apply the doctrine of equivalents on an element-
Instead, in subsequent cases, the Federal Circuit by-element basis, instead of an invention-as-a-
Although the Supreme Court set forth five whole basis.15 However, the Federal Circuit had
conditions for applying the doctrine of equiva- has paid too much attention to clarifying the Su-
preme Courts decision. What was the main point been following such an analysis since the Pennwalt
lents, the Court did not give any detailed instruc- en banc decision.16 On remand, the court reaf-
tion as to how to apply the five conditions. Lower of the Courts message? Was the Supreme Court
unhappy with the Federal Circuits efforts in firmed its decision with respect to the element-
courts therefore struggled to apply the condi- by-element analysis before remanding the case to
tions because judges had very little experience in developing the test for the doctrine of equiva-
lents? I believe the answer is NO. the district court.17 In short, the Federal Circuit
applying the doctrine of equivalents and the case should have been confident about what it devel-
law was scarce.6 Because the United States and To the contrary, the Supreme Court was oped and should not have introduced any drastic
Germany have a long history of applying the quite happy with the work done by the Federal changes.
doctrine of equivalents and rich case law, Japa- Circuit. The Supreme Courts trust was clear from
nese courts and scholars turned to the United the following points. First, in Warner-Jenkinson, b. Drastic Changes after Warner-
States and Germany to learn from their experi- the Supreme Court endorsed the Federal Circuits Jenkinson
ences. Thus, the Institute of Intellectual Prop- preservation of protection by equivalents beyond
erty invited us to speak about U.S. case law de- the literal equivalents under Section 112, Para- In spite of the Supreme Courts trust and
velopments in the three most controversial areas graph 6.9 The Court flatly refused the petitioners endorsement, the Federal Circuits attitude to-
Another problem that Festo will generate of Japan did not separate the literal protection Unfortunately, U.S. case law did not de-
is a flooding of the patent prosecution system. from the equivalent protection because it stated velop in the right direction. For the Federal Cir-
Like the old Japanese practice, narrow claim in- that the substantial value of a patented inven- cuit, the points made to clarify the tests for
terpretation will bring more patent applications tion extends not only to the structure recited in equivalence were less important than other points
to secure protection for variations. Judge Plagers the claim but also to structures that one skilled in that the Court made with respect to the element-
prediction that patent attorneys will draft nar- the art would have readily conceived as substan- by-element test and prosecution history estop-
row claims and file more applications with dif- tially identical to the structure recited in the pel. Despite the Courts instruction to use the
ferent claim scopes to avoid amendments during claim.45 perspective of one skilled in the art, the Festo
prosecution should become a reality.39 To avoid Also, the U.S. Supreme Court instructed majority adopted a new rule to decide the limit
prosecution history estoppel, more arguments lower courts to analyze infringement from the and content of equivalents, regardless of what
will be made in prosecution records and more perspective of one skilled in the art, stating that one skilled in the art would have viewed as being
appeals will be filed. This will significantly in- much as the perspective of the hypothetical surrendered.49 As experiences in the United King-
crease the administrative burden of the patent reasonable person gives content to concepts dom and Japan indicate, it is necessary to expand
office. Unfortunately, the public will pay the such as negligent behavior, the perspective of a protection beyond the scope of literal infringe-
cost of these burdens because the delay caused skilled practitioner provides content to and lim- ment to maintain reasonable fairness. The U.S.
by the administrative burden is remedied by the its on the concept of equivalence. In so far as Supreme Court instructed the Federal Circuit to
extension of the patent term under the 1999 the question under the doctrine of equivalents is develop a measure for such expansion by refining
American Inventors Protection Act.40 whether an accused element is equivalent to a the framework for the doctrine of equivalents
claimed element, the proper time for evaluating through case-by-case application of the doctrine
Because the Federal Circuit now interprets of equivalents. However, by developing mul-
claims narrowly and denies the doctrine of equiva- equivalency is at the time of infringement.46 In
other words, the perspective of one skilled in the tiple negative doctrines to completely bar the
lents as Japanese courts did before the Supreme doctrine of equivalents, unfortunately, the Fed-
Court of Japan handed down the Ball Spline de- art as of the time of infringement defines the ex-
tent of patent protection, and the patent claims eral Circuit sabotages the instructions given by
cision, all criticisms from U.S. and European the Supreme Court.
patent owners of the Japanese courts old prac- function to alert one skilled in the art and impose
a duty of care to avoid infringement not only
tice apply to the Festo majority analysis.41 It is e. Lessons from U.S. Experiences
very unfortunate for the U.S. patent community literally but also equivalently. The duty of care
imposed on one skilled in the art requires recog- In conclusion, I do not think that the Fed-
that the Federal Circuit did not learn from Japa-
nizing not only structures expressly identified in eral Circuits current practice reflects the instruc-
nese experiences before making this drastic policy
the claim and specification, but also structures tions given by the Supreme Court. In reviewing
change.
known as interchangeable, and to avoid making Festo, I hope that the Supreme Court will clarify
d. What was the Supreme Courts and using them. its own message in Warner-Jenkinson and return
Main Message in Warner-Jenkinson? the Federal Circuit back to the right track. At
The Supreme Court of Japan and the Su-
this moment, there is very little that Japan can
But the ultimate question is: did the Su- preme Court of Germany also made the same
learn from the United States with respect to tests
preme Court expect these drastic changes? What points. The Supreme Court of Germany empha-
for equivalence, unless Japan wants to return to
was the main message from the Supreme Court in sized the importance of using the view-point of
where it was a decade ago.
Warner-Jenkinson? For German and Japanese one skilled in the art, stating that the scope of the
invention as recognized by a person skilled in the I understand that the Institute of Intellec-
patent scholars and professionals who read U.S.
art is decisive in finding infringement by equiva- tual Property is also investigating United King-
decisions from a comparative perspective, the
lents, although the Court instructed to use such dom law and German law. Japan can learn much
message was clear because many statements and
perspective as of the filing date, instead of the more from Germany, which puts substantial ef-
policies discussed by the United States Supreme