U.S. Supreme Court to Hear Landmark Patent Law Case

Syosset, New York

Hoffmann & Baron, LLP is presenting a case before the Supreme Court of the United States regarding one of the most significant legal doctrines protecting inventors against patent infringers, the Doctrine of Equivalents.

The case, Festo Corporation (“Festo”) v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., a/k/a SMC Corporation, and SMC Pneumatics, Inc. (collectively “SMC”), is the “most significant case in 20 years of patent law,” according to Intellectual Property LAWCAST® (Volume VII, Number 16).

Charles R. Hoffmann, senior partner of Hoffmann & Baron, LLP, along with Robert H. Bork, former Solicitor General, will present the case for Festo before the high court on January 8, 2002. Festo’s appeal to the Supreme Court stems from the decision rendered by the full United States Court of Appeals for the Federal Circuit (CAFC) on November 29, 2000 that substantially limits the Doctrine of Equivalents. This CAFC ruling bars a patent holder from using the Doctrine of Equivalents in infringement cases if the patentee made amendments, voluntary or otherwise, to the claims in the patent application process. In the case of Festo v. SMC, because Festo changed its patent claims in the course of prosecution, Festo was prevented from enforcing its patent against SMC’s virtual copy of a patented product.

The implications of this decision are far reaching. If confirmed by the Supreme Court, it will change 150 years of patent law interpretation, and retroactively apply to most of the 1.2 million patents already in force. It also has worldwide ramifications because of the vast number of foreign companies which market their products in the United States and depend upon U.S. patents to protect their interests.

The law firm of Hoffmann & Baron, LLP has represented Festo since the case commenced in 1988. The November decision in support of SMC has been Festo’s only setback to date, after having prevailed on four previous occasions before a judge, jury, and Appellate Courts under prior legal authority. Consequently, Hoffmann & Baron, LLP petitioned the U.S. Supreme Court to reverse the CAFC decision. This position is supported by over 50 parties including MIT, 3M, Johnson & Johnson, the American Bar Association, and the Solicitor General of the United States.

The U.S. Supreme Court decided to hear the Festo case, and chose this one case out of an estimated 100 cases reviewed that day. Approximately 8000 petitions are filed per year, and the high court hears about 50 or 60 cases.

LAWCAST is a registered trademark of Vox Juris Inc.

Press Contact:
Hoffmann & Baron, LLP
Joan Zablocki
Director of Marketing
Telephone: 516-822-3550
Fax: 516-822-3582
E-Mail: jzablocki@hoffmannbaron.com