Contact: Chris McManes
Marketing Communications/Public Relations Coordinator
Phone: +1 202 785 0017, x8356
E-mail: c.mcmanes@ieee.org

U.S. Supreme Court Adopts 
IEEE-USA Patent Rights Proposal

Washington (29 May 2002) — The U.S. Supreme Court, in a unanimous decision Tuesday, substantially adopted IEEE-USA's proposed "foreseeable bar" standard on patent rights.

Ruling in the Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., LTD. case (http://www.supremecourtus.gov/opinions/01pdf/00-1543.pdf), the Court vacated and remanded the case back to Federal Circuit court, while rejecting each party's opposing standards.

The Festo case involves to what extent the holder of an amended patent is barred from asserting patent rights against another inventor whose design is substantially the same as the patented invention. As an alternative to the "flexible bar" and "absolute bar" standards advocated by the opposing sides in Festo, IEEE-USA's "foreseeable bar" states that holders of an amended patent give up protection for only those things that were foreseeable by persons familiar with the associated technology.

According to Bloomberg News, as reported in the New York Times today, the Supreme Court ruled that "patent holders who could not have foreseen that changing the description in an application would limit coverage" would still be able to sue others who make "equivalent" products.

Bloomberg also reported Thursday that the "ruling may prove to be the most significant Supreme Court patent decision in two decades, affecting as many as 90 percent of the 1.2 million patents now in force, lawyers said."

IEEE-USA submitted its proposal in an amicus curiae brief that was discussed openly during oral arguments on Jan. 8. That day, Justice Sandra Day O'Connor asked both sides to compare and contrast their position with that of IEEE-USA's, while other justices quizzed the parties on IEEE-USA's "foreseeable bar."

Justice Anthony M. Kennedy, writing for the Supreme Court, said that, "The patentee must show that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent."

In its friend-of-the-court brief, IEEE-USA wrote that "the doctrine of equivalents should be permitted to apply unless the limiting effect of the amended language with respect to an accused device would have been foreseeable at the time of the amendment. Applied objectively, from the perspective of a reasonable person skilled in the art, this 'foreseeable bar' applies principles that are readily, if not commonly, understood by both the public and the judiciary."

Carlton Fields, P.A. of Tampa (www.carltonfields.com) prepared the brief for IEEE-USA pro bono. Andrew Greenberg, a member of IEEE-USA's Intellectual Property Committee, served as counsel of record and headed a team of 10 lawyers and legal assistants.

"We are very pleased with the result," Greenberg said. "The Supreme Court's adoption of the foreseeability test brings into balance competing policies that form the heart and soul of our patent system."

The IEEE-USA brief and other relevant resources are available at http://www.ieeeusa.org/forum/POLICY/2001/01aug31festo.html. See the related IEEE-USA Today's Engineer article at http://www.todaysengineer.org/May02/festo.htm. The oral arguments are found at http://www.supremecourtus.gov/oral_arguments/argument_transcripts.html.

IEEE-USA is an organizational unit of The Institute of Electrical and Electronics Engineers created in 1973 to promote the careers and public-policy interests of the more than 235,000 electrical, electronics, computer and software engineers who are U.S. members of the IEEE. The IEEE is the world's largest technical professional society. For more information, go to http://www.ieeeusa.org.

| Top of Page | News Releases | IEEE News | IEEE | IEEE-USA |

Last Updated: 24 April 2002
Staff Contact:  Chris McManes, c.mcmanes@ieee.org