The U.S. Supreme Court Decision in Festo Corp. v. Shoketsu Kogyo Kabushiki Co., Ltd. On May 28, 2002, the United States Supreme Court issued a ruling in the case of Festo Corp. v. Shoketsu Kogyo Kabushiki Co., Ltd. (“Festo”) (535 U.S. ___ (2002)). In a unanimous decision, the Court held that prosecution history estoppel may apply to any claim amendment made to satisfy the Patent Act’s requirements and not just to amendments made to avoid the prior art. The Supreme Court additionally held that estoppel need not bar suit against every equivalent to the amended claim element. The Court remanded… Read more

PLAIN TALK ABOUT INFRINGEMENT AND THE DOCTRINE OF EQUIVALENTS FROM THE SUPREME COURT OF THE UNITED STATES The U.S. Supreme Court Decision in Festo Corp. v. Shoketsu Kogyo Kabushiki Co., Ltd. Part I of this paper provided the background of the Festo case, particularly focusing on the proceedings before the U.S. Court of Appeals for the Federal Court, the ruling of which shocked inventors and patent practitioners worldwide. Part II discusses the much-anticipated ruling by the U.S. Supreme Court. PART II: THE SUPREME COURT DECIDES Summary On May 28, 2002, the United States Supreme Court issued a ruling in the… Read more

I. INTRODUCTION: In recent years much has been written about the protection of software. There are those who are pro-copyright, pro-patent, pro-sui generis and those favoring or opposing various combinations of the foregoing. This paper does not take a position on what law may afford the greatest protection for software, rather, this paper is intended to serve as an introduction to the existing protection afforded by the laws of copyright, patent, and trade secrets, the principle laws protecting software. Also addressed are trade dress protection for software and the enforceability of shrinkwrap licenses. At the outset, a few basic definitions… Read more