[Ip-health] Festo help

[James Love]

For a brief to the CAFC on the Festo case, I was asked if we could provide
the following information:


"Does anyone know of any good examples of technologies (e.g.,
pharmaceuticals, computing or communications, etc.) where the inventors
intentionally designed around a narrowed claim element in an existing patent
and came up with an important and relatively broad innovation.  In
particular, we are looking for examples to demonstrate why "later-arising
technology" that was not enabled by the original patent should not be
considered an equivalent of the narrowed claim.  There are two circumstances
where this occurs:  (a) the original patent had over-broad claims that -- if
they had not been narrrowed -- would have "read on" the new innovation; and
(b) the new innovation was not covered by the original claim -- even if
generous construed.  These examples would demonstrate how extending
equivalents protection to later arising technology nullifies statutory
requirements for patentability and chills subsequent and important
innovations.  If the examples can be drawn from existing cases (so we won't
waste words reciting the facts), so much the better.




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James Love, Consumer Project on Technology
http://www.cptech.org, mailto:love@cptech.org
voice: 1.202.387.8030; mobile 1.202.361.3040