USPTO & Festo John Whealan Solicitor U.S. Patent & Trademark Office

Government Involvement in Supreme Court Cases – How? As a party  E.g. Dickinson v. Zurko  E.g. Eldred v. Ashcroft As an amicus curiae  E.g. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.  E.g. JEM AG Supply, Inc. v. Pioneer Hi-Bred Int’l

Government Amicus Participation – Why? Institutional Interest Unique Perspective

Government Amicus Participation -- When? If requested by the Court at any stage – government participation almost certain At the cert stage – government participation is rare At the merits stage – government participation is more common (22 cases during the 2001 term)

USPTO Involvement in Supreme Court Cases 2 Questions to Which “ NO ” Is Always the Answer:  Am I or is the USPTO Going to File a Brief with the Supreme Court? -- No.  Am I or is the USPTO Going to Argue a Case at the Supreme Court? – No.

The Solicitor General of the U.S. The major function of the Solicitor General's Office is to supervise and conduct government litigation in the United States Supreme Court. Virtually all such litigation is channeled through the SG’s Office. The United States is involved in about two-thirds of all the cases the U.S. Supreme Court decides on the merits each year. The Solicitor General, with input from other governmental entities, ultimately determines the cases in which Supreme Court review will be sought by the government and the positions the government will take before the Court.

The SG’s Inclusive Process – Seeking Input on I.P. Cases USPTO DOJ Civil Appellate DOJ Antitrust FTC Copyright Office FDA, EPA, ITC

Recent I.P. Cases Appealed to the Supreme Court – USPTO Input 2001 Term  JEM AG Supply, Inc. v. Pioneer Hi-Bred Int’l (plant patents)  Festo (prosecution history estoppel)  CSU v. Xerox (compulsory licensing)  Atlantic Richfield Co. v. Union Oil Co. of California (written description)

Recent I.P. Cases– USPTO Input cont’d 2002 Term  Jazz Photo Corp. v. International Trade Com'n (repair/reconstruction)  Fin Control Systems Pty., Ltd. v. Surfco Hawaii (repair/reconstruction)  Eldred v. Ashcroft (copyright term extension)  Moseley v. V Secret Catalogue, Inc. (trademark dilution)  Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc. (CAFC jurisdiction) – no pleading filed

USPTO Participation as an Amicus in Other Types of Cases Amicus Filing at the Request of a Court – e.g. Inovaction, SARL v. Humetrix, Inc. (9 th Cir. 2001) (whether a trademark application with an allegedly defective declaration should receive priority based on its filing date) Amicus Filing in Interferences at the CAFC – e.g. Berman v. Housey (Fed. Cir. 2002) (successfully arguing that the BPAI has discretion whether to reach certain patentability issues where a threshold issue under § 135(b) is dispositive) Amicus Filing in Petitions for Rehearing En Banc at the CAFC – e.g. Enzo Biochem Inc. v. Gen-Probe Inc. (Fed. Cir. 2002) (regarding permissibility of deposit of biological materials as a permissible way to meet certain patentability requirements)

Festo: USPTO Involvement CAFC En Banc Decision – Significant Case (overruling more than 50 of its precedential cases) Strong Dissents from Four CAFC Judges Both Sides Sought Governmental Amicus Participation at Cert. Stage Government Did Not File at Cert Stage

Festo: Considerations for Government Amicus Participation at the Merits Stage Institutional Interest – Government Administers the Patent System (USPTO Operations, Effects on Existing Patents, Effects on Patent Prosecution) Unique Perspective – A Test in Between the Complete Bar and the Absolute Bar

Festo: Government Participation Input from USPTO, DOJ Antitrust, DOJ Civil Appellate, DOJ Commercial Litigation Consideration of Prior Government Positions on Doctrine of Equivalents Before the Supreme Court Formulation of the Government’s Position

Festo: Government’s Position Government agreed with CAFC majority that any narrowing amendment made for reasons of patentability should trigger PHE Government disagreed with the CAFC majority’s complete bar, and instead proposed a rebuttable presumption that a narrowing amendment preserved no range of equivalents  presumption can be overcome where, e.g., equivalent was later-developed technology (see J. Rader’s dissent), or where “it was not possible … to draft a claim amendment that literally encompassed the allegedly equivalent element while disclaiming the surrendered subject matter”

Supreme Court’s Festo Decision Cert Question # 1: Affirms holding that “a narrowing amendment made to satisfy any requirement of the Patent Act may give rise to an estoppel” Cert Question # 2: Rejects complete bar and adopts rebuttable presumptive bar (citing the Government’s position)

Festo’s Aftermath What is “unforeseeable at the time of the amendment”? What is “beyond a fair interpretation of what was surrendered”? What timeframe controls the “interpretation”? What type of evidence will rebut the presumption?

GVRs In View of Festo – Answers? Pioneer Magnetics, Inc. v. Micro Linear Mycogen Plant Science, Inc. v. Monsanto Co. Insituform Technologies, Inc. v. CAT Contracting, Inc. Senior Technologies, Inc. v. R. F. Tech. Creo Products, Inc. v. Dainippon Screen Mfg. Co., Ltd. Semitool, Inc. v. Novellus Systems, Lockheed Martin Corp. v. Space System/Loral, Inc AccuScan, Inc. v. Xerox Corp PTI Tech. v. Pall Corp. Tech.