July 16, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers an errata and the final patent case that was appealed from the district court level and decided by the Federal Circuit during the 27th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Omegaflex, Inc. v. Parker- Hannifin Corporation (errata) (07/03/2007, non-precedential): errata to make typographical corrections within the Omegaflex, Inc. v. Parker-Hannifin Corporation decision from June 18, 2007

Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co. (also known as SMC Corporation) (07/05/2007): this case raises the question of whether an equivalent is foreseeable within the meaning of Festo VIII and subject to surrender under the doctrine of prosecution history estoppel; discussion of patent related to a magnetically coupled arrangement operable by a pressure medium (U.S. Patent No. 4,354,125, entitled “Magnetically coupled arrangement for a driving and a driven member”); “[w]e disagree that the foreseeability test requires application of the function/way/result or insubstantial differences test” and “[r]ather, we find that an alternative is foreseeable if it is disclosed in the pertinent prior art in the field of the invention”; “[t]he theory of the doctrine of equivalents is that an applicant through the doctrine of equivalents should only be able to protect the scope of his invention … not to expand the protectable scope of the claimed invention to cover a new and unclaimed invention”; the Court concludes that “foreseeability does not require the applicant to be aware that a particular equivalent would satisfy the insubstantial differences test or the function/way/result test with respect to the claim as amended” and that SMC’s aluminum sleeve was a foreseeable alternative to Festo’s magnetizable sleeve and that prosecution history estoppel applies; District Court’s decision of no infringement of the patent-in-suit affirmed


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Mark Reichel
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I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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