Landmark Festo Case Update: District Court Finds for SMC

A U.S. district judge in the District of Massachusetts has found that Festo Corporation did not prove SMC Corp. infringed its patents under the doctrine of equivalents in a bench trial on the landmark case. After being remanded by the U.S. Supreme Court and the Court of Appeals for the Federal Circuit (CAFC), the trial court’s issue on remand was whether Festo could rebut the presumption of surrender by establishing that two accused equivalents of defendant SMC’s accused device would have been unforeseeable to one of ordinary skill in the art at the time of certain narrowing amendments to the application for the Stoll patent (U.S. Patent No. 4,354,125) held by Festo.

The Judge wrote, “I find that both the single sealing ring and the non-magnetizable aluminum sleeve in the accused SMC device would have been foreseeable to one of ordinary skill in the art at the time of the narrowing amendments, that is November 1981. Because Festo has not rebutted the presumption of surrender for these asserted equivalents, it has not proven patent infringement under the doctrine of equivalents. The Court enters judgment for defendant.”

“SMC is, of course, quite pleased with this decision,” said Arthur I. Neustadt, a name partner at Oblon, Spivak, McClelland, Maier & Neustadt, P.C., and the lead counsel for SMC who successfully argued this case before the Supreme Court and twice before the en banc Federal Circuit. Mr. Neustadt is available for interviews.