Festo Corporation vs. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., a/k/a SMC Corporation, and SMC Pneumatics, Inc.

Federal Circuit Vacates Festo Decision, Orders That Case Be

Reheard In Banc and Invites Amicus Curiae Briefs

One of the most important, if not the most important, issue in patent law today is the seemingly irreconcilable conflict between the statutory requirement (35 U.S.C. §112, ¶2) that claims define the invention and the doctrine of equivalents which often makes it difficult if not impossible for a competitor to ascertain what is and what is not covered by a patent. This issue is squarely addressed in Festo v. SMC, a case in which there was a panel decision by the Federal Circuit in 1995 (72 F.3d 857), a petition for a writ of certiorari to the United States Supreme Court in 1996, a granting of the petition by the Supreme Court and a vacation of the first panel decision in 1997 (117 S.Ct. 1240), a second oral argument in 1997, a second panel decision in 1999 (172 F.3d 1361) and, on August 20, 1999, a vacation of the second panel decision and an order that the matter be reheard in banc (187 F.3d 1381). The August 20 order also invites the submission of amicus curiae briefs. After the briefing is completed, the Federal Circuit will schedule oral argument. Our firm has represented SMC since the inception of this case in 1988. Arthur Neustadt of our firm has headed our firm's representation.

SMC's in banc opening brief was filed with the Federal Circuit on October 19.

Please click the PDF link above to view the brief.

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