Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistKickerFeaturesSectionsNewsLJN Newsletters

Tangential Equivalents: Recent Case Confirms There Is Life After Festo

By Hope Melville and Donald E. Daybell
November 30, 2004

On Oct. 4, 2004, the Federal Circuit rendered its opinion in Insituform Techs., Inc. v. Cat Contracting, Inc. (“Insituform IV“), 385 F.3d 1360 (Fed. Cir. 2004). This opinion is the first post-Festo Federal Circuit opinion that finds a successful rebuttal of the Festo presumption (eg, the presumption of the surrender of infringement under the doctrine of equivalents due to prosecution history estoppel) based on the “tangential relationship” prong of Festo. This case seems to set a fairly low bar for the rebuttal of the presumption. This is a significant development given the Federal Circuit's apparent desire to restrict the doctrine of equivalents (as reflected in its initial Festo ruling that was reversed by the Supreme Court, as well as by the tenor of the post-reversal Festo opinion).

The patent at issue in Insituform IV concerns a process for impregnating a pipe liner with resin. The process requires applying a vacuum to the inside of the liner using “a” vacuum cup attached to a vacuum source and connected to a hole cut in the outside of the liner near the resin. The resulting vacuum draws the resin into the liner. When the resin is drawn in up to the level of the vacuum cup, the cup is moved to another hole cut in the liner further along the length of the liner. The accused method differed from the claimed method only in that the accused method used multiple vacuum cups rather than “a” cup.

Following a bench trial (and several appeals), a judgment of infringement under the doctrine of equivalents was entered by the district court. The issue on appeal in Insituform IV was whether the doctrine of equivalents was barred by prosecution history estoppel, and in particular how the recent Festo decision affected this determination.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

Legal Possession: What Does It Mean? Image

Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.

The Anti-Assignment Override Provisions Image

UCC Sections 9406(d) and 9408(a) are one of the most powerful, yet least understood, sections of the Uniform Commercial Code. On their face, they appear to override anti-assignment provisions in agreements that would limit the grant of a security interest. But do these sections really work?