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Tangential Equivalents: Recent Case Confirms There Is Life After Festo

BY Hope Melville
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.

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