Sobel Gerald
Partner Kaye Scholer LLP, New York, New York 10022-3598, USA.
Adv Genet. 2003;50:23-64; discussion 507-10. doi: 10.1016/s0065-2660(03)50003-7.
The article that follows examines the competition policy reflected in the decisions of the Court of Appeals for the Federal Circuit in its patent cases. The court's views on this subject have been manifested most plainly in decisions that have transformed the law concerning infringement under the doctrine of equivalents and claim construction. In both categories, the court narrowed patent scope by reason of its desire to protect competitors. The article argues that the court's premise in prescribing narrower claim scope reflected an incomplete view of competition policy. The court's analysis overlooked the benefits to competition provided by patents, which stimulate inventions and their development. The article traces the development of antitrust jurisprudence and demonstrates how respect for the contribution of patents to competition and skepticism of free-riding has evolved, particularly beginning in the 1970s. The article draws a parallel between the Court's reasoning about competition policy, on the one hand, and the rejected views of Justices Hugo Black and William O. Douglas and abandoned patent-antitrust jurisprudence, on the other. The Federal Circuit's decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed. Cir. 2000), on the subject of equivalents is considered in the paper. In that decision, the majority adopted a new rule that completely barred infringement under the doctrine of equivalents of any claim limitation where, in prosecution, there had been a narrowing amendment relating to patentability. In the past, prosecution estoppel foreclosing equivalents had been subject to a "flexible bar," which, in some circumstances, allowed for equivalence notwithstanding such an amendment. The article points out that because almost all patents are amended during prosecution, the effect would be to allow widespread copying of patented inventions by trivial modifications of any narrowed claim limitation. The incentive to innovate in the future would be correspondingly diminished and the expectations of past patentees would be correspondingly altered.
接下来的这篇文章审视了联邦巡回上诉法院在专利案件判决中所体现的竞争政策。该法院在这一问题上的观点，在那些改变了等同原则和权利要求解释相关法律的判决中表现得最为明显。在这两类案件中，法院出于保护竞争对手的愿望而缩小了专利范围。文章认为，法院在规定更窄权利要求范围时的前提反映了对竞争政策的不完整看法。法院的分析忽视了专利对竞争的益处，而专利能刺激发明创造及其发展。文章追溯了反垄断法理学的发展，并展示了对专利对竞争的贡献的尊重以及对搭便车行为的怀疑是如何演变的，尤其是从20世纪70年代开始。文章一方面将法院关于竞争政策的推理，与大法官雨果·布莱克和威廉·O·道格拉斯被否决的观点以及被摒弃的专利反垄断法理学进行了类比。本文还考虑了联邦巡回上诉法院在费斯托公司诉日本触媒株式会社案（Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed. Cir. 20
