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Issue 48 | February 6, 2003
Festo Arguments Held Today
 Today, an en banc panel of the Federal Circuit entertained oral arguments in the case Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., which was remanded to the Federal Circuit by the Supreme Court on May 28, 2002. The Federal Circuit had requested the parties to submit briefs on the following four questions: (1) after it is determined that a presumption arises that there are no equivalents following a narrowing amendment, whether the rebuttal of that presumption is a question of law or of fact and what role a jury should play; (2) what factors are encompassed by the criteria set forth by the Supreme Court; (3) if factual findings are required to determine whether the presumption is rebutted (in this case), whether remand to the district court is necessary; and (4) if remand is not necessary in the instant case, whether Festo can rebut the presumption.

The panel's comments and questions touched upon a wide span of legal issues ranging from equity under English common law, 7th Amendment Constitutional rights to a jury trial in addition to the Supreme Court's more contemporary precedent Graver Tank and Warner Jenkinson.

Through often times spirited questions, the panel solicited guidance from both parties and the United States government (amicus curiae) on how to draw parameters on any underlying facts that should be considered to rebut the presumption that a particular equivalent was surrendered, and whether those factual determinations were within the province of the judge or a jury. In conjunction with this question, the Court asked the litigants to comment on whether the rebuttal determination should be decided in the same manner as claims are construed (the Markman hearing), or alternatively, whether the question should be decided in the manner that obviousness determinations or inequitable conduct determinations are made. Thus, the panel challenged the parties to not just characterize the presumption rebuttal as an issue of fact or law, but to examine the matter from several angles, including the standard of review.

The Association of Patent Law Firms will present a panel discussion on the outstanding issues, the arguments presented and the questions asked of counsel during the Federal Circuit Court en banc hearing on Tuesday, February 11, 2003, from 12:30 - 1:30 (Eastern Standard Time). Dial the following toll free telephone number: 1.800.915.4836 There is no additional code number. Please RSVP, if you have not done so already, to ensure we have ordered sufficient lines

To discuss this topic further, please contact the authors, Jill M. Browning, of Greenblum & Bernstein, PLC, Susan P. Pan, at Sughrue, Mion PLLC, and G. Paul Edgell, of Fitch, Even, Tabin & Flannery. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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