Patent Issues in the Appelate Pipeline* - Part 2

Controversy continues over the Federal Circuit’s interpretation of Festo Corp. v. Shoketsu Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002), in its decision on remand, 344 F.3d 1359 (Fed. Cir. 2003)(en banc).

An en banc reaffirmation of the broad principles of the Federal Circuit’s ruling has been challenged by a vigorous dissenting opinion that has sparked interest at the Supreme Court – which still has open the issue of grant of review from the opinion from June 4, 2004. Honeywell Intern. Inc. v. Hamilton Sundstrand Corp., Supreme Court App. No. 04-293, opinion below, 370 F.3d 1131 (Fed. Cir. 2004)(en banc)(Dyk, J.). The issue is whether a near unanimous en banc court correctly held that "rewriting of dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel."