Monday’s Federal Circuit decision in Insituform Technologies v. CAT Contracting, et al. answers one of the deepest, most profound questions ever to arise in patent jurisprudence. That question – asked by corporate executives everywhere – is, “Why does patent litigation cost so damn much?”

The Insituform decision is a fascinating example of a system run amok. It’s remarkable not for its actual holding, but for its account of the tortured history the case has had in the fourteen years since being filed. Procedure and endless obsessing over minutiae have displaced lesser concerns, such as rendering a more-or-less reasoned decision while the litigants are still young enough to care.

For grins, read the decision without trying to follow or understand all the twists and turns in detail. Just get a flavor for what has been going on. If I’ve got it right, the script goes something like this:

The case is filed in 1990. In 1991 a jury finds there is both literal infringement and infringement under the Doctrine of Equivalents. We’re only one year into things and the case is moving right along. So far, so good!

Then the judges get involved and things get a bit complicated.

The trial judge tosses out the jury’s finding of infringement and the case goes up on appeal. The Federal Circuit says not only was the jury wrong, the judge messed up too. He didn’t construe the claim correctly. The Federal Circuit helpfully gives its take on what the claim actually means. A bench trial is then held before a different judge who finds that, given the new claim construction there is no literal infringement,but that there is infringement under the Doctrine of Equivalents. This takes us up to about 1995.

Back we go to the Federal Circuit. While there, the decision in Festo comes along and any hope of finding infringement under the Doctrine of Equivalents goes out the window. But then new hope appears on the horizon. The Supreme Court gets into the act and decides it better take a look at this Festo case everyone’s talking about. They decide the Federal Circuit is wrong in Festo and reinstate the Doctrine of Equivalents – sort of. Additionally, they grant Insituform’s petition for cert., vacate the judgment and remand the case for further proceedings.

Again we go to the Federal Circuit, which now has to apply the current law – provided it can figure out what that is. THIS time, the Federal Circuit decides that there IS infringement under the Doctrine of Equivalents and (thirteen years after the original jury’s finding to the same effect) finds liability for patent infringment.

To me, many things are striking and slightly bizare about all this. First is that it has taken thirteen years and who knows how many dollars to come full circle and achieve the same result a jury provided not long after the case was filed. Moreover, I think the claim construction determined by the Federal Circuit is fundamentally wrong – I don’t see that the claim is limited only to one “window” and “cup.” It appears that the Doctrine of Equivalents was needlessly swept into the case because the Federal Circuit improperly limited the claim to the preferred embodiment rather than to what was actually claimed. (The claim specifies “forming a window” in an impermeable layer and “disposing over the window a cup.” The court held this does not encompass the accused process of using more than one window and cup. Note that the claim does not say “only” one window and cup. Under the common sense proposition that, if you are using two, you necessarily use “one” as well, there seems to be literal infringement here, but hey, I don’t wear a robe.) I suspect what happened was the Federal Circuit got it wrong by construing the claim too narrowly in the first place. The court realized its error years later and then had to go through all these rhetorical gymnastics to reach the same decision the laypeople on the jury provided a decade earlier. But that’s just me.

I come back to a recurring question. Is all this really better than letting juries decide the meaning and scope of patent claims? This case has literally gone all the way to the Supreme Court, and not only did the jury apparently get it right way back in 1991, the judge’s and court’s subsequent individual views have been so much all over the map as to almost be laughable. Finally, for the parties themselves, and regardless of who nominally won or lost, is the result today any better than simply living with whatever the jury decided in 1991?

My experience has been that business people often don’t really care about who is right or wrong, they simply want to know with reasonable certainty what they can and can’t do. Does waiting fourteen years for an answer serve this goal? (And by the way, the case still isn’t over – the Federal Circuit remanded several issues for further proceedings.)

Anyway, this couldn’t have been cheap.

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Photo of Philip P. Mann Philip P. Mann

Philip P. Mann is a trial lawyer with over twenty years experience litigating patent, trademark, trade secret, and other intellectual property matters throughout the country.
Mann’s trial work has taken him to various federal and state courts where he’s tried both cases to…

Philip P. Mann is a trial lawyer with over twenty years experience litigating patent, trademark, trade secret, and other intellectual property matters throughout the country.
Mann’s trial work has taken him to various federal and state courts where he’s tried both cases to the court (a judge) as well as before juries. In addition to trial court work, Mann has performed appellate work before the United States Court of Appeals for the Federal Circuit.
Mann began his legal career in Chicago and Milwaukee before heading to Seattle where some of America’s most innovative companies were developing new technologies at breakneck speed. Before founding his own firm, he was a member of the Seattle Intellectual Property Law Firm, Christensen O’Connor Johnson Kindness.
Mann is an “AV” rated lawyer by Martindale Hubbell, indicative that he has reached the height of professional excellence and is recognized for the highest levels of skill and integrity.
He holds a degree in Electrical Engineering from the University of Illinois (Urbana) and received his law degree from the Washington University School of Law in St. Louis, Missouri. He is admitted to practice in the States of Illinois and Washington, as well as before the United States Patent and Trademark Office, and in various courts around the country.