Subject: IEEE likes strong broad patents
From: L Jean Camp <>
Date: Thu, 30 May 2002 13:17:54 -0400

Basically Festo said, you have to claim what you invent when you file. Today 
people file for the moon, then sometimes have claims limited. The Festo 
standard would have put made aggressive filing very risky.   

I have worked in the IEEE for many years trying to support freedom, 
competition, and open exchange of ideas.  I do not always succeed.  IEEE is 
seen as a moderate and reasonable voice, yet it is increasingly supporting 
IPR interests.  

Only member and public comment will change this direction of this  

Please share this with any engineers or employers who may be harmed by 
stronger patents.  IBM is not exactly the poster child for open source, both 
IBM and Sun supported the limits on agressive filing since they sometimes 
actually invent as well as patent. 

The IEEE is proud of  the language from their submission being part of this 
ruling. The IEEE is proud of having 'protected intellectual property rights. 
As software engineers, are you well served? If not, tell Chris and tell 
someone else in IEEE. 

Thank you. 

Contact: Chris McManes
Marketing Communications/Public Relations Coordinator
Phone: + 1 202 785 0017, ext. 8356

       IEEE-USA Patent Rights Proposal Adopted by U.S. Supreme Court

     WASHINGTON  (28  May  2002)  -  The U.S. Supreme Court, in a unanimous
decision today, substantially adopted IEEE-USA's proposed "foreseeable bar"
standard on patent rights.

     Ruling  in  the  Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki
Co.,  LTD. case (,
the  Court  vacated  and  remanded  the case back to Federal Circuit court,
while rejecting each party's opposing standards.

     The Festo case involves to what extent the holder of an amended patent
is  barred  from  asserting  patent  rights  against another inventor whose
design  is  substantially  the  same  as  the  patented  invention.  As  an
alternative to the "flexible bar" and "absolute bar" standards advocated by
the  opposing  sides  in  Festo,  IEEE-USA's  "foreseeable bar" states that
holders  of an amended patent give up protection for only those things that
were foreseeable by persons familiar with the associated technology.

     IEEE-USA  submitted  its  proposal  in an amicus curiae brief that was
discussed  openly during oral arguments on Jan. 8. That day, Justice Sandra
Day  O'Connor  asked both sides to compare and contrast their position with
that  of IEEE-USA's, while other justices quizzed the parties on IEEE-USA's
"foreseeable bar."

     Justice  Anthony  M.  Kennedy,  writing for the Court, said that, "The
patentee must show that at the time of the amendment one skilled in the art
could  not  reasonably  be expected to have drafted a claim that would have
literally encompassed the alleged equivalent."

     In  its  friend-of-the-court brief, IEEE-USA wrote that, "the doctrine
of  equivalents  should be permitted to apply unless the limiting effect of
the  amended  language  with  respect  to an accused device would have been
foreseeable  at  the  time  of the amendment. Applied objectively, from the
perspective  of  a  reasonable person skilled in the art, this 'foreseeable
bar'  applies  principles  that are readily, if not commonly, understood by
both the public and the judiciary."

     Carlton  Fields,  P.A.  of  Tampa ( prepared the
brief  for  IEEE-USA  pro  bono.  Andrew  Greenberg, a member of IEEE-USA's
Intellectual  Property  Committee, served as counsel of record and headed a
team of 10 lawyers and legal assistants.

     "We  are  very  pleased with the result," Greenberg said. "The Supreme
Court's  adoption  of the foreseeability test brings into balance competing
policies that form the heart and soul of our patent system."

     The  IEEE-USA  brief  and  other  relevant  resources are available at     The    oral
arguments                   are                   found                  at

     IEEE-USA  is an organizational unit of The Institute of Electrical and
Electronics   Engineers   created  in  1973  to  promote  the  careers  and
public-policy  interests  of the more than 235,000 electrical, electronics,
computer  and software engineers who are U.S. members of the IEEE. The IEEE
is   the   world's   largest   technical  professional  society.  For  more
information, go to
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