The intellectual property world has likely witnessed, within a week of each other, the swan song of two cases with lengthy, some would say tortured, histories. On June 6, the U. S. District Court for the Eastern District of Virginia, on remand, decided the case of Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., Case No. CIV.A. 1:00CV803, 2005 WL 1383325 (E.D. Va. June 6, 2005). Four days later, on June 10, 2005, the U. S. District Court for the District of Massachusetts, also on remand, decided Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Case. No. Civ. A. 88-1814-PBS, 2005 WL 1398528 (D. Mass. June 10, 2005).
In a colorful opinion, the Festo district court judge noted, "[t]his case has had as many twists and turns and ups and downs as the Thunder Mountain amusement park ride it facilitated."
As the district court observed, "[t]en years after trial, and following two sojourns to the Supreme Court, this seventeen-year-old suit is back on remand from the Federal Circuit." The remand addressed the narrow issue, which the court deemed the "(hopefully) final question" in this saga, of whether (under the Supreme Court Festo test) Festo had rebutted the presumption that its patent claims were entitled to no range of equivalents under the doctrine of equivalents. The court found "[b]ecause both the single sealing ring and non-magnetizable sleeve were foreseeable to a person of ordinary skill in the art at the time of the 1981 [patent claim] amendments, Festo is unable to rebut the presumption of surrender of those two elements." Thus, the district court found that prosecution history estoppel barred application of the doctrine of equivalents.
In Knorr-Bremse, the Federal Circuit had remanded the case for a "fresh weighing," considering the totality of the circumstances surrounding the infringement, without any adverse inference that any opinion of counsel was, or would have been, unfavorable. On remand, the district court applied the newly minted totality of the circumstances test, again finding willful infringement. Because there were no monetary damages, however, there was nothing to enhance (e.g., treble). The trial court also found the case was not "exceptional," so it declined to award the patent owner attorney fees under §285. For these litigants, then, the Knorr-Bremse decisions were indeed much ado about nothing.
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