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Charles R. Hoffmann ’60
Hoffman '60 Scores One for Patent Holders

By Kim Velk

Charles Hoffman took his case to the Supreme Court which, in a unanimous decision, preserved a wider scope of protection for patent holders.

Charles R. Hoffmann ’60 loves a contest. This was a useful attribute in his Rensselaer days, when he captained the soccer, baseball, and basketball teams in 1960 (earning him Athlete of the Year honors then and a place in the Rensselaer Athletic Hall of Fame), and is useful now in his work as a patent attorney at the Long Island firm Hoffmann & Baron, LLP. In fact, Hoffmann recently captained a victory before the U.S. Supreme Court in a decision called by one commentator in the National Law Journal, “as significant to the American economy as any decision made by the Federal Reserve, the president, or Congress.”

Hoffmann’s client, the German-based Festo Corp., was fighting for its exclusive right to market a rodless cylinder device it had patented in the early 1980s. The Japanese company SMC, a fierce global competitor of Festo, had introduced a similar, allegedly infringing, product a few years later. Hoffmann filed suit on behalf of Festo in 1988.

Festo won a complete victory at a jury trial completed in 1994. Instead of being the end, however, this was only the beginning. The Japanese company appealed. It lost, then appealed again to the U.S. Supreme Court. By then it was 1997 and the Supreme Court had just made a decision in another case—a decision that had put into play the “Doctrine of Equivalents”—a matter at the heart of the Festo litigation and one of the timbers of patent law.

Patent law judges devised the Doctrine of Equivalents to give protection not only to the literal elements claimed in a patent application, but also to the equivalents of those elements. One infringes a patent by making a product that iscovered either by the literal elements of a patent claim or by an equivalent of those elements.

There have always been limits, however, to when the Doctrine could be applied. During the patent application process, applicants may narrow their claims for various reasons. When this happened an applicant might be able to claim protection for the equivalents he had surrendered. Under the prevailing flexible approach, the courts would look at the reason why a patentee surrendered some part of her claim. Some of those reasons would allow the patentee to claim the protection of the Doctrine and some would not. Under a sometimes-used inflexible approach, however, the courts wouldn’t bother to inquire why the claim was narrowed. If the applicant surrendered some part of his patent claim, the equivalents of the amended element were not protected. The problem for Hoffmann, who had relied on the Doctrine to win, was that the Court of Appeals for the Federal Circuit now had to choose how it was going to deal with such cases.

In November 2000, the Circuit Court reversed its previous Festo decision and announced that it would adopt the inflexible approach. Hoffmann’s client, for the first time in the marathon case, was the loser, and the entire world of intellectual property lawyers and patent holders was jolted. The game wasn’t yet over, however, and Hoffmann had the ball. He took it right back to the Supreme Court.

Though Hoffmann is an experienced trial lawyer, he decided his team needed a ringer for oral argument before the Supreme Court. He drafted former Supreme Court nominee Robert Bork for the task. On Jan. 8, 2002, Judge Bork made the argument, with Hoffmann coaching him in patent law. Some 44 patent law experts, along with representatives of industry, education, and government, filed “friend of the court briefs” on behalf of Festo and a handful of others on behalf of SMC.

On May 28, 2002, a unanimous Supreme Court handed down its verdict. Writing for the Court, Justice Kennedy announced that the court must employ the flexible approach in applying the Doctrine of Equivalents to amended claims.
Festo had won, and a critical legal principle was put up in lights—but the case wasn’t over. Now that the Justices had worked out what the rule was, they sent Festo back down to the Circuit Court again for a decision consistent with their new ruling. Hoffman expects a final decision in the New Year.

Is the Festo case the biggest one in Hoffmann’s 36-year career as a patent lawyer? “It’s not the one with the most money at stake or the one with the most complicated issues, but certainly it is the one with the most important legal principles involved and the one that has attracted the most outside interest,” he says. And though the match has dragged on for what might seem an exhausting 14 years, Hoffmann seems upbeat about the experience. He has enjoyed the competition, he says, and also the learning opportunities it has brought his way. “I have had a chance to talk with all the top patent lawyers and academics in the country. It’s been very interesting.”

More information about the Festo case and the Doctrine of Equivalents is available on the Web at www.hoffmannbaron.com.


Rensselaer Magazine: December 2002
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