Patent holders, however, bear the burden of proving that the doctrine of equivalents should apply in their case, Kennedy said.
That conclusion adopted a recommendation offered by the Bush administration.
Under the appeals court ruling, invoking the doctrine of equivalents was "all but impossible," said patent lawyer Jim Carmichael, a partner at Lyon & Lyon in Washington. "The Supreme Court said it shouldn't be impossible, but it should be very hard." Beneficiaries of the ruling will include some members of the patent-heavy biotechnology, pharmaceutical and computer industries.
"Biotech companies and pharmaceutical companies live and die by their patent portfolios," said Q. Todd Dickinson, former head of the Patent and Trademark Office and now a partner with Howrey, Simon, Arnold & White.
"They needed this flexibility because the technology is evolving so rapidly. They need to be able to come back later and make sure they are protected," Dickinson said.
The decision is likely to foster additional litigation over disputed patents, forcing judges to determine in each case whether an amendment amounted to a surrender of subject matter.
"In the end, I'm not sure if this will change the results of a whole lot of cases," said patent lawyer Blaney Harper of Jones, Day Reavis & Pogue. "It is clear that the lawyers will go crazy with this."
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