In a decision Friday, the Federal Circuit affirmed a district court decision holding that application of the doctrine of equivalents was barred as the Festo presumptions had not been rebutted.  The court noted that the patentee did not show that the alleged equivalent was unforeseeable at the time of making the narrowing amendment (which was the cancellation of an independent claim and rewriting a dependent claim into independent form) to the claims or that the narrowing amendment bore no more than a tangential relation to the alleged equivalent, the Federal Circuit upheld the district court's finding of noninfringement.

Perhaps most telling was the Federal Circuit's description of the doctrine of equivalents in general.  As stated by the court:  "The foreseeability principle thus relegates the doctrine of equivalents to its appropriate exceptional place in patent enforcement."

Judge Newman dissented, reiterating her position that simply cancelling an independent claim and rewriting a dependent claim in independent form does not narrow the claim, and thus prosecution history estoppel should not even be implicated.  Also, with regard to the facts here, she decries the majority's position that the accused equivalent was unforeseeable even though it was not developed until 10 years after the patent-in-suit issued and was independently patented.  She also faults the majority for finding the amendment not tangentially related to the equivalent in question simply because it relates to the "added" limitation from the dependent claim.

More concerning Honeywell Int'l, Inc. v. Hamilton Sundstrand Corp. after the jump.

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In a decision last week, the Federal Circuit vacated and remanded a jury's finding of willful infringement case back to a district court, based on errors in claim construction and application of the doctrine of equivalents.  The district court's original Markman hearing determined that no construction was necessary for a particular claim term, "only if," whose scope was disputed by the parties.  The court held the term did not require construction, as it was two simple, plain English words that were well understood.  The district court also permitted the jury to consider infringement under the doctrine of equivalents, finding that while the "only if" limitation was added for a substantial reason relating to patentability, the Festo presumption was rebutted because the rationale underlying the narrowing amendment was tangentially related to the equivalent at issue.

The Federal Circuit held that it was error for the district court not to construe the "only if" limitation.  While the court noted that "district courts are not (and should not be) required to construe every limitation present in a patent's asserted claims," in this case, because "the parties present[ed] a fundamental dispute regarding the scope of a claim term, it [was] the court's duty to resolve it."  The court also determined that the addition of the "only if" limitation during prosecution was not tangential to the alleged equivalent, and therefore application of the doctrine of equivalents was precluded.

More detail on O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co. after the jump.

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In a decision last week, the Federal Circuit held a district court construed 1 of 2 claim terms correctly, and incorrectly concluded that prosecution history estoppel barred application of the doctrine of equivalents to a third claim term because the narrowing amendment was only tangentially related to the equivalent at issue.  As a result, the court affirmed in part, reversed in part, and remanded.

One of the claim construction issues was interesting in that the court held that the prosecution history of the patent overcame the "presumption" of claim differentiation, namely that "dependent claims are presumed to be of narrower scope than the independent claims from which they depend."  This led to the strange result that the scope of some dependent claims was outside the scope of the independent claim from which they depended.  This seems to be contrary to § 112 ¶ 4, which requires a dependent claim "shall be construed to incorporate by reference all the limitations of the claim to which it refers."

Judge Prost dissented from the portion of the ruling regarding prosecution history estoppel, and would have held that the amendment was not tangential to the equivalent in question and therefore that prosecution history estoppel applied.

More detail of Regents of the U. of Cal. v. Dakocytomation Cal., Inc. after the jump.

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In a decision yesterday, the Federal Circuit reversed a jury's verdict of infringement under the doctrine of equivalents.  The court had previously vacated-in-part and reversed-in-part the district court's earlier summary judgment of infringement, the result of which was the jury trial conducted by the district court.  The combination of the Federal Circuit's mandate in the earlier appeal and application of prosecution history estoppel precluded the jury's finding of infringement.

On a jurisdicitonal issue, the court also held that the appellee's request to stay enforcement of the injunction pending appeal was sufficient to serve as a notice of appeal under Rule 3, even though no separate notice was filed within the timeframe required by Rule 4. 

More detail of Int'l Rectifier Corp. v. IXYS Corp. after the jump.

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In a decision this week, the Federal Circuit affirmed findings of infringement of two patents by two defendants.  The court also reversed an invalidity ruling of one of one claim that had been the subject of reexamination, but remanded the case to the district court for a determination of the obviousness of one claim based on a revised claim construction and for a determination of damages.

While the case went to the jury pre-KSR, the court held that the district court's jury instructions on obviousness, which focused on the teaching-suggestion-motivation test, including that a motivation to combine references may be found in the nature of the problem to be solved, did not warrant reversal.  This indicates that the effect of KSR on the obviousness analysis may not be as dramatic as some have predicted, at least outside the USPTO.

In addition, the court held that the requirements in 35 U.S.C. § 305 regarding new claims in reexamination proceedings need not be specifically noted by the applicant when adding new claims.  Instead, the court confirmed that the limit on new and amended claims in reexamination is that they may not enlarge the scope of the original claims.

More detail of Cordis Corp. v. Medtronic AVE, Inc. after the jump.

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In a decision Friday, the Federal Circuit affirmed a district court decision that prosecution history estoppel barred application of the doctrine of equivalents, and accordingly affirmed the district court's summary judgment of no infringement.

The court also held, as a matter of first impression, that when joinder of the patent owner is required before the district court for an exclusive licensee to have prudential standing to bring suit, the exclusive licensee may appeal an adverse decision even if the patent owner chooses not to join the appeal.  The court noted the purpose of requiring the patent owner to be joined at the district court is to avoid subjecting the alleged infringer to multiple lawsuits based on the same conduct.  However, when the patent owner was joined at the district court, it is bound by the district court's decision if it chooses not to appeal.  As a result, the exclusive licensee appealing without the patent owner does not subject the defendant to the possibility of duplicative suits.

More detail of Schwarz Pharma, Inc. v. Paddock Labs., Inc. after the jump.

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Today, the Federal Circuit addressed how to interpret the phrase "comprised of" in a patent claim.  In holding that the phrase should be construed in the same open-ended way the term "comprising" is traditionally construed, the court disagreed with the district court's finding that the phrase was closed-ended and excluded the presence of all elements beyond those presented.  However, the district court's finding of noninfringement was affirmed based on its correct construction of another limitation that precluded infringement.

More detail of CIAS, Inc. v. Alliance Gaming Corp. after the jump.

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In a decision today, the Federal Circuit affirmed a district court's grant of summary judgment of noninfringement of a patent relating to a "gutter guard" designed to keep debris out of gutters.  The court found the district court's claim construction correct, as it properly considered dictionary definitions when the specification provided no additional guidance on the meaning of the term "weld."

Additionally, because the patentee both criticized prior art gutter guards that used adhesives and amended the patent's claims to require a "weld" to the exclusion of other modes of attachment, the district court's holding that infringement under the doctrine of equivalents was barred by prosecution history estoppel was also affirmed.

More detail of L.B. Plastics, Inc. v. Amerimax Home Prods., Inc. after the jump.

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Today, the Federal Circuit rendered the latest decision in the nearly 20 year saga of Festo.  The court refined the rules set forth by the Supreme Court in its Festo decision, specifically when an equivalent is unforeseeable, and thus not barred by prosecution history estoppel.  The majority of the panel held that:

an alternative is foreseeable if it is disclosed in the pertinent prior art in the field of the invention. In other words, an alternative is foreseeable if it is known in the field of the invention as reflected in the claim scope before amendment.

Notably, however, it is not necessary that the "known" equivalent be known to be equivalent.  As a result, because the alleged equivalent in this case was known in the prior art, it was foreseeable, even though it was not known that it was technically equivalent, that is, it met the legal test for equivalents.

Judge Newman dissented, arguing that:

this court has confounded the issue by creating a new and incorrect criterion for the measurement of "foreseeability," the court now holding that an existing structure need not be recognized, or even recognizable, as an equivalent at the time of the patent application or amendment, in order to be "foreseeable" if it is later used as an equivalent.

Could Festo be heard en banc by the Federal Circuit a third time?  One commentator already thinks so.

More detail of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. after the jump.

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In an appeal by Porta Stor, Inc. of a judgment in favor of PODS, Inc. for, among other things, patent and copyright infringement, the Federal Circuit reversed the judgment of patent infringement finding no literal infringement and finding that infringement under the doctrine of equivalents was barred by prosecution history estoppel.  The court also reversed the grant of judgment as a matter of law on copyright infringement and remanded the issue for a new trial. 

Both PODS and Porta Stor are storage and moving companies that operate by delivering storage containers to customers.  PODS' patent-in-suit claimed an apparatus and method for lifting a storage container from the ground onto a transport vehicle or vice versa.  In reversing the district court on the patent infringement count, the Federal Circuit looked to the plain meaning of the claim language itself, as well as the patent specification and prosecution history, finding different meanings to the same terms at different portions of the claims were not supported.  As to the copyright infringement count, the Federal Circuit found testimony by PODS' President and CEO regarding the author or authors of the rental agreement was inconsistent and, therefore, insufficient to warrant JMOL in favor of PODS.    

More details after the jump.

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