Filewrapper® | A patent, trademark, and copyright law blog by MVS - Prosecution history estoppel

Estoppel applies to all added limitations in claims, including when present in unamended claims

Wed, 15 Apr 2009 16:11:00-0500

In a decision Friday, the Federal Circuit affirmed a district court's grant of summary of no literal infringement and that prosecution history estoppel barred application of the doctrine of equivalents. During prosecution of the patent, a total of three limitations from two different dependent claims were added to the asserted claim in separate amendments, although only two of the limitations were addressed by the applicant and examiner. The district court held the third element was not literally present in the accused product, and, based on the amendment, could not be present under the doctrine of equivalents.

The Federal Circuit agreed. The court held it was immaterial that the first amendment (with the "extra" limitation at issue) did not result in allowance; the estoppel applied to each of the added limitations. Importantly, the court also observed that this presumption of estoppel applied to all claims of the patent containing the limitation, whether or not they were amended:

Thus, in this case, the cancellation of original independent claim 1 coupled with the rewriting of original dependent claim 7 as independent claim 14 gave rise to a presumption of surrender applicable to all limitations, found in any of the claims of the '625 patent, that correspond to the limitations of claim 7.

The court also held that even though the third limitation was not specifically argued, its addition was not tangential to the rationale underlying the amendment, thereby preventing application of prosecution history estoppel. Specifically, the amendment stated one of the two limitations was not present in the prior art, but added the limitation was not present "in combination with the other structure" of the claims. This additional language brought the additional limitation into the argument, making it not tangential. Further, the court held the absence of explanation why the additional limitation was added meant it could not be tangential, because whether an amendment is tangential must be determined from the prosecution record. Accordingly, the court affirmed the district court's grant of summary judgment of noninfringement.

More detail of Felix v. Am. Honda Motor Co. after the jump.

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Irreparable harm to exclusive licensee cannot support injunction; willfulness vacated post-Seagate

Wed, 20 Aug 2008 10:17:00-0500

In a decision Monday, the Federal Circuit addressed a range of issues and ultimately affirmed a district court's denial of injunctive relief and, in light of the intervening Seagate decision, vacated and remanded the case for reconsideration regarding willfulness. The court also affirmed the district court's finding of no invalidity and the infringement of some claims under the doctrine of equivalents.

Regarding the denial of an injunction, the Federal Circuit agreed with the district court that because the only irreparable harm alleged was to the plaintiff's exclusive licensee, rather than the plaintiff, there was no pertinent evidence of irreparable harm to support granting an injunction. Regarding willfulness, the court determined that the district court's jury instruction (based on the Underwater Devices affirmative duty of care standard) was not correct under the Seagate "objective recklessness" standard. The court held that the improper instruction was not harmless error and remanded the issue to the district court for further consideration as to whether the defendant's conduct was sufficiently reckless to be considered willful.

More on Voda v. Cordis Corp. after the jump.

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Claim construction and noninfringement affirmed on one patent, vacated on another

Tue, 13 May 2008 10:30:00-0500

In a decision last week, the Federal Circuit vacated a district court's grant of summary judgment of noninfringement of one patent and affirmed summary judgment of noninfringement of another. The determinations turned on the construction of one claim element in each patent.

In the first patent, the court held that there was sufficient disclosure in the specification to permit the broader construction of the critical term advanced by the patentee. Judge Lourie dissented from this portion of the opinion, and would have affirmed the district court's construction and, therefore, its summary judgment of noninfringement.

For the second patent, although the only embodiment disclosed in the specification was outside the scope of the district court's construction, nevertheless the court affirmed the construction as it was clear from the claim language, as well as supported by the prosecution history. As a result, this was a case where there was "highly persuasive evidentiary support" for a construction that excluded the preferred embodiment.

More detail of Lucent Techs., Inc. v. Gateway, Inc. after the jump.

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Patentee could not rebut presumption of estoppel; noninfringement finding affirmed

Mon, 21 Apr 2008 13:13:00-0500

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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If ordinary meaning of claim term does not resolve disputed construction, court must construe term

Thu, 10 Apr 2008 09:33:00-0500

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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Dependent claim can be construed to be broader than independent claim based on prosecution history

Mon, 03 Mar 2008 15:30:00-0500

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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Request to stay injunction pending appeal may also be considered notice of appeal; estoppel bars DOE

Tue, 12 Feb 2008 15:05:00-0500

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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Pre-KSR obviousness instruction does not result in plain error post-KSR

Thu, 10 Jan 2008 13:43:00-0500

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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Patentee need not join in appeal for exclusive licensee to retain standing

Sun, 14 Oct 2007 10:39:00-0500

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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"Comprised of" means the same as "comprising," judgment of noninfringement affirmed

Thu, 27 Sep 2007 15:37:00-0500

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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Claim construction and noninfringement finding affirmed; prosecution history estoppel bars DOE

Wed, 12 Sep 2007 16:58:00-0500

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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Equivalent can be "foreseeable" and thus barred under Festo even when equivalence unknown in the art

Thu, 05 Jul 2007 16:13:00-0500

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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Same terms, same meanings, unless specification indicates otherwise

Fri, 27 Apr 2007 14:56:00-0500

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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Equivalent not tangentially related to amendment, doctrine of equivalents unavailable

Tue, 20 Mar 2007 15:28:00-0500

In a case coming before the Federal Circuit for the second time, the court reversed a finding of infringement under the doctrine of equivalents because of prosecution history estoppel. The court rejected the patentee's argument that the amendment was only tangentially related to the equivalent, thus the Festo presumption of surrender of equivalents was not rebutted, and not infringement was found.

Judge Rader concurred, and offered his view that the "tangentially related" Festo rebuttal option must be construed very narrowly, even going so far as to say that the two cases where the Federal Circuit has found equivalents to be tangentially related to an amendment that "frankly, [the Federal Circuit] might well have justifiably reached a different result in both."

More details of the case after the jump.

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Comparison of Commercial Products not the vehicle to analyze equivalence

Tue, 27 Feb 2007 14:02:00-0500

In a second appearance before the Federal Circuit, AquaTex again appealed a decision of the District Court that Techniche Solutions' Cooling Apparel did not infringe their U.S. Patent No. 6,371,977 for a protective multi-layered liquid retaining composition. The Federal Circuit had previously affirmed the lower court's finding of no literal infringement while remanding the case back to the District Court for further analysis of infringement under the Doctrine of Equivalents. The District Court again found that AquaTex was barred from recovery, this time because AquaTex was barred from utilizing the Doctrine of Equivalents to show infringement because of prosecution estoppel. The Federal Circuit sustained the District Court's grant of summary judgment, but disagreed with the District Court as to the reason to grant summary judgment. While discussing infringement under the doctrine of equivalents, the Federal circuit emphasized that infringement, either literally or under the doctrine of equivalents, does not arise by comparing the accused product with a commercialized embodiment of the patentee. Infringement is not determined by comparison between commercial products sold by the parties. Instead, the identification of the elements of the function, way, result test entails an examination of the claim and the explanation of it found in the written description of the patent. According to the Federal Circuit, the inquiry leaves no room for consideration of the patentee's product. The Court is barred from analyzing the infringement based upon how similar the accused infringer's product is to the commercialized product of the patentee. Despite the discussion on the doctrine of equivalence, the Federal Circuit ended up sustaining the grant of summary judgment for Techniche because AquaTex failed to provide particularized testimony and linking arguments to show that Techniche's Cooling Apparel was the equivalents of AquaTex claimed invention. Thus, AquaTex was barred from recovery because they failed to sustain the burden of proof. To read the full decision in AquaTex Indus. v. Techniche Solutions, click here.