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Prosecution History Estoppel

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Title: Prosecution History Estoppel


1
Prosecution History Estoppel
  • Prof Merges
  • Patent Law 4.14.08

2
U.S. Philips Corp. v. Iwasaki Elec. Co. Ltd.
  • 505 F.3d 1371 (Fed Cir 2007)

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Issues
  • Notice -- U.S.C. 287(a).
  • where the evidence is such that no reasonable
    jury could determine two elements to be
    equivalent, district courts are obliged to grant
    partial or complete summary judgment

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Issues (contd)
  • Claim interpretation

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Claim interpretation
  • Order of magnitude or range?
  • We therefore affirm the district court's claim
    construction of the halogen range between 10 -6
    and 10 -4 ltltmugtgtmol/mm 3 as meaning between 1 x
    10 -6 and 1 x 10 -4 ltltmugtgtmol/mm 3. p 5

10
  • In some scientific contexts, 1 represents a
    less precise quantity than 1.0, and 1 may
    encompass values such as 1.1 that 1.0 may not.
    p 6

11
Infringement
  • between 1 x 10 -6 and 1 x 10 -4 ltltmugtgt mol/mm 3
    infringed by lamp with halogen concentration of
    1.2 x 10 -4 ?
  • That is (I think) Does range from .00010 to
    .000001 cover product with concentration of
    .00012?

12
P. 6
  • Litigation waiver argument
  • We emphasize that the claim construction we
    affirm today should not be read to state the
    endpoints of the claimed range with greater
    precision than the claim language warrants.

13
Holding DOE p. 7
  • We hold that . . . resort to the doctrine of
    equivalents is not foreclosed with respect to the
    claimed concentration range . . . .

14
Vitiation p. 8
  • Holding of nononfringement because interpretation
    vitiates' a claim limitation is nothing more
    than a conclusion that the evidence is such that
    no reasonable jury could conclude that an element
    of an accused device is equivalent to an element
    called for in the claim, or that the theory of
    equivalence to support the conclusion of
    infringement otherwise lacks legal sufficiency.
    469 F.3d at 1018-19.

15
Vitiation
  • Defined reduce the value of render
    ineffective
  • Latin vitium reduce, impair, corrupt (thus
    vice, vicious)

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Examples
  • Moore U.S.A., Inc. v. Standard Register Co., 229
    F.3d 1091 (Fed.Cir.2000)
  • In Moore, no reasonable juror could have
    concluded that an adhesive strip running only
    47.8 of the lengths of the accused product's
    margins-a minority of the lengths-was equivalent
    to one running a majority of the lengths.

17
Moore mailing form
  • first and second longitudinal strips of adhesive
    disposed in said first and second longitudinal
    marginal portions, respectively, of said first
    face, extending the majority of the lengths of
    said longitudinal marginal portions, and parallel
    to said first and second longitudinal edges

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Wleklinski v. Targus, Inc.Slip Copy, 2007 WL
4460620C.A.Fed. (Cal.),2007 (unpub)
  • The invention claimed in the '388 patent is a
    strap assembly that has both stretchable and
    non-stretchable strap members.

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  • We agree that there exist more than
    insubstantial differences between the accused
    products and the claimed invention this
    precludes a finding of infringement under the
    doctrine of equivalents. slip op at 4

23
  • Likewise, a finding of infringement under the
    doctrine of equivalents would impermissibly
    vitiate claim limitations. Here, Claim 1 requires
    separate center and end sections that are made of
    different materials finding equivalence with a
    single strap lacking separate sections and
    different materials would impermissibly vitiate
    this limitation.
  • -- Id.

24
Back to Philips
  • The Holmes reference disclosed lamps with a
    halogen concentration of 5 x 10 -4 to 5 x 10 -2
    ltltmugtgtmol/mm 3

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  • The asserted equivalents have halogen
    concentrations that lie below the range disclosed
    by the Holmes reference, there has been no
    showing that the lamps disclosed in Holmes meet
    all the other limitations of the claim . . .
    Holmes therefore does not foreclose the
    application of the doctrine of equivalents to
    lamps with halogen concentrations between 1 x 10
    -4 and 5 x 10 -4 ltltmugtgtmol/mm 3.

27
Prosecution History Estoppel
  • Recap Doctrine of Equivalents (DOE)
  • Warner-Jenkinson presumption that part of claim
    coverage is surrendered when applicant amends
    claim
  • Festo case
  • Post-Festo developments

28
Range of Equivalents
Literal Claim Scope
Infringement under DOE ?
29
Warner-Jenkinson
  • DOE Survives challenge
  • Presumption in cases of claim amendment
    amendment made for reasons related to
    patentability prosecution history estoppel
    applies

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Original Claim Scope
31
Original Claim Scope
Narrowed Scope, after amend-ment
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  • United States Patent 4,354,125 Stoll October 12,
    1982 Magnetically coupled arrangement for a
    driving and a driven member
  • The invention is concerned with a magnetically
    coupled arrangement for a driving and a driven
    member, which arrangement is operable by a
    pressure medium and is used in a conveying
    system. A slidable piston (16) within a tube (10)
    has an arrangement of annular magnets (20)
    provided at each end with sealing and sliding
    members (24, 26). A driven assembly (18) slidable
    on the outer surface of the tube (10) has an
    arrangement of annular magnets (32) corresponding
    to the magnets (20) and provided at each end with
    a sliding ring (44). The members (24, 26, 44)
    prevent ingress of foreign bodies to the magnet
    locations, and consequently enable the spacing
    between the magnets and the tube (10) to be very
    small. A good magnetic coupling is achieved
    resulting in effective transmission of power.
    Several pistons (16) abutting one another can be
    used for conveying heavy loads.
  • Inventors Stoll Kurt (Lenzhalde 72, D-7300
    Esslingen, DE) Appl. No. 153999Filed May 28,
    1980

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Prosecution History
  • Amendments p. 944
  • What limitations did they add?
  • Why were they made?

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Fed Cir opinion
  • Two aspects
  • Prosecution history estoppel (PHE) applies to all
    amendments, whatever the basis
  • PHE represents a complete bar to all equivalents
    of amended claim

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Federal Circuit opinion
  • 11 1 on amendment rationale issue
  • 8-4 on complete bar approach

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1st point related to patentability
  • Enablement estoppel is now a reality
  • P. 949
  • What would a truly cosmetic amendment look like?

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2nd Point The 3-Part Test
  • Supreme Court rejects complete bar

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Original Claim Scope
42
Original Claim Scope
Narrowed Scope, after amend-ment
43
Original Claim Scope
X
Narrowed Scope, after amend-ment
Embodi-ment X Can DOE cover?
44
X
Narrowed Scope, after amend-ment
Embodi-ment X Can DOE cover?
45
Estoppel idea
  • Who is estopped from what?
  • Why?
  • Like other legal instances of estoppel concept?

46
2nd Point The 3-Part Test
  • P 952
  • 1 Unforeseeable equivalents
  • 2 Amendment bears tangential relation to
    equivalent
  • 3 Some other reason -- expectations

47
The 3-Part Test
  • P 952
  • 1 Unforeseeable equivalents
  • 2 Amendment bears tangential relation to
    equivalent
  • 3 Some other reason -- expectations

48
  • Hughes Aircraft Co. v. United States, 717 F.2d.
    1351, 1362-63 (Fed. Cir. 1983).
  • Later developed technology to use onboard
    computers to control satellite orientation is
    equivalent to receive signals form the satellite
    and use the computers on earth to control the
    orientation of the satellite)

49
Hughes VIII 1998
  • Because Hughes Aircraft Co. v. United States ,
    717 F.2d 1351, 219 USPQ 473 (Fed. Cir. 1983) (
    Hughes VII ) satisfies the legal requirements
    announced in Warner-Jenkinson , we affirm.

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Literal Infringement
Doctrine of Equivalents
?
56
Literal Infringement
Doctrine of Equivalents
Modest Inventions
Pioneering Inventions
57
Foreseeability
  • Hughes Satellite still the exception
  • Rare to find accused product not foreseeable at
    time of amendment

58
Foreseeability Test
  • Pioneer Magnetics, Inc. v. Micro Linear Corp.,
    330 F.3d 1352 (Fed Cir. 2003), the Federal
    Circuit, on a motion for reconsideration,
    affirmed the district court's finding of
    noninfringement, including noninfringement under
    the doctrine of equivalents based on prosecution
    history estoppel.

59
  • Claims a power supply circuitry unit that
    receives various levels of voltage and emits a
    constant level of output voltage. During
    prosecution of the '366 patent, the Patent
    Office rejected pending claims as anticipated
    under 35 U.S.C. 102(b) by U.S. Patent No.
    4,437,146 (the Carpenter reference). The
    Carpenter reference disclosed a power supply
    containing a non-switching multiplier, and it
    did not disclose a power supply having a
    switching multiplier.

60
  • Pioneer argued that the amendment from
    "multiplier to "switching analog" multiplier
    circuit did not pertain to patentability, but
    was made through sheer inadvertence.
  • The Carpenter reference itself disclosed a
    non-switching multiplier circuit, demonstrating
    that such a circuit was foreseeable at the time
    of the amendment.

61
The 3-Part Test
  • P 952
  • 1 Unforeseeable equivalents
  • 2 Amendment bears tangential relation to
    equivalent
  • 3 Some other reason -- expectations

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Festo remand, 344 F.3d 1359Fed Cir 2003
  • (1) factual issues existed as to whether
    ordinarily skilled artisan at time of amendment
    would have thought aluminum sleeve was
    objectively unforeseeable equivalent of
    magnetizable sleeve (2) patent holder could not
    satisfy "tangential" criterion for aluminum
    sleeve equivalent (3) patent holder could not
    satisfy "some other reason" criterion for
    aluminum sleeve equivalent (4) factual issues
    existed as to whether ordinarily skilled artisan
    at time of amendment would have thought single
    two-way sealing ring was objectively
    unforeseeable equivalent of two one-way sealing
    rings located at each end of piston (5) patent
    holder could not satisfy "tangential" criterion
    for two one-way sealing rings and (6) patent
    holder did not establish "some other reason" that
    patentees could not reasonably have been expected
    to describe single two-way sealing ring.

63
Festo, point 1 Glaxo Wellcome,Inc. v. Impax
Laboratories, Inc.,
356 F.3d 1348, C.A.Fed. 2004
  • The application did not enable any sustained
    release agents other than HPMC, however, because
    it only disclosed HPMC's time release and plasma
    profiles. Indeed the original claims recited
    those profiles. The examiner expressly stated
    that only HPMC enabled claims with these
    profiles. The application did not enable one of
    skill in the art to make and use a broader genus
    of sustained release agents. Thus, the examiner's
    enablement argument, which Glaxo did not rebut,
    shows that Glaxo surrendered other controlled
    sustained release agents known to act as
    equivalents of HPMC.

64
  • Festo on remand 344 F.3d 1359, 1363-64 (Fed.
    Cir. 2003)
  • Festo cannot overcome the presumption of
    surrender by demonstrating that the rationale
    underlying the narrowing amendments bore no more
    than a tangential relation to the accused
    equivalents or by demonstrating that there was
    "some other reason" such that the patentee could
    not reasonably have been expected to have
    described the accused equivalents. However, we
    remand to the district court to determine whether
    Festo can rebut the presumption of surrender by
    establishing that the equivalents in question
    would have been unforeseeable to one of ordinary
    skill in the art at the time of the amendments.

65
Tangential amendments
  • Insituform Technologies, Inc. v. CAT Contracting,
    Inc., 385 F.3d 1360 (Fed. Cir. 2004)

66
Insituform the invention
This process results in a seamless, jointless
"pipe-within-a-pipe" with a smooth, continuous
inner surface which usually increases flow
capacity. We typically complete installations in
a single day, using robotic methods to restore
active connections from within the line.
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  • 1. A method of impregnating with a
  • curable resin an inner layer of resin
  • absorbent material disposed in an elongate
  • flexible tube having an outer layer
  • formed by an impermeable film, the
  • method comprising the steps of
  • (1) introducing into one end of the
  • elongate tube a mass of the curable resin
  • sufficient to impregnate the entire
  • resin absorbent inner layer of the tube . . .

71
  • (3) drawing through the window a
  • vacuum in the interior of the tube downstream
  • of said one end by disposing over
  • the window a cup connected by a flexible
  • hose to a vacuum source which cup prevents
  • ingress of air into the interior of
  • the tube while the tube is being evacuated,
  • the outer layer of the tube being
  • substantially impermeable to air . . .

72
  • In our view, Insituform has rebutted the Festo
    presumption. The prosecution history and our
    discussion of that history . . . compel the
    conclusion that the amendment limiting the
    literal scope of claim 1 to a single cup process
    bears "only a tangential relation," if that, "to
    the equivalent in question," a process using
    multiple cups. The question we must address is
    "whether the reason for the narrowing amendment
    was peripheral, or not directly relevant, to the
    alleged equivalent." Festo III, 344 F.3d at 1365.
    . . .

73
  • Claim 1 in its original form did not limit the
    number of cups that could be used to create a
    vacuum, whereas claim 1 in its amended form was
    limited to the use of one cup.

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  • The narrowing amendment in this case was for
    the purpose of distinguishing the invention over
    Everson. Insituform made it clear that the
    difference between its process and Everson was
    that its process did not have the disadvantage of
    the Everson process of a large compressor at the
    end of the liner. There is no indication in the
    prosecution history of any relationship between
    the narrowing amendment and a multiple cup
    process, which is the alleged equivalent in this
    case.

77
  • Thus, we hold that plaintiffs have successfully
    rebutted the Festo presumption by establishing
    that the amendment . . . was tangential . . .

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X
Embodi-ment X Can DOE cover?
Yes! If (1) amendment made for tangential
reason or (2) equivalent unforeseeable
79
Freeman v. Gerber
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  • The claim limitations currently at issue are the
    aspects of 7(e) and 14(e) which claim a thin
    membrane having attachable means for attaching
    said thin membrane to an inner surface of said
    closure and the aspects of 7(f) and 14(f) which
    claim a slit through or a disjoined portion
    within a planar section of said thin
    membrane.

83
  • Plaintiffs amended claim limitations 7(f) and
    14(f) during patent prosecution by adding the
    words a planar section of to clearly define
    their invention over United States Patent
    No.4,496,062 to Coy.

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  • During that interview, the examiner requested and
    received authorization from Mr. Freeman to add
    the additional language a planar section of
    to these claim elements. Id. The examiner
    interview summary record describes the general
    nature of what was
  • agreed to during the interview as Agreed upon
    Examiners Amendment to clearly define over
    Coy. Id.

86
  • In sum, plaintiffs have failed to rebut
  • the presumption that they are estopped
  • from attempting to recapture the surrendered
    territory of non-planar membranes by virtue of
    having made a narrowing amendment to distinguish
    the 347 patent over Coy.
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