Title: Prosecution History Estoppel
1Prosecution History Estoppel
- Prof Merges
- Patent Law 4.14.08
2U.S. Philips Corp. v. Iwasaki Elec. Co. Ltd.
- 505 F.3d 1371 (Fed Cir 2007)
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6Issues
- 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
7Issues (contd)
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9Claim 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
11Infringement
- 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?
12P. 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.
13Holding DOE p. 7
- We hold that . . . resort to the doctrine of
equivalents is not foreclosed with respect to the
claimed concentration range . . . .
14Vitiation 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.
15Vitiation
- Defined reduce the value of render
ineffective - Latin vitium reduce, impair, corrupt (thus
vice, vicious)
16Examples
- 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.
17Moore 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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20Wleklinski 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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22- 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.
24Back 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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26- 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.
27Prosecution 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
28Range of Equivalents
Literal Claim Scope
Infringement under DOE ?
29Warner-Jenkinson
- DOE Survives challenge
- Presumption in cases of claim amendment
amendment made for reasons related to
patentability prosecution history estoppel
applies
30Original Claim Scope
31Original Claim Scope
Narrowed Scope, after amend-ment
32- 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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36Prosecution History
- Amendments p. 944
- What limitations did they add?
- Why were they made?
37Fed 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
38Federal Circuit opinion
- 11 1 on amendment rationale issue
- 8-4 on complete bar approach
391st point related to patentability
- Enablement estoppel is now a reality
- P. 949
- What would a truly cosmetic amendment look like?
402nd Point The 3-Part Test
- Supreme Court rejects complete bar
41Original Claim Scope
42Original Claim Scope
Narrowed Scope, after amend-ment
43Original Claim Scope
X
Narrowed Scope, after amend-ment
Embodi-ment X Can DOE cover?
44X
Narrowed Scope, after amend-ment
Embodi-ment X Can DOE cover?
45Estoppel idea
- Who is estopped from what?
- Why?
- Like other legal instances of estoppel concept?
462nd Point The 3-Part Test
- P 952
- 1 Unforeseeable equivalents
- 2 Amendment bears tangential relation to
equivalent - 3 Some other reason -- expectations
47The 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)
49Hughes 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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55Literal Infringement
Doctrine of Equivalents
?
56Literal Infringement
Doctrine of Equivalents
Modest Inventions
Pioneering Inventions
57Foreseeability
- Hughes Satellite still the exception
- Rare to find accused product not foreseeable at
time of amendment
58Foreseeability 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.
61The 3-Part Test
- P 952
- 1 Unforeseeable equivalents
- 2 Amendment bears tangential relation to
equivalent - 3 Some other reason -- expectations
62Festo 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.
63Festo, 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.
65Tangential amendments
- Insituform Technologies, Inc. v. CAT Contracting,
Inc., 385 F.3d 1360 (Fed. Cir. 2004)
66Insituform 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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70- 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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76- 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 . . .
78X
Embodi-ment X Can DOE cover?
Yes! If (1) amendment made for tangential
reason or (2) equivalent unforeseeable
79Freeman v. Gerber
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82- 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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85- 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.