Prosecution History Estoppel Prof Merges Patent Law – 4.14.08.

Prosecution History Estoppel

Prof Merges

Patent Law – 4.14.08

U.S. Philips Corp. v. Iwasaki Elec. Co. Ltd.

• 505 F.3d 1371 (Fed Cir 2007)

Issues

• Notice -- U.S.C. § 287(a).

• “[w]here 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”

Issues (cont’d)

• Claim interpretation

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 <<mu>>mol/mm 3” as meaning “between 1 x 10 -6 and 1 x 10 -4 <<mu>>mol/mm 3.” – p 5

• 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

Infringement

• “between 1 x 10 -6 and 1 x 10 -4 <<mu>> 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?

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.

Holding: DOE p. 7

• “We hold that . . . resort to the doctrine of equivalents is not foreclosed with respect to the claimed concentration range . . . .”

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.

“Vitiation”

• Defined: “reduce the value of” ; “render ineffective”

• Latin vitium: reduce, impair, corrupt (thus – vice, vicious)

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.”

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;”

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.

• 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

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.

Back to Philips

• The Holmes reference disclosed lamps with a halogen concentration of 5 x 10 -4 to 5 x 10 -2 <<mu>>mol/mm 3

[T]he 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 <<mu>>mol/mm 3.

Prosecution History Estoppel

1. Recap Doctrine of Equivalents (DOE)

2. Warner-Jenkinson: presumption that part of claim coverage is surrendered when applicant amends claim

3. Festo case

4. Post-Festo developments

“Range of Equivalents”

Infringement under DOE ?

Literal Claim Scope

Warner-Jenkinson

• DOE Survives challenge

• Presumption in cases of claim amendment: amendment made for reasons related to patentability; prosecution history estoppel applies

Original Claim Scope

Original Claim Scope

Narrowed Scope, after amend-ment

• 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

Prosecution History

• Amendments – p. 944

• What limitations did they add?

• Why were they made?

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

Federal Circuit opinion

• 11 – 1 on amendment rationale issue

• 8-4 on “complete bar” approach

1st point: “related to patentability”

• Enablement estoppel is now a reality

• P. 949

– What would a “truly cosmetic” amendment look like?

2nd Point: The 3-Part Test

• Supreme Court rejects “complete bar”

Original Claim Scope

Original Claim Scope

Narrowed Scope, after amend-ment

Original Claim Scope

Narrowed Scope, after amend-ment

X

Embodi-ment “X”: Can DOE cover?

Narrowed Scope, after amend-ment

X

Embodi-ment “X”: Can DOE cover?

“Estoppel” idea

• Who is estopped from what?

• Why?

• Like other legal instances of estoppel concept?

2nd Point: The 3-Part Test

• P 952

• [1] Unforeseeable equivalents

• [2] Amendment bears “tangential relation” to equivalent

• [3] “Some other reason” -- expectations

The 3-Part Test

• P 952

• [1] Unforeseeable equivalents

• [2] Amendment bears “tangential relation” to equivalent

• [3] “Some other reason” -- expectations

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)

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.

Literal InfringementDoctrine of Equivalents

Patent

•f “means disposed . . . for receiving . . . signals

•g “said valve being coupled to said last-named means and responsive ...

ClaimElements

?

Literal InfringementDoctrine of Equivalents

PioneeringInventions

ModestInventions

Patent

•f “means disposed . . . for receiving . . . signals

•g “said valve being coupled to said last-named means and responsive ...

ClaimElements

Foreseeability

• Hughes Satellite – still the exception

• Rare to find accused product not foreseeable at time of amendment

“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.

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.

• 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.

The 3-Part Test

• P 952

• [1] Unforeseeable equivalents

• [2] Amendment bears “tangential relation” to equivalent

• [3] “Some other reason” -- expectations

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.

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.”

Festo on remand: 344 F.3d 1359, 1363-64 (Fed. Cir. 2003)

“Festo cannot overcome th[e] 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.”

“Tangential” amendments

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

Insituform: the inventionThis 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.

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 . . .

(3) drawing through the window avacuum in the interior of the tube downstreamof said one end by disposing overthe window a cup connected by a flexiblehose to a vacuum source which cup preventsingress of air into the interior ofthe tube while the tube is being evacuated,the outer layer of the tube beingsubstantially impermeable to air . . .

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. . . .

[C]laim 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.

[T]he 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.

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

XEmbodi-ment “X”: Can DOE cover?

Yes! If (1) amendment made for “tangential reason” or (2) equivalent unforeseeable

Freeman v. Gerber

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.’’

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.

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 Examiner’s Amendment to clearly define over Coy.’’ Id.

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.