CHAPTER 2 OVERVIEW OF THE DOCTRINE OF EQUIVALENTS AND § -112, ¶ 6 EQUIVALENTS

Glen Belvis § 2.01 Introduction § 2.02 The Doctrine of Equivalents [A] Disclosed but Unclaimed Subject Matter [B] Wilson Sporting Goods and Hypothetical Claims [C] Practicing the Prior Art Defense [D] Reverse Doctrine of Equivalents [E] Claim Terms Having Few or No Equivalents [F] After-Arising Equivalents [G] Local Rules Used to Preclude a Doctrine of Equivalents Argument § 2.03 Prosecution History Estoppel [A] The Federal Circuit's en banc Festo Decision [B] The Supreme Court's Festo Decision [C] The Implementation of the Supreme Court's Festo Test [D] Applicability of Estoppel Between Different Applications [E] Argument-Based Estoppel § 2.04 Means- and Step-Plus-Function Claims

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§ 2.01 INTRODUCTION

There is perhaps no question more important to the health of patents than the scope and application of the judicially-created doctrine of equivalents. It permeates the entire fabric of patent lain, and appears in virtually every case involving patent enforcement.1

Although the doctrine of equivalents is a substantially different doctrine from “equivalents” under §112, ¶ 6, these doctrines have been, and will continue to be, intertwined in infringement analyses. The doctrine of equivalents is a judicially created doctrine that is expansive in nature. This doctrine expands the scope of patent protection beyond the Literal words of the claims. On the other hand, “equivalents” tinder § 112, ¶ 6 is stalutory and is a narrowing doctrine that restricts the scope of protection afforded the patentee. The Supreme Court in Festo again reaffirmed the continued existence of the doctrine of equivalents.2 Moreover, in Festo the Court restored the doctrine of equivalents foils full scope by soundly rejecting the Federal Circuit's absolute bar approach to the application of prosecution history estoppel. Prosecution history is used to restrict or limit the scope of protection afforded a patentee by the doctrine of equivalents. In place of the Federal Circuit's absolute bar approach, the Supreme Court has set forth a test that applies rebuttable presumptions to the applicant's actions in obtaining the patent and focuses on the totality of the circumstances surrounding those actions. The Supreme Court's test should go a long way to remedy the unfairness that carne from the Federal Circuit's absolute bar approach. In another major decision an enc banc panel of the Federal Circuit, in Johnson & Johnson Associates Inc., v. R.E. Services Co.,3 held that disclosed but unclaimed subject matter in the patent specification is excluded from being considered as an equivalent. This decision may create as much of a stir as the now debunked Federal Circuit's en banc Festo decision. The Johnson & Johnson decision cannot be reconciled with the Supreme Court's Graver Tank decision, which created the modern doctrine of equivalents. Thus, it is likely that in the not too distant future the Supreme Court will again be addressing a doctrine of equivalents issue.

In contrast to the judicially created doctrine of equivalents, § 112, ¶ 6 equivalents was a legislative response to the Supreme Court's 1946 decision in Halliburton Oil Well Cementing Co. v. Walker, which prohibited functional claiming.4 In 1952, to partially overrule Halliburton. Congress enacted what has now become ¶ 6 of 35 U.S.C. § 112, which permits some functional claiming and provides:

1 Litton Systems Inc. v. Honeywel lInc., 145 F.3d 1472, 1472, 47 U.S.P.Q.2d 1 f 06, 1107 (Fed 1998) 1998) (Mager J., dissenting from the order declining the suggestion for rehearing en banc). 2 Festo Corp. v. Shokersu Kinzoku Kogyo Kabtishiki (a/k/a SMC Corp.), 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002). 3 Johnson & Johnson Associates Inc, v. R.E Services Co., 285 F.3d 1046, 62 U.S.P.Q.2d 1225 Fed. Cir. 2002)(en banc). 4 Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 71 U.S.P.Q. 175 (1946).

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An element in claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof; and such claim shall be construed to cover the corresponding structure. material, or acts described in the specification and equivalents thereof.5

Unlike the doctrine of equivalents, § 112, ¶ 6 equivalents is a narrowing doctrine that

restricts the scope of protection afforded tile patentee. In Warnrer Jenkinson, the Supreme Court found that applying § 112, ¶ 6 equivalents was in fact “an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements.”6 The Supreme Court went on to find that “§ 112, ¶ 6 was enacted as a targeted cure to a specific problem, and . . . the reference to ‘equivalents’ [in that paragraph] appears to be no more than a prophylactic against potential side effects of that cure.”7

Thus, § 112 equivalents serves to limit the literal scope of the claims to the structures

or acts that are specifically disclosed in the specification. The Federal Circuit has described § 112, ¶ 6 equivalents as the “price that must be paid” for drafting claims in means- or step-plus-function format.8 The recent decisions of the Federal Court have continued this trend of viewing § 112, ¶ 6 equivalents as a narrowing restrictive doctrine. § 2.02 THE DOCTRINE OF EQUIVALENTS

In Winans v. Denmead,9 the Supreme Court first ruled that infringement may occur even though the literal language of the claims was avoided. This ruling evolved into the present clay doctrine of equivalents, which was first set out by the Supreme Court in Graver Tank & Mfg. Co. v. Linde Air Products Co.10 Under this doctrine, an accused article or method that does not literally meet the limitations of a claim may nevertheless infringe. Thus, even if there is no literal infringement, infringement could be found tinder the doctrine of equivalents, if the accused article or method was equivalent to the claimed invention.11

Determining what counts as an equivalent has been a critical, difficult, and central issue to patent jurisprudence. The doctrine of equivalents has created a tension between two important public policies. One policy focuses on the importance of providing public notice as to what infringes, by requiring clear and distinct claims.12 The other policy focuses on the need to prevent an infringer from avoiding liability by merely playing

5 This paragraph was originally ¶ 3 in § 112 and care should be taken in reviewing older case law, which frequently refers to it as such. See 35 U.S.C. § 112 (1952); see, e.g., In re Zimmerley, 153 U.S.P.Q. 367, 369 (Pat. Off. Bd. App. 1966). 6 Warner-Jenkinson Co, v. Hilton Davis Chem. Co., 520 U.S. 17, 28, 41 U.S.P.Q.2d 1865, 1870 (1977). 7 Warner-Jenkinson Co, 520 U.S. at 28. 41 U.S.P.Q.2d at 1870-71. 8 O.J. Corp. v. Tekmar Co., 115 F.3d 1576. 1578, 42 U.S.P.Q.2d 1777. 1782 (Fed. Cir. 1997). 9 56 U.S. 330 (1854). 10 339 U. S. 605. 85 U.S.P.Q.2d 328 (1950). 11 “Infringement, both literal and under the doctrine of equivalents. is a question of fact which [the Federal Circuit] review[s] for clear error when tried to the court.” Insituform Technologies, Inc. v. Cat Contracting,Inc., 161 F.3d 688, 692, 48 U.S.P.Q.2d 1610, 1615 (Fed. Cir. 1998). 12 See, e.g., 35 U.S.C. § 112, ¶ 2 (1994) (“The specification shah conclude with one or more claims particularly pointing out and distinctly claiming the subject matter . . :”).

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semantic games or by making only minor changes in the accused article or method to avoid the literal language of the claims. After almost half a decade with no comment on these issues and policy considerations, the Supreme Court has now taken a very active role in shaping the doctrine of equivalents, and in ways that are somewhat at odds with the majority of the judges on the Federal Circuit. This Supreme Court's renewed focus on the doctrine of equivalents began with Warner-Jenkinson Co. v. Hilton Davis Chemical Co.13 In Warner-Jenkinson, the Court reaffirmed the existence of the doctrine of equivalents, and in light of the public policy tensions associated with this doctrine “endeavor[ed] to clarify the proper scope of the doctrine.14 Quoting its earlier decision in Graver Tank, the Warner-Jenkinson Court held:

What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, thins equal to the same thing may not be equal to each other and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.15

The Warner-Jenkinson Court then clarified and restricted the application of the

doctrine of equivalents, holding that:

Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety.16

This restriction of the doctrine of equivalents is referred to as the all elements rule.17 The Court, however, rejected other restrictions on the doctrine of equivalents that

13 520 U.S. 17, 41 U.S.P.Q2d 1865 (1997). 14 Warner-Jenkinson, 520 U.S. at 21, 41 U.S.P.Q.2d at 1868. 15 Warner-Jenkinson, 520 U.S. at 24-25, 41 U.S.P.Q.2d at 1869. 16 Id. at 29, 41 U.S.P.Q.2d at 1871 (emphasis added). 17 This rule eliminates one of the greatest mischiefs that the doctrine of equivalents can work on the patent law. Prior to ibis rule, although several Federal Circuit panels had adopted and previously applied the all elements rule, see, e.g.,Pennwalt Corp. v. Durland-Warland Inc., 833 F.2d 933-34, 41 U.S.P.Q.2d, 1737, 1739 (Fed. Cir. 1987), a patent lawyer could attempt to use the doctrine of equivalents to ignore the patent claims. Rather than focusing on the specific claim language and the elements of the claim, the case could be tried based on the claim

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the litigants requested. The Court declined to make the doctrine a purely equitable tool, which would be applied at the discretion of a court after weighing the equities of the case. It declined to recognize independent experimentation as :in equitable defense to the doctrine. Finally, it declined to limit the doctrine to only embodiments disclosed in the patent.18

The Warner-Jenkinson Court farther held that the equivalence determination is made

at the time of the alleged infringement and not at the time the patent issued.19 The Warner-Jenkinson Court, however, expressly declined to adopt a specific linguistic test for a doctrine of equivalents analysis.20 Thus, it is on this framework that the Federal Circuit has continued to develop and refine the doctrine of equivalents.

The playing field for an infringement analysis has now been clearly and succinctly

articulated by the Federal Circuit:

Determining whether tin accused process or device infringes a patent claim is a two-step process. The first step is claim construction, which involves ascertaining the scope and meaning of the claims at issue, while the second step involves determining whether the claims as construed read on the accused device.” Streamfeeder, LLC v. Sure-Feed Syst. Inc., 175 F.3d 974, 981, 50 USPQ2d 1515, 1519 (Fed. Cir. 1999).

“Claim construction is a question of law that we review de novo.” See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1174 (Fed. Cir. 1998) (en banc).

“Infringement, either literal or under the doctrine of equivalents, is a question of fact that we review for clear error when tried without a jury.” See Insinrform Techs., Inc. v. Cat Contracting, Inc., 161 F.3d 688. 692, 48 USPQ2d 1610, 1614 (Fed. Cir. 1998).

“Whether an asserted scope of equivalents would impinge on prior art is an issue of law that we review de novo.” See Wilson, 904 F.2d at 683-84, 14 USPQ2d at 1948.21

as a whole and how the accused device was equivalent to that claim as a whole. As one litigant brazenly asserted to a district court:

The question isn't what the claims say, and the question isn't.whether it [the accused product] Looks different. The question is what are the qualitative attributes or characteristics of what they've done and are they the same. Do they capture the heart of the invention…

Vehicular Technologies Corp. v. Titan Wheel Int'l, Inc., 141 F.3d 1084, 1089, 46 U.S.P.Q.2d 1257, 1260 (Fed. Cir. 1998) (emphasis added). The Supreme Court's adoption of the all elements rule should put an end to this type of chicanery. 18 Warner-Jenkinson, 520 U.S. at 35-40, 41 U.S.P.Q.2d at 1874. 19 Id. at 37, 41 U.S.P.Q.2d. at 1874. 20 Id. at 39-40, 41 U.S.P.Q.2d at 1875-76. 21 Ultra-Tex Surfaces Inc. v. Hill Brothers Chemical Co., 204 F.3d 1360, 1363, 53 U.S.P.Q.2d 1892, 1895 (Fed. Cir. 2000) (paragraph structure added);. See also Festo, 234 F.3d 558, 585, 56 U.S.P.Q.2d 1865, 1886 (en

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[A] Disclosed but Unclaimed Subject Matter

In Johnson & Johnson Associates Inc., v. R..E. Services Co., the Federal Circuit in an en banc decision resolved the conflict within the Federal Circuit that had developed over the situation where part of the accused infringing act or product, was disclosed in the specification but not claimed.22

This situation can best be explained by way of an example. Suppose a claim to a

composition of matter has a claim element calling for compound “b.” In the specification, however, it is disclosed that compounds “x,” “y,” and “z” may also be used in place of compound “b.” In that situation it was very likely that elements “x,” “y,” and “z” would be equivalents of “b.”23 On the other hand, a different result may have occurred if the specification discloses two embodiments of an invention, and focuses on these as being alternative and different. If only one embodiment is claimed, it is very unlikely that the other will be an equivalent.

The conflict in the Federal Circuit began to develop in an unpublished opinion

Brunswick Corp. v. The United States.24 In Brunswick, the court considered a patent relating to camouflage screens and fabric to hide military equipment from sight as well as radar. The claim element at issue related to the resistivity of the camouflage screen, which was important to the ability of the screen to hide an object from radar. The claims had a limitation of between 100 and 1,000 ohms. The specification, however, disclosed two screens that had resistances below the claimed range.25 The accused screen also had a resistance below the claimed range.

The Federal Circuit held that there could be no infringement under the doctrine of equivalents, because the disclosed resistance below the claimed range was dedicated to the public. Specifically, the Federal Circuit held that:

In Maxwell, this court cited the age-old rule that subject matter that is disclosed in the specification. but not claimed is dedicated to the public .... While the Supreme Court dismissed the argument that equivalents are limited to what is disclosed in the patent, its decision does not grant the

banc), reversed on other grounds, 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002) (“Infringement under the doctrine of equivalents is a question of fact.”) Warner-Jenkinson, 520 U.S. at 38. (“We must overturn the jury's finding on a factual issue if it is not supported by substantial evidence or if it is based on an erroneous legal determination.”) Kearns v. Chrysler Corp., 32 F.3d 1541, 1547-48, 31 U.S.P.Q.2d 1746, 1751 (Fed. Cir. 1994). (“Prosecution history estoppel is a legal question that is subject to de novo review by this court”) LaBounry, 867 F.2d at 1576, 9 U.S.P.Q.2d at 1998. (“Thus, when reviewing the jury verdict, we will independently decide the legal question of the application of prosecution history estoppel to the Stoll patent”). 22 Johnson & Johnson Associates Inc., v. R..E. Services Co., 285 F.3d 1046, 62 U.S.P.Q.2d 1225 (Fed. Cir. 2002) (en banc). 23 In fact, this was the very situation that the Supreme Court was faced with in Graver Tank. The missing element that was the subject of the equivalence analysis was disclosed in the specification. In Graver Tank, 339 U.S. 605, 85 U.S. P.Q.2d 329 (1950), the Court affirmed the finding of equivalency. 24 46 U.S.P.Q.2d 1446 (Fed. Cir. 1998). Unpublished opinions may not be used as precedent. They do, however, show the way a particular panel or the court views an issue. 25 Id. at 1448.

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patentee the right to claim as an equivalent that which is disclosed but unclaimed in the patent and therefore dedicated to the public . . . .26

The Brunswick decision substantially expanded the ruling in Maxwell that the

disclosed but unclaimed subject matter is not entitled to equivalency, because such subject matter was dedicated to the public. In Maxwell, the unclaimed subject matter was a fully disclosed distinct alternative embodiment of the claimed invention. Moreover, by not claiming that alternative embodiment, the applicant had avoided Patent Office scrutiny of it.27 It was in that limited situation that the Maxwell language of public dedication was made.

Judge Newman dissented from the Brunswick decision, but with a new panel was

able to come to an opposite conclusion in a published opinion, YBM Magnex, Inc. v. International Trade Commission.28 In YBM the court was faced with a fact situation that was virtually identical to that present in Brunswick29. In YBM, the patent claimed an oxygen content for a magnet in the range of 6,000 to 35,000 ppm. The specification, however, disclosed, but did not claim, magnets having oxygen contents in the range of 5,450 to 6,000 ppm.30 The accused magnets had an oxygen content in the range of 5,459 to 6,000 ppm.

The Commission overruled the finding of the administrative law judge that there

was infringement. In doing so, the Commission found that Maxwell had established a “new rule of law,” and applying that rule found that the disclosed but not claimed range had been dedicated to the public and thus could not be recaptured through the doctrine of equivalents.31

Judge Newman soundly reversed the Commission, rejecting its assertion that

Maxwell had created some new rule of law. In doing so, Judge Newman stated:

The Supreme Court's guidance in Warner-Jenkinson, . . . does not permit the blanket rule that everything disclosed but not claimed is barred from access to the doctrine of equivalents, whatever the facts, circumstances, and evidence . . . . In Graver Tank, for example, the asserted equivalent, manganese silicate, had itself been disclosed in the specification; the district court relied on this disclosure as supporting equivalency, not negating it.32

Judge Newman then set forth the general rule for disclosed but unclaimed subject matter:

26Id. at 1449. 27 Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1108, 39 U.S.P.Q.2d 1001, 1007 (Fed. Cir. 1996). 28 145 F.3d 1317, 467 U.S.P.Q.2d 1843 (Fed. Cir. 1998). Judges Rich and Smith joined with Judge Newman in the YBM opinion. Judge Clevenger authored the Brunswick opinion and was joined by Chief Judge Mayer. 29 Because the Brunswick decision is not published it cannot be cited as precedent and thus the published YBM case would be controlling. 30 YBM, 145 F.3d at 1318-19, 467 U.S.P.Q.2d at 1844-45. 31 Id. at 1320, 467 US.P.Q.2d at 1845. 32 Id. at 1320, 467 U.S.P.Q.2d at 1846.

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Because the [Supreme] Court rejected the proposition that subject matter that is disclosed but not claimed is always deemed dedicated to the public, that position is not available as a general rule of law. Some factual situations may indeed warrant rejection of an asserted equivalent on this ground, as the Federal Circuit held in Maxwell; but to enlarge Maxwell to a broad and new rule of law, as did the Commission, is not only an incorrect reading of Maxwell but would bring it into direct conflict with Supreme Court precedent.33

Thus, Judge Newman reinstated the findings of the administrative law judge that

there was infringement under the doctrine of equivalents.34

In its en banc decision in Johnson & Johnson, however, the Federal Circuit has rejected Judge Newman's approach in YBM. Instead, as part of what appears to be the majority of the court's intent to vitiate the doctrine of equivalents, the court expanded the rationale of Maxwell to cover all situations where there is disclosed but unclaimed subject matter.

The claim element at issue in Johnson &c Johnson called for an aluminum substrate sheet. The specification, however provided that “[w]bile aluminum is currently the preferred material for the substrate, other metals, such as stainless steel or nickel alloys, may be used.35 The accused infringing device used a steel substrate sheet.36 Over a strong and well-reasoned dissent by Judge Newman, the en banc Federal Circuit held that as a matter of law the steel substrate could not be an equivalent to aluminum. Specifically the court provided:

On appeal, RES does not challenge the jury's factual finding of equivalency between the copper-steel and copper-aluminum laminates. Instead, citing Maxwell, RES argues that Johnson did not claim steel substrates, but limited its patent scope to aluminum substrates, thus dedicating to the public this unclaimed subject matter ....

* * *

Having disclosed without claiming the steel substrates, Johnson cannot now invoke the doctrine of equivalents to extend its aluminum limitation to encompass steel. Thus, Johnson cannot assert the doctrine of equivalents to cover the disclosed but unclaimed steel substrate. To the extent that YBM Magnex conflicts with this holding. this en banc court now overrules that case.37

33 Id. at 1321, 467 U.S.P.Q.2d at 1846 34 Id. at 1322, 467 U.S.P.Q.2d at 1847. 35 Johnson & Johnson, 285 F.3d at 1055, 62 U.S.P.Q.2d at 1227. 36 Id., 62 U.S.P.Q.2d at 1227. 37 Id. at __, 62 U.S.P.Q.2d at 1227-28, 1231.

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The Johnson & Johnson decision is a low-water point for the doctrine of equivalents and the Federal Circuit. Johnson & Johnson has no basis in patent law and is in direct conflict with the Supreme Court's holding in Graver Tank. Johnson & Johnson cannot be reconciled with the long-standing rule that the inclusion of extra, unclaimed, elements into an infringing device does not avoid infringement, whether those elements are mentioned in the specification or not.38 Johnson & Johnson also unfairly and retroactively changes the playing field for patentees. It moreover, it does so in spite of the fact that the Supreme Court on two separate occasions has admonished the Federal Circuit against such a practice. Thus, it appears that it will be snore a matter of when, and not whether, this issue reaches the Supreme Court. [B] Wilson Sporting Goods and Hypothetical Claims

In a series of cases the Federal Circuit continued to maintain the viability of the Wilson Sporting Goods39 hypothetical claim analysis.40 In the hypothetical claim analysis the patent constructs a hypothetical claim that would literally cover the equivalent in question. If that claim is patentable over the prior art, then there would be infringement under the doctrine of equivalents. If that hypothetical claim were not patentable, then there would be no infringement under the doctrine of equivalents because the equivalent in question is within the prior art. Thus, in Interactive Pictures Corp. v. Infinite Pictures Inc.,41 the Federal Circuit ruled:

It is well settled law that a patentee cannot assert a range of equivalents that encompasses the prior art. To test this limitation, the notion of a hypothetical claim may be useful. A hypothetical claim may be constructed to literally cover the accused device. If such a claim would be unpatentable under 35

U.S.C. §§ 102 or 103, then the patentee has overreached. and the accused device is noninfringing as a matter of law. The burden of producing evidence of prior art to challenge a hypothetical claim rests with an accused infringer, but the burden of proving patentability of the hypothetical claim rests with the patentee.42

38 Smith & Nephew lire. v. Ethicon Inc., 276 F.3d 1304, 61 U.S.P.Q.2d 1065, 1069-70 (Fed. Cir. 2001) (declining to apply the rationale of Maxwell to the situation where the accused infringing process performed steps in addition to the steps that were claimed, even though those additional steps were disclosed in the specification); Asyst Technologies Inc. v. Empak Inc., 268 F.3d 1364, 1371, 60 U.S.P.Q.2d 1567, 1572-73 (Fed. Cir. 2001) (“It is well established that 'it is not necessary to claim in a patent every device required to enable the invention to be used.' . . . An electrical outlet enables a toaster to work, but the outlet is not for that reason considered part of the toaster.”) 39 Wilson Sporting Goods v. David Geoffrey & Assocs., 904 F.2d 677, 14 U.S.P.Q.2d 1942 (Fed. Cir. 1990). 40 See, generally, Marquip Inc. v. Fosber America Inc., 198 F.3d 1363, 1367, 53 U.S.P.Q2d 1015, 1018 (Fed. Cir. 1999) (“Based on the fundamental principle that no one deserves an exclusive right to technology already in the public domain, this court has consistently limited the doctrine of equivalents to prevent its application to ensnare prior art.”) 41 274 F.3d 1371, 61 U.S.P.Q.2d 1152 (Fed. Cir. 2002). 42 Id. at 1380, 61 U.S.P.Q.2d at 1159 (citations omitted); see also Ultra-Tex Surfaces Inc. v Hill Brothers Client. Co., 204 F.3d 1360, 1364, 53 U.S.P.Q.2d 1892, 1896 (Fed. Cir. 2000) (“while the accused infringer must come forward with evidence that the hypothetical claim reads on the prior art, once the patentee makes out a prima facie case of infringement by equivalence, the ultimate burden of persuasion rests on the patentee to show that the hypothetical claim does not read on the prior art. See id. at 982-83, 50 U.S.P.Q.2d at 1520-21.”); Fiskars

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In Abbott Laboratories v. De y L.P.,43 the Federal Circuit emphasized the

requirement that the hypothetical claim must be considered as a whole when comparing it to the prior art. The Abbott court overruled a district court’s determination that the hypothetical claim covered the prior art, because the district court only focused on one of the limitations in the claim and ignored the other limitations that were not present in the prior art. Thus, the Abbott court held:

The district court erred by comparing only the phospholpid limitation of claim 1 to the '301 patent (the only prior art considered by the court), while ignoring other limitations of the claim. The '301 patent describes a phospholpid range of 75.0%-95.5%, which overlaps the hypothetical claim's range of 68.6%-94.5%. The district court therefore concluded that the asserted range of equivalents was too broad because it encompassed the prior art. We disagree because the '301 patent fails to disclose the claim limitation of free fatly acids in the amount of 1.0%-27.7%.44

The burdens of proof in a hypothetical claim doctrine of equivalents analysis can be

summarized as:

(i) the patentee has the burden of presenting a prima facie case of in-fringement under the doctrine of equivalents, i.e., the hypothetical claim covers the accused product;

(ii) the accused Infringer then has the burden of corning forward with a showing

that the accused device is practicinc the prior art, i.e, the hypothetical claim is unpatentable: and,

(iii) the patentee then has the ultimate burden of persuasion to establish that the

accused device infringes under the doctrine of equivalents and that the accused device is not practicing the prior art, i.e., the hypothetical claim is both infringed and patentable.

Inc. v. Hunt Manufacturing Co., 221 F.3d 1318, 1324, 55 U.S.P.Q.2d 1569, 1573 (Fed. Cir. 2000) (“Hunt [the accused infringer] does not argue that a hypothetical claim embracing its device would not be patentable. Hunt simply argues that Fiskars [the patentee] had the burden of presenting evidence and establishing that Hunt's device was not in the prior art, as part of its burden of proof of infringement. Hunt states that the district court misplaced the burden of proof, thus requiring a new trial. Hunt's theory is incorrect. It is an affirmative defense of the accused infringer to allege and to show that it is practicing the prior art. When the patentee has presented a prima facie case of infringement, the burden shifts to the accused infringer to come forward with evidence to establish this defense.”). 43 Abbott Laboratories v. Dey L.P., 287 F.3d 1097, 62 U.S.P.Q.2d 1545 (Fed. Cir. 2002). 44 Id. at 1106, 62 U.S.P.Q.2d at 1551; see also Ultra-Tex Surfaces Inc., 204 F.3d at 1365, 53 U.S.P.Q.2d at 1896 (“Despite the utility of this methodology, in Streanrfeeder we emphasized that hypothetical claim analysis is not a vehicle for a patentee to ‘freely redraft granted claims’ by expanding some limitations in order to read on an accused process or device while narrowing other limitations to avoid prior art.” See Streamfeeder. 175 F.3d at 983, 50 U.S.P.Q.2d at 1521.”).

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[C] Practicing the Prior Art Defense

The court also continued to reconcile the all elements rule with the defense of practicing the prior arts.45 In Tate Floors v. Interface Architectural Resources, however, the Federal Circuit entered a decision that will probably create more smoke than light.46 In Tate Floors, the Federal Circuit ruled “that there is no ‘practicing the prior art’ defense to literal infringement.”47 A more thorough reading of this opinion, however, shows that the defense of practicing the prior art is alive and well. The Tate Floors court was merely addressing the respective burdens of proof that apply to the practing-the-prior-art-defense. Thus, the Tate Floors court further provided:

literal infringement is determined by construing the claims and comparing Them to the accused device, not by comparing the accused device to the prior art. Barter, 49 F.3d at 1583, 34 U.S.P.Q.2d at 1126…

* * *

Morever, just as the doctrine of equivalents cannot extend so broadly

as to ensnare prior art, claim language should generally be construed to preserve validity, if possible… Prior art is relevant to literal infringement only to the extent that it affects the construction of ambiguous claims.... Consequently, where such claim language clearly reads on the prior art, the patent is invalid.

Our law requires patent challenges to prove invalidity by clear and

convincing evidence. Where an accused infringer is clearly practicing only that which was in the prior art, and nothing more, and the patentee's proffered construction reads on the accused device, meeting his burden of proof should not prove difficult. Nevertheless, accused infringers are not free to flout the requirement of proving invalidity by clear and convincing evidence by asserting a “practicing the prior art” defense to literal infringement under the less stringent preponderance of the evidence standard.48

[D] Reverse Doctrine of Equivalents

In Tate Floors, the Federal Circuit also said what every patent lawyer knows—there is no chance that a reverse doctrine of equivalents defense will ever be successful. Specifically, characterizing the reverse doctrine of equivalents as an “anachronistic exception, long mentioned but rarely applied,” the court suggests that this doctrine was legislatively overruled by the 1952 amendments to the Patent Act: 45 See Fiskars Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1323, 55 U.S.P.Q.2d 1569, 1574. (“Hunt [the accused infringer] also states that if any individual element of the Hunt device is in the prior art. that element can not be deemed equivalent to any claimed element. That theory is incorrect. A claim to a mechanical device usually recites a combination of several elements, most or all of which may be separately known .... That an element of art accused device already exists does not bar equivalency as to that element-“). 46 279 F.3d 1357, 61 U.S.P.Q.2d ) 1647 (Fed. Cir. 2002). 47 Id. at 1365, 61 U.S.P.Q.2d at 1653. 48 Id. at 1366-67, 61 U.S.P.Q.2d at 1654.

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Not once has this court affirmed a decision finding noninfringement based upon the reverse doctrine of equivalents. And with good reason: when Congress enacted 35 U.S.C. § 112, after the decision in Graver Tank, it imposed requirements for the written description, enablement, definiteness, and means-plus-function claims that are co-extensive with the broadest possible reach of the reverse doctrine of equivalents . . . . [T]he reverse doctrine of equivalents was originally used by courts to reduce the scope of broad “means” claims to “cover only what the inventor discloses and equivalents thereof.”49

[E] Claim Terms Having Few or No Equivalents

The Federal Circuit has continued its line of cases that began with Zodiac Pool Care, Inc. v. Hoffinger Industries,Inc.50 and Moore U.S.A. Inc. v. Standard Register Co.,51 which provided no equivalents to claim terms and specifications that are expressly limited on their face.

In Zodiac Pool Care Inc., the Federal Circuit affirmed summary judgment of no infringement under the doctrine of equivalents for a pool vacuum. The claim limitation at issue called for a stop to be located “substantially inward of the peripheral edge” of the unit. In the accused infringing unit the stop extended to the edge of the unit. In affirming the district court's non-infringement ruling, the Federal Circuit held:

First, the language of the limitation itself provides for a “stop… located… substantially inward of the peripheral edge.” It defies common usage to suggest that a stop which is “substantially inward” of an edge could at the same time extend at least to that same edge. Zodiac contends that as long a substantial portion of the stop is in fact inward of the edge, both conditions could be satisfied. This contention, however, ignores that the limitation recites a relationship between the edge and the stop, not a relationship between the edge and a portion of the stop.

* * *

We conclude that the equivalence issue is resolved by our decision in Sage Products.

Because this issued patent contains clear structural limitations, the public has a right to rely on those limits in conducting its business activities. This court will not effectively remove such a limitation under a doctrine designed to prevent “fraud on the patent.’” [Sage Products 126 F.3d] at 1425-26, 44 USPQ2d at 1108.

49 Id. at 1368, 61 U.S.P.Q.2d at 1655. 50 206, F.3d 1408, 54 U.S.P.Q.2d 1141 (Fed. Cit. 2000). 51 229 F.3d 1091, 56 U.S.P.Q.2d 1225 (Fed. Cit. 2000).

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However. like the patent at issue in Sage Products, the '382 patent

contains “clear structural limitations”, including a limitation that the stop be located “substantially inward” of the peripheral edge of the disc. Given the proper construction of this limitation. a verdict of infringement under the DOE would reduce the claims to nothing more than “functional abstracts, devoid of meaningful structural limitations on which the public could rely.” Sage Products, 126 F.3d at 1424, 44 USPQ2d at 1107 (citing Conopco, Inc. v. May v. Dep't Stores Co., 46 F.3d 1556, 1562, 32 USPQ2d 1225, 1228 (Fed. Cir. 1994)).52

In Moore, the Federal Circuit similarly held that a claim limitation calling for the

“majority of the length” was entitled to zero equivalents. In particular, the court rejected an argument that 48 percent was an insubstantial difference from 50.001 percent. Significantly, this rationale was not based on prosecution history estoppel. Instead, the court reasoned:

We cannot agree with any of Moore's theories on infringernent by equivalents. If our case law on the doctrine of equivalents makes anything clear, it is that all claim limitations are not entitled to an equal scope of equivalents. Whether the result of the All Limitations Rule. see Penntwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934-35. 4 USPQ2d 1737, 1739-40 (Fed. Cir. 1987) (en banc), prosecution history estoppel, see Warner-Jenkinson, 520 U.S. at 33-34, or the inherent narrowness of the claim language, see Sage, 126 F.3d at 1425, 44 USPQ2d at 11, many limitations warrant little, if any, range of equivalents.

In this case, we hold that the applicant's use of the term “majority” is not entitled to a scope of equivalents covering a minority for at least two reasons. First, to allow what is undisputedly a minority (i.e., 47.8%) to be equivalent to a majority would vitiate the requirement that the “first and second longitudinal strips of adhesive … extend the majority of the lengths of said longitudinal marginal portions.” '464 patent, col. 10, 11, 56-60. If a minority could be equivalent to a majority, this limitation would hardly be necessary, since the immediate)y preceding requirement of a “first and second longitudinal strips of adhesive disposed in said first and second longitudinal marginal portions, respectively, of said first face” would suffice. Second, it would defy logic to conclude that a minority—the very antithesis of a majority—could be insubstantially different from a claim limitation requiring a majority, and no reasonable juror could find otherwise.53

52 Zodiac Pool Care, 206 F.3d at 1414-16, 54 U.S.P.Q.2d at 1146-47 (Fed. Cir. 2000) (boldface added). 53 Moore, 229 F.3d at 1106, 56 U.S.P.Q 2d at 1235-36 (boldface added).

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Thus, claim terms such as greater than, less than, extending beyond, consisting of, etc., will have no protection under the doctrine of equivalents.54 This rationale was applied in Cooper Cameron Corp. v. Kvaerner 0ilfield Products lnc.,55 in which the Federal Circuit affirmed the granting of a summary judgment that the claim lens “between two plugs” was not entitled to any scope of equivalents. Specifically, the Federal Circuit reasoned:

in Moore U.S.A. Inc. v. Standard Register Co., 229 F.3d 1091, 1094, 56 USPQ2d 1225, 1235-36 (Fed. Cir. 2000), we held that a claim to a mailing form requiring that strips of adhesive extend to “the majority” of the lengths of longitudinal margin portions could not be met equivalently by an accused device with strips of adhesive that extended to only 47.8% of the length of the margin because a “minority” could not be a “majority” as a matter of law. Similarly, the workover port in Kvaerner's accused device enters the wellhead assembly “above” the two plugs, which cannot be equivalent to a connection “between the two plugs.”56

The Federal Circuit, however, has been careful not to carry this rationale to an

extreme. In Abbott Laboratories v. Lie), L.P., the court specifically noted that “[t]he fact that a claim recites numeric ranges does not, by itself, preclude Abbott from relying on the doctrine of equivalents.”57

Additionally, it is important to recognize that this rationale, which limits the doctrine

of equivalents, is not based on prosecution history estoppel. Instead, it is based on the claim term and the patent specification itself and how one determines equivalency, i.e., similarity. As such, this rationale will not be affected by the Supreme Court's reversal of the Federal Circuit's Festo decision. [F] After-Arising Equivalents

In Kraft Foods Inc. v. International Trading Co.,58 the Federal Circuit confirmed that the after-arising equivalents rule set out in Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc.,59 did not apply to regular claims, but was limited to means- and step-plus-function claims. In Chiuminatta the court held that for means- and step-plus-function claims the doctrine of equivalents was available only for technology that was developed after the patent issued: 54 See, e g., Vehicular Technologies Corp. v. Titan Wheel Int'l Inc., 212 F.3d 1377, 1382-83, 54 U.S.P.Q.2d 1841, 1845 (Fed. Cir. 2000) (refusing to allow the patentee to expand the scope of a claim that contained the introductory phrase “consisting of” to include the presence of additional elements); SciMed Life Sys. Inc- v. Advanced Cardiovascular Sys. Inc., 242 F.3d 1337, 1345, 58 U.S.P.Q.2d 1059, 1066 (Fed. Cir. 2001) (finding that a dual lumen catheter was not equivalent to the claimed coaxial lumen, because the specification criticized and disclaimed the dual lumen embodiment); Fin Control Sys. Pry. v. OAM Inc., 265 F.3d 1311, 1320-21, 60 U.S.P.Q. 1203, 1210 (Fed. Cir. 2001) (holding that a claim limitation to “lateral engagement” to a surfboard excluded as equivalents all engagements to the front or rear of the surfboard); Durel Corp. v. Osram Sylvania Inc., 256 F.3d 1298, 59 U.S.P.Q.2d 1238 (Fed. Cir. 2001). 55 291 F.3d 1317, 62 U.S.P.Q.2d 1846 (Fed. Cir. 2002). 56 Id. at 1321-22, 62 U.S.P.Q.2d at 1849-50 (Fed. Cir. 2002). 57 Abbott Laboratories v. Dey L.P., 287 F.3d 1097, 1107-08, 62 U.S.P.Q.2d 1545, 1552 (Fed. Cir. 2002). 58 203 F.3d 1362, 53 U.S.P.Q.2d 1814 (Fed. Cir. 2000) 59 145 F.3d 1303, 46 U.S.P.Q. 1752 (Fed. Cir. 1998).

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… where the equivalence issue does not invoke later-developed technologies, but rather involves technology that predates the invention itself. In such a case, a finding of non-equivalence for § 112, ¶ 6 purposes should preclude a contrary finding under the doctrine of equivalents.60

The district court in Kraft Foods granted summary judgment of no infringement

under the doctrine of equivalents because the technology employed by the accused device was known at the time the patent issued.61 The Federal Circuit rejected this analysis holding that:

We agree with Kraft that the district court incorrectly applied our holding in Chiuminatta and consequently improperly granted summary judgment of noninfringement under the doctrine of equivalents ….

As Kraft correctly notes, however. Chiuminatta’s preclusion of finding of infringement under the doctrine of equivalents for pre-existing technology after an adverse holding of no literal infringement for the same technology applies only to means-plus-function claim limitations . . . . Thus, for a claim limitation not drafted in means-plus-function language, the mere fact that the asserted equivalent structure was pre-existing technology does not foreclose a finding of infringement under the doctrine of equivalents.62

The Federal Circuit has now held that the after-arising equivalents rule does not

apply to the functional component of a means- or step-plus-function infringement analysis. To establish literal infringement of a means- or step-plus-function claim, the patentee must show that the accused infringer is using an identical function to that which is claimed. Thus, the question has been: if an identical function is not present, could the patentee nevertheless turn to the doctrine of equivalents to establish infringement? In Interactive Pictures Corp. v. Infinite Pictures Inc.,63 the Federal Circuit answered this question affirmatively. Specifically the court held:

Interactive responds that this case is distinguishable from Chiuminatta; we agree. In Chiuminatta, we held that a finding that a component of an accused product is not a structural “equivalent” to the corresponding structure of a means-plus-function limitation for purposes of literal infringement analysis precludes a finding that the same structure is equivalent for purposes of the doctrine of equivalents, unless the component constitutes technology arising after the issuance of the patent. However, when a finding of noninfringement under 35 U.S.C. § 112, paragraph 6, is premised on an absence of identity of function, then infringement under the doctrine of equivalents is not thereby automatically precluded. That is because infringement under the doctrine of equivalents may be premised on the accused and the patented

60 Id 31 1311, 46 U.S.P.Q.2d at 1758. 61 Kraft Foods, 203 F.3d at 1366, 53 L1.S.P.Q.2d at 1817. 62 Kraft Foods, 203 F.3d at 1372-73, 53 U.S.P.Q.2d at 1821-22 (bold added). 63 274 F.3d 1371, 61 U.S.P.Q.2d 1152 (Fed. Cir. 2002).

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component having substantially the same function, whereas structure corresponding to the disclosed limitation in a means-plus-function clause must perform the identical function.64

[G] Local Rules Used to Preclude a Doctrine of Equivalents Argument

In Genernech Inc. v. Amgen Inc., the Federal Circuit affirmed a lower court's ruling that precluded a patentee from relying on the doctrine of equivalents because the patentee had not provided a doctrine of equivalents position in the claims charts required by the local rules.65 This holding is consistent with the Federal Circuit's strict approach that even a minor failing in the patentee's proofs of infringement under the doctrine of equivalents results in a finding of no equivalents.66

§ 2.03 PROSECUTION HISTORY ESTOPPEL

Prosecution history estoppel, or file wrapper estoppel, is an important limit to the

doctrine of equivalents. In theory, prosecution history estoppel uses the public record of what the patentee did before the Patent Office to restrict a patentee from relying on the doctrine of equivalents. “Prosecution history estoppel precludes a patentee froth obtaining under the doctrine of equivalents coverage of subject matter that has been relinquished during the prosecution of its patent application.”67

The Warner-Jenkintson Court relied on the doctrine of prosecution history estoppel as a reason why the doctrine of equivalents did not violate the public notice policy of requiring clear and distinct claims.68 Thus, as a basis for reaffirming the existence of the doctrine of equivalents, the Warner-Jenkintson Court set forth a framework for the application of the doctrine of prosecution history estoppel.69 It was the application of this framework and its reconciliation with prior case law that gave rise lo a split in the Federal Circuit,70 which the en banc decision in Festo Corp. v. Shoketsu Kinozku Kogyo Kabushiki Co., attempted to resolve.71

64 Interactive Pictures Corp., 274 F.3d at 1381-82, 61 U.S.P.Q.2d at 1 160 (citation omitted; emphasis in original). 65 289 F.3d 761, 773-74, 62 U.S.P.Q.2d 1640, 1649 (Fed. Cir. 2002). 66 Speedplay Inc. v. Bebop Inc., 211 F.3d 1245, 1258, 53 U.S.P.Q.2d 1984, 1993 (Fed. Cir. 2000) (the Federal Circuit affirmed a holding of non-infringement because the patentee's expert had failed to address the “way” prong of the function-way-result test); see also Ultra-Tex Surfaces, 204 F.3d. 1360, 1364, 53 U.S.P.Q.2d 1892, 1895 (“As an initial matter, it is beyond dispute that Ultra-Tex [the patentee] bore the burden of proving the composition of the accused template. While Ultra-Tex argues that Hill Brothers failed to prove the composition of the accused template, it is axiomatic that the patentee bears the burden of proving infringement”). 67 Pharmocia & Upjohn v. Mylan Pharm., 170 F.3d 1373, 1376, 50 U.S.P.Q.2d 1033, 1037 (Fed. Cir. 1999). “Whether prosecution history estoppel applies to limit the doctrine of equivalents is a question of law which Jibe Federal Circuit] reviews de novo.” Pharmacia & Upjohn, 170 F.3d at 1376, 50 U.S.P.Q.2d at 1037. 68 Warner-Jenkintson, 520 U.S. at 34, 41 U.S.P.Q.2d at 1873. 69 Id at 30-33 & n.7. 41 U.S.P.Q.2d at 1872-73 & n.7. 70 The split in the Federal Circuit has resulted in more than a few scathing dissents. For example, Judge Gajarsa viewed the majority opinion in Litton Sys., Inc.v. Honeywell, Inc., 140 F.3d 1449, 46 U.S.P.Q.2d 1321 (Fed. Cir. 1998), as “a tortured interpretation of Warner-Jenkinson.” Litton Sys., Inc. v. Honeywell, Inc., 145 F.3d 1472, 1476, 47 U.S.P.Q. 1106, 1110 (Fed. Cir. 1998) (emphasis added) (Gajarsa, J. dissenting from denial of a request for rehearing en banc). As Judge Clevenger put it “[s]omeone, in this case [Litton] or in another case soon, should explain to the Supreme Court that—if this panel is correct in granting a range of equivalents to limitations of claims amended for patentability reasons—its Warner-Jenkinson decision had no meaningful

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[A] The Federal Circuit's en banc Festo Decision

The en banc decision in Festo answered four of the five questions set out in the order granting the petition for rehearing en banc.72

1. For the purposes of determining whether an amendment to a claim creates prosecution history estoppel, is “a substantial reason related to patentability,” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 33, 117 S.Ct. 1040, 137 L. Ed. 2d 146 (1997), limited to those amendments made to overcome prior art under § 102 and § 103, or does “patentability” mean any reason affecting the issuance of a patent?

In response to En Banc Question 1, we hold that “a substantial

reason related to patentability” is not limited to overcoming prior art, but includes other reasons related to the statutory requirements for a patent. Therefore, an amendment that narrows the scope of a claim for any reason related to the statutory requirements for a patent will give rise to prosecution history estoppel with respect to the amended claim element.73

effect at all on the doctrine of equivalents.” Litton Sys., Inc. v Honeywell, Inc., 145 F.3d 1472, 1473, 47 U.S.P.Q. 1106, 1107 (Fed. Cir. 1998) (Clevenger, J. dissenting from denial of a request for rehearing en banc). 71 Festo Corp. v. Shoketsu Kinozku Kogyo Kabushiki Co., 234 F.3d 558, 56 U.S.P.Q.2d 1865 (Fed. Cir. 2000) (en banc), reversed, 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002). 1n the earlier decision in the Festo case, which was vacated by the order granting the petition for rehearing, the Federal Circuit applied the rationale of Corning Glass Works v. Sumitomo Elec. U.S.A. Inc., 868 F.2d 1251, 9 U.S.P.Q.2d 1962 (Fed. Cir. 1989), and found infringement under the doctrine of equivalents even though there was not a one-to-one correspondence between the accused device and the claims at issue. In Festo, the claims called for sealing rings (plural) and the accused device had only a single sealing ring. See Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki (a/k/a SMC Corp.), 172 F.3d 1361, 50 U.S.P.Q.2d 1385 (Fed. Cir.1999), withdrawn, 187 F.3d 1381, 51 U.S.P.Q.2d 1959 (Fed. Cir. 1999). That the Supreme Court took the en banc Festo decision for review should have come as no surprise in view of the importance of these issues and the fact that this case was previously before the Supreme Court and was remanded for reconsideration in view of the Supreme Court's Warner-Jenkinson decision. See Shoketsu Kinozku Kogyo Kabushiki Co. v. Festo Corp., 520 U.S. 1111 (1997). 72 Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki (a/k/a SMC Corp.), 187 Fad 1381, 51 U.S.P.Q.2d 1959 (Fed. Cir. 1999) (granting petition for rehearing en banc). 73 Festo, 234 F.3d 558, 563-64, 56 U.S.P.Q.2d 1865, 1867-68 (en banc) (11 of 12 judges joined in the holding on question 1), reversed 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002). In answering question one—what does substantially related to patentability mean? —the court essentially stated that everything that happens in prosecution is related to patentability and can potentially give rise to prosecution history estoppel. In particular, the court found that an amendment substantially related to patentability is any amendment that is made for the purposes of:

novelty; non-obviousness; utility; written description requirement; enablement; best mode: and, definiteness

Festo, 234 F.3d 558, 566-67, 56 U.S.P.Q.2d 1865, 1870-71 (boldface added) (en banc), reversed, 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002).

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2. Under Warner-Jenkinson, should a “voluntary” claim amendment-one not required by the examiner or made in response to a rejection by an examiner for a stated reason—create prosecution history estoppel?

In response to En Banc Question 2, we hold that “voluntary” claim

amendments are treated the same as other claim amendments; therefore, any voluntary amendment that narrows the scope of a claim for a reason related to the statutory requirements for a patent will give rise to prosecution history estoppel with respect to the amended claim element.74

3. If a claim amendment creates prosecution history estoppel. under Warner-Jenkinson what range of equivalents, if any, is available tinder the doctrine of equivalents for the claim element so amended?

The inclusion of the best mode requirement in its list of things related to patentability perhaps shows the ze0 that the court has for restricting the doctrine of equivalents to bring certainty to an area of the patent law, which by its very nature can not be certain. The best mode requirement looks to what the inventors believed to be their best mode of practicing the invention at the time the application is filed. It thus seems quite impossible for an amendment that is made to the claims after the application has been filed, to correct any best mode problems or, for that matter, to ever be related to the best mode requirement. Nevertheless, the Federal Circuit felt compelled to add it to its list of amendments that are related to patentability. 74 Festo, 234 F.3d 558, 563-64, 56 U.S.P.Q.2d 1865, 1867-68 (en banc) (11 of 12 judges joined in the holding on question 2), reversed, 122 S.Ct. 1831, 62 U.S.P.Q.2d 1705 (2002). In answering question two-what is the effect of a voluntary amendment?-the court essentially stated that it is the same as any other amendment. Specifically, the Festo court held that:

Therefore, a voluntary amendment that narrows the scope of a claim for a reason related to the statutory requirements for a patent will give rise to prosecution history estoppel as to the amended claim element. Both voluntary amendments and amendments required by the Patent Office signal to the public that subject matter has been surrendered. There is no reason why prosecution history estoppel should arise if the Patent Office rejects a claim because it believes the claim to be unpatenable, but not arise if the applicant amends a claim because he believes the claim to be unpatentable.

Again the Federal Circuit based its rationale for applying the doctrine of equivalents to voluntary claim amendments on the public notice policy of patent claims. The court also notes in dicta that the application of prosecution history estoppel to voluntary claim amendments is consistent with the doctrine of “argument-based estoppel.” Under that doctrine, arguments “made voluntarily during prosecution may give rise to prosecution history estoppel if they evidence a surrender of subject matter.” Festo, 234 F.3d 558, 566, 56 U.S.P.Q.2d 1865. 1871 (boldface added) (en bonc), reversed, 122 S.Ct. 1831, 62 U.S.P.Q.2d 1705 (2002). To support this position the court cites to KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1359-60, 55 U.S.P.Q.2d 1835, 1841-42 (Fed. Cir. 2000); Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1252-53, 54 U.S.P.Q.2d 1711, 1719 (Fed. Cir. 2000); Pharmacia & UpjohnCo. v. Mylan Pharms., 170 F.3d 1373, 1377, 50 U.S.P.Q.2d 1033, 1036; Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1583, 34 U.S.P.Q.2d 1673, 1682 (Fed. Cir. 1995): and Texas Instruments Inc. v. United States Int'l Trade Comm'n, 988 F.2d 1165, 1174, 26 U.S.P.Q.2d 1018, 1025 (Fed. Cir. 1993).

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In response to En Banc Question 3. we hold that when a claim amendment creates prosecution history estoppel, no range of equivalents is available for the amended claim element.75

4. When “no explanation [for a claim amendment] is established.”, Warner-Jenkinson, 520 U.S. at 33, 117 S.Ct. 1040, thus invoking the presumption of prosecution history estoppel under Warner-Jenkinson, what range of equivalents, if any, is available under the doctrine of equivalents for the claim element so amended?

In response to En Bane Question 4, we hold that “unexplained” amendments are not entitled to any range of equivalents.76

75 Pesto, 234 F.3d 558, 563-64, 56 U.S.P.Q.2d 1865. 1867-68 (en banc) (8 of 12 judges joined in the holding on question 3), reversed, 122 S.Ct. 1831, 62 U.S.P.Q.2d 1705 (2002). In answering question three—what is the effect of an estoppel—the court stated that it creates a complete bar to the doctrine of equivalents. Specifically, the court held that:

When a claim amendment creates prosecution history estoppel with regard to a claim element, there is no range of equivalents available for the amended claim element. Application of the doctrine of equivalents to the claim element is completely barred (a “complete bar”).

Festo, 234 F.3d 558, 569, 56 U.S.P.Q.2d 1865, 1872 (en banc), reversed, 112 S.Ct. 1831, 62 U.S.P.Q.2d 1705 (2002).

Recognizing that with one stroke of the pen they changed some 20 years of patent jurisprudence, and the fact that the court had held the exact opposite position for the last three years, the majority in Festo goes to great length to support its holding:

Today, we revisit the question we first addressed in Hughes I and come to a different conclusion as to the proper scope of equivalents that is available when prosecution history estoppel applies than we did in that case. We hold that prosecution history estoppel acts as a complete bar to the application of the doctrine of equivalents when an amendment has narrowed the scope of a claim for a reason related to patentability. Our decision to reject the flexible bar approach adopted in Hughes I comes after nearly twenty years of experience in performing our role as the sole court of appeals for patent matters. In those years, the notice function of patent claims has become paramount, and the need for certainly as to the scope of patent protection has been emphasized. A problem with the flexible bar approach is that it is virtually impos-sible to predict before the decision on appeal where the line of surrender is drawn . . . .

We believe that the current state of the law regarding the scope of equivalents that is available when prosecution history estoppel applies is “unworkable.” In patent law, we think that rules qualify as “workable” when they can be relied upon to produce consistent results and give rise to a body of law that provides guidance to the marketplace on how to conduct its affairs. After our long experience with the flexible bar approach, we conclude that its “workability” is flawed … Festo, 234 F.3d 558, 571-78, 56 U.S.P.Q.2d 1865, 1877-80 (boldface added) (en banc), reversed, 112 S. Cf. 1831, 62 U.S.P.Q2d 1705 (2002). 76 Festo, 234 F.3, 558, 563-64, 56 U.S.P.Q.2d 1865, 1867-68 (en banc) (11 of 12 judges joined in the holding on question 4), reversed, 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002). In answering question four—what is the effect of an estoppel when the reason for the amendment is unelear—the court stated that such an amendment creates a complete bar to equivalents. Specifically, the court held:

We answer Question 4 as follows: When no explanation for a claim amendment is established, no range of eduivalents is available for the claim element so amended. This question is answered by Warner-Jenkinson_

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5. Would a judgment of infringement in this case violate Warner-Jenkinson's requirement that the application of the doctrine of equivalents “is not allowed such broad play as to eliminate [an] element in its entirety,” 520 U.S. at 29, 117 S.Ct. 1040. In other words, would such a judgment of infringement, post Warner-Jenkinson, violate the “all elements” rule?

We do not reach Ell Banc Question 5, for reasons which will become

clear in our discussion of the specific case before.77

Where no explanation is established, . . . prosecution history estoppel would bar the application of tire doctrine [of] equivalents as to that element.

Warner-Jenkinson, 520 U.S. at 33 (emphasis added). In answering this question, we affirm what we stated in Sextant, 172 F.3 at 832, 49 U.S.P.Q.2d at 1875: when “the Warner-Jenkinson presumption is applicable,… the prosecution history estoppel arising therefrom is total and completely ‘bars’ the application of the doctrine of equivalents as to the amended limitation.”

Festo, 234 F.3d 558, 578, 56 U.S.VQ.2d 1865, 1880 (emphasis in original) (en banc).

The court then raised the bar, to an unobtainable height, for a patentee to get the benefit of the doctrine of equivalents where the amendment is unexplained. Specifically, the court held:

In order to give due deference to public notice considerations under the Warner-Jenkinson framework, a patent holder seeking to establish the reason for an amendment must base his arguments solely upon the public record of the patent's prosecution, i.e., the patent's prosecution history. To hold otherwise—that is, to allow a patent holder to rely on evidence not in the public record to establish a reason for an amendment—would undermine the public notice function of the patent record. 1f the reasons for the amendment do not appear in the public record of the patent's prosecution, the reasons in most cases will be known only to the patent holder. We therefore hold that a narrowing amendment will give rise to prosecution history estoppel unless the prosecution history of the patent reveals that the amendment was made for a purpose unrelated to patentability concerns.

Festo, 234 F.3d 558, 586, 56 U.S_P.Q.2d 1865, 1886 (en banc) (boldface added).

This added hurdle created a procedural Catch 22 that a patent owner can never overcome. If the reasons

for the amendment are unexplained from the file history there is a presumption that an estoppel applies. The patent owner, however, can rebut that presumption with evidence that the amendment was made for reasons unrelated to patentability. Thus, prior to the reversal of the Federal Circuit en banc Festo decision, the only evidence that the patent owner could have relied on to rebut the presumption was from the file history, which had no evidence in the first place giving rise to the presumption of an estoppel. Simply put, the Federal Circuit's en banc Festo decision created the situation where all narrowing, unexplained amendments created an estoppel. 77 Festo, 234 F.3d 558, 563-64, 56 U.S.P.Q.2d 1865, 1867-68 (en banc); reversed, 122 S. Ct. 1831, 62 U.S.P.Q.2 1705 (2002). Based upon its rulings regarding questions one to four, the court determined that there was no need to address question five, which related to whether one-to-one correspondence of elements was necessary for a finding of infringement under the doctrine of equivalents. Festo, 231 F.3d 558, 563-64, 56 U.S.P.Q.2d 1865. 1880 (en banc), reversed, 112 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002). Interestingly, it was this question that the first panel in Festo, originally addressed and based its decision on. In that decision the first Festo panel relied on the rationale of Corning Glass Works v. Sumitomo Elec. U.S.A. Inc., 868 F.2d 1251, 9 U.S.P.Q.2d 1962 (Fed. Cir. 1989), and found infringement under the doctrine of equivalents even though there was not a one-to-one correspondence between the accused device and the claims at issue. Festo Corp. v. Shokerstl Kimoku Kogyo Kabushiki (a/k/a SMC Corp.), 172 F.3d 1361, 50 U.S.P.Q.2d 1385 (Fed. Cir. 1999), withdrawn, 187 F.3d 1381, 51 U.S.P.Q.2d 1959 (Fed. Cir. 1999).

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The Federal Circuit's en banc decision, and in particular the answer to question 3, which increased the scope of protection a defendant can obtain from prosecution history estoppel, should have come as no surprise. The trend of the Federal Circuit over the last few years has been to narrow, or rein in, the doctrine of equivalents. Likewise, considering the substantial harm to patent owners, the unfair retroactive application of the new law that the Federal Circuit created, and the questions froth the Supreme Court during oral arguments,78 it should have come as no surprise that the Federal Circuit's en banc Festo decision was reversed. [B] The Supreme Court's Festo Decision

On May 28, 2002 the Supreme Court reversed the Federal Circuit's en banc Festo decision.79 On the most critical issue, Festo Question 3, i.e., whether estoppel created a flexible bar or an absolute bar to the application of the doctrine of equivalents, the Supreme Court soundly rejected the Federal Circuit's absolute bar approach.80 In so

78 The case before the Supreme Court was fully briefed and oral arguments took place on January 8, 2002. having amended the oral argument it was my impression at that time from the tone and nature of the questions by the Justices that the Festo decision was destine to be overruled. For example:

QUESTION (by Chief Justice Rehnquist): Well, they're [the Federal Circuit in Festo] saying more than that. They're saying they held to it for the entire element, and that’s where I have—have great problems with—with what the Circuit does. And—it seems to me a vast extension over what we thought about in Warner-Jenkinson. (bold-face added) QUESTION (by Chief Justice Rehnquist): Because Mr. Bork [for Festo] says you're going to transfer now the load to the appeals within the Patent Office and we’re going to have this long, long running time . . . . And it seems to me thin that—that's a—a very serious consequence if—if it in fact will follow. QUESTION (by Justice Breyer): The argument you’re now making [in support of the Festo decision, that this decision gives certainly to the patent law and places the risk of amending claims on the patent lawyer] is a wonderful argument against the whole doctrine of equivalents, which I thought we had rejected .... But—but if the considerations that you’re raising now are as you think they are, we should abolish the doctrine of equivalents. That—that would give great certainly to the patent law, and all of the—all of the things that you assert would be achieved. The patentee is on notice and be should be as precise as possible. blah, blab, blab. QUESTION (by Justice Ginsburg): Mr. Neustadt, would you—would you tell us why the approach of a complete bar is consistent with the approach taken in Warner-Jenkinson where the Court did not want to have a rigid—a rule with no flexibility, and so it created this rebuttable presumption? (boldface added) QUESTION (by Justice Rehnquist): Well, there is an—I think I agree with Justice Ginsburg, as she suggested. I think there is an inconsistency between Warner-Jenkinson and the position you're taking [to the support of the absolute bar of Festo). (boldface added)

QUESTION (by Justice O'Connor): Well, I thought everybody agreed that the question was open, that this Court did not decide [the absolute bar issue].

79 Festo Corp.v. Shoketsa Kinzoku Kogyo Kabushiki (a/k/a SMC Corp.), 122 S. Ct. 1831, 62 U.S.P.Q.2d 1705 (2002). 80 Id. at 1840-42, 62 U.S.P.Q.2d at 7712-14.

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doing, however, the Supreme Court created a new test for the determining where to place the “bar” in the estoppel context. Regarding the other Festo Questions, the Supreme Court agreed with the Federal Circuit on Question 1. Thus, the Supreme Court held that a narrowing amendment made to satisfy any requirement of the Patent Act may give rise to an estoppel.81

The Supreme Court (lid not directly address Festo Question 2, the effect of voluntary amendments, and Question 4, the effect of unexplained amendments. However, the rigid answer provided by the Federal Circuit to those questions appears to have been overruled, or at least at a minimum subsumed, by the Supreme Court's ruling on Questions 1 and 3.

The Supreme Court's Festo opinion begins with recognition of the tension between

the public notice policy of patents and the need to protect the patentee from copyists:

In Warner-Jenkinson, . . . a patent protects its holder against efforts of copyists to evade liability for infringement by making only insubstantial changes to a patented invention. At the same time, we appreciated that by extending Protection beyond the literal terms in a patent the doctrine of equivalents can create substantial uncertainty about where the patent monopoly ends.82

As a side note, it is interesting that the Supreme Court continually ties the doctrine of equivalents to protecting against “copyist” and continually uses the term “patent monopoly.” The use of these terms, however, has been criticized by the Federal Circuit. Moreover, in its Festo decision the Supreme Court cites to only one Federal Circuit case. Thus, it appears that the Supreme Court is sending a not too subtle message to the Federal Circuit that the Federal Circuit is in fact obligated to follow the holdings of the Supreme Court and that the Supreme Court will not give any deference to the Federal Circuit's pronouncements on patent law. It also signals that the tension between the Supreme Court and the Federal Circuit is far from over. This tension may give rise to a greater likelihood that the Supreme Court will be taking even more patent cases over the next few years.

As it did in Warner-Jenkinson, the Supreme Court in Festo again reaffirmed the existence of the doctrine of equivalents and resolved the issue between pubic-notice policy and protecting the patentee on the side of the patentee, rejecting the Federal Circuit's literalist approach:

The patent laws “promote the Progress of Science and useful Arts” by re-warding innovation with a temporary monopoly. U.S. Const., Art. 1. § 8.

81 Id. at 1839-40, 62 U.S.P.Q.2d at 1711-12. 82 Id at 1835, 62 U.S.P.Q.2d at 1708 (2002) (emphasis added). The Federal Circuit's criticism of the term “patent monopoly” is unfounded. Without question, as the Supreme Court notes, a patent provides a monopoly. The exclusivity of the patent prohibits anyone from making, using, selling, or offering for sale the patented invention. In that narrow context the patented invention is clearly the only game in town and creates a monopoly-like environment for [be patent holder. However, it is quite another question whether that monopoly has any economic value. One only need to review the Official Gazette to see that there are a lot of patents issued that will probably never lead to any commercial activity or have any economic value.

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cl. 8. The monopoly is a property right: and like any property right, its boundaries should be clear. This clarity is essential to promote progress, because it enables efficient investment in innovation. A patent holder should know what he owns, and the public should know what he does not. For this reason, the patent laws require inventors to describe their work in “full, clear, concise, and exact terms.” 35 U.S.C. § 112, as part of the delicate balance the law attempts to maintain ....

Unfortunately, the nature of language makes it impossible to capture the essence of a thing in a patent application. The inventor who chooses to patent an invention and disclose it to the public, rather than exploit it in secret, bears the risk that others will devote their efforts toward exploiting the limits of the patent's language: “. . . Things are not made for the sake of words, but words for things.” Autogiro Co. of Arnerica v. United States, 181 Ct. Cl. 55, 384 F2d 391, 397 (1967) .

. . . If patents were always interpreted by their literal terms, their

value would be greatly diminished. Unimportant and insubstantial substitutes for certain elements could defeat the patent, and its value to inventors could be destroyed by simple acts of copying .... The scope of a patent is not limited to its literal terms but embraces all equivalents to the claims described. See Winans v. Denmead, 56 U.S. (15 How.) 330, 347, 14 L. Ed. 717 (1854). . . .

Most recently, in Warner-Jenkinson, the Court reaffirmed that

equivalents remain a firmly entrenched part of the settled rights protected by the patent. A unanimous opinion concluded that if the doctrine is to be discarded, it is Congress and not the Courts that should do so: . . .83

The Supreme Court then expressly turned to the doctrine of prosecution history

estoppel, which the Court characterized as a “rule of patent construction..”84 The Supreme Court, drawing on the underlying rationale of the doctrine of equivalents, namely, that language makes it impossible to capture the essence of a thing in a patent application, sets forth a general rationale for prosecution history estoppel that is based upon foreseeability:

When, however, the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter that should be deemed equivalent to the litenil claims of the issued patent. On the contrary, “[b]y the amendment [the patentee] recognized and emphasized the difference between the two phrases[,] . . .

83 Id. at 1837-38, 62 U.S.P.Q.2d at 1709-10 (2002) (emphasis added).

84 Id. at 1838, 62 U.S.P.Q.2d at 1710-11 (2002) (quoting Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220-221, 61 S.Ct. 235, 85 L. Ed. 132 (1940). This characterization of prosecution history estoppel as a rule of patent construction, rather than claims construction, may have a significant effect on the outcome of the Federal Circuit's new questions that have been posed to the parties on remand from the Supreme Court. These questions relate to respective roles of the judge and jury in the prosecution history estoppel analysis set forth by the Supreme Court in Festo.

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and [t]he difference which [the patentee] thus disclaimed must be regarded as material.” Exhibit Supply Co. v. Ace Parents Corp., 315 U.S. 126, 136-37, 62 S. Ct. 513, 86 L. Ed. 736 (1942).

* * *

Prosecution history estoppel ensures that the doctrine of equivalents remains tied to its underlying purpose. Where the original application once embraced the purported equivalent but the patentee narrowed his claims to obtain the patent or to protect its validity85 the patentee cannot assert that he lacked the words to describe the subject matter in question ... . In that instance the prosecution history has established that the inventor turned his attention to the subject matter in question, knew the words for both the broader and narrower claim, and affirmatively chose the latter.86

The Supreme Court specifically applied this rationale to the issues raised by

Federal Circuit Questions 1 and 3. With respect to Federal Circuit Question I the Supreme Court agreed with the Federal Circuit, finding that a narrowing amendment made to satisfy any requirement of the Patent Act may give rise to an estoppel. Thus the Supreme Court reasoned:

Petitioner is correct that estoppel has been discussed most often in the context of amendments made to avoid the prior art… It does not follow, however, that amendments for other purposes will not give rise to estoppel. Prosecution history may rebut the inference that a thing not described was indescribable. That rationale does not cease simply because the narrowing amendment, submitted to secure a patent, was for some purpose other than avoiding prior art.

We agree with the Court of Appeals that a narrowing amendment made to satisfy any requirement of the Patent Act may give rise to estoppel . . . .

Estoppel arises when an amendment is made to secure the patent87

and the amendment narrows the patent's scope. If a § 112 amendment is truly cosmetic, then it would not narrow the patent's scope or raise an estoppel. On the other hand, if a § 112 amendment is necessary and narrows the patent's scope—even if only for the purpose of better

85 Although the Supreme Court in Festo did not expressly address Federal Circuit question 2, the effect of voluntary narrowing amendments, this reference by the Supreme Count to amendments to protect the patent's validity suggests that voluntary narrowing amendments will be treated the same way as other amendments to a patent application, i.e., they may give rise to a prosecution history estoppel. Other sections of the Supreme Court's Festo decision, however, would suggest a contrary result. that a voluntary narrowing amendment does not create an estoppel. 86Festo, 122 S. Ct, at 1838-39, 62 U.S.VQ.2d at 1710-11 (2002) (bracketed matter original). . 87 This language suggests that a voluntary amendment would not give rise to an estoppel, because voluntary amendments are not made to secure the patent.

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description—estoppel pray apply. A patentee who narrows a claim as a condition for obtaining a patent disavows his claim to the broader subject matter, whether the amendment was made to avoid the prior art or to comply with § 112. We must regard the patentee as having conceded an inability to claim the broader subject matter or at least as having abandoned his right to appeal a rejection. In either case estoppel may apply.88

This section of the Supreme Court's Festo decision is significant for additional

reasons. First, the Court's repeated use of the term “may” makes it clear that the application of a prosecution history estoppel is never absolute or automatic. Second, the Court's focus on narrowing “the patent's scope” rather than a particular claim, appears to support the rationale of earlier Federal Circuit cases, which held that rewriting a dependent claim in independent format created an estoppel.89 Third, this section highlights the fact that prosecution history estoppel only applies to narrowing amendments. If an amendment is not viewed as having narrowed the scope of protection, it cannot create an estoppel regardless of the reason why the amendment was made.90

The Supreme Court's Festo decision then addresses the more difficult and significant issues raised by Federal Circuit question 3, i.e., the absolute bar issue. The Supreme Court soundly rejects the Federal Circuit's absolute bar approach, and adopts a flexible bar approach that is based on the totality of the circumstances, with a focus on the foreseeability of drafting a claim to cover the equivalent at issue. Specifically, the Supreme Court held: 88 Festo, 122 S. Ct_ at 1839-40. 62 U.S.P.Q.2d at 1711-12 (2002) (emphasis added). 89 In Mycogen Plow Science Inc. v. Monsanto Co., 261 F.3d 1345, 1349-1350, 59 U.S.P.Q.2d 1852, 1855-56 (Fed. Cir. 2001), the Federal Circuit applied prosecution history estoppel to a claim that was given a first office action allowance. In Mycogen the claim was originally present as a dependent claim, which the examiner indicated would be allowable if rewritten in independent form. Significantly, the applicant did not incorporate the limitations of that dependent claim into an independent claim. Instead, the dependent claim was sufficiently detailed that the only thing the applicant had to do was delete the reference to the independent claim. Thus, the applicant removed, rather than added terms to the claim. Nevertheless, the Federal Circuit found this to be a narrowing amendment and barred any application of the doctrine of equivalents. Similarly, in Glaro Group Ltd. v Ranbaxy Pharms. Inc., 262 F.3d 1333, 59 U.S.P.Q.2d 1950 (Fed. Cir. 2001), the Federal Circuit applied an estoppel to a new claim that merely combined and restated elements that were present in earlier claims. Moreover, the patentee in Festo submitted a new claim incorporating the elements of an independent claim and a dependent claim, canceling the old independent and dependent claims. The amendment was submitted in response to an office action, but was not responsive to any of the rejections in that action. The Federal Circuit held that this unexplained amendment narrowed the claim. 1t added an element, thus creating the presumption of an estoppel. Festo, 234 F.3d 558, 588, 56 U.S.P.Q.2d 1865,) 1887-88 (en banc), reversed, 122 S. Ct. 1831, 62 U.S.P.Q2d 1705 (2002). In another situation, the patentee in Festo substituted the corresponding structure for a means-plus-function element in the claim. The Federal Circuit held that this was also a narrowing amendment. Festo, 234 F.3d 558, 588-89, 56 U.S.P.Q.2d 1865, 1888 (en bone), reversed, 122 S. C1. 1831, 62 U.S.P.Q.2d 1705 (2002). The Supreme Court did not address, and thus did not appear to overrule, these holdings by the Federal Circuit. 90For example, in Interactive Pictures Corp. v. Infinite Pictures Inc., 274 F.3d 1371, 1379, 61 U.S.P.Q.2d 1152, 1157 (Fed. Cir. 2001), the Federal Circuit found that amending the claim term “output signals” to “output transforming calculation signals” did not narrow the claim, but merely made express what was implicit in that claim term and thus an estoppel did not arise from this amendment. Similarly in TurboCare v. General Electric Co., 264 F.3d 1111, 1126, 60 U.S.P.Q1017, 1028 (Fed. Cir. 2001), the Federal Circuit found that the: “newly added claim term only redefined the small clearance position limitation without narrowing the claim. Therefore Festo is not applicable.”

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Though prosecution history estoppel can bar challenges to a wide range of equivalents, its reach requires an examination of the subject matter surrendered by the narrowing amendtnent . . . . By amending the application, the inventor is deemed to concede that the patent does not extend as far as the original claim. )t does not follow, however, that the amended claim becomes so perfect in its description that no one could devise an equivalent. After amendment, as before, language remains an imperfect fit for invention. The narrowing amendment may demonstrate what the claim is not; but it may still fail to capture precisely what the claim is. There is no reason why a narrowing amendment should be deemed to relinquish equivalents unforeseeable at the time ,of the amendment and beyond a fair interpretation of what was surrendered… As a result, there is no snore reason for holding the patentee to the literal terms of an amended claim than there is for abolishing the doctrine of equivalents altogether and holding every patentee to the literal terms of the patent.

* * *

The Court of Appeals ignored the guidance of Warner-Jenkinson, which instructed that courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community . . . .91

The Supreme Court then went on to set forth its test for the application of the

doctrine of prosecution history estoppel:

In Warner-Jenkinson we struck the appropriate balance by placing the burden on the patentee to show that an amendment was not for purposes of patentability…When the patentee is unable to explain the reason for amendment, estoppel not only applies but also “bar[s] the application of the doctrine of equivalents as to that element.” Ibid. These words do not mandate a complete bar; they are limited to the circumstances where “no explanation is established.” They do provide, however, that when the court is unable to determine the purpose underlying a narrowing amendment—and hence a rationale for limiting the estoppel to the surrender of particular equivalents—the court should presume that the patentee surrendered all subject matter between the broader and the narrower language.

[W]e hold here that the patentee should bear the burden of

showing that the amendment does not surrender the particular equivalent in question . . . . The patentee, as the author of the claim language, may be expected to draft claims encompassing readily known equivalents. A patentee's decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory

91 Festo, 122 S. Ct. at 1840-41, 62 U.S.P.Q.2d at 1712-14 (2002) (emphasis added).

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between the original claim and the amended claim . . . . There are some cases. however, where the amendment cannot reasonably be viewed as surrendering a particular equivalent. The equivalent may have been unforeseeable at the time of the application; the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; or there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. In those cases the patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence.92

The Supreme Court further ruled that the time frame for this analysis is the time

when the amendment was made to the claims. In particular, the Supreme Court provided:

The patentee must show that at the time of the amendment one skilled in the an could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent.93

Thus, after the Supreme: Court's decision in Fesio, the doctrine of prosecution

history estoppel can be summarized as follows:

1. any narrowing amendment made to satisfy the requirements of the Patent Act may give rise to an estoppel; 2. an unexplained narrowing amendment is presumed to have been made to satisfy the requirements of the Patent Act; 3. an estoppel does not create an absolute bar to the application of the doctrine of equivalents; 4. The applicant is presumed to have surrendered the scope of protection between the claim before amendment and after amendment; 5. it is the applicant's burden to show that the particular equivalent in question

was not surrendered; 6. the presumption of an estoppel does not apply in three situations:

a. where the equivalent in question was unforeseeable at the time of the

application or amendment; b. where the rationale underlying the amendment is only tangentially related to

the equivalent in question; c. where there is some other reason suggesting that the patentee could not have

reasonably claimed the equivalent in question. [C] The Implementation of the Supreme Court's Festo Test

The Supreme Court remanded the Festo case to the Federal Circuit. In response the Federal Circuit has now required further briefing on several issues:

92 Festo, 122 S. Ct. at 1841-42. 62 U.S.P.Q.2d at 1713-14 (2002) (emphasis added) 93 Id. at 1842, 62 U.S.P.Q.2d at 1714 (2002).

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We must now consider what further action to take in this case. To help us in that determination, we order the parties to submit briefs on the following issues:

1. Whether rebuttal of the presumption of surrender, including issues of

foreseeability, tangentialness, or reasonable expectations of those skilled in the art, is a question of law or one of fact; and what role a jury should play in determining whether a patent owner can rebut the presumption.

2. What factors are encompassed by the criteria set forth by the Supreme Court.

3. If a rebuttal determination requires factual findings, then whether, in this case, remand to the district court is necessary to determine whether Festo can rebut the presumption that any narrowing amendment surrendered the equivalent now asserted, or whether the record as it now stands is sufficient to make those determinations.

4. If remand to the district court is not necessary, then whether Festo can rebut the presumption that any narrowing amendment surrendered the equivalent now asserted.94

If the Federal Circuit's desire to vitiate the doctrine of equivalents holds true, the

answer to the first questions should be that it is all a matter of law. At present, however, the only certainty surrounding the doctrine of equivalents is that for at least the next few years the doctrine of equivalents and prosecution history estoppel will remain in flux.

In Allen Engineering Corp. v. Bartell Industries Inc.,95 the Federal Circuit applied

the Supreme Court's Festo rule as follows:

Narrowing amendments create a rebuttable presumption of estoppel. The scope of the estoppel depends on “the inferences that may reasonably be drawn from the amendment. A patentee is not barred from asserting “equivalents unforeseeable at the time of the amendment and beyond a fair interpretation of what was submitted .... An estoppel also may be found on the basis of arguments made during prosecution of the application to secure the allowance of claims.96

Contrary to the Supreme Court’s discussion of copying as it relates to the doctrine

of equivalents, the Allen Engineering decision continued with the Federal Circuit's dicta that copying is not relevant to an equivalents analysis.97 This dicta cannot be reconciled with the clear language of the Supreme Court's Festo decision.

94 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki (a/k/a SMC Corp.), No. 95-1066 (Fed. Cir. September 30, 2002). 95 299 F.3d 1336, 63 U.S.P.Q.2d 1769 (Fed. Cir. 2002). 96 Id at 1349-50, 63 U.S.P.Q.2d at 1776 (Fed. Cir. 2002). 97Id. at 1350, 63 U.S.P.Q.2d at 1777 (Fed- Cir. 2002).

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In SmithKline Beecham Corp. v Excel Pharmaceuticals Inc.,98 the District Court of Virginia applies the Supreme Court's Festo rule. After determining that the claims had been narrowed for the purposes of patentabibty the district court took the Festo rule to the next level, stating:

the issue before this court is whether the patentee had the scientific ability to redraft the claims more broadly, not whether the examiner would have accepted the hypothetical amendments.99

It will be interesting to see if the Federal Circuit adopts the district court's “scientific

ability” test. [D] Applicability of Estoppel Between Different Applications

In Abbott Laboratories v. Dey L.P.,100 the Federal Circuit declined to create an estoppel in one patent, the '301 patent, based on statements made in an unrelated application, the '839 patent. Specifically, the Federal Circuit held:

We disagree that this statement creates an estoppel with respect to the '829 patent. The statement was merely a characterization of the particular composition claimed by the '301 patent and how it differed from the known prior art. The composition of the '839 patent is a different composition, defined by claims that the examiner concluded were patentably distinct from the claims of the '301 patent. In addition, given that the statement was made before the '839 patent ever filed, it is not unreasonable to conclude that the statement has no applicability to surfactants that might be characterized or discovered in the future.

* * * Is it true that the '839 and '301 patents are commonly owned by Abbott and the inventor of the '839 patent is one of the three inventors of the '301 patent. However, the '839 application was not filed as a continuation, continuation in-part, or divisional application of the '301 application. These applications have no formal relationship and were presented to the patent office as patentably distinct inventions.101

[E] Argument-Based Estoppel

In Riles v. Shell Exploration & Production Co.,102 the Federal Circuit continued to follow the rationale that estoppel can arise out of arguments made to the patent office, even when there has not been an amendment to the claims. However, before an estoppel

98 64 U.S.P.Q.2d 1132 (D. Va. 2002). 99 Id. at 1139 n.23. 100 287 F.3d 1097, 62 U.S.P.Q.2d 1545 (Fed. Cir. 2002). 101 Abbott Laboratories, 287 F.3d at 1105, 62 U.S.P.Q.2d at 1550. 102 298 F.3d 1302, 63 U.S.P.Q.2d 1819 (Fed. Cir. 2002).

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arises there must be a clear and unmistakable surrender of the subject matter by the applicant.103 § 2.04 MEANS- AND STEP-PLUS-FUNCTION CLAIMS

The Federal Circuit has continued to refine and articulate the analysis that is used to determine whether a claim element invokes § 112, ¶ 6. At present, this analysis can be distilled to a five-part inquiry:

1. the claim element must recite function without structure or acts;104

2. nouns that take their name from the function that they perform do not invoke § 112, ¶ 6;

3. the use of the terms “means for” and “step for”105 creates a rebuttable

presumption that invokes § 112, ¶ 6; and, 4. the absence of the terms “means for” and “step for” creates a rebuttable

presumption that § 112, ¶ 6 was not invoked; 5. the use of a functional element that calls particular structure or devices to the

mind of one of ordinary skill does not invoke § 112, ¶ 6.106 A literal infringement analysis under § 112, ¶ 6 is a two-part inquiry. First, the claimed function must be performed “exactly” in the accused device.107 Second, identical or equivalent structures or acts to those disclosed in the patent specification must be found in the accused device or process. Thus, the Federal Circuit has framed the test for literal infringement as:

103 Id. at 1310, 63 U.S.P.Q.2d at 1825; Bayer AG v. Pharmaceutical Research Corp., 212 F.3d 1241, 1254, 54 U.S.P.Q.2d 1710, 1719 (Fed. Cir. 2000) (“In this case, during prosecution, Bayer emphasized the inventive nature of its claimed SSA range and the disadvantages of SSAs outside its claimed range. Thus, Bayer's statements, in total, amount to a 'clear and unmistakable surrender,' so that a competitor would reasonably believe that Bayer had surrendered SSAs outside the claimed range.”). 104 In Al-Site Corp. v. VSI International, Inc., 774 F.3d 1308, 1318, 50 U.S.P.Q.2d 1161, 1167 (Fed. Cir. 1999), the court found that the claim element “eyeglass hanger member” did not invoke § 112,16 because that claim element recited sufficient structure to preclude the application of § 112, ¶ 6. That claim element required that the hanger member be “made from a flat sheet material,” and that it have an “opening means formed . . . below fits) upper edge. Thus, the court concluded that this structure removed the claim element from the purview of § 112, 1 6. Al-Site, 174 F.2d at 1318, 50 U.S.P.Q. at 1167-68. See Rodine PLC v. Seagate Technology, Inc., 174 F.2d 1294, 1304, 50 U.S.P.Q.2d 1429, 1437 (Fed. Cir. 1999), in which the court noted that to remove a claim from § 112, ¶ 6 the claim need not include every detail of the structure disclosed in the specification. “Instead, the claim need only recite 'sufficient' structure to perform entirely the claimed function.” 105 Seal-Flex, Ire. v. Athletic Track & Court Constr., 172 F.3d 836, 848-51, 50 U.S.P.Q.2d 1225, 1234-36 (Fed. Cir. 1999) (Rader, J. concurring). 106 Pernalized Media Communications v. International Trade Comm’n, 161 F.3d 703-04, 48 U.S.P.Q.2d 1880, 1887-88 (Fed. Cir. 1998). 107 E.g., IMS Technology Inc. v. Haas Automation Inc., 206 F.3d 1422, 1430, 54 U.S.P.Q.2d 1129, 1133 (Fed. Cir. 2000); see, generally, Pennawalt Corp. v. Durand-Wayland Inc., 833 F.2d 931, 933-34, 41 U.S.P.Q.2d 1737, 1739 (Fed. Cir. 1987) (emphasis original); General Electric Co. v. Nintendo Co., 179 F.3d 1350, 1356, 50 U.S.P.Q.2d 1910, 1915 (Fed. Cir. 1999) (holding that “[w]e therefore do not need to determine whether the accused devices use the same structure as described in the [specification] or its equivalent. Since the accused devices do not perform the identical function to that of [the claim], the accused devices cannot literally infringe [the claim.]”).

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for a means-[or step]-plus-function limitation to read on an accused device, the accused device must employ means [or steps] identical to or the equivalent of the structures, material, or acts described in the patent specification. The accused device must also perform the identical function as specified in the claims.108

In view of Festo, means-and step-plus-function claim elements now provide a very useful tool for the practitioner to greatly increase the likelihood that the patent owner’s case gets to the jury under an equivalence theory. Although a § 112, ¶ 6 equivalents analysis is not as broad as a doctrine of equivalents analysis, it is nevertheless an equivalents argument that gives a patent owner the freedom necessary to present a creative infringement argument. Because a § 112, ¶ 6 equivalents analysis is performed under the mantle of literal infringement, the restrictions placed on the doctrine of equivalents by Festo will not apply. Thus, even if an applicant amends a means-plus-function claim element for the purposes of patentability, that claim element will nevertheless be entitled to its “equivalents” under § 112, ¶ 6. In Masco Corp. v. United States, 109 the Federal Circuit reaffirmed that § 112, ¶ 6 can apply to method, as well as, apparatus claims. Thus, the court ruled:

It is well established that this statutory provision can apply not only to a combination of mechanical elements, but also to “a combination of … steps in a process claim.” O.I. Corp. v. Tekmar Co., 115 F3d 1576, 1582, 42 U.S.P.Q.2d 1777, 1781 (Fed. Cir. 1997)…. In context of method claims, the use of the term “steps for” signals the drafter's intent to invoke § 112, paragraph 6. Greenberg v. Erhicon Endo-Surgery,Inc., 91 F.3d 1580, 1583, 29 U.S.P.Q.2d 1783, 1785 (Fed. Cir. 1996). However, even where the drafter employs the “steps for” language, “section 112, P 6 is implicated . . . only when steps plus function without acts are present.” O.I. Corp., 115 F.3d at 1582, 42 U.S.P.Q.2d at 1782.110

In Masco Corp., the court applying this test found that the claim term “transmitting a force” did not invoke § 112, ¶ 6. Specifically, the court reasoned:

Neither of these claims employs the “step for” language that signals the drafter's intent to invoke § 112, paragraph 6; rather, the claims employ the term “steps of.” Thus, there is no presumption that these limitations are in step-plus-function format.

* * *

108 Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042, 25 U.S.P.Q.2d 1451, 1453-54 (Fed. Cir. 1993); see IMS Technology Inc. v. Haas Automation Inc., 206 F.3d 1422, 1430, 54 U.S.P.Q.2d 1129, 1133 (Fed. Cir. 2000); Smith Industries Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1358, 51 U.S.P.Q.2d 1415, 1423 (Fed. Cri. 1999). 109 110 Id. at 1322, 64 U.S.P.Q.2d at 1188.

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We thus hold that where a method claim does not contain the terra “step[s] for,”

a limitation of that claim cannot be construed as a step-plus-function limitation without a showing that the limitation contains no acts.111

In CCS Fitness Inc. v. Brunswick Corp.112 the Federal Circuit held that the claim

term “reciprocating member” did not invoke § 112, ¶6. In so holding the court reasoned:

a claim term that does not use “means” will trigger the rebuttable presumption that § 112, ¶6 does not apply .... In this case, the claims at issue do not phrase the “reciprocating member” limitation in means-plus-function language, thereby triggering the rebuttable presumption that § 112, ¶6 does not govern ....

Here we conclude that Life Fitness cannot rebut the presumption that “reciprocating member” is not restricted by § 112, ¶ 6…113

111 Id. at 1323, 64 U.S.P.Q.2d at 1188-89. 112 288 F.3d 1359, 62 U.S.P.Q.2d 1658 (Fed. Cir. 2002). 113Id.at 1365, 62 U.S.P.Q.2d at 1664-65.

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