Prosecution History Estoppel

1
Prosecution History Estoppel

• Prof Merges
• Patent Law 4.14.08

2
U.S. Philips Corp. v. Iwasaki Elec. Co. Ltd.

• 505 F.3d 1371 (Fed Cir 2007)

3
(No Transcript)
4
(No Transcript)
5
(No Transcript)
6
Issues

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

7
Issues (contd)

• Claim interpretation

8
(No Transcript)
9
Claim interpretation

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

10

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

11
Infringement

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

12
P. 6

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

13
Holding DOE p. 7

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

14
Vitiation p. 8

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

15
Vitiation

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

16
Examples

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

17
Moore mailing form

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

18
(No Transcript)
19
(No Transcript)
20
Wleklinski v. Targus, Inc.Slip Copy, 2007 WL
4460620C.A.Fed. (Cal.),2007 (unpub)

• The invention claimed in the '388 patent is a
  strap assembly that has both stretchable and
  non-stretchable strap members.

21
(No Transcript)
22

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

23

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

24
Back to Philips

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

25
(No Transcript)
26

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

27
Prosecution History Estoppel

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

28
Range of Equivalents
Literal Claim Scope
Infringement under DOE ?
29
Warner-Jenkinson

• DOE Survives challenge
• Presumption in cases of claim amendment
  amendment made for reasons related to
  patentability prosecution history estoppel
  applies

30
Original Claim Scope
31
Original Claim Scope
Narrowed Scope, after amend-ment
32

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

33
(No Transcript)
34
(No Transcript)
35
(No Transcript)
36
Prosecution History

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

37
Fed Cir opinion

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

38
Federal Circuit opinion

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

39
1st point related to patentability

• Enablement estoppel is now a reality
• P. 949
• What would a truly cosmetic amendment look like?

40
2nd Point The 3-Part Test

• Supreme Court rejects complete bar

41
Original Claim Scope
42
Original Claim Scope
Narrowed Scope, after amend-ment
43
Original Claim Scope
X
Narrowed Scope, after amend-ment
Embodi-ment X Can DOE cover?
44
X
Narrowed Scope, after amend-ment
Embodi-ment X Can DOE cover?
45
Estoppel idea

• Who is estopped from what?
• Why?
• Like other legal instances of estoppel concept?

46
2nd Point The 3-Part Test

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

47
The 3-Part Test

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

48

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

49
Hughes VIII 1998

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

50
(No Transcript)
51
(No Transcript)
52
(No Transcript)
53
(No Transcript)
54
(No Transcript)
55
Literal Infringement
Doctrine of Equivalents
?
56
Literal Infringement
Doctrine of Equivalents
Modest Inventions
Pioneering Inventions
57
Foreseeability

• Hughes Satellite still the exception
• Rare to find accused product not foreseeable at
  time of amendment

58
Foreseeability Test

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

59

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

60

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

61
The 3-Part Test

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

62
Festo remand, 344 F.3d 1359Fed Cir 2003

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

63
Festo, point 1 Glaxo Wellcome,Inc. v. Impax
Laboratories, Inc.,
356 F.3d 1348, C.A.Fed. 2004

• The application did not enable any sustained
  release agents other than HPMC, however, because
  it only disclosed HPMC's time release and plasma
  profiles. Indeed the original claims recited
  those profiles. The examiner expressly stated
  that only HPMC enabled claims with these
  profiles. The application did not enable one of
  skill in the art to make and use a broader genus
  of sustained release agents. Thus, the examiner's
  enablement argument, which Glaxo did not rebut,
  shows that Glaxo surrendered other controlled
  sustained release agents known to act as
  equivalents of HPMC.

64

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

65
Tangential amendments

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

66
Insituform the invention
This process results in a seamless, jointless
"pipe-within-a-pipe" with a smooth, continuous
inner surface which usually increases flow
capacity. We typically complete installations in
a single day, using robotic methods to restore
active connections from within the line.
67
(No Transcript)
68
(No Transcript)
69
(No Transcript)
70

• 1. A method of impregnating with a
• curable resin an inner layer of resin
• absorbent material disposed in an elongate
• flexible tube having an outer layer
• formed by an impermeable film, the
• method comprising the steps of
• (1) introducing into one end of the
• elongate tube a mass of the curable resin
• sufficient to impregnate the entire
• resin absorbent inner layer of the tube . . .

71

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

72

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

73

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

74
(No Transcript)
75
(No Transcript)
76

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

77

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

78
X
Embodi-ment X Can DOE cover?
Yes! If (1) amendment made for tangential
reason or (2) equivalent unforeseeable
79
Freeman v. Gerber
80
(No Transcript)
81
(No Transcript)
82

• The claim limitations currently at issue are the
  aspects of 7(e) and 14(e) which claim a thin
  membrane having attachable means for attaching
  said thin membrane to an inner surface of said
  closure and the aspects of 7(f) and 14(f) which
  claim a slit through or a disjoined portion
  within a planar section of said thin
  membrane.

83

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

84
(No Transcript)
85

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

86

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