Doctrine of equivalents and prosecution history estoppel in the wake of Festo case

(Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) )

Presented by: Deepak Gupta

Teaser
Imagine two United States patents, both with the same inventor, the same drawings, the same written description, the same claims, the same filing date, and the same issuance date.

Is there any difference between these two imaginary patents?

Purpose of Patent System

The main purpose of the patent system is to promote

the progress of science and useful arts.

Patent law achieves this by performing two

functions: 1. The patentee is given a market monopoly through which he can profit from his invention.
can learn from the invention and build upon it.

2. The invention is disclosed to public where public

There is a constant push-pull going on

between these two functions.

i.e., a patentee seeks to maximize the scope

of patent, whereas the public benefits from limiting the scope of the patent so that more inventions can be brought out.

Legal concepts involved

1. Doctrine of equivalents (DOE) It seeks

to broaden the scope.

2. Doctrine of Prosecution History Estoppel

(also known as file-wrapper Estoppel) It seeks to narrow the scope.

Types of Infringements

Courts have recognized two types of infringement:

o 1. Literal infringement - It exists when the accused device falls within the literal language of the claim. o 2. The doctrine of equivalents.

DOE

Doctrine of equivalents

Brief history:
1. Use of concept for first time Winans v. Denmead (1853). 2. Use of term for first time - McCormick v. Talcott.

Form vs substance (Winans v Denmead)

When a patentee describes a machine then by law he actually covers, not only the precise forms he has described but all other forms which embody his invention.

Graver Tank & Manufacturing Co. v. Linde Air Products Co.

This doctrine was finally ratified in the 1950

Supreme Court decision of Graver Tank Mfg. Co. v. Linde Air Products Co.

Fundamentally, pioneer patents were to be

given a broader range of protection than an improvement patent.

Function/way/result" test

Definition of the doctrine of equivalents:

It is an infringement of a patent claim even if it is not literally infringed if the allegedly infringing device or process "performs substantially the same function in substantially the same way to achieve the same result" as the patented invention.

Image

Warner-Jenkinson Company v Hilton Davis Chemical Co. [520 U.S. 17(1997)]

The technology at issue was the

production of dyes.

Hilton Davis had a patent using an

ultrafiltration process.

Warner-Jenkinson developed a similar

dye production process

Warner-Jenkinson Company v Hilton Davis Chemical Co. [520 U.S. 17(1997)]

The Supreme Court upheld the viability of

the DOE but imposed two important limitations on its application.

First Limitation:

"Element by Element" Test

Second Limitation:
The second was to enhance the role of prosecution history in limiting the scope of protection to be given under the doctrine. This is the known as the doctrine of Prosecution

History Estoppel (also known as file-wrapper Estoppel).

Image

Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co. [535 U.S. 722]

Festo Corporation owns two patents for an improved

magnetic rodless cylinder: 1. the Stoll Patent; and 2. the Carroll Patent.

After the examiner rejected the original

claims for indefiniteness under 35 U.S.C. 112, so Festo Corp. amended the original claims.

Shoketsu Kinzoku Kogyo Kabushiki

Co.(SMC) made a device similar to Festo's with some changes.

 Since SMC's device falls outside of the literal

claims of the two Festo patents, the question at issue is whether SMC infringed the patents under the doctrine of equivalents.

The District Court found that Festo's amendments

were not related to the examiner's 112 rejections or to avoid prior art, it therefore declined to apply the prosecution history estoppel, and granted Festo's summary judgment motion on the infringement of the Carroll patent.

A panel of the Court of Appeals for the Federal

Circuit affirmed.

The Supreme Court granted certiorari, remanded to

the Federal Circuit for further consideration in light of the Court's intervening Warner-Jenkinson decision.

After a decision by the original panel on remand,

the Federal Circuit ordered rehearing en banc and reversed the District Court's ruling.

Federal Circuit on Festo case

The en banc court held that: 1. Prosecution history estoppel arises from any
amendment that narrows a claim to comply with the Patent Act, not only from amendments made to avoid prior art.

2. Second, the Federal Circuit analyzed whether

a voluntary claim amendment--one not required by the examiner or made in response to a rejection by an examiner for a stated reason - creates prosecution history estoppel.

1.Furthermore, the court held that when estoppel applies, it stands as a complete bar against any claim of equivalence for the element that was amended.

US Supreme Court

How does it affect our work

The Festo decision creates some practical problems

in drafting patent applications for use in the United States.

The limitation on the application of the doctrine of

equivalents after Festo can be taken care of by avoiding limiting the claims during prosecution for reasons relating to patentability.

One way would be by filing multiple applications.

However, this may be impracticable in many

Our Work

1. Prior art search needs to done more thoroughly.

A full appreciation of the prior art should help in drafting claims that do not need to be amended during prosecution.

2. Make sure that the claims are clear and fully

enabled before they are filed. Since, unclear or unenabled claims may need to be amended under the requirements of 35 USC 112. These amendments may cause the invocation of a prosecution history

3. When amending claims during prosecution

if possible make an argument for the patentability of the claims prior to amendment and state that the reason for limitation is for commercial, financial or other reasons not related to patentability.

4. Consider the possibility of using multiply

dependent claims to create a large number of claim moieties to cover multiple aspects of the invention in relatively narrow terms.

Freedom to operate search

Festo is important for such cases. Whatever,

the patentee surrenderd during prosecusion is open for use by others.

Patent procesuing history is accesible from

Patent Application Information Retrieval offered by USPTO. (http://portal.uspto.gov/external/portal/pair)