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Topic: Prosecution history estoppel

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Doctrine of equivalents

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David Campbell

	Equivalents
		The related doctrine of prosecution history estoppel provides that a patentee may not protect subject matter under the doctrine of equivalents that was surrendered during the prosecution of the patent.
		Prosecution history estoppel means that a patentee who surrenders subject matter during patent prosecution cannot later allege infringement of the surrendered subject matter under the doctrine of equivalents.
		Estoppel arises when an amendment is made to secure the patent and the amendment narrows the patent’s scope.
	www.yarbroughlaw.com /Equivalents.htm (1939 words)

	234 F
		The logic of prosecution history estoppel is that the [565] patentee, during prosecution, has created a record that fairly notifies the public that the patentee has surrendered the right to claim particular [*11] matter as within the reach of the patent.
		If prosecution history estoppel acts as a complete [**50] bar to application of the doctrine of equivalents, both the patentee and the public are on notice as to the scope of protection provided by a claim element narrowed for a reason related to patentability.
		SMC asserts that the voluntary nature of the amendment is irrelevant to the prosecution history estoppel inquiry because Warner-Jenkinson places the burden on a patent holder to establish the reason for an amendment, regardless of whether the amendment was required or voluntary.
	www.law.emory.edu /students/ips/festo.htm (13659 words)

	Federal Circuit Severely Limits Doctrine of Equivalents (Site not responding. Last check: 2007-08-16)
		Under the doctrine of prosecution history estoppel, the patentee may not obtain coverage of subject matter through the doctrine of equivalents that was given up in the prosecution of the patent.
		A narrowing amendment may give rise to prosecution history estoppel regardless of whether it is made for the purpose of overcoming a rejection.
		Prosecution history estoppel acts a complete bar to the assertion of the doctrine of equivalents as to the relevant element when an amendment has narrowed a claim for a reason related to patentability.
	www.briefbase.com /pnews/news_342.htm (1224 words)

	PATENTLY IRRELEVANT? USE OF FOREIGN PROSECUTION HISTORY AS EXTRINSIC EVIDENCE DURING LITIGATION OF A COUNTERPART U.S. ...
		The cases generally fall into one of two categories: a court allows the use of foreign prosecution history during claim construction [8] or a court allows the use of foreign prosecution history to estop a patentee from relying on the doctrine of equivalents.
		[53] She noted that statements in foreign counterpart prosecution histories may be relevant to the state of the art at the time of patent application, but could not be used to change a natural reading and understanding of a claim in a patent.
		[71] The ALJ denied the motion to exclude the foreign prosecution history, agreeing with the Staff and the Respondents that the prosecution history was relevant to the validity and the claim construction of the patent at issue.
	grove.ufl.edu /~techlaw/vol10/issue1/wright.html (6841 words)

	Supreme Court Upholds Doctrine of Equivalents - Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 122 S.Ct. 1831, ...
		Prosecution history estoppel requires that the claims of a patent be interpreted in light of the proceedings in the PTO during the application process.
		Prosecution history estoppel ensures that the doctrine of equivalents remains tied to its underlying purpose.
		Petitioner argues that estoppel should arise when amendments are intended to narrow the subject matter of the patented invention, for instance, amendments to avoid prior art, but not when the amendments are made to comply with requirements concerning the form of the patent application.
	biotech.law.lsu.edu /cases/IP/patent/festo_us.htm (5938 words)

	Henry M. Feiereisen, LLC - Intellectual Properties Services
		The logic of prosecution history estoppel is that the patentee, during prosecution, has created a record that fairly notifies the public that the patentee has surrendered the right to claim particular matter as within the reach of the patent.
		If prosecution history estoppel acts as a complete bar to application of the doctrine of equivalents, both the patentee and the public are on notice as to the scope of protection provided by a claim element narrowed for a reason related to patentability.
		The prosecution history of the Carroll patent reveals that the amendment that added the pair of sealing rings claim element was motivated by at least one reason related to patentability: a desire to avoid the prior art.
	www.feiereisenllc.com /patents3.html (16873 words)

	liibulletin: Festo Co. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.
		SMC argued against this idea, referring to a statement Stoll had made during prosecution of the Stoll patent that indicated that two sealing rings, as opposed to a single ring, were necessary to prevent dirt on the piston's magnet.
		Noting that the motivation for the "magnetizable sleeve" amendment was mysterious, as the amendment was neither related to the examiner's 35 U.S.C. § 112 rejections nor did it distinguish the invention over the prior art, the district court sent the issue of infringement to the jury for consideration under a doctrine of equivalents theory.
		Judge Linn reasons that the public-notice function of prosecution history estoppel is often better served by a compromise between the patentee and the examiner during the prosecution process.
	www.law.cornell.edu /patent/comments/95_1066.htm (3563 words)

	PATENT AMENDMENTS AND PROSECUTION HISTORY ESTOPPEL UNDER FESTO
		Festo examines the interface between the doctrine of prosecution history estoppel and the related principle of infringement under the doctrine of equivalents.
		In Hughes, the Federal Circuit stated that prosecution history estoppel creates a "flexible bar" to the doctrine of equivalents in that if the equivalent was not directly surrendered during the application process, a patent owner may still sue for infringement under the doctrine of equivalents.
		Since the new doctrine of prosecution history estoppel will completely bar the patent owner from asserting infringement under the doctrine of equivalents, there is no way for the patent owner to protect his or her invention.
	www.law.duke.edu /journals/dltr/articles/2001dltr0011.html (2169 words)

	Festo and Prosecution History Estoppel in Europe
		The Court recognised that prosecution history estoppel may arise not only in respect of amendments which are necessary to overcome novelty and obviousness objections with respect to cited prior art but that any amendments which are filed in response to patentability objections could give rise thereto.
		Although a far cry from estoppel per se, it appears that the English Court of Appeal is prepared to consider extraneous evidence when issues of construction cannot be determined solely in reliance on the content of the patent itself.
		Every practitioner must be wary of the doctrine of prosecution history estoppel, not merely because a foreign jurisdiction might consider evidence from a file history, but because we cannot predict the circumstances in which the file history may some day influence the Court.
	www.jenkins-ip.com /pi_news/autumn2002/festo.htm (822 words)

	No. 04-293: Honeywell v. Hamilton Sundstrand - Amicus Invitation (Petition)
		Prosecution history estoppel operates as an important limitation on the doctrine of equivalents.
		The applicant's consequent surrender of subject matter trig gered a presumption that the patent prosecution history estops the applicant from using the doctrine of equivalents to extend the scope of the patent beyond its literal terms.
		Prosecution history estoppel ensures that "the doctrine of equivalents remains tied to its underlying purpose" by precluding its invocation where the prosecution history shows that the applicant pre viously claimed the equivalent subject matter, but consciously chose to narrow his claims and surrender that subject matter to obtain the patent.
	www.usdoj.gov /osg/briefs/2004/2pet/6invit/2004-0293.pet.ami.inv.html (5107 words)

	Prosecution history estoppel - Wikipedia, the free encyclopedia
		Prosecution history estoppel, also known as file-wrapper estoppel, is a term used in United States patent law to indicate that a person who has filed a patent application, and then makes amendments to the application to accommodate the patent law, has no cause of action for infringement to the pre-amendment patent claims that were amended.
		The defining case on prosecution estoppel in the United states is Festo Corp. v.
		It also acknowledged that while any narrowing amendment made for a reason related to patentability could give rise to prosecution history estoppel, inventors who amended their claims under the previous case law had no reason to believe that they were conceding all equivalents" of amended elements when responding to a rejection.
	en.wikipedia.org /wiki/Prosecution_history_estoppel (475 words)

	The Festo Decision
		Thus, the “prosecution history” is the file of correspondence between the applicant and the Patent Office.
		The Supreme Court’s holding is that prosecution history estoppel applies to every narrowing amendment made to satisfy the Patent Act, whether to avoid prior art or to clarify the nature of the invention.
		All amendments give rise to a presumption of estoppel, shifting the burden to the patentee to prove, first, that the claims were not narrowed to satisfy the patent laws and, then, that even a skilled claim drafter could not have foreseen the equivalent adopted by the accused infringer.
	www.beemlaw.com /festo_decision.htm (964 words)

	Prosecution disclaimer - Wikipedia, the free encyclopedia
		Prosecution disclaimer is a legal doctrine that provides that the statements made by an applicant for a patent in the course of prosecution may act to limit the literal coverage of the patent claims.
		Prosecution disclaimer similarly operates to reduce the scope of the claims under the doctrine of equivalents.
		Unlike prosecution history estoppel, where claim amendments only limit the scope of the claims under the doctrine of equivalents, prosecution disclaimer limits the literal scope of the claims and their reach under the doctrine of equivalents.
	en.wikipedia.org /wiki/Prosecution_disclaimer (124 words)

	Fredrikson & Byron, P.A. - Festo: The Scope of Patent Claims
		During the course of prosecuting a patent, claims are often amended to avoid the prior art, address formal concerns, or simply clarify the invention.
		Amendments made during the course of prosecution that “narrow” the scope of the patent claims (for example, to differentiate from existing patents) may give rise to Prosecution History Estoppel.
		The court said that an amendment made during prosecution for “any reason related to the statutory requirements for a patent” gave rise to Prosecution History Estoppel and thus a limitation upon the scope of claims coverage.
	www.fredlaw.com /articles/ip/inte_1203_rd_mpb.html (906 words)

	United States Court of Appeals for the Federal Circuit (Site not responding. Last check: 2007-08-16)
		The logic of prosecution history estoppel is that the patentee, during prosecution, has created a record that fairly notifies the public that the patentee has surrendered the right to claim particular matter as within the reach of the patent.
		On appeal, Deere urged that prosecution history estoppel did not apply because the inventor’s limitation of his claims to devices in which the gauge wheels had a smaller radius than that of the discs was unnecessary to distinguish the prior art.
		If prosecution history estoppel acts as a complete bar to application of the doctrine of equivalents, both the patentee and the public are on notice as to the scope of protection provided by a claim element narrowed for a reason related to patentability.
	www.vaslaw.com /festo.htm (11338 words)

	Morrison & Foerster : Legal Updates & News : Legal Updates : The Festo Saga Continues: Federal Circuit Clarifies ...
		A patentee's rebuttal of this presumption of prosecution history estoppel is restricted to the evidence in the prosecution history record.
		If the patentee does rebut the presumption, prosecution history estoppel does not apply as to the accused equivalent, and the question of infringement by the doctrine of equivalents proceeds on the merits.
		The court based this holding on the principle that prosecution history estoppel is an equitable doctrine that presents a question of law.
	www.mofo.com /news/updates/files/update1086.html (1117 words)

	SSRN-Harmonizing Prosecution History Estoppel and the Doctrine of Equivalents in Patent Infringement Actions by Armando ...
		The patent law's doctrines of prosecution history estoppel and equivalents have come head on in the Court of Appeals for the Federal District's decision Festo Corporation v.
		That is, the Festo decision, by expanding the applicability of prosecution history estoppel in patent infringement actions, substantially curtails a patentee's bases for obtaining a judicial finding of infringement under the doctrine of equivalents.
		The balance that has existed for many years between prosecution history estoppel and the doctrine of equivalents has served the United States patent system well and should not be altered.
	papers.ssrn.com /sol3/papers.cfm?abstract_id=305499 (546 words)

	SSRN-Rethinking Prosecution History Estoppel by Douglas Lichtman
		Under the rule of prosecution history estoppel, patent applicants who amend their claims during the course of patent prosecution assume a significant risk: namely, the risk that a court will later construe the changes as concessions that should be read to limit patent scope.
		Drawing on a large empirical study of patent prosecution, I show that, because of these evidentiary presumptions, estoppel is dangerously sensitive to differences between patent examiners and differences across technology categories.
		That is, estoppel treats similar applications in dissimilar ways, not because of differences on the merits, but instead because of the personal characteristics of the examiners involved and because of differences inherent to the types of technology at issue.
	papers.ssrn.com /sol3/papers.cfm?abstract_id=455380 (376 words)

	8.3 Doctrine of Equivalents
		The second was to enhance the role of prosecution history in limiting the scope of protection to be given under the doctrine.
		The Supreme Court stated that the burden is to be placed on the patentee to establish the reason for an amendment required during patent prosecution as not being required to establish the patentability of the claim.
		The court then would decide whether that reason is sufficient to overcome prosecution history estoppel as a bar to application of the doctrine of equivalents to the element added by amendment.
	www.ladas.com /Patents/Biotechnology/USPharmPatentLaw/USPhar29.html (1392 words)

	US Federal Circuit Appeals Court issues controversial ruling on the application of doctrine of equivalents in patent ... (Site not responding. Last check: 2007-08-16)
		The infringement claims in suit were barred by prosecution history estoppel as the claim elements that were found infringed were added during the prosecution and during reexamination of the respective patents in suit.
		When a claim amendment creates prosecution history estoppel, no range of equivalents is available for the amended claim element.
		Prosecution history estoppel prevents a patent holder from reclaiming under the doctrine of equivalents what the patentee has surrendered during prosecution of the patent.
	www.wptn.com /pat_010_sep01.htm (1776 words)

	[No title]
		After a Festo analysis, the court held that prosecution history estoppel prevented Glaxo from asserting that HPC in the accused Impax tablet was an equivalent of HPMC and, thus, held that the Impax composition did not infringe the claims that had been amended, affirming the lower court decision.
		Glaxo argued, however, that prosecution history estoppel should not apply to claim 1 of the patent, which was filed with the HPMC limitation and not subject to narrowing amendments during prosecution.
		Thus, prosecution history estoppel may apply even to unamended claims, further leveling whatever barriers might have existed to the use of estoppel to limit the doctrine of equivalents.
	www.aplf.org /mailer/issue165.html (506 words)

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