IP News

Federal Circuit Decides Festo

On September 26, 2003, an en banc panel of the Federal Circuit decided Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd, 2003 U.S. App LEXIS 19867 (Fed. Cir. 2003), which was on remand from the Supreme Court. The sole issue on remand was whether Festo could rebut the presumption that it had surrendered all of the subject matter between the original claim limitations and the amended limitations. The Supreme Court vacated the Federal Circuit's earlier en banc decision that no range of equivalents was available for the amended claims and ruled that a narrowing amendment presented a rebuttable presumption that all of the territory between the original and amended language had been surrendered. The Supreme Court also enumerated three ways in which a patentee could overcome that presumption: 1) that the equivalent was unforeseeable at the time of the amendment; 2) that the rationale underlying the amendment was only tangentially related to the equivalent in question, or 3) that there was some other reason that the patentee could not be reasonably expected to have described the substitute.

The Federal Circuit discussed the en banc holdings that were undisturbed by the Supreme Court's ruling. First, a narrowing amendment made to comply with any provision of the Patent Act could invoke estoppel. Second, a voluntary amendment could give rise to estoppel. Third, a narrowing amendment was presumably made for patentability purposes unless the record revealed a different reason for the amendment.

The Federal Circuit also discussed the framework for determining prosecution history estoppel. The first question to examine is whether an amendment has narrowed the literal scope of a claim. If so, the next question to consider is whether the amendment was a substantial one relating to patentability. If there is no reason for the amendment in the prosecution history, then the amendment is presumably made for patentability purposes. If the presumption stands, then the scope of the surrender must be determined. The presumption is one of total surrender, but the patentee may rebut.

Judge Alan D. Lourie, writing for the majority, held that the presumption of surrender was a question of law and that it was to be determined by the judge and not a jury. He also discussed some general guidelines for rebutting a surrender presumption, including allowing expert testimony and extrinsic evidence to determine foreseeability and restricting the other tests to intrinsic evidence. The court held that the patentee, Festo, could not rebut the presumption of surrender because it could not show that the amendments were “tangential” or made “for some other reason.” However, because factual issues existed in relation to the foreseeability of certain equivalents, the court remanded the case to the district court. Judge Randall R. Rader wrote a concurring opinion that expressed concern that the new rules disrupted the certainty of the scope of patent claims and that too much rested upon “the luck of the examiner draw.” Judge Pauline Newman also wrote a separate opinion concurring on the remand and the determination that the presumption of surrender is a question for the court. However, she dissented with the treatment of “tangentialness” and “other reasons.”

A full analysis of this case will be presented in next month's IP Strategist.

No Sua Sponte JMOL Allowed Based on Doctrine of Equivalents

In Hewlett-Packard Co. v. Mustek Sys., Inc., 2003 U.S. App. LEXIS 16168 (Fed. Cir. 2003), a jury found that Mustek literally infringed Hewlett-Packard's patent on a variable speed optical scanner. Mustek then moved for judgment as a matter of law (JMOL) for noninfringement and Hewlett-Packard opposed. While the jury had not addressed the doctrine of equivalents (DOE), nor had Hewlett-Packard briefed the issue in its opposition, the district court granted JMOL for Hewlett-Packard on infringement under DOE. On appeal, the Federal Circuit held that the district court erred in this ruling because no timely motion under DOE had been made. Citing Supreme Court law, the Federal Circuit held that it was improper for a court to expand a party's opposition to include DOE. However, the court acknowledged that an oral pre-verdict motion for a directed verdict on infringement would have been enough to support a post trial motion concerning DOE.

Federal Circuit Decides Festo

On September 26, 2003, an en banc panel of the Federal Circuit decided Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd, 2003 U.S. App LEXIS 19867 (Fed. Cir. 2003), which was on remand from the Supreme Court. The sole issue on remand was whether Festo could rebut the presumption that it had surrendered all of the subject matter between the original claim limitations and the amended limitations. The Supreme Court vacated the Federal Circuit's earlier en banc decision that no range of equivalents was available for the amended claims and ruled that a narrowing amendment presented a rebuttable presumption that all of the territory between the original and amended language had been surrendered. The Supreme Court also enumerated three ways in which a patentee could overcome that presumption: 1) that the equivalent was unforeseeable at the time of the amendment; 2) that the rationale underlying the amendment was only tangentially related to the equivalent in question, or 3) that there was some other reason that the patentee could not be reasonably expected to have described the substitute.

The Federal Circuit discussed the en banc holdings that were undisturbed by the Supreme Court's ruling. First, a narrowing amendment made to comply with any provision of the Patent Act could invoke estoppel. Second, a voluntary amendment could give rise to estoppel. Third, a narrowing amendment was presumably made for patentability purposes unless the record revealed a different reason for the amendment.

The Federal Circuit also discussed the framework for determining prosecution history estoppel. The first question to examine is whether an amendment has narrowed the literal scope of a claim. If so, the next question to consider is whether the amendment was a substantial one relating to patentability. If there is no reason for the amendment in the prosecution history, then the amendment is presumably made for patentability purposes. If the presumption stands, then the scope of the surrender must be determined. The presumption is one of total surrender, but the patentee may rebut.

Judge Alan D. Lourie, writing for the majority, held that the presumption of surrender was a question of law and that it was to be determined by the judge and not a jury. He also discussed some general guidelines for rebutting a surrender presumption, including allowing expert testimony and extrinsic evidence to determine foreseeability and restricting the other tests to intrinsic evidence. The court held that the patentee, Festo, could not rebut the presumption of surrender because it could not show that the amendments were “tangential” or made “for some other reason.” However, because factual issues existed in relation to the foreseeability of certain equivalents, the court remanded the case to the district court. Judge Randall R. Rader wrote a concurring opinion that expressed concern that the new rules disrupted the certainty of the scope of patent claims and that too much rested upon “the luck of the examiner draw.” Judge Pauline Newman also wrote a separate opinion concurring on the remand and the determination that the presumption of surrender is a question for the court. However, she dissented with the treatment of “tangentialness” and “other reasons.”

A full analysis of this case will be presented in next month's IP Strategist.

No Sua Sponte JMOL Allowed Based on Doctrine of Equivalents

In Hewlett-Packard Co. v. Mustek Sys., Inc., 2003 U.S. App. LEXIS 16168 (Fed. Cir. 2003), a jury found that Mustek literally infringed Hewlett-Packard's patent on a variable speed optical scanner. Mustek then moved for judgment as a matter of law (JMOL) for noninfringement and Hewlett-Packard opposed. While the jury had not addressed the doctrine of equivalents (DOE), nor had Hewlett-Packard briefed the issue in its opposition, the district court granted JMOL for Hewlett-Packard on infringement under DOE. On appeal, the Federal Circuit held that the district court erred in this ruling because no timely motion under DOE had been made. Citing Supreme Court law, the Federal Circuit held that it was improper for a court to expand a party's opposition to include DOE. However, the court acknowledged that an oral pre-verdict motion for a directed verdict on infringement would have been enough to support a post trial motion concerning DOE.