Thorough Prior Art Searching and Careful Claim Drafting after Festo and Johnson & Johnston

In 1963 the Supreme Court noted that patent applications “constitute one of the most difficult legal instruments to draw with accuracy.” (See Sperry v. Florida Ex. Rel. Florida Bar, 373 U.S. 379, 383 (1963)). Recent decisions by both the Supreme Court and the Federal Circuit have made this task even more difficult. In particular, the Supreme Court's 2002 decision in Festo v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (535 U.S. 722) and the Federal Circuit's 2003 Festo remand decision, as well as the Federal Circuit's 2002 Johnson & Johnston (285 F. 3d 1046) (344 F. 3d 1359) decisions, all had significant narrowing effects on the doctrine of equivalents.

Festo

Prior to the Federal Circuit's 2000 en banc Festo decision (234 F. 3d 558), and the subsequent Festo decisions listed above, patent drafters had much less of an incentive to perform a thorough search of prior art than they do now. Prior art searching is both expensive and time consuming and inventors often claim that it is unnecessary because they are familiar with the relevant art. Additionally, searching prior art may give the inventor or drafter actual notice of third-party patents, thereby increasing the risk of willful infringement damages. Practitioners who did not conduct extensive prior art searches were comforted by the fact that, if art was discovered during prosecution, claims could always be amended with little effect. As a result, applications would often start with broad claims that would be narrowed in a process of negotiation between the patent practitioner and the examiner. The effectiveness of this strategy changed with the Festo line of cases, in which the Supreme Court ultimately held that narrowing amendments relating to patentability are presumed to result in a prosecution history estoppel that prevents the application of the doctrine of equivalents to the surrendered element. The Court provided three exceptions to this estoppel: 1) when an equivalent is “unforeseeable” at the time of the application; 2) where the rationale underlying the amendment bears no more than a “tangential relation” to the equivalent in question; and 3) “some other reason” that the patentee could not reasonably be expected to have described the equivalent in question.

On remand, the Federal Circuit held in its 2003 Festo decision that only evidence from the prosecution history record could be used to rebut the presumption, expressed by the Supreme Court in Warner-Jenkinson v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), that, absent any explanation as to why a narrowing amendment was made, the reason for such an amendment is assumed to be for patentability. Additionally, the court held that the rebuttal of the presumption of surrender of equivalents is a question of law to be determined by a judge and not a jury. Finally, the court held that evidence of the “tangential relation” exception must be limited to the prosecution history record. Similarly, the court stated that evidence of the “some other reason” exception is limited to the prosecution history “when at all possible.”

Post-Festo Patent Drafting Strategies: First, Better Prior Art Searching

One of the lessons that should be understood most clearly after Festo is that, in order to avoid estoppel, an applicant has to do his or her best to “get it right the first time.” One of the practices that can be most useful in drafting patent claims that do not need to be amended is to do more thorough prior art searching. Every day, more new databases are available online and in other electronic media that offer patent practitioners access to data that was previously very difficult to obtain. These databases alone, however, will not automatically steer a practitioner to the most relevant art, and may further complicate matters by returning a higher volume of irrelevant art. In order to minimize time spent reviewing spurious results, the practitioner must spend a greater amount of time working with inventors and others skilled in the art to gain the possible perspective on what type of prior art searches should be conducted. Such combinations of data access, practitioner time and expert input do not come cheaply. However, when those in charge of controlling costs begin to balk at the increased patent preparation expenses that result from this more detailed searching, they should be reminded that skimping on these now necessary costs may result in an even lower return on investment: an invalid patent or one that does not provide useful breadth of coverage. This is true if either excessively narrow or excessively broad patent claims are filed. The excessively narrow patent claim may survive prosecution unamended, but may be easy to design around. The excessively broad patent may require amendment following the examiner's discovery of prior art and, because of the doctrine of Festo, end up surrendering equivalents that it should have available. Even worse is the prospect that a prosecution history that includes an amendment of an element for reasons of patentability may (absent any of the three exceptions provided in the Supreme Court's Festo decision) provide a roadmap for competitor workarounds.

Some practitioners have suggested that prior art searching should be limited to nonpatent prior art to avoid the drafter/inventor being put on notice of other patents and consequently avoiding willful infringement damages relating to a device that practiced the invention claimed in the prior art patent. Perhaps the better view, though, is to avoid such a “see no evil” approach and instead to gather all of the information and focus on drafting the best patent possible.

Post-Festo Strategies for Claim Drafting

In addition to increasing the amount of prior art searching and research prior to filing, many practitioners have recommended other strategies for dealing with the Festo line of cases when drafting claims (see e.g., Q. Todd Dickinson, “Latest Festo Ruling Affects Drafting, Prosecution; Greater Care Must Go into Prior Art Searches and Claim Amendments,” The National Law Journal, Jan. 26, 2004; Bruce D. Sunstein, “Drafting Patent Applications After Festo and Johnson & Johnston,” 2002; Steven J. Rizzi, “Litigating Infringement Under the Doctrine of Equivalents After Festo,” 766 PLI/Pat 167 (2003)). A few of the recommendations follow:

• Take greater care in drafting claims to ensure that, as originally filed, they comply with all statutory criteria. Previously, minor errors in claim format might have been dealt with casually as “informalities” and fixed via amendment. However, such amendments may relate to patentability, which, after the Festo cases, potentially can lead to estoppel.
• In order to avoid narrowing amendments of overly broad initial claims, start with relatively narrow claims and then broaden them during the course of prosecution as circumstances permit. This raises two issues, though. First, there must be support in the specification for these broader claims. Second, to the extent that inventions are disclosed in the specification and remain unclaimed, equivalents corresponding with these unclaimed inventions may be barred under Johnson & Johnston (discussed below).
• Also to avoid narrowing amendments, file a series of continuing applications containing claims of progressively increasing scope. This raises issues similar to the preceding point, however.
• File more claims of varying scope on each application so that claims can either be accepted or rejected, but not amended.
• Use method claims in addition to device claims to provide overlapping coverage and minimize the impact of the loss of any one equivalent in a device claim.
• Organize claim elements by commas and line breaks so that, should an amendment be required, it is clear to what element any estoppel may apply.
• Use Means-Plus-Function (MPF) claims in addition to conventional claims because these claims are entitled equivalents of disclosed structures and because such equivalents are not subject to Festo prosecution history estoppel.
• Appeal examiner objections to or rejections of claims to prevent having to deal with negative prosecution history.

Dealing with Amendments

If, despite the use of the prior art searching and claim drafting strategies above, amendments must be made, practitioners should consider the following strategies:

• Obviously, avoid narrowing the scope of the claim, if possible, to prevent estoppel issues.
• Use examiner interviews to find out which amendments would be acceptable to the examiner before submitting anything in written form.
• State why the amendment is being made, especially if the amendment is not narrowing and not due to patentability reasons, in order to preserve the possibility that the amendment could be viewed to fall within one of the exceptions to prosecution history estoppel, such as the “tangential relation” and “other reason” exceptions.
• Try to include “foreseeable equivalents” in the amended claims. This is necessary because, under the Federal Circuit's 2003 Festo decision, foreseeability is now evaluated as of the time the amendment was made. This development means that it may be necessary for applicants to perform a second prior art search before filing an amendment in order to ensure that there are not any equivalents that are foreseeable at the time of amendment that were not foreseeable at the time of filing. If there is not sufficient support in the specification for such an amendment, a continuation-in-part application will have to be submitted.
• If dependent claims must be modified into independent form, avoid adding limitations that change the meaning of the claim by, for example, further defining or circumscribing an existing limitation. See Ranbaxy Pharmaceuticals, Inc. v. Apotex, Inc., 350 F.3d 1235 (2003)).

Johnson & Johnston

In its March 2002 Johnson & Johnston decision, the Federal Circuit, clarifying its inconsistent precedent on the subject, held that when a patentee disclosed but did not claim an invention, the patentee could not establish infringement by equivalents of that unclaimed invention. The court cited as its reason for adhering to this rule, which it also had applied in its 1996 Maxwell (86 F. 3d 1098 (1996)) decision, the need to prevent patentees from obtaining rights that were not fully reviewed by the USPTO. Like the Festo decisions, Johnson & Johnston rests on the bedrock principle of patent law that it is the claims that define the patent right. Both Johnson & Johnston and the Festo lines of decisions draw boundaries around the doctrine of equivalents, attempting to ensure that the USPTO and the public do not have to look far beyond the claims to understand the parameters of the inventions in which an applicant or patentee asserts rights.

Drafting Patents after Johnson & Johnston

Getting it right the first time is also the best approach for dealing with Johnson & Johnston. In this instance, it means ensuring that any inventions that are disclosed and for which coverage is desired are claimed. This is easier said than done. First, adding claims adds to the cost of a patent both in fees and time spent by practitioners. Second, one needs to be careful that the claims that one asserts are not rejected and subject to estoppel under the doctrine of the Festo cases. Thus, Johnson & Johnston further demonstrates the need for thorough prior art searching, as discussed above in relation to the Festo cases. Despite one's best efforts, one is not always going to get it right the first time. Consequently, alternative or backup strategies may need to be employed. In Johnson & Johnston, the Federal Circuit hints at some alternatives. First, as long as one patent application in a chain of applications is still pending, an applicant may file continuing applications under 35 U.S.C. '120 claiming the disclosed subject matter. Additionally, the Federal Circuit reminds us that, even if one inadvertently fails to claim disclosed subject matter and the patent has issued, the patentee may, under 35 U.S.C. '251, file a reissue application within 2 years from the grant of the original patent and attempt to enlarge the scope of the original claims to include the disclosed but previously unclaimed subject matter.

In conclusion, Johnson & Johnston and the Festo line of decisions have increased the amount of forethought necessary to draft an effective patent application. After these decisions, two things seem certain: 1) more attention to thorough prior art searching will likely pay large rewards by preventing amendments that may result in an estoppel that limits the availability of equivalents; and 2) more careful claim drafting strategies will similarly prevent loss of equivalents by limiting the number of amendments and the number of disclosed but unclaimed equivalents.

In 1963 the Supreme Court noted that patent applications “constitute one of the most difficult legal instruments to draw with accuracy.” ( See Sperry v. Florida Ex. Rel. Florida Bar , 373 U.S. 379, 383 (1963)). Recent decisions by both the Supreme Court and the Federal Circuit have made this task even more difficult. In particular, the Supreme Court's 2002 decision in Festo v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (535 U.S. 722) and the Federal Circuit's 2003 Festo remand decision, as well as the Federal Circuit's 2002 Johnson & Johnston (285 F. 3d 1046) (344 F. 3d 1359) decisions, all had significant narrowing effects on the doctrine of equivalents.

Festo

Prior to the Federal Circuit's 2000 en banc Festo decision (234 F. 3d 558), and the subsequent Festo decisions listed above, patent drafters had much less of an incentive to perform a thorough search of prior art than they do now. Prior art searching is both expensive and time consuming and inventors often claim that it is unnecessary because they are familiar with the relevant art. Additionally, searching prior art may give the inventor or drafter actual notice of third-party patents, thereby increasing the risk of willful infringement damages. Practitioners who did not conduct extensive prior art searches were comforted by the fact that, if art was discovered during prosecution, claims could always be amended with little effect. As a result, applications would often start with broad claims that would be narrowed in a process of negotiation between the patent practitioner and the examiner. The effectiveness of this strategy changed with the Festo line of cases, in which the Supreme Court ultimately held that narrowing amendments relating to patentability are presumed to result in a prosecution history estoppel that prevents the application of the doctrine of equivalents to the surrendered element. The Court provided three exceptions to this estoppel: 1) when an equivalent is “unforeseeable” at the time of the application; 2) where the rationale underlying the amendment bears no more than a “tangential relation” to the equivalent in question; and 3) “some other reason” that the patentee could not reasonably be expected to have described the equivalent in question.

On remand, the Federal Circuit held in its 2003 Festo decision that only evidence from the prosecution history record could be used to rebut the presumption, expressed by the Supreme Court in Warner-Jenkinson v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), that, absent any explanation as to why a narrowing amendment was made, the reason for such an amendment is assumed to be for patentability. Additionally, the court held that the rebuttal of the presumption of surrender of equivalents is a question of law to be determined by a judge and not a jury. Finally, the court held that evidence of the “tangential relation” exception must be limited to the prosecution history record. Similarly, the court stated that evidence of the “some other reason” exception is limited to the prosecution history “when at all possible.”

Post-Festo Patent Drafting Strategies: First, Better Prior Art Searching

One of the lessons that should be understood most clearly after Festo is that, in order to avoid estoppel, an applicant has to do his or her best to “get it right the first time.” One of the practices that can be most useful in drafting patent claims that do not need to be amended is to do more thorough prior art searching. Every day, more new databases are available online and in other electronic media that offer patent practitioners access to data that was previously very difficult to obtain. These databases alone, however, will not automatically steer a practitioner to the most relevant art, and may further complicate matters by returning a higher volume of irrelevant art. In order to minimize time spent reviewing spurious results, the practitioner must spend a greater amount of time working with inventors and others skilled in the art to gain the possible perspective on what type of prior art searches should be conducted. Such combinations of data access, practitioner time and expert input do not come cheaply. However, when those in charge of controlling costs begin to balk at the increased patent preparation expenses that result from this more detailed searching, they should be reminded that skimping on these now necessary costs may result in an even lower return on investment: an invalid patent or one that does not provide useful breadth of coverage. This is true if either excessively narrow or excessively broad patent claims are filed. The excessively narrow patent claim may survive prosecution unamended, but may be easy to design around. The excessively broad patent may require amendment following the examiner's discovery of prior art and, because of the doctrine of Festo, end up surrendering equivalents that it should have available. Even worse is the prospect that a prosecution history that includes an amendment of an element for reasons of patentability may (absent any of the three exceptions provided in the Supreme Court's Festo decision) provide a roadmap for competitor workarounds.

Some practitioners have suggested that prior art searching should be limited to nonpatent prior art to avoid the drafter/inventor being put on notice of other patents and consequently avoiding willful infringement damages relating to a device that practiced the invention claimed in the prior art patent. Perhaps the better view, though, is to avoid such a “see no evil” approach and instead to gather all of the information and focus on drafting the best patent possible.

Post-Festo Strategies for Claim Drafting

In addition to increasing the amount of prior art searching and research prior to filing, many practitioners have recommended other strategies for dealing with the Festo line of cases when drafting claims (see e.g., Q. Todd Dickinson, “Latest Festo Ruling Affects Drafting, Prosecution; Greater Care Must Go into Prior Art Searches and Claim Amendments,” The National Law Journal, Jan. 26, 2004; Bruce D. Sunstein, “Drafting Patent Applications After Festo and Johnson & Johnston,” 2002; Steven J. Rizzi, “Litigating Infringement Under the Doctrine of Equivalents After Festo,” 766 PLI/Pat 167 (2003)). A few of the recommendations follow:

• Take greater care in drafting claims to ensure that, as originally filed, they comply with all statutory criteria. Previously, minor errors in claim format might have been dealt with casually as “informalities” and fixed via amendment. However, such amendments may relate to patentability, which, after the Festo cases, potentially can lead to estoppel.
• In order to avoid narrowing amendments of overly broad initial claims, start with relatively narrow claims and then broaden them during the course of prosecution as circumstances permit. This raises two issues, though. First, there must be support in the specification for these broader claims. Second, to the extent that inventions are disclosed in the specification and remain unclaimed, equivalents corresponding with these unclaimed inventions may be barred under Johnson & Johnston (discussed below).
• Also to avoid narrowing amendments, file a series of continuing applications containing claims of progressively increasing scope. This raises issues similar to the preceding point, however.
• File more claims of varying scope on each application so that claims can either be accepted or rejected, but not amended.
• Use method claims in addition to device claims to provide overlapping coverage and minimize the impact of the loss of any one equivalent in a device claim.
• Organize claim elements by commas and line breaks so that, should an amendment be required, it is clear to what element any estoppel may apply.
• Use Means-Plus-Function (MPF) claims in addition to conventional claims because these claims are entitled equivalents of disclosed structures and because such equivalents are not subject to Festo prosecution history estoppel.
• Appeal examiner objections to or rejections of claims to prevent having to deal with negative prosecution history.

Dealing with Amendments

If, despite the use of the prior art searching and claim drafting strategies above, amendments must be made, practitioners should consider the following strategies:

• Obviously, avoid narrowing the scope of the claim, if possible, to prevent estoppel issues.
• Use examiner interviews to find out which amendments would be acceptable to the examiner before submitting anything in written form.
• State why the amendment is being made, especially if the amendment is not narrowing and not due to patentability reasons, in order to preserve the possibility that the amendment could be viewed to fall within one of the exceptions to prosecution history estoppel, such as the “tangential relation” and “other reason” exceptions.
• Try to include “foreseeable equivalents” in the amended claims. This is necessary because, under the Federal Circuit's 2003 Festo decision, foreseeability is now evaluated as of the time the amendment was made. This development means that it may be necessary for applicants to perform a second prior art search before filing an amendment in order to ensure that there are not any equivalents that are foreseeable at the time of amendment that were not foreseeable at the time of filing. If there is not sufficient support in the specification for such an amendment, a continuation-in-part application will have to be submitted.
• If dependent claims must be modified into independent form, avoid adding limitations that change the meaning of the claim by, for example, further defining or circumscribing an existing limitation. See Ranbaxy Pharmaceuticals, Inc. v. Apotex, Inc., 350 F.3d 1235 (2003)).

Johnson & Johnston

In its March 2002 Johnson & Johnston decision, the Federal Circuit, clarifying its inconsistent precedent on the subject, held that when a patentee disclosed but did not claim an invention, the patentee could not establish infringement by equivalents of that unclaimed invention. The court cited as its reason for adhering to this rule, which it also had applied in its 1996 Maxwell (86 F. 3d 1098 (1996)) decision, the need to prevent patentees from obtaining rights that were not fully reviewed by the USPTO. Like the Festo decisions, Johnson & Johnston rests on the bedrock principle of patent law that it is the claims that define the patent right. Both Johnson & Johnston and the Festo lines of decisions draw boundaries around the doctrine of equivalents, attempting to ensure that the USPTO and the public do not have to look far beyond the claims to understand the parameters of the inventions in which an applicant or patentee asserts rights.

Drafting Patents after Johnson & Johnston

Getting it right the first time is also the best approach for dealing with Johnson & Johnston. In this instance, it means ensuring that any inventions that are disclosed and for which coverage is desired are claimed. This is easier said than done. First, adding claims adds to the cost of a patent both in fees and time spent by practitioners. Second, one needs to be careful that the claims that one asserts are not rejected and subject to estoppel under the doctrine of the Festo cases. Thus, Johnson & Johnston further demonstrates the need for thorough prior art searching, as discussed above in relation to the Festo cases. Despite one's best efforts, one is not always going to get it right the first time. Consequently, alternative or backup strategies may need to be employed. In Johnson & Johnston, the Federal Circuit hints at some alternatives. First, as long as one patent application in a chain of applications is still pending, an applicant may file continuing applications under 35 U.S.C. '120 claiming the disclosed subject matter. Additionally, the Federal Circuit reminds us that, even if one inadvertently fails to claim disclosed subject matter and the patent has issued, the patentee may, under 35 U.S.C. '251, file a reissue application within 2 years from the grant of the original patent and attempt to enlarge the scope of the original claims to include the disclosed but previously unclaimed subject matter.

In conclusion, Johnson & Johnston and the Festo line of decisions have increased the amount of forethought necessary to draft an effective patent application. After these decisions, two things seem certain: 1) more attention to thorough prior art searching will likely pay large rewards by preventing amendments that may result in an estoppel that limits the availability of equivalents; and 2) more careful claim drafting strategies will similarly prevent loss of equivalents by limiting the number of amendments and the number of disclosed but unclaimed equivalents.