Festo Corporation v. SMC Corporation et al.
Decided July 5, 2007 http://www.fedcir.gov/opinions/05-1492.pdf
Judge Dyk with Judges Michel and Newman, Newman dissenting

Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc.
Decided March 20, 2007  pdf
Judges Rader, Schall and Prost\

 A 112 amendment that was filed “only for the purpose of better description” may act as doctrine of equivalents estoppel.

 Cross sued Medtronics at the U.S. District Court for the Central District of California for allegedly infringing claims to screws.  The claims had been amended to recite a “thread depth” limitation.  Judge Gary Taylor found infringement under the doctrine of equivalents by an accused screw having a different thread depth, which Medtronics had redesigned to avoid the claims.   Medtronic appealed.

 The Federal Circuit reversed the infringement decision because “the thread depth limitation was added to capture the manner” of operation to overcome 112 rejections.  Judge Rader separately concurred to emphasize his view that the “tangential relation” exception to estoppel for avoiding the doctrine of equivalents runs “counter to principles of public notice” and is “very narrow.”

 Doctrine of equivalents cases seem very difficult to win.  A practitioner should describe and claim as many embodiments as possible to get broad literal protection.

Freedman Seating Company v. American Seating Company et al.
Decided August 11, 2005  pdf copy
Judge Schall with Judges Mayer and Plager

Freedman sued American at the U.S. District Court for the Central District of California for allegedly infringing claims to a vehicle stowable seat that is "slidably mounted." Judge Gary Klausner granted summary judgment of infringement under the doctrine of equivalents because the accused seat was rotatably mounted in a similar manner and included other claim elements. Freedman appealed to the Federal Circuit.

The Federal Circuit reversed the doctrine of equivalents infringement holding because extension of "slidably mounted" to include a rotating structure "would mean that any support member capable of allowing translational and rotational motion would be equivalent," and thus "vitiate" this claim term limitation. Most important to the analysis was that the unclaimed variation of rotation was forseeable on the application filing date. This decision emphasized repeatedly the public notice function of the claims and expresses hostility to use of the doctrine of equivalents when alternative equivalent meanings were well known on an application's filing date.

If a claim element variation is known by others when filed, a court may be reluctant to extend claim scope to that variation under the doctrine of equivalents. For best protection, a patent practitioner should file a broad specification with claims that cover all known alternative embodiments.

Business Objects, S.A., v. Microstrategy
Decided January 6, 2005   pdf copy
Judge Rader with Judges Schall and Prost

*                One can amend a claim by adding an inherent feature of an invention without narrowing the claim or estopping later application of the doctrine of equivalents.

Business sued Microstrategy at the U.S. District Court for the Northern District of California for allegedly infringing claims to database search methods. Judge Charles Breyer granted Microstrategy summary judgment of no literal infringement and no infringement under the doctrine of equivalents. Business appealed to the Federal Circuit.

The Federal Circuit affirmed most findings, but vacated the holding of no infringement under the doctrine of equivalents because the lower court erroneously had deemed a claim amendment (addition of "predetermined") during prosecution as narrowing the claim scope. The Federal Circuit pointed out that "[b]ecause the 'predetermined' limitation was implicitly contained in the original term, the amendment did not narrow the scope of " the amended claim. Accordingly, that amendment did not estop subsequent use of the doctrine of equivalents.

When amending a claim at the patent office, one should consider merely making explicit an inherent limitation in the original, unamended claim to avoid file history estoppel.

Honeywell International Inc. et al. v. Hamilton Sundstrand Corporation
Decided June 2, 2004    pdf copy
En Banc, Judge Dyk writing for the majority, Newman dissenting in part

*              "[R]ewriting of dependent claims into independent form coupled with cancellation of the original independent claims creates a presumption of prosecution history estoppel"

During prosecution of patent claims to aircraft auxiliary power units, Honeywell cancelled independent claims and rewrote narrower dependent claims as independent claims. After issuance of the re-written claims, Honeywell sued Hamilton at the U.S. District Court for the District of Delaware for alleged patent infringement. A jury found infringement under the doctrine of equivalents and Hamilton appealed to the Federal Circuit.

This case concerns an important doctrine of equivalents issue that the Federal Circuit considered en banc. The Federal Circuit held that Honeywell's cancellation and re-writing of dependent claims into independent form during prosecution created a presumption of prosecution history estoppel, and vacated the district court holding. The lower court erroneously had reasoned that "the elements at issue were not amended" and failed to find the estoppel. However, the Federal Circuit emphasized that "the proper focus is whether the amendment narrows the overall scope of the claimed subject matter." Judge Newman dissented on this issue because rewriting "a dependent claim in independent form, when required only because the antecedent independent claim was cancelled" should not be deemed "a narrowing amendment as to all elements and limitations of the restated claim" and "is contrary to statute."

For an important invention that spawns multiple patents, a practitioner may consider going after narrower claims in a first application to avoid prosecution history estoppel for those claims and assert broader claims later.

PSC Computer Products, Inc. v. Foxconn International, Inc.
and Hon Hai Precision Industry Co., Ltd
Decided January 20, 2004   pdf copy
Judge Gajarsa with Judges Mayer and Clevenger

*                   Disclosed but unclaimed subject matter is dedicated to the public and cannot be recaptured under the doctrine of equivalents

PSC sued Foxconn at the U.S. District Court for the Central District of California for allegedly infringing patent claims to a semiconductor heat sink assembly having a "metal strap." Judge Dean Pregerson granted Foxconn summary judgment of non-infringement because Foxconn's device uses a plastic strap, not a metal one, and PSC's patent describes but does not claim the use of plastic straps. PSC appealed to the Federal Circuit.

The Federal Circuit affirmed, with a comment that PSC's patent "written description served notice that plastic had been used as an alternative to metal in the prior art, and that the future use of plastic would therefore not infringe."

This case teaches that the disclosure rule for embodiments described but not claimed in a patent and that cannot be recovered under the doctrine of equivalents is broad. The Federal Circuit declared that the main issue in such a determination is whether the "written description (is) sufficiently specific to dedicate (the embodiment) to the public." The court explained that "if one of ordinary skill in the art can understand the unclaimed disclosed teaching upon reading the written description, the alternative matter disclosed has been dedicated to the public. This 'disclosure-dedication' rule does not mean that any generic reference in a written specification necessarily dedicates all members of that particular genus to the public. The disclosure must be of such specificity that one of ordinary skill in the art could identify the subject matter that had been disclosed and not claimed."

A patent practitioner must be careful to assert claims to all possible embodiments when prosecuting a patent application or risk losing those embodiments. However, as the Federal Circuit pointed out, a patentee can file a continuation or reissue application to correct "such oversights." Before a patent issues, and within two years of that issuance, a patentee should review the specification and determine whether a continuation application or broadening reissue application, respectively, should be filed.

Johnson & Johnston Associates Inc., v. R.E. Service Co., Inc and Mark Frater
Decided March 28, 2002  text copy
Per curiam opinion, concurring opinions by Judges Clevenger, Rader, Dyk and Lourie,
Dissent by Newman

*                      A patentee cannot use the doctrine of equivalents to cover disclosed but unclaimed embodiments of an invention

This case limits the doctrine of equivalents. Johnston sued RES for infringing patent claims to circuit board copper plate that has a layer of aluminum attached to prevent handling damage. RES's accused product used steel instead of aluminum. A jury found infringement under the doctrine of equivalents and RES appealed to the CAFC. The CAFC ordered an en banc hearing because of uncertainty in recent developments in how to apply the doctrine of equivalents.

A 11 judge majority held that Johnston could not, as a matter of law, obtain doctrine of equivalents coverage to the steel embodiment because Johnston's patent describes but does not claim the steel embodiment. In reversing the jury decision, the CAFC majority explained that "when a patent drafter discloses but declines to claim subject matter, as in this case, this action dedicates that unclaimed subject matter to the public." A concurring opinion by Rader further declared that "the patentee has an obligation to draft claims that capture all reasonably foreseeable ways to practice the invention." A concurring opinion by Lourie argued against Rader's view of using forseeability because such determination "would often require expert testimony" and would invite litigation resembling arguments over obviousness. A dissent by Newman warned of an "adverse effect" as applicants would insert less disclosure into specifications to avoid the absolute bar to use of the doctrine of equivalents under the new rule. That is, "[b]y penalizing the inclusion of information in the specification the patent becomes less useful as a source of knowledge, and more of a guarded legal contract."

This decision accords with a recent trend that places a great emphasis on deliberate patent preparation and prosecution. An applicant must be aware that merely adding more description and embodiments to an application may weaken the issued patent if the added embodiments are not claimed. To respond to this problem an applicant should review the alternative embodiments (on a claim element by element basis) in the specification before paying the issue fee and should re-file claims to desirable embodiments in a continuation application, (which the patentee did in this case). Secondly, the applicant should reconsider the claims (particularly against possible competitor's products) as the second anniversary of the patent grant date approaches. The patentee can decide to file a broadening reissue application for the unclaimed embodiments then.

The Toro Company v. White Consolidated Industries et al.
Decided September 13, 2004   text copy
Judge Linn with Judges Rader and Dyk

*                     The "disclosure-dedication rule" blocks use of the doctrine of equivalents for described but not claimed subject matter, regardless of intent or enablement.

Toro sued White at the U.S. District Court for the District of Minnesota for allegedly infringing patent claims to a vacuum blower having "an air inlet cover" with a "means for increasing the pressure." After two remands from the Federal Circuit on claim construction issues, Judge Donovan Frank granted summary judgment of non-infringement under the doctrine of equivalents because the accused device uses a cover means that is briefly mentioned in the patent but not claimed. Toro appealed again to the Federal Circuit.

The Federal Circuit affirmed because a patentee cannot disclose an embodiment in the specification and later reclaim that embodiment under the doctrine of equivalents. This is now called the "disclosure-dedication rule." The Federal Circuit clarified two conditions for using the rule. One, "[t]he patentee’s subjective intent is irrelevant to determining whether unclaimed subject matter has been disclosed and therefore dedicated to the public." Two, this rule "does not impose a paragraph 112 requirement on the disclosed but unclaimed subject matter." Thus, although Toro did not intend to dedicate a particular embodiment and only mentioned the embodiment briefly, Toro cannot capture the embodiment via the doctrine of equivalents.

A patent drafter should be careful of statements in a specification and during prosecution regarding related technology because, if a skilled artisan "can understand the unclaimed disclosed teaching upon reading the written description, the alternative matter disclosed has been dedicated to the public." To minimize this problem an applicant can keep an application pending

Union Oil Company of California, and Tosco Corporation
Decided October 28, 2003  
Judge Newman with Judges Michel and Plager

*           The surrender of equivalents under Festo is overcome if a skilled artisan "could not reasonably be expected to have drafted a claim" to the desired equivalent

Talbert sued Tosco at the U.S. District Court for the Central District of California for alleged infringement of patent claims to "gasoline having a boiling point range of 121F to 345F." Tosco's gasoline has a boiling point above 373F and the court found no literal or infringement or infringement of equivalents because Talbert had added the temperature limitation during prosecution. Talbert appealed this decision to the Federal Circuit, which affirmed, and then appealed to the Supreme Court. The Supreme Court remanded for further consideration in light of the Court's Festo decision, to give Talbert an opportunity to rebut the "presumption of surrender arising from" the temperature limitation amendment.

In this remand, the Federal Circuit reviewed the "[t]hree general criteria of rebuttal… established by the Court" and compared with the available evidence. The first criteria (unforseeability of the equivalent at the time of making the amendment) was deemed not met because "the prior art embraces the equivalent." The second criteria (rationale underlying the amendment bearing no more than a tangential relation to the equivalent in question) also failed because the higher gasoline boiling point was "at issue during prosecution." The third criteria ("some other reason" why the "patentee could not reasonably be expected to have described the insubstantial substitute") failed because "no other reason ….has been proffered."

This case exemplifies the three rebuttal criteria for determining whether file history estops application of the doctrine of equivalents to a claim term. In recent cases, the second criteria, whether the reason for an amendment bore "no more than a tangential relation to the equivalent" is discussed most often. Accordingly, a patent practitioner should consider presenting a very narrow logical reason when amending a claim to overcome a rejection. During later litigation, if the reason is merely tangentially related to the facts of an infringement, the patentee can argue that the amendment does not estop application of the doctrine of equivalents to the modified claim term.

Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,
a/k/a SMC Corporation and SMC Pneumatics, Inc.
Decided September 26, 2003   pdf copy
Judge Lourie with Judges Michel, Plager, Clevenger, Rader, Schall, Bryson, Gajarsa, Linn, Dyk and Prost ; Judge Rader also concurs separately;
Judges Newman and Mayer dissent in part

* File history estoppel restricts the doctrine of equivalents to cover embodiments that were foreseeable at the time of a claim amendment

* Forseeability of claim equivalents is determined based on technology existing at the time of amendment, not the filing date

This case was on remand from the Supreme Court and clarifies how the presumption of claim scope surrender, which limits use of the doctrine of equivalents during litigation, could be overcome. The Supreme Court stated that the presumption of surrender might be overcome by showing that "at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent." Three ways for doing this are: 1) demonstrating that "the equivalent [would] have been unforeseeable at the time of the [amendment]; 2) showing that "the rationale underlying the amendment [bore] no more than a tangential relation to the equivalent in question; and 3) "some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question."

The majority CAFC opinion concluded that Festo's reason for narrowing the claims was more than tangentially related to the accused equivalents, and Festo could not rebut the presumption on that basis. However, Festo might still establish that the equivalents could not have been foreseen at the time of making the amendments. For example, the accused equivalent device or method might use new technology that was not known when the patent application was prosecuted, and the patentee could not possibly have included that embodiment in his patent for this reason. The CAFC remanded to the district court to evaluate such factual issues regarding unforeseeability of the accused embodiment.

The CAFC also confirmed that "[q]uestions relating to the application and scope of prosecution history estoppel … fall within the exclusive province of the court" and "the jury has no role to play." The majority opinion pointed out that analysis of the "tangential relation to the equivalent in question" is limited to intrinsic evidence. Newman and Mayer's partial dissent, however, countered that evaluation of "the two criteria of tangentialness and some other reason" should not be questions of law for a court only, and that "Festo has been deprived of both trial and appeal" with respect to these evaluations.

The separate and lengthy opinions presented in this decision evince a doctrine of equivalents that remains clumsy in its application. An interesting holding was that a determination of equivalents for a claim element against an imitator who uses later developed technology is made based on technology existing at the time of claim amendment, which can be years after preparation and filing of a patent application. Accordingly, a practitioner must not only query a client about competitors' products during prosecution, but also consider recent technology developments at the time of amending claims.