Volume IX, Issue 1,
Fall 2002
The Doctrine of Equivalents and Prosecution
History Estoppel:
The Supreme Court Supports Flexibility
Over Certainty in
Patent Cases in Festo v. SMC
by:
Sue Ann Mota[*]
Cite
As: Sue Ann Mota, The Doctrine of Equivalents and Prosecution History
Estoppel: The Supreme Court Supports Flexibility Over Certainty in Patent
Cases in Festo v. SMC, 9 RICH. J.L. & TECH.
2 (Fall 2002), at http://jolt.richmond.edu/v9i2/article2.html.
TABLE
OF CONTENTS
“The Congress
shall have the power to promote the progress of science and useful arts, by securing for limited times to authors and inventors
the exclusive rights to their respective writings and discoveries.”[1]
{1}
Pursuant to this Constitutional grant of power, Congress has enacted numerous
Patent Acts, most recently the Patent Act of 1952.[2] The limited monopoly granted by Congress, that
no one may make, use, or sell the patented invention,[3] now for twenty
years from application,[4] is a property
right, and like any property right, its boundaries should be clear.[5] The scope of a patent, however, covers not only
its literal terms, but also all equivalents under the doctrine of equivalents,
which renders the scope of patents less certain.[6]
{2}
Prosecution history estoppel, a rule of patent construction, requires that
the claims of a patent be interpreted in light of the application process
at the Patent and Trademark Office (hereinafter “PTO”); a patentee may not
regain as equivalent subject matter surrendered when claims are narrowed during
the application process.[7] The Court of Appeals for the Federal Circuit,
sitting en banc, held in 2000 that when prosecution history applies from any
amendment made during an application process that narrows a patent claim,
it bars any and all equivalent for the element that was amended.[8] The U.S. Supreme Court, however, on May 28, 2002, vacated this decision,
unanimously holding that prosecution history estoppel need not bar suit against
every equivalent to the amended claim element.[9] Thus, the U.S. Supreme Court continued the role
of flexibility over certainty, overturning the Federal Circuit’s complete
bar by estoppel.
{3}
This article will examine the doctrine of equivalents, prosecution history
estoppel, and the Festo litigation. This author concludes that, while still allowing
for some uncertainty, the U.S. Supreme Court struck the correct balance in
allowing patent holders to use the doctrine of equivalents against copycat
inventions when claims have been narrowed during prosecution history.
II.
PATENT LAW, THE DOCTRINE OF EQUIVALENTS, AND PROSECUTION HISTORY ESTOPPEL
{4}
Pursuant to its Constitutional grant, Congress passed the Patent Act of 1790.[10] The later Patent Act of 1836 required an applicant
to file a specification and to point out the particular part, improvement,
or combination which is claimed as the applicant’s own invention.[11] The Patent Act of 1870 required a claim, stating
that an applicant “shall particularly point out and distinctly claim the part,
improvement, or combination which he claims as his invention or discovery.”[12] The current Patent Act of 1952
[ 13]
allows an inventor to obtain a patent for “any new and
useful process, machine, manufacture, or composition or matter, or any new
and useful improvement thereof.”[14] To be patentable, an invention must thus be
novel,[15]
useful and nonobvious.[16] A patent application must contain a specification
that describes the invention in such full, clear, concise and exact terms
as to enable any person skilled in the art to make and use the invention.[17] The specification must set forth the precise
invention for which a patent is solicited, in such manner as to distinguish
it from other inventions, and from what is old.[18] The patent application must also include one
or more claims that particularly point out and distinctly claim the subject
matter that the applicant regards as the invention.[19] The application must also include a drawing
when necessary,[20] an oath and the current fee.[21] Once a complete application is submitted, the
PTO patent examiner makes an examination of the application,[22]
including performing a prior art search. The
examiner issues a first office action, and provides the examiner’s reasons
for any rejection of claims, such as the invention was anticipated by the
prior art or the claims are not for patentable subject matter.[23] The applicant may request reconsideration in
writing, and must distinctly and specifically point out the supposed errors
in the examiner’s action. The applicant
must respond to every ground of objection and rejection by the PTO. The applicant may amend the claims.
{5}
After reconsideration, the applicant will be notified if claims are rejected
in the same manner as after the first examination. The PTO can, on its own initiative, also request
reexamination.[24]
{6}
If the PTO persists in the rejection of any of the claims in an application,
or if the rejection has been made final, the applicant may appeal to the Board
of Patent Appeals and Interferences in the Patent and Trademark office.[25] An appeal may be taken to the Court of Appeals
for the Federal Circuit,[26] or a civil action may be filed against the Patent Commission
in the U.S. District Court for the District of Columbia.[27]
{7}
If a patent is granted, the patent holder has the exclusive rights to make,
use, sell, or offer to sell the patented inventory[28] for a period of twenty years from patent application.[29] If a patent claim is infringed, whether by actual
or contributory infringement or the doctrine of equivalents,[30] the patent holder shall have a remedy by civil action
for infringement.[31] A court may grant an injunction “in accordance
with the principles of equity . . . on such terms as the court deems reasonable.”[32] A court may grant damages to compensate for
infringement together with interests and costs.
The damages may not be less than a reasonable royalty. The damages may be increased by the court up
to three times the amount assessed.[33] The court in exceptional cases may award reasonable
attorney’s fees to the prevailing party.[34]
{8}
One method of patent infringement mentioned above is by equivalents, under
which a product or process that does not literally infringe upon the express
terms of a patent claim may nonetheless be found to infringe if there is equivalence
between the elements of the accused product or process and the elements of
the patented invention.[35] The U.S. Supreme Court in 1854 approved of the
doctrine of equivalents in Winans v. Denmead.[36] The U.S. Supreme Court in 1950 set the modern
contours of this doctrine in Graver
Tank, holding that a substituted element
by a competitor did not fall within the literal elements of a patent claims,
but then looked further to see whether the change was so insubstantial to
invoke the doctrine of equivalents.[37] The Court in Graver Tank stated that the following factors are considerations for
applying the doctrine of equivalents:
{9}
The Supreme Court in 1997 unanimously held that this doctrine of equivalents
existed after the 1952 Patent Act.[39] In Warner-Jenkinson
Co. v. Hilton Davis Chemical Co., the Court, adhering to the doctrine
of equivalents, stated that “the 1952 Patent Act is not materially different
from the 1870 Act” concerning the role of the PTO, patent claiming, and reissue
of patents.[40] The minor differences have no bearing on the
decision reached in Graver Tank and
thus provide no reason for overruling it.[41] The Court, endeavoring to clarify the scope
of the doctrine,
[42]
stated in Warner-Jenkinson
that equivalence “should be applied as an objective inquiry on an element-by-element
basis.”[43]
{10}
The Court in Warner-Jenkinson further stated that the Court of Appeals
did not consider prosecution history estoppel, and remanded.[44] In the patent prosecution history, the PTO may
reject a patent application for not meeting statutory requirements for patentabilities.[45] The applicant may then narrow patent claims.
Prosecution history then estops the applicant from arguing that the
subject matter covered by the earlier broader claim was an equivalent to what
was covered in the amended claim.[46] Prosecution history estoppel precludes a patent
holder regaining subject matter relinquished in an amended claim.[47]
{11}
Both the doctrine of equivalents and prosecution history estoppel were at
issue in Festo.[48]
III. FESTO CORP. v. SHOKETSU KINZOKU KOGYO KABUSHIKI
CO.
{12}
Festo Corp. owns two patents, the Stoll patent and
the Carroll patent, both relating to magnetically coupled rodless
cylinders. The cylinder “moves by magnetic attraction to
the piston, which is moved hydraulically or pneumatically.”[49] The Carroll patent issued in 1973
[50]
and expired in 1990.[51] A reexamination certificate was issued in 1988
with amended claims, and during the reexamination, Carroll canceled claim
1 and added claim 9.[52] The Stoll patent was filed in 1980 as the U.S.
counterpart of a German patent application.
[53]
In the first office action, all twelve original claims were
rejected by the patent examiner. Some claims were amended, others were canceled.
The patent issued in 1982.[54]
{13}
After Festo began selling its device, Shoketsu Kinzoku
Kogyo Kabushiki Co., Ltd., and SMC Pneumatics, Inc. (hereinafter collectively
“SMC”), entered the market with a similar device. Festo sued SMC in a district court for infringement
of both the Carroll and Stoll patents. Before trial, the district court granted Festo’s
motion for partial summary judgment concerning the Carroll patent.[55] All the claim elements were conceded to be literally
present in the allegedly infringing devices except two.
[56]
The district court granted summary judgment
on infringement of the Carroll patent under the doctrine of equivalents.[57] The remaining issues were tried to a jury, which
found both patents valid, found the Stoll patent infringed by the doctrine
of equivalents, and assessed damages.[58]
{14}
SMC appealed to the Federal Circuit, raising for the first time the issue
of prosecution history estoppel.[59] On appeal, Festo argued that the prosecution
history estoppel does not bar a finding of equivalence when a term in the
claim was not required.[60] In Festo, during prosecution, the sleeve
being magnetized was added. The reason
for the addition was disputed at trial, and the judge called the addition
a “mystery.”[61] The Court of Appeals held that, in determining
whether prosecution history estoppel applies, the court must consider both
what has changed and the reason for the change in light of the prior art in
the field.[62] The Court of Appeals affirmed both the summary
judgment of infringement of the Carroll patent as well as the damages awarded
by the jury.[63]
{15}
The U.S. Supreme Court granted certiorari, vacated and remanded the case to
the Federal Circuit in light of Warner-Jenkinson.[64] The Federal Circuit reheard the appeal en banc.[65]
{16}
On remand, the Court of Appeals for the Federal Circuit acknowledged the importance
of the doctrine of equivalents to prevent an accused infringer to avoid liability
for only minor or insubstantial changes.[66] According to the Federal Circuit, the exact
range of equivalents when prosecution history estoppel applies is virtually
unascertainable under the preceding, more flexible approach to the doctrine.[67] Thus the Federal Circuit reversed, holding that
a complete bar eliminates the public’s need to speculate as to the subject
matter surrendered by an amendment that narrows a claim.[68] Even though no explanation for the amendments
narrowing the scope of the claims was established, the Court held that the
amendments gave rise to prosecution history estoppel and thus may not be infringed
by equivalence.[69]
{17}
In a concurrence, Judge Lourie stated that he believed that the Federal Circuit’s
new rule would provide a clear net gain for innovation and the public, who
would gain by greater certainty.[70] New innovations
could be developed without fear of protracted innovation.[71] This case once again went to the U.S. Supreme
Court.[72]
{18}
Justice Kennedy, writing for a unanimous Court, stated in an opinion issued
May 28, 2002, that the Court once again
was required to address the relation between two patent law concepts, the
doctrine of equivalents and the rule of prosecution history estoppel.[73] Although the Court had considered the same concepts
five years earlier in Warner-Jenkinson,[74] the Federal
Circuit subsequently held that a patent applicant surrenders all equivalents
when claims are narrowed during patent prosecution.[75] In a sharply worded opinion, Justice Kennedy
stated, “[t]he Court of Appeals ignored the guidance of Warner-Jenkinson, which instructed that
courts must be cautious before adopting changes that disrupt the settled expectations
of the inventing community.”[76]
IV.
CONCLUSION
{19}
The U.S. Supreme Court in Festo thus retained the flexible rule, that
prosecution history estoppel does not bar suit against every equivalent of
every amended claim. The Court acknowledged
that this can create substantial uncertainty about where the patent monopoly
ends.[77] “Each time the Court has considered the doctrine,
it has acknowledged this uncertainty as the price of ensuring the appropriate
incentives for innovation.”[78]
{20}
This author agrees with the Court’s decision. The Court struck a balance between innovation
and certainty. Under the doctrine of
equivalents, a patent holder should be able to protect against not only a
literal infringer, but also those who design around the patent application,
and create nearly equivalent, although not identical, versions. On the other hand, an inventor should not be
able to recoup what has been narrowed during prosecution history estoppel
by the doctrine of equivalents. This
prosecution history estoppel, however, should not be a complete bar to all
elements narrowed, regardless of the purpose, as held by the Federal Circuit. Had the Federal Circuit’s decision been upheld,
many patent holders would have lost equivalence for many claims narrowed for
any reason, which was not anticipated if these patent holders relied on prior
court precedent. In the author’s opinion,
the Court was correct in holding that certainty is not a sufficient reason
to overthrow this precedent and reliance.
ENDNOTES
[*]
Professor of Legal Studies, Bowling Green State University; J. D., University
of Toledo College
of Law, Order of the Coif; M.A.
and B.A., Bowling Green State
University.
[1] U.S.
CONST.
art. I, § 8, cl. 8.
[2] 35 U.S.C. §§ 1-376 (2000).
[5] Festo
Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 122 S. Ct. 1831, 1837 (2002).
[6] Id. at
1838. “The doctrine of equivalents
allows the patentee to claim those insubstantial alterations that were not
captured in drafting the original patent claim but which could be created
through trivial changes.” Id.;
see infra, nn.34-41 and accompanying text.
[7] Festo,
122 S.Ct. at 1838. see infra, nn.46-47 and
accompanying text.
[8] Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d
558, 591 (Fed. Cir. 2000).
[9] Festo, 122 S. Ct. at 1842-43.
[10] Act of April
10, 1790, ch. 7, § 1, 1 Stat. 318 (1793), repealed by the Patent
Act of 1793. The Patent Act of 1793
allowed an inventor to obtain Letters Patent for “any new and useful art,
machine, manufacture, or composition of matter, or any new and useful improvement.”
1 Stat. 318 (1793).
[11]
Act of July 4, 1836, ch. 357, § 6, 5 Stat. 117 (1836). The term “claim” was used, but a claim was
not mandated.
[12]
Act of July 8, 1870, ch. 230, § 26, 16 Stat. 198 (1870).
[13] 35 U.S.C. §§ 1-376 (2000).
[14] 35 U.S.C. § 101 states: “Whoever
invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may obtain
a patent therefor, subject to the conditions and
requirements of this title.” Design patents are granted for new, original,
and ornamental designs for an article of manufacture. Id. § 171. An interesting
peripheral issue is whether patent claims for business methods for financial
services software are statutory subject matter. The Court of Appeals for the Federal Circuit,
in another controversial ruling in 1998, concluded that patent claims for
a data processing system used for implementing an investment structure for
mutual funds was statutory subject matter under 35 U.S.C. § 101. State Street Bank & Trust Co. v. Signature
Financial Group, Inc., 149 F.3d 1368 (Fed. Cir.
1998), cert. denied, 525 U.S.
1093 (1999). See generally
Sue Mota, Internet Business Method Patents - The Federal Circuit Vacates
the Preliminary Injunction in
Amazon.com and Barnesandnoble.com, 19 J. MARSHALL J. COMPUTER &
INFO. L. 523
(2001).
[15] 35 U.S.C. § 102 (describing the conditions for patentability,
specifically novelty and loss of right to patent). Section 102 states:
A person shall be entitled to a patent
unless --
(a) the invention was known or used by
others in this country, or patented or described in a printed publication in
this or a foreign country, before the invention thereof by the applicant for
patent, or
(b) the invention was patented or
described in a printed publication in this or a foreign country or in public
use or on sale in this country, more than one year prior to the date of the application
for patent in the United States or
(c) he has abandoned the invention, or
(d) the invention was first patented or
caused to be patented, or was the subject of an inventor’s certificate, by the
applicant or his legal representatives or assigns in a foreign country on an
application for patent or inventor’s certificate filed more than twelve months
before the filing of the application in the United States, or
(e) the invention was described in a
patent granted on an application for patent by another filed in the United
States before the invention thereof by the applicant for patent, or on an
international application by another who has fulfilled the requirements of
paragraphs (1), (2), and (4) of section 371(c) of this title before the
invention thereof by the applicant for patent, or
(f) he did not himself invent the subject
matter sought to be patented, or
(g) before the
applicant’s invention thereof the invention was made in this country by
another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall
be considered not only the respective dates of conception and reduction
to practice of the invention, but also the reasonable diligence of one who
was first to conceive and last to reduce to practice, from a time prior
to conception by the other.”
[16]
35 U.S.C. § 103 states:
(a) A patent may not be obtained though
the invention is not identically disclosed or described as set forth in section
102 of this title, if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
manner in which the invention was made. . . .
(c) Subject matter developed by another
person, which qualifies as prior art only under subsection (f) or (g) of
section 102 of this title, shall not preclude patentability under this section
where the subject matter and the claimed invention were, at the time the
invention was made, owned by the same person or subject to an obligation of
assignment to the same person.
Id. § 103(a), (c). In
1952, nonobviousness as a requirement was codified to put the common law
judicial precedents into statutory form.
The first two requirements of novelty and utility had been the sole
statutory test since the Patent Act of 1793.
Graham v. John Deere, Co., 383 U.S. 1
(1966).
[17] 35 U.S.C. § 112 states:
The specification shall contain a written
description of the invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set forth the best mode
contemplated by the inventor of carrying out his invention.
The specification shall conclude with one
or more claims particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.
A claim may be written in independent or,
if the nature of the case admits, in dependent or multiple dependent form.
Subject to the following paragraph, a
claim in dependent form shall contain a reference to a claim previously set
forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed
to incorporate by reference all the limitations of the claim to which it
refers.
A claim in multiple dependent form shall contain a reference, in the alternative only, to
more than one claim previously set forth and then specify a further limitation
of the subject matter claimed. A
multiple dependent claim shall not serve as a basis for any other multiple
dependent claim.
A multiple dependent claim shall be construed to incorporate by
reference all the limitations of the particular claim in relation to which it
is being considered.
An element in a claim for a combination
may be expressed as a means or step for performing a specified function
without the recital of structure, material, or acts in support thereof,
and such claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents thereof.
[19] 35 U.S.C. § 112, ¶ 2.
The specification must conclude with a claim particularly pointing
out and distinctly claiming the subject matter which the applicant regards
as his invention or discovery. PATENT
MANUAL, supra note 18, at 608.01(i). The U.S. Supreme Court unanimously held in Markman v. Westview Instruments,
Inc. that the construction of a patent, including terms of art within
its claim, is within the exclusive province of the court. 517 U.S. 25,
37 (1996). See generally
Sue Mota, Markman v. Westview Instruments, Inc.: Patent
Construction is Seventh Amendment, 3 RICH. J. L. & TECH.
3 (1997), at http://jolt.richmond.edu/v3i1/mota.html
(Oct. 1, 1997).
[21] Id.
§ 111(a)(3). If
the patent is granted, periodic maintenance fees are also required. Id. § 41(b).
[23] Id. §
132.
Whenever, on examination, any claim for
a patent is rejected, or any objection or requirement made, the Commissioner
shall notify the applicant thereof, stating the reasons for such rejection,
or objection or requirement, together with such information and references
as may be useful in judging of the propriety of continuing the prosecution
of his application; and if after receiving such notice, the applicant persists
in his claim for a patent, with or without amendment, the application shall
be reexamined. No amendment shall
introduce new matter into the disclosure of the invention.
[25] Id. § 134.
The U.S. Court of Appeals for the Federal Circuit in 1994 en
banc held that whenever a three-member panel of the Board of Patent
Appeals and Interferences has rendered its decision, the Patent Commissioner
has the authority to reconvene a new panel to reconsider the decision. In
re Alappat, 33 F.3d 1526, 1532 (Fed.
Cir. 1994). See generally Sue Mota, Current Legal Issues Involving Computer-Related
Patents, 22 W.
ST. U. L. REV. 295, 303-06 (1995).
[26] 35 U.S.C. § 141. In
1982 Congress created the Federal Circuit Court of Appeals, which hears,
among other things, patent appeals. Federal
Courts Improvement Act, Pub. L. No. 97-164, 96 Stat. 25
(1982). In an effort to unify
patent law, Congress gave the new court exclusive jurisdiction over patent
appeals. 28 U.S.C. § 1295 (a)(1), (a)(4)(A-B) (2000).
[29]
Id. § 154(a)(2). An extension
for up to five years may be available due to governmental delay. Id. § 155.
[30] Id. § 271(b-c). See also Festo Corp.
v. Shoketsu Kinzoku Kogyo Kabushiki Co., 122 S. Ct. 1831, 1838 (2002).
(describing the doctrine of equivalents as allowing “the patentee to claim
those insubstantial alterations that were not captured in drafting the original
patent claim but which could be created through trivial changes”).
[35] See
Graver Tank & Mfg. Co. v. Linde Air Prod. Co., 339 U.S.
605, 609 (1950).
[37] Graver Tank, 339 U.S. at 610.
[38] Id. at 609. Applying these
factors, the Court in Graver Tank concluded that the trial court’s
finding of infringement under the doctrine of equivalents was proper. Id. at 612.
[39] Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,
26 (1997).
[41] Id. See generally
Warner Stemen, Note, The Doctrine
of Equivalents After Hilton Davis
and Markman, and a Proposal for
Further Clarification, 22 NOVA
L. REV. 783 (1998) (providing
an overview of the doctrine of equivalents and presenting a proposal for
how the doctrine might further be clarified); William R. Zimmerman, Note
and Comment, Unifying Markman
and Warner-Jenkinson: A Revised
Approach to the Doctrine of Equivalents, 11 HARV. J.L. & TECH.
185 (1997) (arguing that courts must “revise the Markman framework
to allow a more uniform application at the district and appellate court
levels” and also “revise the doctrine of equivalents to create defined roles
for the judge and jury similar to those in the literal infringement inquiry.”).
[42] Warner-Jenkinson, 520 U.S. at 21.
[46] Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki Co., 122 S. Ct. 1831, 1838 (2002).
[49] Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., 72 F.3d 857, 860 (Fed. Cir. 1993). The claimed devices have three basic parts:
“a piston, a cylinder, and a sleeve” outside the cylinder magnetically coupled
to the piston. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., 234 F.3d 558 at 579. (Fed. Cir. 2000) The sleeve moves objects on
a conveying system.
Id.
[50] U.S. Patent No. 3,779,401 (issued
Dec.
18, 1973); Festo, 234 F.3d at 580; Festo, 72 F.3d at 860.
[51] Festo,
72 F.3d at 861.
Prior to January 1, 1995,
when the TRIPS Agreement went into effect, the patent term was seventeen years
from patent grant. The current term is
twenty years from application. 35 U.S.C.
§ 154(a)(2).
[52] Festo, 234 F.3d at 584.
Carroll requested reexamination, citing a German patent that was
not of record during the Carroll patent’s prosecution history.
The PTO examiner allowed the amended claims. Id. at 584.
[54] Id. at 579, 583. The
Stoll patent is U.S. Patent No. 4,354,125 (issued Oct. 12, 1982). Festo, 72 F.3d at 862;
Festo, 274 F.3d at 582.
[55] Festo, 72 F.3d at 860.
[57] Id. at 860. Concerning the Carroll patent, SMC stated to the
special master, “We’ve decided that we will not be presenting any testimony
concerning infringement.” Id. at 861. The trial
judge referred the case to a special master; the successor trial judge
continued the reference. Id. at 865. The special
master did find that prosecution history estoppel barred Festo’s assertion of
equivalency. Id. at 864. The jury was
allowed to have a copy of the special master’s report instead of merely having
it read to them as per Federal Rules of Civil Procedure 53(e)(3). Id. at 865. This
possession of the master’s report was deemed to be harmless error and not
grounds for a new trial. Id. at 866.
[58] Id. at 862. The district court found that SMC could not
literally infringe the Stoll patents because SMC’s devices did not have
magnetized sleeves.
[59] Id. at 863. At trial,
SMC’s counsel stated, “This is not really a prosecution history estoppel
case.” Id.
[60] Id. at 864. According to
the Federal Circuit, “whenever prosecution history estoppel is invoked as a
limitation to infringement under the doctrine of equivalents, a close
examination must be made as to, not only what is surrendered, but also the
reason for such a surrender.” Id.
[63] Id. at 860, 867. “The general
measure of actual damages of a manufacturing patentee is the lost profits
that the patentee would have earned but for the infringement.” Id. at 867. Festo presented
evidence on the factors of demand for the product, the possible substitution
of other products, Festo’s manufacturing and marketing capability to fulfill
the demand, and the amount of profit Festo would have made on lost sales.
Id. In addition, costs were taxed in favor of Festo.
Id. at 868.
[64] Shoketsu Kinzoku Kogyo Kabushiki Co. v.
Festo Corp., 520 U.S.
1111, 1111 (1997).
[65] Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 187 F.3d 1381,
1381 (1999).
[66] Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d
558, 564 (Fed. Cir. 2000).
[68] Id. The appeals court stated that the Supreme Court
has noted the court need not inquire into the examiner’s rejection that
led to the amendment; even if the rejection is improper, the amendment may
give rise to estoppel. Id. at 576 (citing
Warner-Jenkinson Co.
v. Hilton Davis Chem. Co., 520 U.S. 17, 33, n.7 (1997).
[69] Festo, 234
F.3d at 563. See generally Peter Corcoran, The Scope of Claim Amendments, Prosecution History
Estoppel, and the Doctrine of Equivalents after Festo VI, 9 TEX. INTELL. PROP. L.J.
159 (2001); Raymond M. Galasso & Elana H. Gloetzner, Festo Corporation
v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.: What Will the Future Hold for Patentees?,
77 U. DET.
MERCY L. REV.
591 (2000); Scott G. Ulbrich, Festo, Notice and the Applications of Prosecution
History Estoppel to Means-Plus-Function Claim Limitations, 28 WM. MITCHELL
L. REV. 1165
(2002); ; Jacob S. Wharton, Intellectual Property: Policy Considerations
from a Practitioner’s Perspective Festo and the Complete Bar: What’s Left
of the Doctrine of Equivalents?, 20 ST.
LOUIS U. PUB. L.
REV. 281 (2001); Katherine E. White, Festo: A Case Contravening the Convergence of Doctrine of Equivalents Jurisprudence
in Germany, the United Kingdom, and the United States, 8 MICH. TELECOMM.
& TECH L. REV.
1 (2002); Anthony H. Azure, Note,
Festo’s Effect on After-Arising Technology
and the Doctrine of Equivalents, 76 WASH.
L. REV. 1153
(2001); Faith S. Fillman, Comment, Doctrine of Equivalents: Is Festo the Right Decision for the Biomedical Industry?,
33 ST. MARY'S L.J.
493 (2002); Celeste B. Filoia & Noreen Krall,
Note, The Doctrine of Equivalents: An
Analysis of the Festo Decision, 17 SANTA
CLARA COMPUTER & HIGH
TECH. L.J. 373
(2001).
[70] Festo, 234 F.3d at 598.
[71] Id. Judge
Lourie stated that, “It is said that stare decisis compels us to stay the
course with the old rule. I thought
the same regarding Zurko.” Id. at 597.
See also Dickinson
v. Zurko, 527 U.S. 150 (1999). Judge
Lourie further stated, referring to Zurko, “the Supreme Court, in its wisdom,
believed that decades of practice should be overturned in order to bring
our standard of judicial review of findings of fact made by the PTO into
line with the standard of review applied to other agency decisions.” Festo, 234 F.3d at
597. Lourie believed that
if a majority of the Federal Circuit believed that for certainty, a new
rule should be adopted, it should be upheld.
Festo, 234 F.3d at 598.
For more on Zurko, see
generally Sue Mota, Dickson v. Zurko:
Limits on the Federal Circuit’s Standard of Review, 2 COMPUTER
L. REV. & TECH. J.
23 (1999) (discussing Zurko and its implications
for patent appeals and patent infringement actions).
[72]
533 U.S. 915 (2001) (granting certiorari to the United States Court of Appeals
for the Federal Circuit).
[73] Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
122 S.Ct. at 1832.
[74] Warner-Jenkinson
Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997).
The Court stated that in Warner-Jenkinson,
the Court recognized that prosecution history estoppel does not arise in
every instance where a patent application is amended.
Festo, 122 S. Ct. at 1832.
[75] Festo, 234
F.3d at 575. “The Court of Appeals acknowledged that this
holding departed from its own cases, which applied a flexible bar when considering
what claims of equivalence were estopped by the prosecution history.”
Festo, 122 S. Ct. at 1835.
[76] Festo, 122 S. Ct. at
1841 (citing Warner-Jenkinson, 520 U.S.
at 28).
[78] Id.
at 1837-38. Based on the record before
the Court, it couldn’t say whether estoppel applied or the equivalents were
surrendered. Id. at 1842.
Thus, the judgment of the Federal Circuit was vacated and the case
was remanded. Id. at 1843.