Lead Opinion
Opinion for the court filed by Circuit Judge SCHALL, in which Chief Judge MAYER and Circuit Judges PLAGER, LOURIE, CLEVENGER, BRYSON, GAJARSA, and DYK join; in which Circuit Judges MICHEL, RADER, and LINN join with respect to PARTS III-A, III-B, and III — D; and in which Circuit Judge MICHEL joins with respect to PART III-E.
Concurring opinion filed by Circuit Judge PLAGER.
Concurring opinion filed by Circuit Judge LOURIE.
Opinion concurring-in-part and dissenting-in-part with respect to PART III-C filed by Circuit Judge MICHEL, in which Circuit Judge RADER joins.
Opinion concurring-in-part and dissenting-in-part with respect to PART III-C filed by Circuit Judge RADER, in which Circuit Judges MICHEL and LINN join.
Opinion concurring-in-part and dissenting-in-part with respect to PART III-C filed by Circuit Judge LINN, in which Circuit Judge RADER joins.
Opinion concurring-in-part and dissenting-in-part with respect to PARTS III-A, III-B, III-C, and IV filed by Circuit Judge PAULINE NEWMAN.
This is an appeal from the judgment of the United States District Court for the District of Massachusetts that Shoketsu
1. For the purposes of determining whether an amendment to a claim creates prosecution history estoppel, is “a substantial reason related to patentability,” Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,520 U.S. 17 , 33,117 S.Ct. 1040 ,137 L.Ed.2d 146 (1997), limited to those amendments made to overcome prior art under § 102 and § 103, or does “patentability” mean any reason affecting the issuance of a patent?
2. Under Wamer-Jenkinson, should a “voluntary” claim amendment — one not required by the examiner or made in response to a rejection by an examiner for a stated reason — create prosecution history estoppel?
3. If a claim amendment creates prosecution history estoppel, under Wamer-Jenkinson what range of equivalents, if any, is available under the doctrine of equivalents for the claim element so amended?
4. When “no explanation [for a claim amendment] is established,” Warner-Jenkinson,520 U.S. at 33 ,117 S.Ct. 1040 , thus invoking the presumption of prosecution history estoppel under Wamer-Jenkinson, what range of equivalents, if any, is available under the doctrine of equivalents for the claim element so amended?
5.Would a judgment of infringement in this case violate Wamer-Jenkinson’s requirement that the application of the doctrine of equivalents “is not allowed such broad play as to eliminate [an] element in its entirety,”520 U.S. at 29 ,117 S.Ct. 1040 . In other words, would such a judgment of infringement, post Wamer-Jenkinson, violate the “all elements” rule?
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
We begin with a brief synopsis of our answers to the en banc questions and a summary of how those answers affect the disposition of this appeal. In response to En Banc Question 1, we hold that “a substantial reason related to patentability” is not limited to overcoming prior art, but includes other reasons related to the statutory requirements for a patent. Therefore, an amendment that narrows the scope of a claim for any reason related to the statutory requirements for a patent will give rise to prosecution history estop-pel with respect to the amended claim element.
In view of our answers to the en banc questions, we reverse the judgment that claim 1 of the Stoll patent and claims 5, 6, and 9 of the Carroll patent were infringed under the doctrine of equivalents. The claim elements that were found to be infringed by equivalents were added during prosecution of the Stoll patent and during reexamination of the Carroll patent. The amendments that added those elements narrowed the scope of the claims. Festo has not established explanations unrelated to patentability for these amendments; accordingly, no range of equivalents is available for the amended claim elements. Because the parties agree that SMC does not produce a device that literally satisfies those claim elements, the judgment of infringement must be reversed.
Section I of this opinion provides a brief overview of the doctrine of equivalents and prosecution history estoppel. Section II discusses the Supreme Court’s decision in Wamer-Jenkinson. Section III sets forth our answers to the en banc questions. In Section IV, we decide the appeal before us by applying our answers to the en banc questions to the facts of the case.
DISCUSSION
I. The Doctrine of Equivalents and Prosecution History Estoppel
The doctrine of equivalents prevents an accused infringer from avoiding liability for infringement by changing only minor or insubstantial details of a claimed invention while retaining the invention’s essential identity. Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,
Prosecution history estoppel is one tool that prevents the doctrine of equivalents from vitiating the notice function of claims. Charles Greiner & Co. v. Mari-Med Mfg., Inc.,
II. Wamer-Jenkinson
In this en banc rehearing, we focus our attention on the effect of Wamer-Jenkin-son on our case law relating to the doctrine of equivalents and prosecution history estoppel. Festo V,
The patent before the Court in Wamer-Jenkinson disclosed an improved process for purifying dyes which used a method called “ultrafiltration.” Wamer-Jenkin-son,
The Court dismissed the arguments of Warner-Jenkinson (the alleged infringer) that the doctrine of equivalents, as established in Graver Tank, did not survive the 1952 revision of the Patent Act. Id. at 25-27,
Turning to the facts at hand, the Court noted that, although the parties did not dispute that the upper pH limit of 9.0 was added to avoid the prior art, “the reason for adding the lower limit of 6.0 is unclear.” Id. Presented “with the problem ... where the record seems not to reveal the reason for including the lower pH limit of 6.0,” the Court “place[d] the burden on the patent holder to establish the reason for an amendment required during patent prosecution.” Id. at 33,
The Court rejected the other restrictions on the doctrine of equivalents proposed by Warner-Jenkinson. Id. at 35-40,
In closing, the Court stated that it chose to “adhere to the doctrine of equivalents,” which “should be applied as an objective inquiry on an element-by-element basis.” Id. at 40,
III. Answers to the En Banc Questions
A. Question 1
For the purposes of determining whether an amendment to a claim creates prosecution history estoppel, is “a substantial reason related to patentability,” Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,520 U.S. 17 , 33,117 S.Ct. 1040 , 137 L.Edüd 146 (1997), limited to those amendments made to overcome prior art under § 102 and § 103, or does “patentability” mean any reason affecting the issuance of a patent?
We answer Question 1 as follows: For the purposes of determining whether an amendment gives rise to prosecution history estoppel, a “substantial reason related to patentability” is not limited to overcoming or avoiding prior art, but instead includes any reason which relates to the statutory requirements for a patent. Therefore, a narrowing amendment made for any reason related to the statutory requirements for a patent will give rise to prosecution history estoppel with respect to the amended claim element.
It is true that in Wamer-Jenkinson the Supreme Court focused on claim amendments made to overcome or avoid prior art. Warner-Jenkinson,
The law has been clear that amendments made to avoid prior art give rise to prosecution history estoppel. E.g., Warner-Jenkinson,
While we do not believe that the Supreme Court itself answered this question in Wamer-Jenkinson, we do believe that our answer is not inconsistent with Wamer-Jenkinson. Warner-Jenkinson describes prior cases as applying prosecution history estoppel “typically because what [was previously claimed] ... was encompassed within the prior art,”
B. Question 2
Under Wamer-Jenkinson, should a “voluntary” claim amendment — one not required by the examiner or made in response to a rejection by an examiner for a stated reason — create prosecution history estoppel?
We answer Question 2 as follows: Voluntary claim amendments are treated the same as other amendments. Therefore, a voluntary amendment that narrows the scope of a claim for a reason related to the statutory requirements for a patent will give rise to prosecution history estoppel as to the amended claim element.
Both voluntary amendments and amendments required by the Patent Office signal to the public that subject matter has been surrendered. There is no reason why prosecution history estoppel should arise if the Patent Office rejects a claim because it believes the claim to be unpatentable, but not arise if the applicant amends a claim because he believes the claim to be unpat-entable.
Our answer to this question is consistent with the doctrine of argument-based estoppel. Arguments made voluntarily during prosecution may give rise to prosecution history estoppel if they evidence a surrender of subject matter. Eg., KCJ Corp. v. Kinetic Concepts, Inc.,
We also believe that our answer to this question is consistent with Wamer-Jen-kinson. Although the Supreme Court spoke of “required” amendments, the claim amendment at issue in Wamer-Jenkinson, the addition of the lower pH limit of 6, was not “required” by the prior art rejection. The original claim recited an ultrafiltration process. Wamer-Jenkinson,
C. Question 3
If a claim amendment creates prosecution history estoppel, under Wamer-Jenkinson what range of equivalents, if any, is available under the doctrine of equivalents for the claim element so amended?
We answer Question 3 as follows: When a claim amendment creates prosecution history estoppel with regard to a claim element, there is no range of equivalents available for the amended claim element. Application of the doctrine of equivalents to the claim element is completely barred (a “complete bar”).
We think it is fair to say that the question of the scope of equivalents available when prosecution history estoppel applies to a claim element has not been directly addressed or answered by the Supreme Court, at least in circumstances where the claim was amended for a known patenta-bility reason. In Wamer-Jenkinson, the Court focused its attention more on the circumstances under which prosecution history estoppel arises than on the range of equivalents that might generally be available despite the existence of prosecution history estoppel. Warner-Jenkinson,
1. In cases before Wamer-Jenkinson, the Supreme Court applied prosecution history estoppel to preclude a finding of infringement under the doctrine of equivalents, but the Court did not analyze the actual scope of equivalents that might be available when prosecution history estop-pel applied, i.e., the extent of the subject matter surrendered by amendment. In Weber Electric Co. v. E.H. Freeman Electric Co.,
In Magic City Kennel Club, as in Weber, the accused ■ device read on the prior art, which in and of itself mandates a finding of noninfringement, see Wilson Sporting Goods Co. v. David Geoffrey & Assocs.,
Had Claim 7 been allowed in its original form, it would have read upon all the accused devices, since in all the conductor means complementary to the coil spring are “carried by the table.” By striking that phrase from the claim and substituting for it “embedded in the table,” the applicant restricted his claim to those combinations in which the conductor means, though carried on the table, is also embedded in it. By the amendment, he recognized and emphasized the difference between the two phrases and proclaimed his abandonment of all that is embraced in that difference.
Id. at 136,
In his dissenting opinion, Judge Michel relies upon Goodyear Dental Vulcanite Co. v. Davis,
As issued, the claim in Goodyear described “rubber or some other elastic material” for a dental plate. Goodyear,
Hurlbut involved a patent which had been reissued and in which a disclaimer had been filed. Hurlbut,
Neither do we believe that in any of the other cases noted by Judge Michel did the Court determine that a claim element that was amended by an amendment that gave rise to prosecution history estoppel was entitled to a range of equivalents. See Cal. Artificial Stone-Pav Co. v. Schalicke,
In short, the range of equivalents available to an amended claim element simply was not before the Supreme Court in the cases Judge Michel cites, and the Supreme Court did not discuss the issue presented in En Banc Question 3. Although a court must follow “explicit and carefully considered” language of the Supreme Court, see Stone Container Corp. v. United States,
2. Because the Supreme Court has not fully addressed the range of equivalents that is available once prosecution history estoppel applies, we must independently decide the issue. Congress specifically created the Federal Circuit to resolve issues unique to patent law, Markman v. Westview Instruments, Inc.,
The Federal Circuit first addressed the range of equivalents that is available when prosecution history applies in Hughes Aircraft Co. v. United States,
LaBounty Manufacturing, Inc. v. United States International Trade Commission,
Less than a year after Hughes I, however, a five-judge panel of this court decided Kinzenbaw v. Deere & Co.,
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. Id. Specifically, Deere contended that only that portion of the claim that provided that the radius of the gauge wheels hаd to exceed the distance from the axes of the wheels to the rear edges of the discs was necessary in order to render the claims patentable over the prior art. Id. The five-judge panel rejected Deere’s argument. It stated: “We decline to undertake the speculative inquiry whether, if ... [the inventor] had made only that narrowing limitation in his claim, the examiner nevertheless would have allowed it.” Id. The court therefore affirmed the district court’s judgment of noninfringement. Id. at 391,
The approach to prosecution history es-toppel that was followed in Kinzenbaw prompted the following observation by Professor Chisum: “Beginning shortly after its creation in 1982, the Federal Circuit developed two lines of authority on the scope of an estoppel based on an amendment or argument that distinguished the prior art. One line followed a strict approach, according to which a court refused to speculate whether a narrower amendment would have been allowed. The other line followed a flexible or spectrum approach, which recognized that amendments did not invariably preclude all equivalence .... ” 5A Donald S. Chisum, Chisum on Patents § 18.05[3][b], at 18-492 (1998). Soon after Hughes I and Kinzenbaw were decided they were the subject of comment in the American University Law Review, which annually reviews the work of the Federal Circuit. The commentators stated that the Federal Circuit’s “two divergent lines of authority dealing with prosecution history estoppel,” the Hughes I line and the Kinzenbaw line, had given rise to ever-increasing “uncertainty and confusion” in patent litigation. Douglas A. Strawbridge et al., Area Summary, Patent Law Developments in the United States Court of Appeals for the Federal Circuit During 1986, 36 Am. U.L.Rev. 861, 887-88 (1987). The commentary that began after Hughes I and Kinzenbaw were decided has continued. See, e.g., Gregory J. Smith, The Federal Circuit’s Modem Doctrine of Equivalents in Patent Infringement, 29 Santa Clara L. Rev. 901, 921 (1989) (noting that there is at least an “apparent conflict” between Hughes I and Kinzenbaw); Note, To Bar or Not to Bar: Prosecution History Estoppel After Wamer-Jenkinson, 111 Harv. L. Rev. 2330, 2336 (1998) (stating that the Hughes I line of cases “appear[s] to be irreconcilable” with the Kinzenbaw line of cases).
Since Wamer-Jenkinson, panels of this court have continued to visit the question of the range of equivalents that is available after prosecution history estoppel has been determined to exist. Two cases in particular were remanded by the Supreme Court for further consideration in light of Warner-Jenkinson. Honeywell, Inc. v. Litton Sys., Inc.,
Both Litton and Hughes II follow the Hughes I flexible bar approach to prosecution history estoppel. In that regard, they are consistent with Professor Chisum’s observation that “[mjost Federal Circuit panel decisions from 1984 to 1997 followed the flexible approach, which had been initiated in 1983 by the Hughes Aircraft[Hughes I ] decision.... ” Chisum, supra, § 18.05[3][b][i], at 18-497. Nevertheless, this court has neither repudiated Kinzen-baw nor reconciled the inconsistency- between the Hughes I and Kinzenbaw lines of authority. Under these circumstances, it is unclear whether in any given case the court will apply the Kinzenbaw approach as opposed to the more generally accepted Hughes I approach. Just as importantly, even if the Hughes I approach is applied, there is uncertainty as to the extent of the surrender that will be held to exist. Thus, Professor Chisum has discussed two Federal Circuit cases, Sun Studs, Inc. v. ATA Equip. Leasing, Inc.,
3. Today, we revisit the question we first addressed in Hughes I and come to a different conclusion as to the proper scope of equivalents that is available when prosecution history estoppel applies than we did in that case. We hold that prosecution history estoppel acts as a complete bar to the application of the doctrine of equivalents when an amendment has narrowed the scope of a claim for a reason related to patentability. Our decision to reject the flexible bar approach adopted in Hughes I comes after nearly twenty years of experience in performing our role as the
In reaching our holding, we are mindful of the Supreme Court’s teaching that binding precedent is not to be lightly discarded. The Court has stated that stare deci-sis “promotes the evenhanded, predictable, and consistent development of legal principles, fosters reliance on judicial decisions and contributes to the actual and perceived integrity of the judicial process.” Payne v. Tennessee,
We believe that the current state of the law regarding the scope of equivalents that is available when prosecution history es-toppel applies is “unworkable.” In patent law, we think that rules qualify as “workable” when they can be relied upon to produce consistent results and give rise to a body of law that provides guidance to the marketplace on how to conduct its affairs. After our long experience with the flexible bar approach, we conclude that its “workability” is flawed. Moreover, in overruling Hughes I, we are not acting “on grounds not advanced by the parties.” SMC and amici curiae have urged us to follow the strict approach to prosecution history es-toppel that we adopt today. In Banc Opening Br. of Defs.-Appellants SMC Corp., et al., at 49-53; see also Br. for Amici Curiae Int’l Bus. Machs. Corp., Eastman Kodak Co., and Ford Motor Co., at 14-20 (arguing that no range of equivalents should be available for narrowing claim amendments).
We also believe that the flexible bar approach “poses a direct obstacle to the realization of important objectives.” Patterson v. McLean Credit Union,
By making prosecution history estoppel act as a complete bar, we enforce the disclaimer effect of a narrowing claim amendment. By narrowing his claims, a patentee disclaims subject matter encompassed by the original claims. E.g., Exhibit Supply,
Allowing some range of equivalents gives the patentee some benefit of the doubt as to what was disclaimed, a benefit that comes at the public’s expense. A complete bar therefore best serves the notice and definitional function of patent claims. “The object of the patent law in requiring the patentee [to specifically define his invention] is not only to secure to him all to which he is entitled, but to apprise the public of what is still open to them.” McClain v. Ortmayer,
The Supreme Court recognized the value of a complete bar in Warner-Jenkinson when it discussed the presumption that prosecution history estoppel applies when an amendment is unexplained. The Court, keeping in mind “that claims do indeed serve both a definitional and a notice function,” held that if the presumption was not rebutted, “prosecution history estoppel would bar the application of the doctrine [of] equivalents as to that element.” Id. at 33,
A complete bar also eliminates the public’s need to speculate as to the subject matter surrendered by an amendment that narrows a claim for a reason related to patentability. There are several aspects of the prosecution history estoppel inquiry where speculation is not allowed. The Supreme Court has noted that we need not inquire into the correctness of the examiner’s rejection that led to a claim amendment. Warner-Jenkinson,
Under the flexible bar approach, however, the exact range of equivalents when prosecution history estoppel applies is virtually unascertainable, with only the prior art marking the outer limits of the claim’s scope. There is no precise metric to determine what subject matter was given up between the original claim and the amended claim. Consider, for example, a claim that originally recited a value “less than twenty” that was amended to recite a value “less than five” in light of a rejection over prior art disclosing a value of fifteen.
A complete bar, unlike a flexible bar, thus lends certainty to the process of determining the scope of protection afforded by a patent. With a complete bar, both the public and the patentee know that once an element of a claim is narrowed by amendment for a reason related to patent-ability, that element’s scope of coverage will not extend beyond its literal terms. There is no speculation or uncertainty as to the exact range of equivalents that might be available. This certainty aids both the public and the patentee in ascertaining the true scope and value of the patent without having to resort to litigation to obtain a case by case analysis of what subject matter the claims can cover. With a complete bar, neither the public nor the patentee is required to pay the transaction costs of litigation in order to determine the exact scope of subject matter the patentee abandoned when the pat-entee amended the claim.
Thus, under the complete bar approach, technological advances that would have lain in the unknown, undefined zone around the literal terms of a narrowed claim under the flexible bar approach will not go wasted and undeveloped due to fear of litigation. The public will be free to improve on the patented technology and design around it without being inhibited by the threat of a lawsuit because the changes could possibly fall within the scope of equivalents left after a claim element has been narrowed by amendment for a reason related to patentability. This certainty will stimulate investment in improvements and design-arounds because the risk of infringement will be easier to determine. In general, the difficulty in counseling the public and the patentee on the scope of
Finally, we see no overriding benefit to the flexible bar approach. Although a flexible bar affords the patentee more protection under the doctrine of equivalents, we do not believe that the benefit outweighs the costs of uncertainty. The Supreme Court noted in Wamer-Jenkinson that the doctrine of equivalents has “taken on a life of its own, unbounded by the patent claims.” Warner-Jenkinson,
D. Question I
When “no explanation [for a claim amendment] is established,” Warner-Jenkinson,520 U.S. at 33 ,117 S.Ct. 1040 , thus invoking the presumption of prosecution history estoppel under Warner-Jenkinson, what range of equivalents, if any, is available under the doctrine of equivalents for the claim element so amended?
We answer Question 4 as follows: When no explanation for a claim amendment is established, no range of equivalents is available for the claim element so amended.
This question is answered by Wamer-Jenkinson:
Where no explanation is established, .... prosecution history estoppel would bar the application of the doctrine [of] equivalents as to that element.
Warner-Jenkinson,
E. Question 5
Would a judgment of infringement in this case violate Wamer-Jenkinson’s requirement that the application of the doctrine of equivalents “is not allowed such broad play as to eliminate [an] element in its entirety,”520 U.S. at 29 ,117 S.Ct. 1040 . In other words, would such a judgment of infringement, post Wamer-Jenkinson, violate the “all elements” rule?
We do not need to reach this question for reasons which will become clear in our discussion of the specific case before us. Accordingly, we leave for another day any discussion of the “all elements” rule.
IV. Infringement of Festo’s Patents
Festo is the owner by assignment of the Stoll patent and the Carroll patent, both of which are directed to magnetically coupled rodless cylinders. Festo sued SMC in the United States District Court for the District of Massachusetts, alleging infringement of the patents. The jury found that SMC infringed the Stoll patent under the doctrine of equivalents and assessed damages accordingly. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., No. 88-1814-PBS, slip op. at 2-3 (D.Mass. Oct. 27, 1994) (Judgment) (“Festo I (Judgment) ”). The district court previously had granted Festo’s motion for summary judgment that certain models of SMC’s rodless cylinders infringed the Carroll patent, also under
A. The Patents and Technology at Issue
Both the Stoll patent and the Carroll patent disclose magnetic rodless cylinders. The claimed devices are composed of three basic parts: a piston, a cylinder, and a sleeve. In basic terms, the piston is on the inside of the cylinder, and is moved by fluid under pressure. The sleeve is on the outside of the cylinder, and is magnetically coupled to the piston. The magnetic attraction between the sleeve and the piston causes the sleeve to follow the piston when it moves along the inside of the cylinder. The sleeve is used to move objects on a conveying system.
1. The application for the Stoll patent was filed on May 28, 1980; the patent issued on October 12, 1982. The following figure, the only drawing in the patent, shows the sleeve (18), the cylinder (10), and the piston (16) of the Stoll device:
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Inside the cylinder, the piston is driven by a pressurized fluid. Stoll patent, col. 3, 11. 13-19. As the piston travels through the cylinder, the magnetically coupled sleeve follows the piston along the outside of the cylinder. Id.
The piston includes magnets (20) and two “elastomeric sealing rings” (26). Id. at col. 3, 11. 20-32. The sealing rings prevent any impurities from getting on the piston. Id. at col. 3, 11. 48-55. There also are a pair of “guide rings” (24) on the piston. Id. at col. 3, 11. 26-30. As the patent explains, the guide rings, which project beyond the piston’s surface, “pass along the internal [cylinder] surface in a sliding fit,” id. at col. 3,11. 29-30, and help prevent impurities from dirtying the piston, id. at col. 3,11. 51-55.
The sleeve of the Stoll patent device is made of multiple parts that include magnets (32) and an outer body made of a
Claim 1 of the Stoll patent is representative of the claims asserted by Festo, and is the only claim of the Stoll patent at issue on appeal:
1. In an arrangement having a hollow cylindrical tube and driving and driven members movable thereon for conveying articles, the improvement comprising
wherein said tube is made of a nonmagnetic material,
wherein said driving member is a piston movably mounted on the inside of said tube, said piston having a piston body and plural axially spaced, first permanent annular magnets encircling said piston body,
said piston further including first means spacing said first permanent magnets in said axial spaced relation, the radially peripheral surface of said magnets being oriented close to the internal wall surface of said tube,
said piston further including plural guide ring means encircling said piston body and slidingly engaging said internal wall and
first sealing rings located axially outside said guide rings for wiping said internal wall as said piston moves along said tube to thereby cause any impurities that may be present in said tube to be pushed along said tube so that said first annular magnets will be frеe of interference from said impurities,
wherein said driven member includes a cylindrical sleeve made of a magnetizable material and encircles said tube,
said sleeve having plural axially spaced second permanent annular magnets affixed thereto and in magnetically attracting relation to said first permanent annular magnets,
and second means spacing said second permanent annular magnets in said axially spaced relation, the radially inner surface of said magnets being oriented close to the external surface of said tube,
said sleeve having end face means with second sealing rings located axially outside said second permanent annular magnets for wiping the external wall surface of said tube as said driven member is moved along said tube in response to a driving movement of said piston to thereby cause any impurities that may be present on said tube to be pushed along said tube so that said second permanent annular magnets will be free of interference from said impurities.
Stoll patent, col. 5, 1. 23 — col. 6, 1. 18 (paragraphing added).
2. The application for the Carroll patent was filed on February 17, 1972; the patent issued on December 18, 1973. A reexamination certificate was issued on October 25, 1988, with amended claims. The Carroll patent is directed to the same technology as the Stoll patent. An exterior view of the Carroll patent device is shown in Figure 1 of the Carroll patent, reproduced below:
In the disclosed embodiment, the sleeve (28) is described as a permanent magnet that is attached to a gripping device (30) and that surrounds part of the exterior of the cylinder (10). Carroll patent, col. 2,11. 17-26. As in the device of the Stoll patent, the sleeve of the Carroll patent moves along the cylinder in response to a magnetic piston which moves inside the cylinder. Id. Each end of the piston has a sealing ring set in an annular groove. Id. at col. 2,11. 1-16. According to the patent, the sealing rings “engage the inner wall of the cylinder and form a fluid tight seal” that allows compressed air, or any other pressurized fluid, injected into port (12) or (14) on the outside of the cylinder to move the piston in either direction. Id. at col. 2, 11. 10-16, 42-59. The polarization of the magnets on the piston and the sleeve causes the sleeve, which is located on the outside of the cylinder, to follow the movement of the piston, which is located on the inside of the cylinder. Id. at col. 2,11. 17-24.
Claim 9 of the reexamined Carroll patent is representative of the claims asserted by Festo:
9. A device for moving articles, which comprises:
a hollow cylinder formed of non-ferrous material and having opposite axial ends;
a piston mounted in the interior of the hollow cylinder and reciproeatingly slid-able therein, the piston including a central mounting member disposed axially in the cylinder,
a plurality of cylindrically-shaped permanent magnets mounted on the central mounting member and spaced apart axially from each other, each magnet having a bore formed axially there-through for receiving the central mounting member,
at least one pair of end members mounted on the central mounting member and disposed on opposite axial sides of the plurality of magnets, a pair of cushion members formed of resilient material, the cushion members being situated near opposite axial ends of the central mounting member to help prevent damage to the piston when the piston contacts an axial end of the cylinder,
and a pair of resilient sealing rings situated near opposite axial ends of thecentral mounting member and engaging the cylinder to effect a fluid-tight seal therewith;
a body mounted on the exterior of the hollow cylinder and reciprocatingly slid-able thereon,
the body including a plurality of annu-larly shaped permanent magnets surrounding the cylinder and spaced apart from each other, the permanent magnets of the piston and body being polarized so as to magnetically couple the body to the piston whereby movement of the piston inside the cylinder causes a corresponding movement of the body outside the cylinder,
the body further including means provided thereon for holding on the body an article to be moved; and
means for controlling the admission of pressure fluid into the cylinder and exhaust fluid from the cylinder for moving the piston in the cylinder,
the attractive forces between the permanent magnets of the piston and the body being such that movement of the piston causes corresponding movement of the body below a predetermined load on the body and such that above said predetermined load movement of the piston does not cause corresponding movement of the body.
Reexamined Carroll patent, col.l, 1. 34— col. 2, 1. 37 (additional paragraphing added).
3. The SMC devices that were found to infringe the Stoll and Carroll patents under the doctrine of equivalents have two notable differences from the structures claimed in the patents. First, the SMC devices, although having pistons with two hard plastic guide rings, have only a single resilient two-way sealing ring, located on one end of the pistons. Thus, while the patents disclose and claim devices with a pair of sealing rings, the SMC devices have only single two-way sealing rings.
B. Prosecution History of the Patents at Issue
1. The Stoll patent application was filed in the United States as the U.S. counterpart of a German patent application. As filed, claim 1 of the Stoll patent initially read:
1. A linear motor for use in a conveying system,
said motor being operable by a pressure medium and comprising a tubular part connectible to a source of the pressure medium,
a piston which is slidable in said tubular part and which has sealing means at each end for [wjiping engagement with an internal surface of the tubular part and so as to form a seal for the pressure medium,
and a driven assembly which is slida-ble on the tubular part and which has means at each end for [w]iping engagement with an external surface of the tubular part,
the piston and the driven assembly each carrying a drive magnet arrangement in the form of a hollow cylindrical assembly,
each magnet arrangement having radial play relative to the adjacent surface of the tubular part,
and surfaces of the magnet arrangements which face the tubular part being closely adjacent to the respective surfaces of the tubular part.
4. A linear motor according to any of claims 1 to 3, wherein the sealing means of the piston comprise sealing rings and the piston is provided with sliding guide rings near the sealing rings.
8. A linear motor according to any of the preceding claims wherein the driven assembly is provided with a sleeve made of a magentisable material, which encircles the hollow cylindrical assembly of the magnet arrangement.
(Emphasis added.)
In the first Office Action, the patent examiner rejected all twelve original claims, and cited three patents as references “believed pertinent.” Claims 1-12 were rejected under 35 U.S.C. § 112, ¶ 1, because the “exact method of operation is unclear. Is [the] device a true motor or magnetic clutch?” In addition, claims 4-12 were rejected under 35 U.S.C. § 112, ¶ 2, because they were “improperly multiply dependent.”
In response, Stoll amended some claims, including claim 1, and canceled others, including claims 4 and 8. Claim 1 was amended to recite “plural guide ring means ... and first sealing rings located axially outside said guide rings” on the piston and to recite “a cylindrical sleeve made of a magnetizable material.” In the remarks accompanying the amendments, Stoll stated that “[e]ach of the claims now present in this application has been reviewed for compliance with the provisions of Title 35 U.S.C. § 112. Accordingly, further consideration of these claims, particularly with respect to the provisions of Title 35 U.S.C. § 112, is respectfully solicited.”
When Stoll submitted this amendment, he also made two German patents of record in the application, No. 27,37,924 and No. 19,82,379. Stoll had received these patents in the first office action in the corresponding German application. Stoll argued in the remarks accompanying the amendment that the “claims now present in th[e] application” are distinguishable over these references. Stoll stated that “i[t] is clear that neither of these two references discloses the use of structure preventing the interference by impurities located inside the tube and on the outside of the tube while the arrangement is moved along the tube.”
After considering this response, the examiner allowed the amended claims, requesting that all references to “linear motors” be deleted from the specification, because this phrase “connotes a different device having different operational characteristics.”
2. The relevant portion of the Carroll patent’s prosecution history is its reexamination. Before reexamination, claim 1 of the Carroll patent read as follows:
1. A device for moving articles comprising
a cylinder of non-ferrous material, a piston including a permanent magnet having a pole-piece on each axial side thereof,
a body disposed outside and adjacent to said cylinder, said body including a permanent magnet which substantially surrounds the cylinder, there being a pole piece on each axial side of the permanent magnet included in said body, and
means for controlling the admission of pressure fluid into the cylinder and exhaust of fluid from the cylinder for moving the piston in the cylinder, the attractive forces between the permanent magnets being such that movement of the piston causes corresponding movement of the body below a predetermined load on the body and such that above said predetermined load movement of the piston does not cause corresponding movement of the body.
Original Carroll patent, col. 4, 11. 4-19 (paragraphing added). This claim did not recite the sealing rings disclosed in the specification.
The German patent described rodless cylinders having several of the features of the device described in the Carroll patent, including a pair of sealing rings. The Patent Office granted Carroll’s request for reexamination, finding that the German patent “discloses an article transport device which is movable in response to a hydraulically operated magnetic piston, which is a feature that was not found by the Examiner during the prosecution” of the Carroll patent.
During reexamination, Carroll canceled claim 1 and added claim 9, which explicitly recites “a pair of resilient sealing rings situated near opposite axial ends of the central mounting member and engaging the cylinder to effect a fluid-tight seal therewith.” In the remarks accompanying the amendment, Carroll argued that the now-amended claims
The examiner allowed the amended claims, stating that “the prior art does not teach or render obvious the claimed combination which includes the plurality of magnets, end members, and cushion members in the claimed relationship.”
C. The District Court Proceedings
Festo sued SMC in the district court for infringement of both the Stoll and Carroll patents. Festo’s claims of infringement and damages and SMC’s counterclaims of invalidity were referred to a special master for consideration. The special master determined that both the Stoll and Carroll patents were not invalid. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., No. 88-1814-MA, slip op. at 42, 19 (D. Mass. Spec. Master Apr. 27, 1993) (Report). The special master also determined that the SMC devices at issue in this appeal did not infringe the Stoll patent, id. at 42, 47, but did infringe claims 5, 6, and 9 of the Carroll patent under the doctrine of equivalents, id. at 25.
In due course, the district court entertained summary judgment motions from both parties on the issues of infringement and validity. Festo I (Order), slip op. at 1-3. The district court denied all summary judgment motions except Festo’s motion for summary judgment of infringement of the Carroll patent. Id. at 2. In ruling on the motions, the district court determined that SMC could not literally infringe the Stoll patent because SMC’s devices did not have magnetizable sleeves. Id. at 6. The court also determined that there was a genuine issue of material fact regarding infringement under the doctrine of equivalents. Id. at 11. The court addressed SMC’s assertion that prosecution history estoppel barred the application of the doctrine of equivalents to the Stoll patent because the magnetizable sleeve element was not initially recited in claim 1, but was added to the claim after the first
Turning to the Carroll patent, the court noted that the only argument of nonin-fringement that SMC made was that the single sealing ring in its pisttín was not equivalent to the pair of sealing rings recited in claim 9 of the Carroll patent. Id. at 14. However, Festo had presented expert testimony that SMC’s single seal was equivalent to the two seals recited in the claims. Id. at 14. To rebut this testimony, SMC cited a statement Stoll had made during prosecution of the Stoll patent to the effect that two sealing rings are necessary to prevent dirt on the piston’s magnet. Id. at 14-15. The district court found that the statement made during prosecution of the Stoll patent did not bear on the “meaning and function of the sealing rings as described” in the Carroll patent. Id. at 14-15. The court therefore granted Festo’s motion for summary judgment of infringement of claims 5, 6, and 9 of the Carroll patent under the doctrine of equivalents. Id. at 16.
The remaining issues, infringement under the doctrine of equivalents of the Stoll patent, and validity of the Carroll and Stoll patents, were tried to a jury. Festo I (Judgment), slip op. at 1. The jury rendered a verdict on July 14, 1994, concluding that both patents were not invalid and finding that claim 1 of the Stoll patent was infringed under the doctrine of equivalents. Id. at 2-3. The special verdict form indicates that the jury found that Festo had proven by a preponderance of the evidence that SMC’s non-magnetizable sleeve and single sealing ring performed substantially the same function in substantially the same way to obtain substantially the same result as the claimed magnetizable sleeve and pair of sealing rings. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., No. 88-1814-PBS (D.Mass. July 14, 1994) (Special Verdict Form) (“Festo I (Special Verdict Form) ”).
D. SMC’s Appeal
SMC appeals the judgment of infringement of the Stoll patent, which was entered pursuant to the jury’s verdict that the patent was infringed under the doctrine of equivalents. Infringement under the doctrine of equivalents is a question of fact. Warner-Jenkinson,
SMC also appeals the district court’s judgment of infringement of the Carroll patent, which was entered in accordance with the court’s grant of Festo’s motion for summary judgment that claims 5, 6 and 9 were infringed under the doctrine of equivalents. Summary judgment “shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed. R.Civ.P. 56(c); Vivid Techs., Inc. v. American Science & Eng’g, Inc.,
1. When infringement is alleged to occur under the doctrine of equivalents, two primary legal limitations on the doctrine “are to be determined by the court, either on a dispositive pretrial motion or on a motion for judgment as a matter of law at the close of evidence and after the jury verdict.” Warner-Jenkinson,
The first legal limitation a court should consider is prosecution history es-toppel, because prosecution history estop-pel may completély bar the application of the doctrine of equivalents to a given claim element. The first step in a prosecution history estoppel analysis is to determine which claim elements are alleged to be met by equivalents. Then, the court must determine whether the elements at issue were amended during prosecution of the patent. If they • were not, amendment-based estoppel will not bar the application of the doctrine of equivalents. However, the court still may need to consider whether statements made during prosecution give rise to argument-based estoppel. See e.g., Pharmacia & Upjohn,
If the claim elements at issue were amended, the court first must determine whether the amendment narrowed the literal scope of the claim. If so, prosecution history estoppel will apply unless the patent holder establishes that the amendment was made for a purpose unrelated to patentability. Warner-Jenkinson,
In Warner-Jenkinson, the Supreme Court explained the purpose of placing on the patent holder the burden of establishing the reason for an amendment: allocating the burden in this manner “gives proper deference to the role of claims in defining an invention and providing public notice.” Id. at 33,
2. The jury found that claim 1 of the Stoll patent was infringed under the doctrine of equivalents. Festo I (Special Verdict Form). The two elements found to be infringed by equivalents were the “cylindrical sleeve made of a magnetizable material,” and the “first sealing rings located axially outside ... [the] guide rings.” Id. Both of these elements were added during prosecution of the patent. Following the methodology outlined above, we conclude that prosecution history estoppel bars the application of the doctrine of equivalents to these claim elements. In view of this determination, we do not reach the “all elements” rule.
We begin our analysis with the magnetizable sleeve element. SMC argues that this claim element is not entitled to any range of equivalents. SMC contends that Festo has not demonstrated that the amendment was made for a reason unrelated to patentability and that, therefore, the presumption of Wamer-Jenkinson applies and the doctrine of equivalents is barred. SMC asserts that the voluntary nature of the amendment is irrelevant to the prosecution history estop-pel inquiry because Wamer-Jenkinson places the burden on a patent holder to establish the reason for an amendment, regardless of whether the amendment was required or voluntary. SMC argues that Festo disclaimed non-magnetizable sleeves when it amended the claim to recite a magnetizable sleeve. SMC also argues that the public, including competitors like itself, would reasonably understand from the prosecution history of the patent that Festo had surrendered any device with a non-magnetizable sleeve.
Festo responds that the Wamer-Jen-kinson presumption does not apply to voluntary amendments. Festo emphasizes that the magnetizable sleeve amendment was not made in response to any prior art rejection and was not needed to overcome the 35 U.S.C. § 112 rejections of the original claims. Accordingly, Festo argues, prosecution history does not bar the application of the doctrine of equivalents to this claim element.
To determine whether a claim amendment gives rise to prosecution history es-toppel, we first must determine whether the amendment narrowed the literal scope of the claim. Here we are presented with the situation where the added claim element was introduced through a new claim, instead of through an amendment to an original claim. Nevertheless, the addition of the magnetizable sleeve claim element
We agree with SMC that the reason for the amendment adding the magnetizable sleeve element is not evident from the prosecution history. Original claim 1 did not recite a magnetizable sleeve, although this feature of the invention was recited in original dependent claim 8. In response to the first Office Action, Festo replaced original claim 1 with a claim reciting a magnetizable sleeve and canceled claim 8. Although the amendment was submitted in the response to the first Office Action, the amendment itself was not responsive to any of the rejections set forth in the Office Action. As discussed above, the Office Action rejected all of the claims under 35 U.S.C. § 112, ¶ 1 because it was not clear to the examiner whether the claimed device was a true motor or a magnetic clutch; in addition, the Office Action rejected claims 4-12 under 35 U.S.C. § 112, ¶ 2 for being improperly multiply dependent. The amendment adding the magnetizable sleeve element did not address either of these rejections. Moreover, there is no statement in the prosecution history that explains why this element was included in the independent claim.
In its Supplemental Brief On Remand from the Supreme Court, Festo argued that the amendment was made to clarify the claim. Specifically, Festo asserted that the “ ‘hollow cylindrical assembly’ ” recited in original claim 1 was “rewritten more clearly as ‘a cylindrical sleeve made of a magnetizable material.’” Appellee’s Supplemental Brief On Remand from the United States Supreme Court, at 7. This assertion is inadequate to escape the Warner-Jenkinson presumption, however, because nothing in the prosecution history of the Stoll patent indicates that the magnetizable sleeve element was merely added for purposes of clarification unrelated to patentability concerns.
On remand, Festo also argued that the voluntary nature of the amendment that added the magnetizable sleeve claim element prevents the amendment from giving rise to prosecution history estoppel. Our answer to En Banc Question 2, which holds that voluntary amendments are treated the same as other amendments, compels us to reject this argument.
Festo has thus failed to meet its burden under Warner-Jenkinson of establishing a reason unrelated to patentability for the amendment that added the magnetizable sleeve element. The amendment therefore gave rise to prosecution history estoppel. See Warner-Jenkinson,
We turn now to the sealing ring element. SMC argues that the sealing ring claim element was added to distinguish the prior art and, therefore, is not entitled to any range of equivalents. SMC asserts that arguments accompanying the amendment make clear that the amendment was made to distinguish the prior art. SMC contends that a competitor such as itself reasonably would conclude from the prosecution history that Festo surrendered the difference between the originally claimed sealing means and the sealing rings recited in the amended claims. By the same token, SMC argues, Festo disclaimed the difference between the original and amended claims.
Festo’s principal argument is that there is no substantial difference between original claim 1 and the amended claim with respect to the sealing ring element. Spe
The sealing ring element was added to claim 1 when the original independent claim 1 was replaced with the independent claim that issued as claim 1. This amendment narrowed the literal scope of the claim because it substituted an independent claim that recited a sealing ring element for an independent claim that did not recite such an element. Even if the amendment that added the sealing ring element merely replaced the means-plus-function language with a recitation of the corresponding structure, the amendment had the effect of narrowing the scope of the claim. A claim element recited in means-plus-function language literally encompasses the corresponding structure and its equivalents. Laitram Corp. v. Rexnord Inc.,
We conclude that Festo has not established that the amendment that added the sealing ring element was made for a reason unrelated to patentability. Festo argues that the amendment was made to respond to the 35 U.S.C. § 112 rejection. Because a claim will not issue unless it satisfies the requirements of section 112, an amendment made to satisfy the statute is an amendment made for a reason related to patentability. See supra Answer to En Banc Question 1. The amendment also appears to have been made to distinguish the prior art. Submitted with the amendment was a statement to the effect that German Patent No. 27,37,924 and German Patent No. 19,82,379 “are obviously clearly distinguishable over the subject matter of the claims now present in th[e] application,” i.e., the amended claims. Also submitted with the amendment was an assertion that “[i]t is clear that neither of these two references discloses the use of structure preventing the interference by impurities located inside the tube and' on the outside of the tube while the arrangement is moved along the tube.” In view of these statements, we conclude that the amendment adding the sealing ring element was made to distinguish the German patents and, therefore, was made for a reason related to patentability. See Warner-Jenkinson,
The jury’s finding of infringement was based on an application of the doctrine of equivalents to the magnetizable sleeve and sealing ring claim elements; accordingly, we must reverse the judgment that claim 1 of the Stoll patent was infringed under the doctrine of equivalents.
3. The district court granted Festo’s motion for summary judgment of infringement under the doctrine of equivalents with respect to independent claim 9 and dependent claims 5 and 6 of the Carroll patent. Festo I (Order), slip op. at 15. The element in all three claims found to be
SMC argues that Festo’s purpose for this amendment is not clear.
Festo responds by arguing that the amendment adding the pair of sealing rings element was not required, and thus was voluntary. Festo states that because the amendment was voluntary, it cannot give rise to prosecution history estoppel under Warner-Jenkinson. Festo also states that the amendment could not have been required to distinguish the German patent that prompted the reexamination, because the German patent discloses a piston with sealing rings. Festo argues that because the amendment was not made for a purpose related to patentability, the amendment did not create prosecution history estoppel.
To determine whether this claim amendment gave rise to prosecution history es-toppel, we first must determine whether the amendment narrowed the literal scope of the claim. As with the elements of the Stoll patent discussed above, the claim element at issue in the Carroll patent was introduced through a new claim, instead of through the amendment of a pending claim. ’ Specifically, during reexamination, independent claim 1, which did not recite a pair of sealing rings, was replaced by independent claim 9, which does recite a pair of sealing rings. This amendment narrowed the literal scope of the claims of the Carroll patent.
As discussed above, under Wamer-Jen-kinson, Festo bears the burden of establishing that the amendment was made for a reason unrelated to patentability. Warner-Jenkinson,
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. In the remarks accompanying the amendment that introduced claim 9, which recites the pair of sealing rings, Carroll stated that the amendment defined the “features of the patentee’s invention that distinguish over the art of record, including” the German patent cited in the request for reexamination. Thus, although the German patent disclosed a piston with sealing rings, Carroll did argue that the combination of features recited in the claims, which includes the pair of sealing rings, distinguished the claims over the German patent. Moreover, when the examiner allowed the reexamined claims, he stated that “the prior art does not teach or render obvious the claimed combination which includes the plurality of magnets, end members, and cushion members in the claimed relationship.” (Emphasis added.) Although the examiner did not specifically reference the pair of sealing rings in his statement of reasons for allowance, his statement emphasizes that it is the claimed combination of elements that was found to be patentable. In view of this prosecution history, Festo cannot establish that the amendment that added the pair of sealing rings element was made for a reason unrelated to patentability. Indeed, the prosecution history indicates that the amendment was made for a reason related to patentability. In accordance with our answer to En Banc Question 3, prosecution history estoppel bars application of the doctrine of equivalents to the pair of sealing rings element. Accordingly, we must reverse the judgment that claims 5, 6, and 9 of the Carroll patent were infringed under the doctrine of equivalents.
CONCLUSION
The claim elements of the Stoll and Carroll patents that were found to be infringed by equivalents were added to the pertinent claims during prosecution of the Stoll patent and during reexamination of the Carroll patent through amendments that narrowed the scope of the claims. As explained above, Festo has not established explanations for these amendments unrelated to patentability. The amendments therefore gave rise to prosecution history estoppel. Under these circumstances, the amended claim elements are entitled to no range of equivalents. Thus, they cannot be infringed by equivalents. The court’s judgment of infringement under the doctrine of equivalents of both the Stoll and Carroll patent is therefore
REVERSED.
COSTS
Each party shall bear its own costs.
Notes
. In our prior cases, we have used both the term “element” and the term “limitation” to refer to words in a claim. See, e.g., Lemelson v. United States,
. A similar problem presents itself under the facts of Wamer-Jenkinson, where the claim was amended to recite an upper pH limit of 9.0 to overcome prior art disclosing a pH above 9.0. Warner-Jenkinson,
. On the first appeal to this court, the panel affirmed the judgment of infringement under the doctrine of equivalents of both the Stoll and Carroll patents. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 12 F.3d 857,
. A sealing ring has a lip on only one side of the ring that seals against fluid flow on that side. By contrast, a two-way sealing ring has a lip on both sides of the ring that allows each side to seal against fluid flow.
. Carroll also amended claims 3 and 5 to depend from claim 9.
. In her dissenting opinion, Judge Newman expresses the concern that we are penalizing the patent holder by limiting the evidence upon which he can rely to establish that a narrowing amendment was made for a purpose unrelated to patentability to what is con
. This element is expressly recited in claim 9, and is included in claims 5 and 6, which depend from claim 9 and which incorporate all of the limitations of that claim, see 35 U.S.C. § 112, ¶ 4 (1994); 37 C.F.R. § 1.75(c) (1999).
. SMC did not argue prosecution history es-toppel with respect to the Carroll patent before the district court. But upon a GVR from the Supreme Court, a court of appeals may “consider relevant decisions and arguments that were not previously before it” to promote fairness. Stutson v. United States,
.Because claims 5 and 6 are dependent claims, any amendment that narrows the scope of the claim from which they depend also narrows claims 5 and 6. See supra note 7.
Concurrence Opinion
concurring.
I concur in and join the opinion and judgment of the court. It is a second-best solution to an unsatisfactory situation. Under our preexisting law, a count for infringement under the doctrine of equivalents became a routine part of a patent infringement suit. The game was to convince the trier of fact, typically a jury, that even if an accused product
Worse yet, whether the trier of fact was judge or jury, the decision about infringement under the doctrine of equivalents does not end with the trial. Given the indeterminate nature of the test, it is not difficult for the losing party to make a plausible argument on appeal that there was “clear error” or that “no reasonable jury could have thought such a thing,” as the case may be. Given the indeterminate nature of the test, this court has shown little reluctance to review these decisions. See, e.g., Hill-Rom,
In today’s rulings the court attempts to limit some of the indeterminacy of the doctrine with a set of bright-line rules, trading off areas of uncertainty for a degree of rigidity. Unfortunately, this attempt at injecting certainty into the doctrine contains the potential for unintended consequences, consequences that may do nothing but exacerbate the problem.
What will be the response of the patent bar to the new rules? Past practice has been to claim broadly in the initial application for a patent, and then negotiate with the United States Patent and Trademark Office through one or more rejections until arriving at a mutually acceptable set of claims. Under the new rules of engagement, that process will create full prosecution history estoppel regarding every limitation that is amended for patentability purposes, a term now broadly defined.
Patent counsels may decide that past practice gives up too much under the new rules, and instead may start claiming narrowly with the hope of avoiding rejections and consequent amendments. Literal infringement will become harder to prove because claims will be drafted more narrowly and with greater specificity. That itself may be to the good, since much of current patent litigation involves claim construction issues resulting from the vague, sometimes almost incomprehensible, manner in which claims have been drafted.
An unintended consequence, however, may be that patent litigation will lean ever more heavily on the doctrine of equivalents, especially in those cases in which the patent application, containing narrowly drawn claims, was approved without any amendment in the area that affects the accused product. The patentee may have little choice but to insist on enforcement under the doctrine of equivalents, if the patent is to be enforced at all. Since
In time then, the supposed benefits of the doctrinal improvements contained in today’s decision may prove illusory.
That is why I consider it a second-best solution. A better solution would be to declare the doctrine of equivalents — a judge-made rule in the first place — to have its roots firmly in equity, and to acknowledge that when and in what circumstances it applies is a question of equitable law, a question for which judges bear responsibility. We have admitted to these roots in a number of cases. See Texas Instruments Inc. v. USITC,
Were this court to openly acknowledge that the doctrine of equivalents can only be legitimated by its equitable roots and should be treated as an equitable doctrine, important consequences would flow. Trial courts, sitting as courts of equity, would be responsible for deciding whether the doctrine of equivalents should be applied, not unlike the practice regarding the doctrine of inequitable conduct. On appeal to this court, we would review a trial court’s determination under the deferential standard of abuse of discretion.
The test the trial courts would apply would be crafted to blend both objective and subjective factors. The differences between the claimed invention and the accused product would necessarily remain of relevance; and in addition, traditional equitable considerations would focus on matters such as the conduct of the accused product’s sponsors, specifically, the considerations pronounced in the Supreme Court’s seminal opinion in Graver Tank & Manufacturing Co. v. Linde Air Products Co.,
[Cjourts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for — indeed encourage — the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law....
... The essence of the doctrine [of equivalents] is that one may not practice a fraud on a patent. Originating almost a century ago in the case of Winans v. Denmead,15 How. 330 ,14 L.Ed. 717 , it has been consistently applied by this Court and the lower federal courts, and continues today ready and available for utilization when the proper circumstances for its application arise.
It is true that “fraud” and “unscrupulous” conduct are not terms of precision,
By contrast, the notion of “insubstantial differences” between a particular claim and a particular product, viewed as the governing principle, can never be anything other than an ad hoc judgment, dependent on the eye of the beholder in the individual case. Though we talk about considering factors such as the role of copying, interchangeability of elements, and so on, the reality is that, as our cases since Hilton Davis demonstrate, the decision on equivalents remains essentially a subjective call, with repetition of verbal formulae but without transferability from case to case of practical guidance. This to me is the antithesis of the rule of law.
I have previously written at length on this problem and on my suggested approach to its management, see Hilton Davis,
It would be easy now to blame the Supreme Court for the mess we are in, since the Court, in response to our Hilton Davis decision, has opined on the matter. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
The Supreme Court in its Wamer-Jen-kinson opinion did opine that “intent plays no role in the application of the doctrine of equivalents.” Warner-Jenkinson, 520 at 36,
We are the court primarily responsible for the state of patent law, and the Supreme Court has pronounced it our duty to “best implement procedural improvements to promote certainty, consistency, and re-viewability to this area of the law.” Warner-Jenkinson,
Those who are wedded to the existing regimen can no doubt find all sorts of objections to this proposed approach. I cannot say that the approach I advocate is a panacea for all that ails the equivalents practice. I can say that what we have does not work very well, and, as we did in Markman, it is time to try something else, something that has substantial jurisprudential legitimacy and holds out some promise for improvement. Until such time as this court is of a mind to seek and design a long-term solution to the equivalents problem, however, I have little choice but to join in even this limited effort to cabin what is otherwise, and I fear remains, a doctrine short on predictable results, and short on the achievement of equity to which it owes its existence.
concurring.
I fully join the majority opinion. However, I write separately to respond to comments and concerns of supporters of the flexible bar rule.
It has been stated by a dissenter that most of the members of the majority have authored opinions supporting a flexible bar. I am one of them. My obligation is to follow precedent, and it is correct that our court has had precedent for a flexible bar, albeit not necessarily consistent precedent. I therefore followed what seemed to be the strongest line of precedent at that time. See, e.g., Sextant,
Our holding does not violate the Supreme Court’s guidance in Warner-Jenkinson Co. v. Hilton Davis Chern. Co.,
The Supreme Court has not addressed what scope of equivalents remains when a claim has been clearly amended for patent-ability reasons. The closest the Court came to doing so was in Wamer-Jenkin-son, where it created the presumption that an amendment was made for a reason relating to patentability when it is unclear why that amendment was made. The Court then stated: “In those circumstances, prosecution history estoppel would bar the application of the doctrine of equivalents as to that element.” Warner-Jenkinson,
It has been said that there is no hard evidence showing that the so-called “flexible” bar impairs predictability. While it is true that empirical data may not be available, powerful evidence may be garnered from the experience of this court, which monthly reviews appeals in which infringement is asserted under the doctrine of equivalents even though the accused product is clearly not within the literal scope of the asserted claims. Many of these appeals involve prosecution histories in which amendments for patentability reasons have been made. Yet, equivalence is argued in the hope that one panel might find equivalence where another would not. That surely is persuasive evidence that the current flexible bar is not working. Our court was created with the opportunity and mandate to observe such problems in the law and to act upon a possible solution. See Warner-Jenkinson,
It has been suggested that there are settled expectations in the bar and innovation community regarding the present rule. The only settled expectation currently existing is the expectation that clever attorneys can argue infringement outside the scope of the claims all the way through this court of appeals. Such a settled expectation should become unsettled. Surely, when prosecuting a patent, patent practitioners have no settled expectations of being able to assert the doctrine of equivalents. Any patent attorney who fails to claim all that his inventor has invented, and that is patentable, is ill-advised to settle for a narrower claim than he considers justified on the assumption
Additionally, the PTO does not make “basic assumptions” relating to a range of equivalents to be allowed. See Warner-Jenkinson,
It is said that stare decisis compels us to stay the course with the old rule. I thought the same regarding Zurko. See Dickinson v. Zurko,
Finally, one of the dissenters fears that today’s ruling provides would-be copiers with a free pass to appropriate the essence of an invention and yet escape infringement. That is theoretically true. In the future, a competitor may more closely approach the limits of the claims in a patent in which a narrowing amendment has been made without fear of liability. Occasional injustices may occur. However, I believe that such occasional injustices will be greatly outnumbered by competitors who will be able to introduce innovative products outside the scope of claims without fear of unjustified, protracted, and expensive litigation. In today’s world, the specter of unpredictable equivalence claims haunts too many business decisions, while the overwhelming majority of equivalence claims ultimately fail. It is more than justified to lessen this fear and hold patent applicants to the consequences of their public prosecution decisions. The rule we announce today should encourage innovation, lessen uncertainty, and diminish the volume of unnecessary litigation, while providing patentees with protection commensurate with the disclosed and allowed scope of their inventions.
As for the biotechnology example hypothesized by one of the dissenters, I believe the concern is largely theoretical. The first inventors in a field are only entitled to claim what they can describe and enable, and I am confident that competent patent attorneys can readily craft their claims to cover that subject matter so
The fact is that, even under our past rule of flexible bar, no court has rendered a decision holding infringement only under the doctrine of equivalents by an accused gene or protein. To the extent that a competitor has been deterred from developing a new compound for fear that it will be held to be an infringer under an equivalence theory, I believe that our new rule will provide a clear net gain for innovation and the public. They will benefit from the greater certainty that new compounds not within the scope of granted claims can be developed without fear of protracted litigation.
For these reasons, and for others aptly expressed by the majority opinion, I join the majority opinion.
. I use the broad term “product” to include any process, device, etc.
Concurrence Opinion
coneurring-in-part, dissenting-in-part, with whom Circuit Judge RADER joins.
I join the majority opinion with respect to the disposition of Questions 1, 2, 4, and 5. However, I must dissent from the majority’s response to Question 3 because I believe it contradicts Supreme Court precedent and policy.
In Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co.,
I. The Majority’s Rule Upsets the Balance Struck by the Supreme Court Through Wamer-Jenkinson Between the Competing Needs for Meaningful Patent Protection and Adequate Public Notice.
Before discussing particular Supreme Court cases, I believe it is important to summarize the doctrinal framework that the Supreme Court has consistently employed for over a century to balance a patentee’s need for meaningful protection against copying and the public’s need for notice as to the effective scope of a paten-tee’s claims. The Supreme Court has consistently stated, and has done so as recently as Wamer-Jenkinson, that application of the all-elements rule, as supplemented by prosecution history estoppel, sufficiently balances the competing needs of meaningful patent protection and adequate public notice. Today’s majority upsets this balance, holding that the public notice function of patents can only be fulfilled by limiting the effective scope of patents with amended limitations to the literal wording of such limitations.
The limitations of a patent’s claims provide an initial measure of the effective scope of the patent, both literally and under the doctrine of equivalents. The all-elements rule provides that every limitation of a claim is material, and that an accused device lacking a corresponding el
In Wamer-Jenkinson, the Supreme Court reiterated that under the all-elements rule and prosecution history estop-pel, the public receives adequate notice as to the enforceable scope of patent claims. See Warner-Jenkinson,
When a patent applicant narrows his claims during prosecution by adding a limitation to traverse a prior art rejection, the substance of the communications between the applicant and the examiner may further notify the public as to additional limits on the enforceable scope of the patent claims. Depending on factors such as the breadth of the examiner’s rejection, the manner in which the patent applicant amends his claims to overcome the objection, and the nature of the technology at issue, a reasonable competitor might construe the applicant’s remarks and amendments to evince a surrender of claim scope greater than the all-elements rule would require. See Hughes Aircraft Co. v. United States,
In contrast to the doctrine of prosecution history estoppel we have applied until today, the majority’s new complete bar rule does not supplement the all-elements rule as a way to further clarify the scope of equivalents available to the patentee. Rather than attempt to “refine” our case law as to how the added claim limitations should be enforced in light of the substance of the communications between examiner and applicant, the majority’s new rule simply forecloses all application of the doctrine of equivalents for any amended claim limitation. This approach by-passes the all-elements rule altogether. See Maj. Op. at 590 (“Following the methodology outlined above, we conclude that prosecution history estoppel bars the application of the doctrine of equivalents to this element of the claims of the Carroll patent. In view of this determination, we do not reach the ‘all elements’ rule.”);
The majority’s concept of prosecution history estoppel is hardly an “estoppel” at all. The majority’s approach gives no consideration to whether a reasonable competitor would rely on the nature of the rejections and of the amendments and statements between the applicant and the examiner as evidence of a surrender of subject matter. According to the majoiity, once there has been a limiting amendment, no consideration may be given to the breadth of the rejection, the closeness of the prior art, the manner of the applicant’s remarks and amendments, or the nature of the technology. All equivalents of that limitation are foreclosed by the mere fact of amendment. The majority’s rule might more aptly be called “bar by amendment” rather than “estoppel,” which has always been measured by. what a reasonable competitor would understand the applicant to have surrendered in order to procure his patent. I believe that looking solely to the fact of amendment, rather than the substance of communications between the applicant and the examiner, is contrary to the principles that the Supreme Court (and our court) has always applied in determining the scope of estop-pel.
Under the majority’s rule, in contrast to the Supreme Court’s application of the all-elements rule and prosecution history es-toppel, a patentee retains no range of equivalents for a claim limitation thаt has been amended for patentability reasons. This approach upsets the Supreme Court’s balance between the competing needs of sufficient public notice and meaningful patent protection. At the very minimum, I believe the majority’s rule is unfairly harmful, because it' deprives patentees of any recourse to the doctrine of equivalents for any added or narrowed limitation, no matter how minor the amendment. More importantly, however, I believe that precluding a patentee’s right to seek protection under the doctrine of equivalents for amended limitations will, in many cases, “convert the protection of the patent grant into a hollow and useless thing.” Graver Tank & Mfg. Co. v. Linde Air Products Co.,
Would-be copyists, of course, will exploit the majority’s bar. Unwittingly, the majority has severely limited the protection previously available to patentees. Indeed, it may nullify the doctrine of equivalents. Under the majority’s approach, anyone who wants to steal a patentee’s technology need only review the prosecution history to identify patentability-related amendments,
II. Supreme Court Precedent
The majority asserts that the Supreme Court has never “addressed or answered” the question as to whether a scope of equivalents remains after a claim limitation has been added or amended for a reason relating to patentability. The majority quotes language from six Supreme Court cases dealing with prosecution history estoppel,
The Supreme Court has decided many more than these six cases relevant to prosecution history estoppel. Hurlbut v. Schillinger,
Many of the cases I cite were decided in the 1800s. Before discussing them, I would like to make three general points about this older precedent. First, the Supreme Court was very active in the patent field in the late 1800s. From 1880 to 1900, the Court decided no fewer than ninety patent infringement cases, with many of these cases being highly relevant to the present appeal. From my review of these cases, and the far fewer number of cases the Court decided in the 1900s, it appears
Second, in addition to being old, many of the cases I cite involve reissue patents.
Finally, although these older cases do not specifically recite either of the synonymous phrases “prosecution history estop-pel” or “file wrapper estoppel,” the principles articulated in these cases form the core of the doctrine of prosecution history estoppel that we have applied until today. The phrase “file wrapper estoppel” was not employed by the Supreme Court until its decision in Exhibit Supply Co. v. Ace Patents Corp.,
A. Goodyear Dental Vulcanite Co. v. Davis
One of the first cases in which the Supreme Court discussed the principles un
If, when the patent was granted, there were known substances, other than rubber or caoutchouc, gutta-percha, or gums, that could be vulcanized by the Goodyear process, and converted from a soft into a hard, elastic material, any use of that material for a dental plate might have been an equivalent for the Cummings material, and an infringement of his patent.
Id. at 227 (emphasis added). The Court continued, stating that although Cummings had limited his claims to a vulcanized product, and was thus precluded from asserting the equivalence of a softer, celluloid, unvulcanized product, Cummings nonetheless retained protection against equivalents. The Court stated: “It may be conceded the patentee is protected against equivalents for any part of his invention.” Id. at 230 (emphasis added). Thus, the Court recognized that although a patentee, by amending his claims, may be precluded from asserting a large range of equivalents, he may still be able to assert his patent against devices that fall within a narrower range of equivalents. This statement is only consistent with a flexible approach to prosecution history estoppel, and would be meaningless if the Court had intended a complete bar to apply.
Moreover, the Court stated that Cummings was protected against equivalents “whether he had claimed them or not.” Id. By this statement, the Court clarified that it was not necessary for patent applicants like Cummings to recite the words “or its equivalent” or “substantially as described” in the patent claims, but rather that patentees’ protection against equivalents arises independently of the particular wording of the claims.
The majority argues that the Goodyear Court “did not discuss prosecution history estoppel.” I agree that the particular phrase “prosecution history estoppel” nowhere appears in Goodyear. However, the principles articulated in Goodyear are the foundation of the modern doctrine of prosecution history estoppel. Indeed, the Supreme Court’s first opinion to discuss the doctrine of “file wrapper estoppel,” Exhibit Supply Co. v. Ace Patents Corp.,
B. Hurlbut v. Schillinger
Hurlbut v. Schillinger,
After obtaining his reissue patent, Schil-linger filed a disclaimer with the Patent Office, stating that his reissue claim was too broad, and covered kinds of pavement “of which your petitioner was not the first inventor.” Id. at 463,
Schillinger brought suit against several competitors, and two of the disputes reached the Supreme Court. In the first, California Paving,
In Schillinger’s second suit to reach the Supreme Court, the accused product was an arrangement of pavement whose individual blocks, while still plastic, were separated from one another by means of a trowel. See Hurlbut,
The effect of the disclaimer was to leave the patent to be one for a pavement wherein the blocks are formed by interposing some separating material between them. To limit the patent to the permanent interposition of a material equivalent to tar-paper, would limit the actual invention. The use of a bottom layer of coarse cement, and placing it on a course of fine cement, and dividing the upper course into blocks by a trowel run partially or wholly through the upper course while it is plastic, in a line coincident with the joints between the sections in the lower layer, accomplishes the substantial results of Schillinger’s invention, in substantially the way devised by him, and is within the patent as it stands after the disclaimer.
The disclaimer took out of the first claim of the reissue only so much thereof as claimed a concrete pavement made of the plastic material laid in detached blocks, without interposing anything in the joints in the process of formation, leaving that claim to be one for such a pavement laid in detached blocks, when free joints are made between the blocks,' by interposing permanently or temporarily between them, in the process of their formation, tar-paper or its equivalent.
Id. (emphasis added). The Court concluded that the accused pavement constituted an equivalent of the claimed invention “as it stands after the disclaimer,” and thus that Schillinger was entitled to a judgment of infringement. The Court stated:
We are, therefore, of opinion that the first claim of the reissue, as it stands after the disclaimer, is infringed, because the defendant’s pavement is a concrete pavement, laid in detached blocks or sections, substantially in the manner shown and described in the specification of the reissue, the detached blocks in the upper course being the equivalent of the detached blocks or sections of the Schil-linger pavement; and that the second claim of the reissue is infringed, because the temporary use of the trowel or cutting instrument, to divide the upper course into blocks, is the equivalent of the tar-paper of the Schillinger patent. ...
Id. at 469,
Today’s majority, noting that Schillinger recited the phrases “substantially” and “or its equivalents” in the patent claims, appears to argue that the defendant in Hurl-but had literally infringed the claims, and that the Court “did not discuss the issue of the scope of equivalents that remained under the doctrine of equivalents after the disclaimer.” I do not agree, however, that the mere presence of the words “equivalent” or “substantially” in Schillinger’s claim language somehow reduces the infringement analysis to one of literal infringement. As noted above, the Goodyear Court made clear that a patentee is protected against equivalents, “whether he had claimed them or not.” Goodyear,
The Court’s holding in Hurlbut is simply an application of the principles it established in Goodyear. In both cases, the Court recognized that the patent applicants’ disclaimers and amendments had precluded the patentees from asserting the equivalence of certain accused devices. In both cases, however, the Court stated that, despite the disclaimer or amendment, the patentee retained a limited scope of equivalents. Although the Court articulated its reasoning in Goodyear without holding in favor of the patentee, these same principles are the foundation of the Court’s clear holding for the patentee in Hurlbut. As I read these cases, Goodyear and Hurlbut entitle a patentee to a range of equivalents despite the fact of a limiting amendment.
C. The Majority’s Holding Contradicts Six Other Supreme Court Cases That Declare a Flexible Approach to Prosecution History Estoppel.
Goodyear and Hurlbut are the two cases I have identified where the Court has most
1. Fay v. Cordesman
Fay v. Cordesman,
2. Shepard v. Carrigan
In Shepard v. Carrigan,
3.Sutter v. Robinson
In Sutter v. Robinson,
4. Phoenix Caster Co. v. Spiegel
Phoenix Caster Co. v. Spiegel,
5. Royer v. Coupe
In Royer v. Coupe,
6. Hubbell v. United States
In Hubbell v. United States,
Although the majority suggests that the Hubbell Court did not “diseuss[ ] prosecution history estoppel,” the Supreme Court has indeed interpreted Hubbell as an application of prosecution history estoppel. See Warner-Jenkinson,
D. Wamer-Jenkinson Reaffirms Earlier Supreme Court Précedent.
The Supreme Court’s most recent decision regarding prosecution history estop-pel is remarkable for the extent to which it reaffirms earlier precedent and affirmatively supports the application of flexible estoppel. See Warner-Jenkinson,
Wamer-Jenkinson, however, did establish a special presumption for cases where the prosecution history reveals no reason for a narrowing amendment. In these limited circumstances, the Court held that a presumption applies that the amendment was made for a reason related to patenta-bility, and that if the patentee is later unable to rebut that presumption, a bar to equivalents applies to the claim limitation added by the amendment. See Warner-Jenkinson,
That the Court’s holding in Wamer-Jenkinson is indeed narrow, and not intended to upset the established law of estoppel, is underscored by its extensive reliance on precedent dating back to 1886. In declining the invitation to alter existing rules, the Warner-Jenkinson Court relied on older Supreme Court decisions such as Exhibit Supply Co. v. Ace Patents Corp.,
III. Federal Circuit Authority
As noted above, I recognize that today’s en banc court has the authority to overrule prior decisions of this court, and thus that our prior decisions applying flexible or measured estoppel are not binding on the en banc court. I present the following
A. Our Adoption of Flexible Estoppel in 1983 Established the Only True “Line of Authority” in This Circuit.
Consistent with Goodyear, Hurlbut, and the other Supreme Court cases reviewed above, this court has held in over fifty decisions that the scope of estoppel is measured by the scope of surrender. In Hughes Aircraft Co. v. United States,
Depending on the nature and purpose of an amendment, it may have a limiting effect within a spectrum ranging from great to small to zero. The effect may or may not be fatal to application of a range of equivalents broad enough to encompass a particular accused product. It is not fatal to application of the doctrine itself.
Id. (emphasis added).
Today’s majority, however, suggests that since Hughes I, this court has established two “lines of authority” adopting “inconsistent” views on the scope of prosecution history estoppel: one school originating with Hughes I favoring flexible es-toppel; and a second school originating with Kinzenbaw v. Deere & Co.,
It is true that Kinzenbaw and Prodyne contain language which, taken alone, is arguably consistent with the complete bar imposed by the court today. On its face, however, neither opinion departs from our seminal ruling only the year before in Hughes I. In fact, each opinion purports to follow and quotes Hughes I. See Kinzenbaw,
Further, a close reading of the opinion in each case shows that rather than substituting a complete bar for flexible estoppel based on actual surrender, the panels did indeed look to the exact scope of surrender. They simply found that the surrender covered the accused subject matter.
B. This Court’s Original Interpretation of Warner-Jenkinson Was Sound, and the Majority Has Not Explained Why We Should Overrule Our Earlier Cases.
This court has issued a series of decisions since Warner-Jenkinson in which we have consistently interpreted Supreme Court law to require flexible estoppel. Today’s majority, however, fails to provide a satisfactory explanation as to why we should overrule our earlier cases. In Litton Sys., Inc. v. Honeywell, Inc.,
Similarly, in Hughes Aircraft Co. v. United States,
Indeed, the very same year, in Cybor Corp. v. FAS Tech., Inc.,
Only last year, in Sextant Avionique, S.A. v. Analog Devices,
This policy of “public notice” is heavily implicated in the circumstance in which the presumption is operative because, by definition, it is unclear to one reading the prosecution history why a particular amendment was made. Accordingly, the Court, through the operation of the presumption, placed the burden on the pat-entee to clarify his reasons. The paten-tee’s failure to so clarify and thereby rebut the presumption should not work to the detriment of the public by allowing an uncertain range of equivalency to remain as to the limitation at issue.
Id. at 832,
In my opinion, today’s majority has not set forth a credible explanation as to why it is overruling our prior case law interpreting Wamer-Jenkinson. The majority merely asserts, citing only “our long experience with the flexible bar approach,” that the standard we have applied until now is “unworkable.” I feel that we owe greater deference to our past interpretations of Supreme Court law, or a better explanation of why our case law is suddenly seen as “unworkable.”
C. From 1983 to 2000, This Court Has Consistently Applied Flexible, or Measured, Estoppel.
Panels of this court have consistently followed Hughes I and flexible estoppel. Indeed, in a parade of cases, from each year of this court’s eighteen-year history, successive and randomly-selected panels of this court have unanimously applied the flexible bar rule, and done so without mention of its newly-discovered “unworkability.” As the list below indicates, our court has embraced flexible estoppel in more than fifty cases. Ironically, these cases were decided by panels including nearly every member of today’s majority. In fact, most of the members of today’s majority have unitten an opinion, and indeed have done so since Wamer-Jenkinson, supporting flexible preclusion.
To highlight the degree by which today’s majority departs from our settled law, I have provided the following list of cases that today’s ruling overturns.
1983: Hughes Aircraft Co. v. United States,
1984: Bayer Aktiengesellschaft v. Duphar Int’l Research B.V.,
1985: Loctite Corp. v. Ultraseal Ltd.,
1986: Mannesmann Demag Corp. v. Engineered Metal Prod. Co., Inc.,
1987: Townsend Eng’g Co. v. Hitec Co., Ltd.,
1988: Hi-Life Prod., Inc. v. American Nat’l Water-Mattress Corp.,
1989: LaBounty Mfg., Inc. v. United States Int’l Trade Comm’n,
1990: Jonsson v. Stanley Works,
1991: Dixie USA, Inc. v. Infab Corp.,
1992: Charles Greiner & Co., Inc. v. Mari-Med Mfg., Inc.,
1993: Texas Instruments, Inc. v. United States Int’l Trade Comm’n,
1994: Genentech, Inc. v. Wellcome Found. Ltd.,
1995: Southwall Techs., Inc. v. Cardinal IG Co.,
1996: Modine Mfg., Co. v. United States Int’l Trade Comm’n,
1997: Hilton Davis Chem. Co. v. Warner-Jenkinson Co., Inc.,
1998: Cybor Corp. v. FAS Tech, Inc.,
1999: Pharmacia & Upjohn Co. v. Mylan Pharms., Inc.,
2000: Bayer AG v. Elan Pharm. Research Corp.,
IV. The Majority’s Rule Likely Will Have Unintended and Adverse Consequences that Undermine the Policies Advanced by the Supreme Court’s Interpretation of the Doctrine of Equivalents.
The doctrine of equivalents was created to prevent “fraud on a patent,” such as near-literal copying of the claimed invention with the addition of merely insubstantial changes in order to avoid liability for literal infringement. Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,
[Cjourts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for — indeed encourage — the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law.
Despite repeated petitions seeking to abolish the doctrine of equivalents, the Supreme Court has steadfastly ruled that patentees are entitled to its protection. See Warner-Jenkinson,
A. Today’s Ruling Provides Copyists with a Fail-Safe Method to Avoid Liability for Infringement.
The majority discusses the unpredictability of prosecution history estoppel under a flexible approach, and how its complete bar “eliminates the public’s need to speculate as to the subject matter surrendered by a narrowing claim amendment.” As a solution to this problem of the doctrine of equivalents, today’s ruling simply denies any resort to the doctrine, for amended claim limitations.
Today’s ruling will allow copyists to readily avoid liability despite practicing the substantial equivalent of the claimed invention. Anyone seeking to lawfully copy a patented technology will only have to adopt the following method: (1) read the prosecution history to identify amendments made for patentability reasons; (2) copy every other limitation exactly, but substitute any known interchangeable structure, matter, or step for any limitation that has been amended. Any change, no matter how “unimportant and insubstantial,” to even one amended limitation will be sufficient to avoid liability under the majority’s rule.
The ease and certainty with which this method can be applied may be readily appreciated -with reference to cases such as Insituform Technologies, Inc. v. Cat Contracting, Inc.,
A copyist’s first step in exploiting today’s ruling to avoid liability, then, would be to identify a claim limitation that was amended for patentability reasons. Here, that is the limitation requiring the successive application of a cup to different locations along the outside of the pipe. The second step, then, would be to determine the most convenient substitute for this limitation. In this case, the copyist could simply apply the vacuum simultaneously using two cups. . As we held in Insituform, this would be sufficient to avoid literal infringement.
Because today’s ruling completely eliminates protection against known substitutes for the amended limitation, any competitor adopting this method would be free from liability, as the amended limitation is not met literally but rather is supplied by an
Prosecution history estoppel, moreover, is an equitable doctrine. By its very purpose, equity jurisprudence provides a remedy individually tailored to the circumstances of the dispute at hand. As stated by the Supreme Court:
The essence of equity jurisdiction has been the power of the Chancellor to do equity and to mould each decree to the necessities of the particular case. Flexibility rather than rigidity has distinguished it. The qualities of mercy and practicality have made equity the instrument for nice adjustment and reconciliation between the public interest and private needs as well as between competing private claims.
Hecht Co. v. Bowles,
B. The Ability of Copyists to Avoid Liability Under the Complete Bar Will Be Particularly Severe in Certain Types of Technology.
Copyists will be able to apply today’s ruling, using the fail-safe method noted above, to avoid liability in many, if not all, areas of technology. Biotechnology is one critical field of technology that may be particularly harmed by today’s ruling. Completely barring resort to the doctrine of equivalents for amended claim limitations may drastically limit the scope of protection for biotechnology patents, such as those claiming a protein molecule. See Amicus Curiae Brief on behalf of Chiron Corporation in support of Respondent at 16, 17, Warner-Jenkinson (No. 95-728).
A protein molecule can only be claimed as the complete and specific sequence of amino acids comprising the protein. See 37 C.F.R. § 1.821 (2000). The particular amino acids that comprise a protein chain are frequently interchangeable with other amino acids without changing the protein or its functions. As our court noted with respect to a patent claiming the protein erythropoietin, “over 3,600 different [protein] analogs can be made by substituting [interchangeable acids] at only a single amino acid position, and over a million different analogs can be made by substituting three amino acids.” Amgen, Inc. v. Chugai Pharm. Co.,
C. Amending Claims for Patentability Reasons Is a Common Practice That Should Not Trigger a Complete Bar.
The majority gives no hint of the magnitude of the effects that will ensue from its
Today’s ruling may prove impractical because it provides that the mere act of amendment to traverse a patentability rejection eliminates all protection under the doctrine of equivalents, even for equivalents that were not the subject of the amendment. This is ill-suited to the iterative process by which patent applications are prosecuted. In Wamer-Jenkinson, the Supreme Court refused to apply prosecution history estoppel regardless of the reason for amendment expressly because to do so would “subvert the various balances” inherent in the process of rejection followed by amendment.
Rather than acquiesce to patentability rejections and thereby surrender all recourse to the doctrine of equivalents, applicants will be increasingly likely to file administrative and judicial appeals. The PTO Board of Patent Appeals and Interferences is already backlogged and often takes years to decide an appeal. Neither the PTO, nor our court, is prepared to handle any significant increase in such appeals. Such an increase could result in a significant lengthening in the average time and cost required to prosecute an application to issuance.
Furthermore, this court’s imposition of a complete bar creates a perverse incentive for patent applicants, particularly those who are financially unable to invoke the appeals process, to simply abandon their applications. In many cases, it may be more effective to protect an invention by maintaining it as a trade secret than by accepting a patent that will publicize the invention, but provide protection only from literal infringement. See Graver Tank,
D. Today’s Ruling Will Significantly, and Unfairly, Reduce the Value of All Unexpired Patents That Were Amended for Patentability Reasons.
The effect of today’s ruling upon previously-issued but unexpired patents may be dramatic. While I cannot predict all the consequences that may flow from today’s decision, I think it is safe to say that the majority’s rule will reduce the effective scope, and thus, the value, of most of the 1,200,000 patents that are unexpired and enforceable. Wholly apart from other long-term effects of the majority’s rule, I feel that today’s ruling will be unfairly disruptive of existing commercial relations. Today’s ruling offers no “grandfathering” provision for the vast numbers of unexpired patents that contain amended claim limitations, and thus that will become increasingly susceptible to copying under today’s new rule. Patent applicants who
I think that today’s ruling might most directly impact untold numbers of licensing agreements that are predicated on the assumption that patent claims with an amended limitation are still entitled to a range of equivalents. Licensees will be tempted to exploit today’s ruling using the method for liability-free copying discussed above. A licensee could make a minor substitution of a known interchangeable element for an amended claim limitation, and then correctly claim that it is no longer practicing the patented — and licensed— invention. The licensor would then be powerless to enforce the license because the amended claim or claims simply would not cover the licensee’s newly-modified product or process.
As discussed above, the Supreme Court specifically refused in Warner-Jenkinson to “upset the basic assumptions” regarding prosecution history estoppel. See
V. Conclusion
In the face of over one hundred years of Supreme Court case law, today’s en banc majority lacks authority to establish a complete bar rule. The majority also abruptly abandons eighteen years of unvarying Federal Circuit precedent as articulated in over fifty decisions, and does so without showing their error. Moreover, I believe that imposing a complete and automatic bar to the doctrine of equivalents for claim limitations amended for patentability reasons will have adverse, unfair, and unintended consequences. I accordingly must dissent from the majority’s answer to Question 3.
concurring-in-part, dissenting-in-part
A primary justification for the doctrine of equivalents is to accommodate after-arising technology. Without a doctrine of equivalents, any claim drafted in current technological terms could be easily circumvented after the advent of an advance in technology. A claim using the terms “anode” and “cathode” from tube technology would lack the “collectors” and “emitters” of transistor technology that emerged in 1948. Thus, without a doctrine of equivalents, infringers in 1949 would have unfettered license to appropriate all patented technology using the out-dated terms “cathode” and “anode”. Fortunately, the doctrine of equivalents accommodates that unforeseeable dilemma for claim drafters. Indeed, in Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co.,
Unfortunately, by barring all application of the doctrine of equivalents for amended claims, this court does not account at all for the primary role of the doctrine. All patent protection for amended claims is lost when it comes to after-arising technology, while the doctrine of equivalents will continue to accommodate after-arising technology in unamended claims. For a reason far more important than disparate treatment of claims, however, this result defies logic.
Prosecution history estoppel is an estop-pel doctrine. Estoppel prevents a litigant from denying an earlier admission upon which another has already relied.
The court reasons today that it will not inquire about the scope of an estoppel because it cannot with certainty ascertain the scope of the applicant’s surrender. Although that premise is questionable for the reasons enunciated by Judges Michel and Linn, one thing is beyond question: That premise does not apply to after-arising technology. Because after-arising technology was not in existence during the patent application process, the applicant could not have known of it, let alone surrendered it. Nonetheless, the court would apply an es-toppel where none exists and defeat the doctrine of equivalents.
concurring-in-part, dissenting-in-part, in which Circuit Judge RADER joins.
I join the majority’s articulate and well-reasoned answers to Questions 1, 2 and 4; however, I must, respectfully, dissent from the answer of the majority to Question 3 and from Part III, Section C of the opinion of the court. In my opinion, the majority’s new rigid bright line rule, eliminating all flexibility in the scope afforded certain claim limitations amended for a statutory purpose just because they were amended for a statutory purpose, goes too far. The reasons expressed by the majority do not justify this dramatic policy shift.
With all due respect to my colleagues in the majority, the new bright line rule, as simple as it is hoped to be in application, wrongfully sets in place a regime that increases the cost and complexity of patent prosecution to the detriment of individual inventors, start-up companies, and others unable to bear these increased costs. The new regime also places greater emphasis on literary skill than on an inventor’s ingenuity; gives unscrupulous copyists a free ride on the coattails of legitimate inventors; and changes the rules under which prosecution strategies were formulated for thousands of extant patents no longer subject to correction. I find particularly apt here the concerns expressed by the Supreme Court in Wamer-Jenkinson when it considered the petitioner’s request for a bright line rule precluding “recapture” of any part of surrendered subject matter under the doctrine of equivalents: “[t]o change so substantially the rules of the game now could very well subvert the various balances the PTO sought to strike when issuing the numerous patents which have not yet expired and which would be affected by our decision.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
In my opinion, the approach to prosecution history estoppel as articulated by the Supreme Court and long followed by this court should remain the rule. As long as the reason for an amendment is explained, an estoppel by amendment should only bar recapture of the subject matter actually surrendered, as discerned from the amended claim language and the reasons articulated by the applicant for the change. The mere fact that an amendment to a claim is made pursuant to a statutory requirement is insufficient in and of itself to conclude that all subject matter beyond the literal scope of the amended claim language has been surrendered, even where the amendment is made to overcome prior art.
Both by taking an expansive view of what constitutes a “substantial reason relating to patentability” and by applying prosecution history estoppel as a complete bar to any reliance on the doctrine of equivalents for claim limitations narrowed by amendment, the majority unfairly tips the balance away from pat-entees and toward competitors by con
DISCUSSION
Purpose, of the Patent System
The Constitution authorizes Congress “[t]o promote the Progress of ... useful Arts, by securing for limited Times to ... Inventors the exclusive Right to their ... Discoveries.” U.S. Const, art. I, § 8, cl. 8. The foregoing evinces the founding fathers’ intent that the federal patent laws of the United States be directed to the public purpose of fostering technological progress. See Hilton Davis Chem. Co. v. Warner-Jenkinson Co., Inc.,
An exclusive right granted by the government for one’s invention has value to an inventor as a guarantee of protection, and, thus, stimulates inventors to add to the sum of human knowledge. See Paul C. Craane, At The Boundaries Of Law And Equity: The Couri Of Appeals For The Federal Circuit And The Doctrine Of Equivalents, 13 N. Ill. U.L.Rev. 105, 107-OS (1992). To obtain this exclusive right, the inventor must disclose his invention to the public. Thus, the patent also is of value to the public because such disclosures will stimulate others to add to the sum of human knowledge through the creation of other inventions utilizing the lessons learned by the patentee. See id. at 108-09.
Strong patent protection is key to encouraging innovation, economic growth, and American competitiveness. See Paul J. Otterstedt, Unwrapping File Wrapper Estoppel In The Federal Circuit: A New Economic Policy Approach, 67 St. John’s L. Rev. 405, 422 (1993). “From their inception, the federal patent laws have embodied a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very life blood of a competitive economy.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,
Claims Use Ordinary Language to Captwre Concepts
To protect an invention through the United States patent laws, an inventor must use patent “claims.” See 35 U.S.C. § 112, second paragraph (1994). The purpose of this requirement is to give notice of the technology that the patent controls. See Slimfold Mfg. Co. v. Kinkead Indus.,
There is no disputing that an inventor is free to craft claims any way he sees fit to “particularly point[ ] out and distinctly elaim[] the subject matter [that he] regards as his invention.” 35 U.S.C. § 112, second paragraph. However, a claim is a linguistic description of a mental concept. Due to the inherent limitations of language, the fit between the description and the concept is almost always inexact. See Br. for Amicus Curiae Fed. Cir. Bar Assoc. in Hilton Davis Chem. Co. v. Warner-Jenkinson, Inc., Appeal No. 93-1088, 3
Besides the foregoing language issues, the early patent application filings encouraged by the U.S. patent laws give rise to additional difficulties in crafting a claim that particularly points out the subject matter that the inventor regards as his invention. For inventions in rapidly evolving fields, application filings are often made while the inventions are still in their nascent stages, i.e., early in the evolutionary process, necessitating inevitable and sometimes considerable fine tuning of claim language after the initial application filings have been made. Moreover, while an inventor is often aware of relevant prior art relating to the area he is developing, he is not always fully cognizant of all of the relevant prior art until after his application has been filed, thus again necessitating some fine tuning of claim language after the initial application filing has been made.
As a consequence of the foregoing, it is quite difficult for claim drafters to draft initial claims that adequately and accurately cover the “invention” on the day the patent application is filed. Consequently, claims are commonly amended during prosecution to more particularly point out and distinctly claim that which is regarded to be the invention. See Loctite Corp. v. Ultraseal Ltd.,
While the majority opinion is very clear that the court’s new bright line rule applies only to claim limitations narrowed by amendment, it does not articulate with like clarity what it considers to be a “narrowing” amendment. In drafting an original claim of a patent application, the writer sets out the metes and bounds of the invention using words in their ordinary sense or in any special sense ascribed to those words in the written description. When the claim drafter amends the terms used in the original claims, such as by adding an adjective or choosing a different word than originally used, such changes will serve to more distinctly point out that which is the invention and ordinarily, though not inevitably, will signify a difference in intended claim coverage. If the change is merely the substitution of one synonymous word for another or the mere clarification of language from a foreign translation, the claim drafter may intend no change whatsoever in claim scope; but the drafter’s word choice may be construed after grant of the patent to imply a different scope simply because changes to claim language are not made merely for aesthetic reasons. However, just because the claim drafter amends a claim limitation, does not mean he “intends” to narrow the scope of his claim coverage or to give up all subject matter beyond the literal scope of the amended language. The only inference one should draw from the mere fact alone that an amendment was made is that the claim drafter “intends” the patent to be issued. See Glenn K. Beaton, File Wrapper Estoppel And The Federal Circuit, 68 Denv. U.L.Rev. 283, 286 (1991) (noting that the patentee presumably “intends” that his reward for promoting the progress of the useful arts be as great as possible and that the limits to his reward be as small as possible).
Doctrine of Equivalents: Borne of Equity
“That the claims of a patent should be clear and should control the determination of infringement has been emphasized by
Thus, “[t]o temper unsparing logic and prevent an infringer from stealing the benefit of the invention” and thereby ensure that the patent grant is not converted into a useless thing by being subject to the mercy of verbalism, the Supreme Court embraced the doctrine of equivalents. Id. at 608,
While it is generally agreed that the doctrine of equivalents stands at the intersection of justice to the patentee and notice to competitors of the patentee’s rights, the United States patent law embraces this conflict to provide an inventor with security in the patent rights granted by the law and to stimulate technological progress. See Graver Tank,
The problems noted above regarding the inherent limitations of language and the early stage of filing applications have provided justification for the lengthy history of applying the doctrine of equivalents to all claim language to adequately protect the patentee’s right to his invention, despite the public notice function the claim terms serve. Even with the majority’s new rule, these concepts continue to provide justification for the application of the doctrine of equivalents to original claim language.
In my opinion, the majority’s new bright line rule eliminating all flexibility in the scope of claim limitations amended for a statutory purpose reflects an unjustified faith in the draftsperson to select language to perfectly describe a new and unobvious invention at an early stage of the development process. The same limitations of language noted in selecting words to describe an invention in the first instance are no less present in selecting words to avoid an examiner’s rejection of that original language for one statutory reason or another.
Furthermore, the majority’s new rule will substantially increase the cost of obtaining patent protection, and may in fact become prohibitively high for individual inventors and start-up companies. It will require applicants to undertake exhaustive pre-filing searches, which will not only be costly but also time consuming. It will also require applicants to file in an original application numerous “narrow” claims or, if “broad” claims are sought, to be prepared to argue to the patent examiner, to the board of appeals, and to this court the impropriety of all rejections for patentability reasons, rather than to amend those claims, given the harsh consequences of amendments under the majority’s new bright line rule. It will also deter applicants from attempting to expedite prosecution and attain early allowance by making minor or clarifying amendments to the claims, either in anticipation of the initial office action or at subsequent times during prosecution, for fear of triggering a complete bar to later reliance on the doctrine of equivalents. This will result in protracted prosecution and dramatically increased costs for many applications. These increases in costs and complexity will also come at a time when greater prosecution investments may be hard for many applicants to justify because the commercial value of the inventions covered may not then be fully apparent. In my view, this will most detrimentally impact individual inventors and start-up companies, and may have the effect of impeding, not advancing, technological progress, contrary to the purpose of the patent system.
Wamer-Jenkinson’s Effect on the Doctrine of Equivalents
While I agree with the majority that the question of the scope of equivalents available to a claim element that has been amended for a known patentability reason was not directly addressed by Wamer-Jenkinson, the Supreme Court did discuss the fact that an amendment to a claim element “does not necessarily preclude infringement by equivalents of that element.” Warner-Jenkinson,
If the doctrine of equivalents is completely barred when no reason for an amendment can be discerned from the prosecution history, and it is likewise completely barred when a. reason is stated, what is the point of exploring the “reason (right or wrong) for the [examiner’s rejection of the claim prior to its being amended] and the manner in which the amendment addressed and avoided that [rejection?]” Id. at 33 n. 7,
The petitioner argued to the Supreme Court in Wamer-Jenkinson that “any surrender of subject matter during patent prosecution, regardless of the reason for such surrender, precludes recapturing any part of that subject matter, even if it is equivalent to the matter expressly claimed.” Id. at 30,
In applying the majority’s new rule, a court does not explore the exchange that occurred between the examiner and the patentee during the prosecution of the patent to elucidate the construction the paten-tee intended to disavow. Thus, the majority’s new rule, invoking a complete estoppel with no flexibility for a narrowing amendment made for a statutory purpose, effectively disregards the “reason” for a
Public Policy
The majority contends that the disclaimer effect, the notice function, and the need for certainty in patent law are supporting public policies for its new strict rule regarding amended limitations. See maj. op. at 573-74. The majority asserts that by amending a claim for any reason related to a statutory requirement for obtaining a patent, the patentee disclaims subject matter encompassed by the original claim. In view of this disclaimer, the majority contends that it must be strictly construed against the inventor in favor of the public, otherwise the benefit of the doubt as to what was disclaimed cоmes at the' public’s expense. See id. at 573-74. But the same arguments can be made for originally filed claim limitations, which, like amended claim limitations, are a disclaimer of certain subject matter.
As mentioned previously, 35 U.S.C. § 112, second paragraph, requires that the patentee specifically claim the invention covered by the patent. The purpose of this statutory requirement to notify the public of the scope of conduct forbidden by the patent is applicable whether a limitation is originally presented by the applicant or added by amendment for any reason related to one of the statutory requirements for obtaining a patent. The majority does not explain why a new bright line rule is compelled to strictly construe the inventor’s choice of words in amendments but is not similarly compelled for original claim limitations. Certainly, the benefit of the doubt as to what was disclaimed comes at the public’s expense in either case.
Paradoxically, the scope and meaning of claim limitations may be more easily discerned for amended limitations, as compared with originally drafted claim limitations, based on the record developed during prosecution. First-action allowances, with no real interchange or substantive commentary between the applicant and the examiner regarding any of the originally drafted claim limitations, provide no notice of the scope and meaning of those limitations beyond the words themselves as used in the written description and claims. Thus, in some ways, the public-notice function may be better served by explained amended language than by unexplained original claim language, yet the majority’s new rule favors the latter by leaving the doctrine of equivalents unrestrained for claim limitations that are not amended.
As the Supreme Court noted in Warner-Jenkinson, “the lengthy history of the doctrine of equivalents strongly supports adherence to [the] refusal [by the Court] in [Graver Tank ] to find that the Patent Act conflicts with that doctrine. Congress can legislate the doctrine of equivalents out of existence any time it chooses.” Warner-Jenkinson,
Promoting Free Riders v. Promoting Progress of the Useful Arts
The majority contends that the certainty provided by the complete bar approach to amended limitations “will stimulate investment in improvements and design-arounds because the risk of infringement will be easier to determine.” Maj. op. at 575. However, in my opinion, limiting the pat-entee to protection of only the literal language of an amended claim limitation is
In other words, the majority’s new rule hands the unscrupulous copyist a free ride on potentially valuable patented technology, as long as the copyist merely follows the prosecution history road map and makes a change, no matter how trivial or insubstantial, to an element otherwise covered by such a narrowed claim limitation. Every other detail of the patented invention may be imitated with impunity. Such an “unscrupulous copyist” appropriates the substance of the invention while avoiding the letter of the claims, yet adds nothing to the technology. The copyist, transformed as a lawful competitor, can take refuge in the excuse that if the patentee wanted better coverage, the claims should have been prosecuted more competently.
As our predecessor court aptly stated: “[t]o allow literality to satisfy the test for infringement would force the patent law to reward literary skill and not mechanical creativity.” Autogiro Co. of Am. v. United States,
The majority’s concern regarding certainty is that under our previous precedent the scope of the estoppel had a spectrum of coverage and there was no precise metric to determine the exact range of equivalents within that spectrum. See maj. op. at 575. This concern regarding the public’s ability to know what is and what is not within the confines of a patent monopoly is not a new one.
The dissents in Winans v. Denmead
Subject Matter Surrendered
Our prior precedent instructs that “amendments may be of different types and may serve different functions. Depending on the nature and purpose of an amendment, it may have a limiting effect within a spectrum ranging from great to small to zero. The effect may or may not be fatal to application of a range of equivalents broad enough to encompass a particular accused product. It is not fatal to application of the doctrine itself.” Hughes,
I agree that the extent to which the patentee would be deprived of equivalents according to our past precedent necessarily involves the often arduous task of reviewing difficult and complex prosecution histories, as well as difficult and complex technologies. I also agree that these difficulties may give rise to differing opinions as to what subject matter is within the scope of the claim and what has been surrendered. However, the mere fact that this court’s new rule is a brighter line for determining whether a patentee is es-topped from asserting infringement by equivalents, cannot be justification for adopting a rule that so substantially changes the rules of the game and discounts the intrinsic worth in treating more fairly the individual inventor whose patent right is under administrative scrutiny and is subject to the inherent limitations of language. The Supreme Court in Warner-Jenkinson saw no “substantial cause for requiring a more rigid rule invoking an estoppel [as a complete bar with no flexibility] regardless of the reason for a change.” Warner-Jenkinson,
The majority contends that the approach followed by our court in Kinzenbaw v. Deere & Co.,
The foregoing does not evince a split in our precedent, but rather comports with Hughes that courts must undertake an examination of the prosecution record to determine the subject matter the patentee disavowed by amendment, whether or not the patentee contends the amendment was necessary to obtaining the patent. As this court has stated: “[ujnmistakable assertions made by the applicant to the ... PTO ... in support of patentability, whether or not required to secure allowance of the claim, ... may operate to preclude the patentee from asserting equivalency....” Texas Instruments Inc. v. United States Int’l Trade Comm’n,
As explained above, I believe it is fair to conclude that the Supreme Court in Warner-Jenkinson left intact the principle of determining that which the patentee surrendered by looking at the exchange between the examiner and the patentee recorded in the prosecution history. Some amendments may be made for a statutory reason, such as providing proper antecedent basis, which is required by 35 U.S.C. § 112, second paragraph’s requirement that the applicant particularly point out and distinctly claim that which is regarded as the invention. However, while such an amendment affects issuance of the patent, it is a triviаl matter. Restricting such an amended claim limitation to its literal scope would unfairly penalize patent owners beyond what is necessary to provide notice and certainty to competitors. As long as the reason for an amendment is explained, and a competitor can reasonably determine what subject matter the applicant surrendered, prosecution history es-toppel should preclude the patent holder from recapturing only the surrendered subject matter, not from accessing the doctrine of equivalents entirely. In my view, the flexible approach best balances fairness to inventors with certainty to competitors and strikes an appropriate accord between the required rewards for the already expensive and lengthy process of innovation, and the extra public costs of monopoly profits. See Otterstedt, supra, at 424.
CONCLUSION
Because claims are commonly amended during prosecution, prosecution history es-toppel touches almost every doctrine of equivalents infringement analysis. See Loctite,
concurring in part, dissenting in part.
This appeal returns to the Federal Circuit on GVR from the Supreme Court,
For the first remand issue, today’s majority opinion departs from the holdings of Warner-Jenkinson in three important ways. First, the majority holds that all equivalency is barred as to any claim element that is narrowed or added for reasons relating to patentability; access to the doctrine of equivalents is barred whether or not the Court’s new rebuttable presumption arises and whether or not it is rebutted. Second, the majority denies consideration to any rebuttal evidence that is not already in the prosecution record, thereby converting the rebuttable presumption into an irrebuttable fiat. Third, the majority’s inappropriately broad definition of “reasons related to patentability” further limits a patentee’s access to equivalency, and exacerbates the conflict with the holdings of Wamer-Jenkinson. The result is to negate infringement by equivalents, as a matter of law, thereby providing a blueprint for ready imitation of patented products.
The majority does not reach the second remand issue, the application of the all-elements rule. However, the all-elements rale is central to the Supreme Court’s treatment of the tension between the doctrine of equivalents and the “notice function” of patent claims. Although my colleagues in the majority identify the “notice function” as the reason for their new and extreme restraints on the doctrine of equivalents, the majority opinion neither discusses nor acknowledges the Court’s considered actions to reinforce the notice function.
Thus the majority ignores the bases of the GVR which returned this case to us, and instead manipulates the issues of equivalency and estoppel to achieve a policy-driven result. In acting to severely limit the doctrine of equivalents, this court has made a deliberate change in the relationship between innovator and competitor. Although the Supreme Court rejected judicial entry into this policy arena, the majority has entered headlong, criticizing 150 years of Supreme Court precedent and 18 years of Federal Circuit precedent as “unworkable.” This spontaneous judicial action represents a venture into industrial policy whose consequences have been inadequately considered. The majority’s announced purpose of facilitating competition by restricting patentees’ access to the doctrine of equivalents has not been evaluated for its effect on the nation’s technology-based industry, for its effect on the system of patents as an innovation incentive, or indeed for its effect on competition. The interdependent policy aspects of technologic innovation, industrial growth, and competition were not briefed, and do not inhere in this court’s “special expertise” in adjudication of patent disputes.
CONFLICTS WITH THE LAW OF WARNER-JENKINSON
Prosecution History Estoppel
The Court in Wamer-Jenkinson confirmed its precedent that estoppel flows from a patent applicant’s disclaimer or surrender of subject matter for reasons of patentability; precedent has never held that no equivalency whatsoever is availablé to amended claim elements. The majority’s departures from this law are summarized in its rulings that “an amendment that narrows the scope of a claim for any reason related to the statutory requirements for a patent will give rise to prosecution history estoppel with respect to the amended claim element,” maj. op. at 563, that “no range of equivalents is available for the amended claim element,” id., and that amendments made to comply with virtually any provision of the Patent Act will raise this estoppel, id. at 566-67. These rulings contravene the Court’s holdings in Wamer-Jenkinson.
In Wamer-Jenkinson the Court summarily dismissed the argument that “any surrender of subject matter during patent prosecution, regardless of the reason for such surrender, precludes recapturing any part of that subject matter, even if it is equivalent to the matter expressly claimed.” Warner-Jenkinson,
[W]hile a lower limit of 6.0, by its mere inclusion, became a material element of the claim, that did not necessarily preclude the application of the doctrine of equivalents as to that element.
Id. at 32,
The Court in Wamer-Jenkinson reaffirmed its precedent wherein the patentee is estopped from reaching, through equivalency, subject matter that the applicant had disclaimed or surrendered in order to obtain the patent. See, e.g., Exhibit Supply Co. v. Ace Patents Corp.,
The majority recasts prosecution history estoppel in a legally incorrect and equitably unjust manner. As illustrated by the Carroll and Stoll patents in suit, equivalents are now held forfeited whether or not the claimed element itself was amended, or even discussed, during prosecution. In contrast, the Court has consistently held that the law of estoppel requires determination of what was surrendered and why,
The Rebuttable Presumption
As part of its reinforcement of the notice function of claims, the Court established a new rebuttable presumption. In accordance with this presumption, when the prosecution record is silent as to the reason for a change to the claims, the presumption arises that the change was made for “a substantial reason related to patent-ability.” Warner-Jenkinson,
Where the reason for the change was not related to avoiding the prior art, the change may introduce a new element, but it does not necessarily preclude infringement by equivalents of that element.
Id. The patentee may then come forward with evidence to rebut the presumption. Id. at 33,
The majority holds that the presumption can only be rebutted by evidence that is already present in the prosecution record. Maj. op. at 586 (“a patent holder seeking to establish the reason for an amendment must base his arguments solely upon the public record of the patent’s prosecution, ie., the patent’s prosecution history”). Thus the majority holds that the rebutta-ble presumption concerning the reason for an amendment, which presumption arises when the prosecution record is silent as to the reason for the amendment, can not be rebutted with evidence outside of the prosecution record. The rebuttable presumption thereby becomes irrebuttable, because the prosecution record is necessarily silent in order for the presumption to arise at all. This impossibility of rebuttal was surely not contemplated by the Court in creating “[t]he presumption we have described, one subject to rebuttal if an appropriate reason for a required amendment is established .... ” Warner-Jenkinson,
The nature of a presumption is that it is not sacrosanct on the grounds on which it arose, but can be countered by evidence. See Fed.R.Evid. 301 (“a presumption imposes on the party against whom it is directed the burden of going forward with evidence to rebut or meet the presumption”). A presumption is a procedural expedient whereby a conclusion of law or ultimate fact is deemed established upon the proof of certain evidentiary or historical facts. An opposing party may rebut the presumption by coming forward with evidence sufficient to negate the conclusion or its factual premises. See generally 21 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 5124 (3d ed.1998). The majority’s ruling confuses the grounds on which a presumption arises with the grounds on which it is subject to rebuttal. The role of the prosecution record is to establish whether the presumption arises at all, not whether it has been rebutted.
That the majority’s ruling makes rebuttal impossible is illustrated by the patents in suit. Since Festo’s explanation of its
The Supreme Court was explicit that “The presumption we have described [is] subject to rebuttal_”
“Reasons Related to Patentability”
In Warner-Jenkinson the Court explained that amendments made for “a substantial reason related to patentability” means amendments made to establish pat-entability in view of substantive rejections. The Court observed that there are “a variety of other reasons why the PTO may request a change in claim language” without producing an estoppel,
Our prior cases have consistently applied prosecution history estoppel only where claims have been amended for a limited set of reasons, and we see no substantial cause for requiring a more rigid rule invoking an estoppel regardless of the reasons for a change.
The Court’s emphasis on a “limited set of reasons” is in striking contrast to the unconstrained estoppel established by the majority for any change made in connection with any provision of the Patent Act. In Warner-Jenkinson the Court unequivocally rejected this position, stating that the petitioner “reaches too far in arguing that the reason for an amendment during patent prosecution is irrelevant to any subsequent estoppel.”
Supreme Court and Federal Circuit precedent have well recognized that, prosecution history estoppel flows from amendments on substantive grounds of patentability. The principal statutory provisions involved during examination for patentability are 35 U.S.C. § 102 and
The majority discards as “unworkable,” maj. op. at 575, the vast body of precedent which holds that determination of the extent of estoppel requires consideration of the reason for the amendment. See, e.g., Bayer Aktiengesellschaft v. Duphar Int’l Research B.V.,
Federal Circuit Precedent
The majority seeks to buttress its departure from the law of Wamer-Jenkin-son by stating that it is simply resolving “conflicting lines” of Federal Circuit precedent. However, that is neither an accurate description of our precedent, nor an adequate reason to discard it.
Federal Circuit decisions applying the doctrine of equivalents have turned not on “conflicting lines” of precedent, but on the facts of each case. This precedent illustrates the variety of situations that can arise as to the technologic facts of asserted equivalency, as well as the variety of circumstances of estoppel. At one factual pole are cases that illustrate a patentee’s disclaimer, during prosecution, of precisely what the accused infringer is doing. Such cases tend to inspire righteous judicial rhetoric against over-reaching patentees; these opinions voice what the majority terms a “strict” approach to the doctrine of equivalents. At the other factual pole are cases that the majority classifies as the “flexible” approach, the majority’s disapproving term for those decisions where liability based on equivalency was found.
This jurisprudence reflects not two disparate lines of conflicting authority, but rulings of estoppel and findings of equivalency vel non in a continuum of situations, from those that clearly warranted liability to those that clearly did not. It is inappropriate to convert the extremes of this continuum into “conflicting lines,” and then to use this contrived conflict to justify changing the law to eliminate not only both lines but also everything in-between.
The principal case cited for the majority’s “strict line” is Kinzenbaw v. Deere & Co.,
The majority flags Hughes Aircraft Co. v. United States,
Although the questions presented in precedent were often close, and not every judge was always of identical view, not even the “strict line” attributed to Kinzen-baiu represents the extreme position now adopted. In Wamer-Jenkinson the Court rejected the position that any surrender of subject matter establishes “bright lines beyond which no equivalents may be claimed.”
The “Notice Function” of Claims
The Supreme Court, reviewing its precedent on equivalency since Winans v. Denmead,
Discussing the rebuttable presumption, the Court stated that “The presumption we have described ... gives proper deference to the role of claims in defining an invention and providing public notice.... ” Id. at 33-34,
The notice function of claims was thereby enhanced, for there can be no liability for infringement, even by a clear techno-logic equivalent, unless every claimed element of the patented device is appropriated and used, in the same role as in the claim, without encountering estoppel. A device that does not meet all of these legal and factual criteria does not incur liability despite technologic equivalency. However, a device that is unable to omit or substantially change even one claimed element, and that is not released by the prosecution history, has notice of probable liability for infringement.
Thus the Court acted to preserve the purpose of the doctrine of equivalents to prevent “fraud on the patent,” while taking specific steps to reinforce the notice function of patent claims. The majority opinion remains silent on this important action to sharpen application of the doctrine of equivalents while preserving the principle of its availability. Instead, the majority relies on its “experience” as justification for its changes of law, but makes no mention of the Court’s careful balance of controls, or explain why it is inadequate. See maj. op. at 574-75 (“Our decision to reject the flexible bar approach adopted in Hughes I comes after nearly twenty years
In the complex of risk-laden concerns and uncertainties involving inventions, entrepreneurship, and competition, the doctrine of equivalents weighs on the side of the patentee, for it provides the possibility of protection against close copies which merely skirt the patent’s claims. In this way it adds weight to the patent system as an innovation incentive. The majority of this court apparently views the existing balance between inventor and imitator as disadvantageous to the nation, for the court now sets as “paramount” the “notice function” to the would-be competitor. However, the optimum balance between innovator and imitator in a technology-dependent economy involves many considerations in addition to the primacy of notice.
II
THE PATENTS IN SUIT
Applying the pre-Warner-Jenkinson law of equivalency, the district court adjudged both the Carroll and Stoll patents to be infringed, the Carroll patent on summary judgment and the Stoll patent by jury verdict. On the prior law, and again on the law of Wamer-Jenkinson, those judgments were twice affirmed on appeal. Today the merits are not reached, simply because the claims of both patents were rewritten in narrower form before they were examined. For the Carroll patent, Festo added an element to the claims before reexamination. For the Stoll patent, Festo rewrote improper multiple dependent claims, dropping the broader claim. In neither the Carroll nor the Stoll patent were the elements at issue amended; however, in both patents estoppel is now held to be complete, barring any assertion of equivalency as to these elements.
The Carroll Patent
Festo requested reexamination of the Carroll patent in light of German Patent No. 1,982,379, which had not been included in the original examination. After the reexamination request was granted but before reexamination on the merits, Festo cancelled original claim 1 and added a new claim which differed from the original claim in several ways including the addition of “a pair of resilient sealing rings.” Festo did not explain these changes; nor was explanation required, for the changes were made before action by the examiner.
The majority holds that the presumption arises that the sealing rings were added to the claim for reasons of patentability, for the prosecution record does not state why this amendment was made. However, the majority limits the rebuttal evidence to the prosecution record that produced the presumption. See maj. op. at 586 (“We therefore hold that a narrowing amendment will give rise to prosecution history estoppel unless the prosecution history of the patent reveals that the amendment was made for a purpose unrelated to patentability concerns.”) Since the prosecution history is silent as to the reason for the amendment, Festo is held unable to rebut the presumption.
Festo points out on this appeal that sealing rings were described in the cited German patent, and thus that this element did not impart a distinction from the prior art. Festo’s argument during reexamination related to other components of the device:
[The cited references] do not disclose the overall structure of the device for moving articles set forth in the claim, and in particular do not disclose 1) a plurality of cylindrically-shaped permanent magnets mounted on a central mounting member and spaced axially apart from each other ... 2) an exterior body including a plurality of annularly shaped permanent magnets spacedapart from each other and 3) a pair of cushion members formed of resilient material.... [Emphases in original]
The examiner mentioned several components of the combination in the “Reasons for Allowance,” but not the sealing rings:
Claims 8, 4, 5, 6, and 9 are deemed allowable over the prior art of record, including German Patent No. 1,982,379 because the prior art does not teach or render obvious the claimed combination which includes the plurality of magnets, end members, and cushion members in the claimed relationship.
The sealing rings raise the only issue with respect to infringement under the doctrine of equivalents; all of the other claim elements were conceded to be literally present in the SMC devices.
The sealing rings were not amended during prosecution. No argument by the applicant was directed to the sealing rings, and no issue of patentability concerning the sealing rings was raised by the examiner. Nonetheless, the majority holds that it suffices as a “narrowing amendment” that the claim as a whole was narrowed when the sealing rings were added before examination. Applying the majority’s new rule that any narrowing amendment entirely bars access to equivalency, the factual question of equivalency between the claimed pair of sealing rings and the SMC two-way sealing ring is not reached.
The Stoll Patent
The Stoll patent application was filed in the United States as the English translation of a prior German patent application. In the first action in the United States, the examiner rejected the application under 35 U.S.C. § 112 ¶ 1, stating: “Exact method of operation unclear. Is device a true motor or magnetic clutch?” The examiner also objected to claims 4-12, which apparently were filed in the same form as in the foreign priority application, as being in improper multiple dependent form, citing 35 U.S.C. § 112 ¶ 2 [sic: ¶5?]. The examiner also listed three references as “believed pertinent”; the references were not discussed and no rejection was made on prior art.
In response, Stoll explained the method of operation and amended the specification accordingly. Stoll also rewrote the claims, eliminating the improper multiple dependent form. Stoll cancelled original claim 1 and filed a new independent claim that included the subject matter of original dependent claims 4 and 8. From claim 4 Stoll took “first sealing rings located axially outside said guide rings,” and from claim 8 Stoll took “a cylindrical sleeve made of a magnetizable material and encircles said tube.” Thus in the new claim these elements were more narrowly claimed than in original claim 1, although not more narrowly than in original dependent claims 4 and 8. The record states no reason for these changes.
Stoll also submitted two German patents that had been cited during examination of the corresponding German application, with the following explanation:
Applicant wishes to make of record German Offenlegungsschrift No. 27 37 924 and German Gebrauchsmuster No. 19 82 379. These references were cited in the first Office Action received in the corresponding German application. These references are obviously clearly distinguishable over the subject matter of the claims now present in this application. Accordingly, further comment about the subject matter of these references is believed unnecessary. It is clear that neither of these references discloses theuse of structure preventing the interference of impurities located inside the tube and on the outside of the tube while the arrangement is moved along the tube.
The majority finds that the above reference to “structure preventing the interference of impurities” relates to the sealing rings; nonetheless, the majority also rules that all access to equivalency is barred because the broadest claim was “narrowed” by amendment, although the scope of the elements as stated in the original dependent claims was not at issue. Disposing of Festo’s argument that the prosecution history shows that the claims were rewritten in response to the rejection for improper multiple dependent form, the majority holds that “Because a claim will not issue unless it satisfies the requirements of section 112, an amendment made to satisfy the statute is an amendment made for a reason related to patentability.” Maj. op. at 589. Thus this amendment is held to bar access to the doctrine of equivalents because the rejection was based on a statutory formal requirement.
The court does not reach the questions of identity of function, way, and result, or the insubstantiality of the change, or interchangeability in the context of the invention. The formulaic framework of the majority opinion thus vitiates the doctrine of equivalents, without respect to the merits of any particular claim.
The Retroactive Effect
It has been routine practice for patent solicitors to initially present broad claims to an invention, in the expectation of honing the claims in interaction with the examiner. As very few patent applications traverse the PTO without amendment or argument,
In addition, a profound inequity is now created between those patents that may fortuitously have managed to avoid amendment or argument as to all elements subject to imitation by insubstantial change, and those that have not. The practical significance has not been explored in the majority opinion, and indeed this aspect was not briefed or argued.
Ill
INNOVATION AND COMPETITION POLICY
Although various policy arguments were briefed to the Court in the Wamer-Jen-kinson appeal, the Court declined to enter the policy arena:
The lengthy history of the doctrine of equivalents strongly supports adherence to our refusal in Graver Tank to find that the Patent Act conflicts with that doctrine. Congress can legislate the doctrine of equivalents out of existence any time it chooses. The various policy arguments now made by both sides are thus best addressed to Congress, not this Court.
The modern industrial economy is driven by technologic innovation. It has long been understood that technological advance and industrial vigor flow from legal and economic policies that encourage invention and support investment in the products of invention. The extensive scholarship in this area is founded on the classical studies of Joseph A. Schumpeter, Capitalism, Socialism and Democracy, Harper, New York (3d ed.1950) (recognizing the economic impact of patent-based innovation as new industries and new goods displace the old), and has been broadly explored, e.g., Kenneth J. Arrow, Economic Welfare and the Allocation of Resources for Invention (1962) (discussing intellectual property rights in a free enterprise economy); Robert Solow, Technical Change and the Aggregate Production Function, 39 Rev. Econ. & Stat. 312 (1957).
The encouragement of invention and investment in new ideas and their embodiments is a primary function of patent systems, aimed at the national purpose of development of new industries, improved productivity, increased employment, and overall economic growth as well as techno-logic advance. There is burgeoning modern scholarship directed to studies of invention, investment, and patent systems, generally building on the work of William D. Nordhaus, Invention, Growth, and Welfare: A Theoretical Treatment of Technological Change, M.I.T. Press, Cambridge (1969), and other scholars such as Kenneth M. Dam, The Economic Underpinnings of Patent Laio, 23 J. Leg. Studies 247 (1994); David Silverstein, Patents, Science and Innovation: Historical Linkages and Implications for Global Technological Competitiveness, 17 Rutgers Computer & Tech. L. J. 261 (1991); and Friedrich-Karl Beier, The Significance of the Patent System for Technical, Economic and Social Progress, 11 Int’l Rev. Indus. Prop. & Copyright L. 563 (1980). Critical attention has been given to aspects such as the nature of the technology, the rate of technologic change in the particular field, the maturity of the field, the cost of invention and development for various technologies, market risks and competitive structures, the ease and cost of imitation, and the choice between disclosure in patents and maintaining the technology in secrecy. International patenting and trade aspects have been explored, as well as the cost of patenting and the cost of enforcement. E.g., Nancy T. Gallini, Patent Policy and Costly Imitation, 32 RAND J. Econs. 56 (1992) (discussing factors such as licensing policy and technological difficulties); Richard J. Gilbert & David M.G. Newberry, Preemptive Patenting and the Persistence of Monopoly, 72 Am. Econ. Rev. 514, 519, 522 (1982) (industry-specific conditions such as the existence of patentable substitutes and cross-licensing, as well as costs of litigation, affect strategic behavior).
The field of innovation study has evolved to include such complexities as “sequential” innovation, wherein one invention follows from the disclosure of another, e.g., Jerry R. Green and Suzanne Scotchmer, On the Division of Profit in Sequential Innovation, 26 RAND J. Econs. 20 (1995) (pointing out that patent length and breadth play a different role when innovation is sequential); G.M. Grossman and E. Helpman, Quality Ladders in the Theory of Groiuth, 58 Rev. Econ. Stud. 43 (1991) (discussing how investment in sequential innovation drives economic growth).
It is well recognized that all of these aspects have varying weights, and that the circumstances surrounding the development and utilization of intellectual property are extremely diverse. Indeed, commentators complain that a single patent policy and patent law are unsuited to the range of scientific and commercial activity in today’s economy.
Thus scholarship is providing rigor to understanding the role of intellectual property in innovation/competition policy, even as the limitations of economic models
It is generally agreed that long-term economic growth requires a policy framework that encourages the creation and commercialization of new technologies, as contrasted with a policy that facilitates appropriation of the creative product, lest the creative product dry up in the face of too-easy appropriation. “Knowledge capital,” secured by intellectual property rights, now rivals the traditional economic components of labor productivity, capital formation, and natural resources, as the foundation of economic growth.
The inventor and the imitator are affected by quite different economic considerations. The innovator takes the risk of commercial success or failure of new things in new markets — the risk of unfulfilled expectations, obsolescence, regulation, technologic failure. The imitator bears none of these risks; he is interested only in the successful products, not in the failures; he is interested only in the profitable products, not the marginal ones; he moves in only after the invention has been made and tested and the market developed, and can operate at lower margins. The patent system provides weight on the side of the innovator, aided by the doctrine of equivalents and its inhibition of close copying, establishing an incеntive whose value has been tested by time. However, it is also well recognized that competition is essential to a healthy economy. Achieving the optimum balance of these factors is of vital national importance. A major policy change in the foundational law affecting innovation and competition should not be made without adequate study of its consequences.
Although there is burgeoning literature on technologic intellectual property rights, the doctrine of equivalents has not, of itself, been a major focus of legal and economic scholarship. I suspect this is due to the complexity of the issue, the variety of factual applications, the diversity of technologies, the breadth of interacting influences on patentees’ and competitors’ activities, and the complex nuances of competition at the edge of the products of others. A few authors, however, have critically considered the doctrine of equivalents. For example, Robert P. Merges & Richard R. Nelson, in On the Complex Economics of Claim Scope, 90 Colum. L. Rev. 839 (1990), observe that the doctrine of equivalents tends to diminish incentives for competitors, but point out that the doctrine also encourages competitors to make “leapfrogging” advances instead of simply copying at the edge of the claims. The questions raised by the doctrine of equivalents are not quite the same as
My colleagues in the majority make the error of the “simplified model,” which assumes a continuing supply of new products, and ignores the prior steps of invention and commercialization. The majority concludes that the elimination of liability for infringement based on equivalency will be of public benefit: “The public will be free to improve on the patented technology and design around it.... [Cjertainty will stimulate investment in improvements and design-arounds.” Maj. op. at 577. However, the assumption that placing new technology in the public domain is always the optimum path to industrial growth is not supported by experience. Empirical studies have added rigor to the common sense knowledge that reduced profit opportunity affects the supply of capital to launch a new technology, and often the creation of the technology itself. See, e.g., Joshua Lerner, The Importance of Patent Scope: an Empirical Analysis, 25 RAND J. of Econ. 319 (1994) (reviewing 173 venture-backed biotechnology firms and reported that an increase of one standard deviation in average patent scope produced a 21% increase in the firm’s value).
The present patent law has supported a blossoming of technology-based industry in a competitive environment that is conspicuous for its entrepreneurial vigor. The balance among inventor, investor, competitor, and consumer, and the effect of the doctrine of equivalents on that balance, is not explored in the parties’ briefs and had sparse amicus participation, for it was not at issue. Of course no patentee would choose to rely on the doctrine of equivalents to support commercial investment. The public and private interests served by the doctrine of equivalents derive from its deterrence of close imitation, thereby helping to assure to the patentee the benefit of the invention,
CONCLUSION
The policy underlying the doctrine of equivalents has been sustained by the absence of alternative remedy in meritorious cases, when the patentee’s invention has indeed been taken by trivial change from the letter of the claims. By enabling remedy when remedy is warranted, the doctrine adds strength to the system of patents. Today’s technological vitality arose on a patent system that included the doctrine of equivalents. A change in the balance between inventor and imitator requires careful understanding of the consequences; a preference for the neatness of precise “notice” does not justify major tinkering with the overall strength of the patent system, with unknown consequences. This court’s new recipe for risk-free copying of patented inventions presents policy considerations of national import.
The doctrine of equivalents has not been deemed superfluous as an instrument as justice, and not until today has it been
. We do not require the alleged infringer to demonstrate actual personal reliance on the statements in the prosecution history. See 5
. These six cases are Warner-Jenkinson,
. The Patent Act of 1836 authorized a paten-tee to surrender the claims of his original patent and to obtain a reissue patent whenever the рatent was “inoperative, or invalid, by-reason of a defective or insufficient description or specification, or by reason of the pat-entee claiming in his specification as his own invention, more than he had or shall have a right to claim as new.” Patent Act of 1836, Ch. 357, 5 Stat. 117, at § 13 (July 4, 1836); see also Gage v. Herring,
. The Underline name refers to the opinion’s author.
This patent law version of "estoppel” varies from classical estoppel because an accused infringer need not have relied at all on the prior admission.
. While it is trae that footnote 7 was directed to a claim change made relative to avoiding
. This conclusion is further buttressed by the fact that in thinking about prosecution history estoppel, the Court in Wamer-Jenkinson had in mind the doctrine as set forth in Bayer Aktiengesellschaft v. Duphar Int’l Research B.V.,
. "The patentee is obliged, by law, to ... particularly 'specify and point' out what he claims as his invention. Fullness [sic], clearness, exactness, preciseness, and particularity, in the description of the invention, its principle, and of the matter claimed to be invented, will alone fulfill [sic] the demands of Congress or the wants of the country. Nothing, in the administration of this law, will be more mischievous, more productive of oppressive and costly litigation, of exorbitant and unjust pretensions and vexatious [sic] demands, more injurious to labor, than a relaxation of these wise and salutary requisitions of the act of Congress.” Winans,
. "The Court's ruling today sets the stage for more patent ‘fraud’ and 'piracy' against business than could be expected from faithful observance of the congressionally enacted plan lo protect business against judicial expansion of precise patent claims. Hereafter a manufacturer cannot rely on what the language of a patent claims. He must be able, at the peril of heavy infringement damages, to forecast how far a court relatively unversed in a particular technological field will expand the claim's language after considering the testimony of technical experts in that field. To burden business enterprise on the assumption that men possess such a prescience bodes ill for the kind of competitive economy that is our professed goal” Graver Tank,
. Shoketsu Kinzoku K. K., Ltd. v. Festo Corp.,
. In the district court the issue of equivalency of the sealing rings was based on the all-elements rule, a question that is mooted by the majority's ruling that equivalency can not be asserted at all.
. Patent examination practice requires the examiner to cite the closest references found in a search of the prior art. See Manual of Patent Examining Procedure § 706. The applicant then must respond and explain why the invention is patentable over the references, and may amend, add, cancel, and rewrite claims. MPEP § 714.02. Informal inquiry reports that for simple inventions, at most 10-15% of patents are granted without claim amendment, although very rarely without argument. For complex inventions the percentage of unamended applications is vanishingly small.
. The majority exhibits either hubris or humor in explaining that the patentee who is denied access to equivalency is also benefitted because he is spared the cost of enforcing his patent against the equivalent product that has undercut his prices and taken his market. Maj. op. at 577.
. My colleagues' complaint about the frequency of issues of equivalency in litigation must be viewed in context. Less than a hundred patent cases are fully tried each year, and most of the few hundred appeals to the Federal Circuit reach us on summaiy disposition. Infringement cases often raise issues of equivalency, usually offered as an alternative theory to literal infringement. These are very small numbers in light of over 1,700,000 unexpired patents, of which 1,200,000 are maintained and in force. Cases in litigation do not provide courts with a balanced picture of the workings of commerce. Litigants rarely explore national policy, as committed parties battle for high stakes. Such cases do not present an objective exposition of the overriding national interest.